DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
Receipt of Arguments/Remarks filed on 12/1/2025 is acknowledged. Claims 10-11 and 15-29 are pending. Claim 10 was amended. Claim 12 was canceled. Claims 26-29 were withdrawn as being directed to a non-elected invention.
Withdrawn Rejections
The amendment filed 12/1/2025 is sufficient to overcome the rejection of claims 12 under 35 U.S.C. § 112(d). Claim 12 has been canceled.
Maintained and modified rejections based on amendments
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 10-11, 15-22, and 24-25 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Weller et al. (US 4,647,533) in view of Kamilova et al., Environmental microbiology; 7(11):1809-17.
Regarding claim 10, Weller teaches an iterative method of screening bacteria to select strains that will suppress the fungal pathogen, Pythium spp., in small grain crops (Weller “Abstract”). Weller teaches:
a) growing small grain crops in soil containing the fungal pathogen Pythium spp. and isolating bacteria from the soil, and applying the isolated microorganisms to a plant grown in soil containing Pythium (Weller col. 2 lines 22-35). The term “plurality of microorganisms” is not specifically defined in the instant specification. Under broadest reasonable interpretation, a “plurality” refers to more than one bacterial cell, including more than one bacterial cell of the same species. As Weller teaches isolating bacteria (plural term) from the soil, meaning more than one bacterial cell, this claim limitation is met.
b) selecting plants with greater overall height or longer first true leaves as an indication of resistance to Pythium (Weller col. 2 lines 35-40),
c) selecting and using microorganisms that caused the selected plants to have greater height or longer leaves (Weller col. 2 lines 35-40), and
d) repeating steps a)-c), using the microorganisms associated with the selected plants to inoculate another plant in soil containing Pythium spp. (Weller col. 2 lines 40-50).
Regarding claim 11, Weller teaches growing the plants, and that the plants are subjected to growth medium, soil, containing Pythium (Weller col. 2 lines 22-35).
Regarding claim 15, Weller teaches that Pythium spp. present in the soil are a pathogen complex comprising a group of fungi, i.e. a plurality of fungal pathogens (Weller col. 1 lines 10-15).
Regarding claim 16, Weller teaches different selection criteria used to initially select plants, greater height or longer first true leaves (Weller col. 2 lines 35-40). After the second application of bacteria, i.e. the next iteration, Weller teaches selecting plants that have greater height, stand, yield, or more heads (Weller col. 2 lines 48-51).
Weller teaches that microorganisms are identified as suppressive to Pythium by selecting plants with particular traits after growth in the presence of the bacterium. The isolated bacteria determined to be suppressive are then applied in the next step (Weller col. 2 lines 23-50, Ex. 3). Weller does not teach that a set of microorganisms are directly obtained from the plant parts and then used in the successive repeats as recited in claim 1 c) and d). Weller does not teach that a second set of microorganisms are obtained in crude form as recited in claim 17. Weller does not teach acquiring two or more microorganisms and selecting isolates as recited in claims 18-19. Weller does not teach combining the microorganisms obtained in step c) as recited in claims 20-21. Weller does not teach combining selected microorganisms with additional ingredients in a composition as recited in claims 24-25.
Regarding claim 10, Kamilova teaches an iterative method of selecting microorganisms that improve resistance of a plant against a fungal pathogen (Kamilova “Abstract”). Kamilova teaches a) subjecting plants to a growth medium in the presence of a mixture of rhizosphere bacteria (Kamilova pg. 1809 col. 2), c) acquiring bacteria from a plant part (root tip) (Kamilova pg. 1809 col. 2), and d) using the set of bacteria isolated from the plant to inoculate a new plant, which is done for three repeated cycles (Kamilova pg. 1809 col. 2).
Regarding claim 17, Kamilova teaches that the second set of microorganisms is acquired in crude form, a mixture of rhizobacteria (Kamilova Fig. 1).
Regarding claim 18-21, Kamilova teaches that two or more microorganisms are acquired in step c), then separated into individual isolates (judge colony diversity), and two or more isolates are selected and combined for another enrichment cycle/repeat of the method and used in further experiments (Kamilova Fig. 1 legend).
