Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/17/2025 has been entered.
Claims 1-8 and 11-14 are pending in this application.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-8 and 11-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1-8 and 11-14 were amended on 7/19/2024 to recite the biological materials Trichoderma harzianum strain RGM2218 and Clonostachys rosea strain RGM2217. The originally filed disclosure failed to provide descriptive support for these two strains. There was no information in the originally filed disclosure that reasonably conveyed the specific strains, T. harzianum strain RGM2218 and C. rosea strain RGM2217.
The response filed on 4/17/2025, including arguments, declarations filed by inventors, and certificates of deposits from CChRGM, have been given due consideration. Applicant states that the strains “used in the experimental examples disclosed in the application correspond precisely to the biological materials that were deposited.” The Examiner cannot agree for the following reasons.
The originally filed disclosure did not contain any reference or information as to a specific strain of T. harzianum or a specific strain of C. rosea. There was no information whatsoever as to strain identification in the originally filed disclosure. Thus, even though inventors may have deposited a strain of T. harzianum with accession number RGM2218 and a strain of C. rosea with accession number RGM2217 at CChRGM on 6/24/20151, there was no originally filed disclosure that reasonably conveyed that the strains used in this application are the strains so deposited.
Consequently, the claims (amended on 7/19/2024 to recite specific strain information) fail to find adequate descriptive support from the originally filed disclosure.
The amendment filed on 4/17/2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
(1) Strain F1.A Trichoderma harzianum accession code TGM2218;
(2) Strain 24A Clonostachys rosea accession code RGM2217; and
(3) all deposit information pertaining to (1) and (2), supra.
As stated previously in this Office action, there was no originally disclosed identification of the specific strain that is (1) or (2), supra. Adding such information is adding new matter which is not supported by the original disclosure. The fact that the strains were deposited prior to the effective filing date of the instant application does not overcome this ground of objection because the original disclosure did not disclose or reasonably convey that said deposited strains are used in this invention.
Applicant is required to cancel the new matter in the reply to this Office Action.
Applicant is advised that the outstanding ground of rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement, is withdrawn in view of the response filed on 4/17/2025, including the two certificates of deposit and two declarations filed by inventors that a strain of Trichoderma harzianum with accession number RGM2218 and a strain of Clonostachys rosea with accession number RGM2217 were deposited under the terms of Budapest Treaty at CChRGM on 6/24/2015, and that all restrictions imposed by the depositor on the availability to the public of the deposited material will be irrevocably removed upon the granting of a patent. However, it is noted for the record that the withdrawal of the enablement rejection is due to the new matter which have been added to the claims and the specification, which new matter fails to find adequate descriptive support from the originally filed disclosure.
Applicant is further advised that the outstanding ground of rejection under 35 U.S.C. 103 over Vestberg in view of Leibmann et al. (WO 2015/011615), Mutawila et al., Arena et al., Primastop Biofungicide Powder label, and Tahvonen et al. (US 5,968,504) is withdrawn in view of claim amendment filed on 7/19/2024 that added strain information, T. harzianum strain RGM2218 and C. rosea strain RGM2217, and Applicant’s additional arguments relative thereto filed with the RCE on 4/17/2025. However, it is noted for the record that the withdrawal of this rejection is due to the new matter which have been added to the claims and the specification, which new matter fails to find adequate descriptive support from the originally filed disclosure.
For these reasons, all claims are rejected again. No claim is allowed.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JOHN PAK/Primary Examiner, Art Unit 1699
1 Deposit date of 6/24/2015 is more than 2 years before the filing date of the foreign priority application CL3480-2017, 12/27/2018, and more than 3 years before the filing date of the International application PCT/IB2018/060658, 12/27/2018,