Regarding claim 22, Kamilova teaches that plant material, roots of tomato and cucumber plants, are used as the source of microorganisms (Kamilova Fig. 1).
Regarding claims 24-25, Kamilova teaches production of a composition for biocontrol against tomato foot and root rot (TFRR) which is caused by a fungus, by combining the bacteria with methylcellulose and growing the plants in a non-sterile soil which would contain fungal pathogens (Kamilova pg. 1815 “Biocontrol of TFRR using seedling inoculation”).
It would have been obvious to a skilled artisan, before the effective filing date, to combine the teachings of Weller and Kamilova, achieving an iterative method of screening bacteria that improve resistance of plants to fungal pathogens as instantly claimed. Both Weller and Kamilova teach screening microorganisms for biocontrol purposes by association with plants. It would have been obvious to a skilled artisan that the method of obtaining microorganisms from the plant part and using those microorganisms in the next round of inoculation, as taught by Kamilova, could be used in a method of screening with plants grown in soil containing fungi as taught by Weller. Weller teaches that the initial set of microorganisms is obtained from a root surface, so it would have been obvious to obtain microorganisms directly from the plant part in successive rounds of growth as taught by Kamilova. It would have been obvious to a skilled artisan that the method steps a)-c) could be carried out two or more times in separate instances, and the microorganisms obtained could be combined as recited in instant claim 20. It would additionally be obvious that the selected microorganisms as taught by Weller could be made into a composition as taught by Kamilova.
A person of ordinary skill in the art would have been motivated to combine the teachings of these references because Kamilova teaches that it is desirable to obtain a set of microorganisms from a plant part such as a root to select for microorganisms useful in preventing disease that impacts that specific plant part, such as tomato foot and root rot (Kamilova “Introduction”). A skilled artisan would be motivated to modify the approach of using monoculture isolates employed by Weller and use a suspension of multiple strains as this allows for studies of competitive colonization and interactions of multiple bacteria in the plant soil.
A skilled artisan would have a reasonable expectation of success in making this combination to achieve the predictable outcome of a method for screening microorganisms that confer resistance to fungal pathogens as instantly claimed, given the success of an iterative screening technique incorporating fungi in the growth medium as taught by Weller and the success of obtaining microorganisms directly from plant parts for use in subsequent screening steps as taught by Kamilova.
Claim 23 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Weller in view of Kamilova as applied to claims 1-12, 15-22, and 24-25 above, and further in view of Pliego et al., Plant and soil; 340:505-20.
Weller and Kamilova teach the method of claim 10, as set forth above. These references do not teach selecting for unculturable microorganisms or endophytes as recited in claim 23.
Pliego teaches a method of screening for bacterial biocontrol agents against soilborne fungal pathogens (Pliego “Abstract”, pg. 515 Fig. 1) and selection for endophytes associated with plant roots (Pliego pg. 512 “Screening of endophytes”).
It would have been obvious to a skilled artisan, before the effective filing date, to combine the teachings of Weller, Kamilova, and Pliego, using a screening method to select for endophytes. Pliego teaches multiple methods of screening for biocontrol agents against plant pathogens, similar to the methods taught by Weller and Kamilova. It would have been obvious that the method taught by Weller and Kamilova could be used to screen for endophytes associated with plant roots because the method of Weller and Kamilova teaches obtaining microorganisms from plant roots.
A person of ordinary skill in the art would have been motivated to combine these teachings and select for endophytes because endophytic populations correlate with plant growth performance (Pliego pg. 512 “Screening of endophytes”).
A skilled artisan would have a reasonable expectation of success in making this combination to achieve the predictable outcome of a screening method selecting for endophytes, given the teachings of Pliego that endophyte screening can be accomplished using microorganisms colonizing plant roots.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 10-12 and 15-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-5 and 8-17 of U.S. Patent No. 10,900,029 B2 in view of Weller et al. (US 4,647,533). Although the conflicting claims are not identical, they are not patentably distinct from each other, because both claims are directed to a method for the selection of microorganisms capable of improving plant health with similar steps. US Patent ‘029 is directed to improved nitrogen availability to a plant whereas the instant application is directed to improved resistance to a fungal pathogen. However, these features are taught by Weller.
Claims 1-5 and 8-17 of US Patent ‘029 recite a method of selecting a plurality of microorganisms for improving nitrogen availability to a plant, with the steps of obtaining a set of microorganisms, growing plants in the presence of the microorganisms, selecting plant parts with desirable traits to acquire a second set of microorganisms, and repeating. The claims do not teach that the growth medium comprises a fungal pathogen.
Regarding claim 10, Weller teaches an iterative method of screening bacteria to select strains that will suppress the fungal pathogen, Pythium spp., in small grain crops (Weller “Abstract”). Weller teaches a) growing small grain crops in soil containing the fungal pathogen Pythium spp. and isolating bacteria from the soil, i.e. a first set of a plurality of microorganisms, and applying the isolated microorganisms to a plant grown in soil containing Pythium (Weller col. 2 lines 22-35), b) selecting plants with greater overall height or longer first true leaves as an indication of resistance to Pythium (Weller col. 2 lines 35-40), c) selecting and using microorganisms that caused the selected plants to have greater height or longer leaves (Weller col. 2 lines 35-40), and d) repeating steps a)-c), using the microorganisms associated with the selected plants to inoculate another plant in soil containing Pythium spp. (Weller col. 2 lines 40-50).
Regarding claim 15, Weller teaches that Pythium spp. present in the soil are a pathogen complex comprising a group of fungi, i.e. a plurality of fungal pathogens (Weller col. 1 lines 10-15).
Given the above teachings, it would have been obvious to a person having ordinary skill in the art to combine the teachings of ‘029 with the teachings of Weller, with a reasonable expectation of success, to achieve the expected outcome of selecting microorganisms capable of improving resistance of plants to a fungal pathogen.
Regarding instant claims 11-12 and 16-25, all the limitations of these dependent claims are recited in claims 1-5 and 8-17 of ‘029.
Therefore, the method of the instant application is an obvious variation of US Patent 10,900,029 B2 in view of Weller.
Claims 10-12 and 15-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-5 and 8-21 of U.S. Patent No. 9,809,812 B2 in view of Weller et al. (US 4,647,533). Although the conflicting claims are not identical, they are not patentably distinct from each other, because both claims are directed to a method for the selection of microorganisms capable of imparting beneficial phenotypes to a plant with similar steps. US Patent ‘812 is directed to imparting desirable traits to the plant whereas the instant application is directed to improved resistance to a fungal pathogen. However, these features are taught by Weller, as set forth above.
Regarding instant claims 10 and 15, claims 1-5 and 8-21 of US Patent ‘812 recite a method of selecting a plurality of microorganisms for imparting beneficial traits to a plant, with the steps of obtaining a set of microorganisms, growing plants in the presence of the microorganisms, selecting plant parts with desirable traits to acquire a second set of microorganisms, and repeating. The claims do not teach that the growth medium comprises a fungal pathogen. However, Weller teaches selection of beneficial microorganisms to plants grown in the presence of a fungal pathogen, as set forth above.
Given the teachings set forth above, it would have been obvious to a person having ordinary skill in the art to combine the teachings of ‘812 with the teachings of Weller, with a reasonable expectation of success, to achieve the expected outcome of selecting microorganisms capable of improving resistance of plants to a fungal pathogen.
Regarding instant claims 11-12 and 16-25, all the limitations of these dependent claims are recited in claims 1-5 and 8-21 of ‘812.
Therefore, the method of the instant application is an obvious variation of US Patent 9,809,812 B2 in view of Weller.
Claims 10-12 and 15-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-9 and 16-22 of U.S. Patent No. 11,466,266 B2 in view of Weller et al. (US 4,647,533). Although the conflicting claims are not identical, they are not patentably distinct from each other, because both claims are directed to a method for the selection of microorganisms capable of imparting beneficial phenotypes to a plant with similar steps. US Patent ‘266 is directed to imparting desirable traits to the plant whereas the instant application is directed to improved resistance to a fungal pathogen. However, these features are taught by Weller, as set forth above.
Regarding instant claims 10 and 15, claims 1-9 and 16-22 of US Patent ‘266 recite a method of selecting a plurality of microorganisms for imparting beneficial traits to a plant, with the steps of growing plants in the presence of the microorganisms, selecting plant parts with desirable traits to acquire a second set of microorganisms, and repeating. The claims do not teach that the growth medium comprises a fungal pathogen. However, Weller teaches selection of beneficial microorganisms to plants grown in the presence of a fungal pathogen, as set forth above.
Given the teachings set forth above, it would have been obvious to a person having ordinary skill in the art to combine the teachings of ‘266 with the teachings of Weller, with a reasonable expectation of success, to achieve the expected outcome of selecting microorganisms capable of improving resistance of plants to a fungal pathogen.
Regarding instant claims 11-12 and 16-25, all the limitations of these dependent claims are recited in claims 1-9 and 16-22 of ‘266.
Therefore, the method of the instant application is an obvious variation of US Patent 11,466,266 B2 in view of Weller.
Claims 10-12 and 15-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-3, 10-17, 19-21, and 28 of U.S. Patent No. 9,365,847 B2 in view of Weller et al. (US 4,647,533). Although the conflicting claims are not identical, they are not patentably distinct from each other, because both claims are directed to a method for the selection of microorganisms capable of imparting beneficial phenotypes to a plant with similar steps. US Patent ‘847 is directed to imparting desirable traits to the plant whereas the instant application is directed to improved resistance to a fungal pathogen. However, these features are taught by Weller, as set forth above.
Regarding instant claims 10 and 15, claims 1-3, 10-17, 19-21, and 28 of US Patent ‘847 recite a method of selecting a plurality of microorganisms for imparting beneficial traits to a plant, with the steps of growing plants in the presence of the microorganisms, selecting plant parts with desirable traits to acquire a second set of microorganisms, and repeating. The claims do not teach that the growth medium comprises a fungal pathogen. However, Weller teaches selection of beneficial microorganisms to plants grown in the presence of a fungal pathogen, as set forth above.
Given the teachings set forth above, it would have been obvious to a person having ordinary skill in the art to combine the teachings of ‘847 with the teachings of Weller, with a reasonable expectation of success, to achieve the expected outcome of selecting microorganisms capable of improving resistance of plants to a fungal pathogen.
Regarding instant claims 11-12 and 16-25, all the limitations of these dependent claims are recited in claims 1-3, 10-17, 19-21, and 28 of ‘847.
Therefore, the method of the instant application is an obvious variation of US Patent 9,365,847 B2 in view of Weller.
Claims 10-12, 15-22, and 24-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-3, 7, and 14-20 of U.S. Patent No. 11,866,698 B2 in view of Weller et al. (US 4,647,533). Although the conflicting claims are not identical, they are not patentably distinct from each other, because both claims are directed to a method for the selection of microorganisms capable of imparting beneficial phenotypes to a plant with similar steps. US Patent ‘698 is directed to imparting desirable traits to the plant whereas the instant application is directed to improved resistance to a fungal pathogen. However, these features are taught by Weller, as set forth above.
Regarding instant claims 10 and 15, claims 1-3, 7, and 14-20 of US Patent ‘698 recite a method of selecting a plurality of microorganisms for imparting beneficial traits to a plant, with the steps of growing plants in the presence of the microorganisms, selecting plant parts with desirable traits to acquire a second set of microorganisms, and repeating. The claims do not teach that the growth medium comprises a fungal pathogen. However, Weller teaches selection of beneficial microorganisms to plants grown in the presence of a fungal pathogen, as set forth above.
Given the teachings set forth above, it would have been obvious to a person having ordinary skill in the art to combine the teachings of ‘698 with the teachings of Weller, with a reasonable expectation of success, to achieve the expected outcome of selecting microorganisms capable of improving resistance of plants to a fungal pathogen.
Regarding instant claims 11-12, 16-22, and 24-25, all the limitations of these dependent claims are recited in claims 1-3, 7, and 14-20 of ‘698.
Therefore, the method of the instant application is an obvious variation of US Patent 11,866,698 B2 in view of Weller.
Claims 10-12 and 15-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1 and 14-19 of U.S. Patent No. 10,526,599 B2 in view of Weller et al. (US 4,647,533). Although the conflicting claims are not identical, they are not patentably distinct from each other, because both claims are directed to a method for the selection of microorganisms capable of imparting beneficial phenotypes to a plant with similar steps. US Patent ‘599 is directed to imparting desirable traits to the plant whereas the instant application is directed to improved resistance to a fungal pathogen. However, these features are taught by Weller, as set forth above.
Regarding instant claims 10 and 15, claims 1 and 14-19 of US Patent ‘599 recite a method of selecting a plurality of microorganisms for imparting beneficial traits to a plant, with the steps of growing plants in the presence of the microorganisms, selecting plant parts with desirable traits to acquire a second set of microorganisms, and repeating. The claims do not teach that the growth medium comprises a fungal pathogen. However, Weller teaches selection of beneficial microorganisms to plants grown in the presence of a fungal pathogen, as set forth above.
Given the teachings set forth above, it would have been obvious to a person having ordinary skill in the art to combine the teachings of ‘599 with the teachings of Weller, with a reasonable expectation of success, to achieve the expected outcome of selecting microorganisms capable of improving resistance of plants to a fungal pathogen.
Regarding instant claims 11-12 and 16-23, all the limitations of these dependent claims are recited in claims 1 and 14-19.
Therefore, the method of the instant application is an obvious variation of US Patent 10,526,599 B2 in view of Weller.
Claims 10-12 and 15-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-4, 11-16, 18-19, 26, and 28-29 of U.S. Patent No. 9,260,713 B2 in view of Weller et al. (US 4,647,533). Although the conflicting claims are not identical, they are not patentably distinct from each other, because both claims are directed to a method for the selection of microorganisms capable of imparting beneficial phenotypes to a plant with similar steps. US Patent ‘713 is directed to imparting desirable traits to the plant whereas the instant application is directed to improved resistance to a fungal pathogen. However, these features are taught by Weller, as set forth above.
Regarding instant claims 10 and 15, claims 1-4, 11-16, 18-19, 26, and 28-29 of US Patent ‘713 recite a method of selecting a plurality of microorganisms for imparting beneficial traits to a plant, with the steps of growing plants in the presence of the microorganisms, selecting plant parts with desirable traits to acquire a second set of microorganisms, and repeating. The claims do not teach that the growth medium comprises a fungal pathogen. However, Weller teaches selection of beneficial microorganisms to plants grown in the presence of a fungal pathogen, as set forth above.
Given the teachings set forth above, it would have been obvious to a person having ordinary skill in the art to combine the teachings of ‘713 with the teachings of Weller, with a reasonable expectation of success, to achieve the expected outcome of selecting microorganisms capable of improving resistance of plants to a fungal pathogen.
Regarding instant claims 11-12 and 16-25, all the limitations of these dependent claims are recited in claims 1-4, 11-16, 18-19, 26, and 28-29 of ‘713.
Therefore, the method of the instant application is an obvious variation of US Patent 9,260,713 B2 in view of Weller.
Claims 10-12 and 15-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-26 of U.S. Patent No. 9,150,851 B2 in view of Weller et al. (US 4,647,533). Although the conflicting claims are not identical, they are not patentably distinct from each other, because both claims are directed to a method for the selection of microorganisms capable of imparting beneficial phenotypes to a plant with similar steps. US Patent ‘851 is directed to imparting desirable traits to the plant whereas the instant application is directed to improved resistance to a fungal pathogen. However, these features are taught by Weller, as set forth above.
Regarding instant claims 10 and 15, claims 1-26 of US Patent ‘851 recite a method of selecting a plurality of microorganisms for imparting beneficial traits to a plant, with the steps of growing plants in the presence of the microorganisms, selecting plant parts with desirable traits to acquire a second set of microorganisms, and repeating. The claims do not teach that the growth medium comprises a fungal pathogen. However, Weller teaches selection of beneficial microorganisms to plants grown in the presence of a fungal pathogen, as set forth above.
Given the teachings set forth above, it would have been obvious to a person having ordinary skill in the art to combine the teachings of ‘851 with the teachings of Weller, with a reasonable expectation of success, to achieve the expected outcome of selecting microorganisms capable of improving resistance of plants to a fungal pathogen.
Regarding instant claims 11-12 and 16-25, all the limitations of these dependent claims are recited in claims 1-26 of ‘851.
Therefore, the method of the instant application is an obvious variation of US Patent 9,150,851 B2 in view of Weller.
Claims 10-12 and 15-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1, 14-19, and 26-30 of U.S. Patent No. 9,732,336 B2 in view of Weller et al. (US 4,647,533). Although the conflicting claims are not identical, they are not patentably distinct from each other, because both claims are directed to a method for the selection of microorganisms capable of imparting beneficial phenotypes to a plant with similar steps. US Patent ‘336 is directed to imparting desirable traits to the plant whereas the instant application is directed to improved resistance to a fungal pathogen. However, these features are taught by Weller, as set forth above.
Regarding instant claims 10 and 15, claims 1, 14-19, and 26-30 of US Patent ‘336 recite a method of selecting a plurality of microorganisms for imparting beneficial traits to a plant, with the steps of growing plants in the presence of the microorganisms, selecting plant parts with desirable traits to acquire a second set of microorganisms, and repeating. The claims do not teach that the growth medium comprises a fungal pathogen. However, Weller teaches selection of beneficial microorganisms to plants grown in the presence of a fungal pathogen, as set forth above.
Given the teachings set forth above, it would have been obvious to a person having ordinary skill in the art to combine the teachings of ‘336 with the teachings of Weller, with a reasonable expectation of success, to achieve the expected outcome of selecting microorganisms capable of improving resistance of plants to a fungal pathogen.
Regarding instant claims 11-12 and 16-25, all the limitations of these dependent claims are recited in claims 1, 14-19, and 26-30 of ‘336.
Therefore, the method of the instant application is an obvious variation of US Patent 9,732,336 B2 in view of Weller.
Claims 10-12, 15-22, and 24-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 61, 63, and 66 of co-pending application 17/554,260 in view of Weller. Although the conflicting claims are not identical, they are not patentably distinct from each other, because both claims are directed to a method for the selection of microorganisms capable of imparting beneficial phenotypes to a plant with similar steps. Copending ‘260 is directed to increasing biomass of the plant whereas the instant application is directed to improved resistance to a fungal pathogen. However, these features are taught by Weller, as set forth above.
Regarding instant claims 10 and 15, claims 61, 63, and 66 of copending ‘260 recite a method of selecting a plurality of microorganisms for imparting beneficial traits to a plant, with the steps of growing plants in the presence of the microorganisms, selecting plant parts with desirable traits to acquire a second set of microorganisms, and repeating. The claims do not teach that the growth medium comprises a fungal pathogen. However, Weller teaches selection of beneficial microorganisms to plants grown in the presence of a fungal pathogen, as set forth above.
Given the teachings set forth above, it would have been obvious to a person having ordinary skill in the art to combine the teachings of ‘260 with the teachings of Weller, with a reasonable expectation of success, to achieve the expected outcome of selecting microorganisms capable of improving resistance of plants to a fungal pathogen.
Regarding instant claims 11-12, 16-22, and 24-25, all the limitations of these dependent claims are recited in claims 61, 63, and 66 of copending ‘260
Therefore, the method of the instant application is an obvious variation of co-pending application 17/554,260 in view of Weller.
This is a provisional nonstatutory double patenting rejection.
Claims 10-12 and 15-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 61-63 and 67-75 of co-pending application 17/488,123 in view of Weller. Although the conflicting claims are not identical, they are not patentably distinct from each other, because both claims are directed to a method for the selection of microorganisms capable of imparting beneficial phenotypes to a plant with similar steps. Copending ‘123 is directed to improving resistance to an abiotic stressor, whereas the instant application is directed to improved resistance to a fungal pathogen. However, these features are taught by Weller, as set forth above.
Regarding instant claims 10 and 15, claims 61-63 and 67-75 of copending ‘123 recite a method of selecting a plurality of microorganisms for improving resistance to abiotic stressors, with the steps of growing plants in the presence of the microorganisms, selecting plant parts with desirable traits to acquire a second set of microorganisms, and repeating. The claims do not teach that the growth medium comprises a fungal pathogen. However, Weller teaches selection of beneficial microorganisms to plants grown in the presence of a fungal pathogen, as set forth above.
Given the teachings set forth above, it would have been obvious to a person having ordinary skill in the art to combine the teachings of ‘123 with the teachings of Weller, with a reasonable expectation of success, to achieve the expected outcome of selecting microorganisms capable of improving resistance of plants to a fungal pathogen.
Regarding instant claims 11-12 and 16-25, all the limitations of these dependent claims are recited in claims 61-63 and 67-75 of copending ‘123
Therefore, the method of the instant application is an obvious variation of co-pending application 17/488,123 in view of Weller.
This is a provisional nonstatutory double patenting rejection.
Claims 10-12, 15-22, and 24-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 22-23, 26, and 32-38 of co-pending application 18/513,267 in view of Weller. Although the conflicting claims are not identical, they are not patentably distinct from each other, because both claims are directed to a method for the selection of microorganisms capable of imparting beneficial phenotypes to a plant with similar steps. Copending ‘267 is directed to selecting microorganisms for modifying the microbial community in soil, whereas the instant application is directed to improved resistance to a fungal pathogen. However, these features are taught by Weller, as set forth above.
Regarding instant claims 10 and 15, claims 22-23, 26, and 32-38 of copending ‘267 recite a method of selecting plurality of microorganisms associated with development of a beneficial plant trait, with the steps of growing plants in the presence of the microorganisms, selecting plant parts with desirable traits to acquire a second set of microorganisms, and repeating. The claims do not teach that the growth medium comprises a fungal pathogen. However, Weller teaches selection of beneficial microorganisms to plants grown in the presence of a fungal pathogen, as set forth above.
Given the teachings set forth above, it would have been obvious to a person having ordinary skill in the art to combine the teachings of ‘267 with the teachings of Weller, with a reasonable expectation of success, to achieve the expected outcome of selecting microorganisms capable of improving resistance of plants to a fungal pathogen.
Regarding instant claims 11-12, 16-22, and 24-25, all the limitations of these dependent claims are recited in claims 22-23, 26, and 32-38 of copending ‘267.
Therefore, the method of the instant application is an obvious variation of co-pending application 18/513,267 in view of Weller.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 12/1/2025 have been fully considered but they are not persuasive.
Rejections under 35 U.S.C. § 103
Applicant argues: Weller does not teach a) obtaining microorganisms directly from plant parts b) iterative selection, c) a second set of microorganisms obtained in crude form, d) combination of microorganisms obtained in the selection steps, or e) combining them with additional ingredients. Weller appears to mention the isolation of a single strain of bacteria (Example 1), growth and screening under in vitro culture conditions (Example 2), inoculation
onto plants (Example 3), and testing those plants for their ability to tolerate a fungal pathogen. There is no mention in Weller of an iterative, plant-associated method of microbial selection from a plurality of microbes, as required by the instant claims.
In response to this argument, it noted that Weller teaches an iterative, plant-associated selection process, wherein the steps of the process are:
a) growing small grain crops in soil containing the fungal pathogen Pythium spp. and isolating bacteria from the soil, i.e. a first set of a plurality of microorganisms, and applying the isolated microorganisms to a plant grown in soil containing Pythium (Weller col. 2 lines 22-35),
b) selecting plants with greater overall height or longer first true leaves as an indication of resistance to Pythium (Weller col. 2 lines 35-40),
c) selecting and using microorganisms that caused the selected plants to have greater height or longer leaves (Weller col. 2 lines 35-40), and
d) repeating steps a)-c), using the microorganisms associated with the selected plants to inoculate another plant in soil containing Pythium spp. (Weller col. 2 lines 40-50).
The repetition of steps a)-c) constitutes an iterative selection process. Further, Weller selects plants with greater height or longer first true leaves as an indication of resistance to Pythium, i.e. an iterative, plant-associated method of microbial selection.
While Weller does not teach that a set of microorganisms are directly obtained from the plant parts, that a second set of microorganisms are obtained in crude form, or acquiring two or more microorganisms, it is noted that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, the deficiencies of Weller are cured by Kamilova.
Applicant argues: Kamilova does not remedy any deficiency of Weller. As depicted in Kamilova Fig. 1, a suspension of bacteria were collected from plant rhizospheres and subjected to in vitro culture and collection, to identify root colonizing bacteria. The obtained bacteria were "judged for colony diversity" (legend of Fig. 1, bottom of Page 2) then screened "for their ability to control the disease TFRR" (ibid.) Thus, Kamilova concerns the selection of bacteria from in vitro cultures, based on bacterial colony diversity. The instant claims concern an iterative selection of bacteria under in vivo conditions; that is, associated with a plant or plant part.
Kamilova is relied upon to teach an iterative screening method wherein a set of bacteria are taken directly from plant parts in crude form and used to inoculate a plant in additional (iterative) rounds of screening (see Kamilova p. 1809 col. 2 para. 3, Fig. 1). As discussed in the above rejection, it would have been obvious to a skilled artisan that the method of Weller, directed to an iterative process wherein plants with desirable traits are selected and bacteria are obtained from the plant soil, could be adapted to utilize multiple microbes and that the microbes could be obtained from a plant instead of the soil, in light of teachings of Kamilova directed to iterative screening of a set of microbes taken from a plant. While Weller teaches isolating the microorganisms associated with the plants and applying a monoculture in subsequent steps, it would be obvious to adapt this method based on the teachings of Kamilova to instead utilize a crude suspension of multiple strains and a skilled artisan would be motivated to do so as this allows for studies such as competitive colonization and interactions of multiple bacteria. Thus, it is the examiner’s position that Kamilova cures the deficiencies of Weller.
Applicant argues: Pliego in Fig. 1 appears to depict inoculation of root samples or soil samples and observation of colonization in root tissue, with subsequent selection of bacteria (not plants) for screening of activity. Pliego articulates that "Screening of bacterial strains for this mode of action may be somewhat more expensive, time-consuming, and labor-intensive than screening for antibiotic production." (Page 511, second column, middle of first full paragraph), and "All such simplifications may cause problems in selecting the fittest antagonists for use under field conditions." (Page 512, first column, end of first paragraph). Thus, rather than supporting an allegation of obviousness of the instant claims, Pliego provides evidence of non-obviousness. Nor does Pliego remedy any deficiency of Kamilova or Weller.
In response to this argument, it is noted that Pliego is relied upon to teach screening and selection for endophytes associated with plant roots (Pliego pg. 512 “Screening of endophytes”). As endophytic populations correlate with plant performance, it would be of interest to a skilled artisan to adapt a method according to Weller and Kamilova to screen for such endophytes to better understand their role in plant growth.
Further, the teachings of Pliego referred to by applicant are not relevant to the instant claims. The Pliego reference is a review article discussing multiple techniques for screening for biocontrol agents against fungal pathogens (see Pliego Abstract). "Screening of bacterial strains for this mode of action may be somewhat more expensive, time-consuming, and labor-intensive than screening for antibiotic production" in Pliego is specifically in reference to difficulties of screening bacteria for the phenomenon of induced resistance, and is not relevant to endophyte screening, which is discussed on p. 512 “Screening of endophytes”. Similarly, "All such simplifications may cause problems in selecting the fittest antagonists for use under field conditions" in Pliego is discussing difficulties of screening in the field versus in defined media. This passage is not relevant to the instant claims or to the teachings of Pliego regarding endophyte screening. Thus, it is considered that Pliego does not teach away from the instant invention or provide evidence of non-obviousness.
Rejections on the grounds of non-statutory double patenting
As discussed above, it is the position of the examiner that Weller and Kamilova render obvious the teachings of claims 10-11, 15-22, and 24-25. The rejections on the grounds of non-statutory double patenting, in view of Weller, are maintained.
Conclusion
Claims 10-11 and 15-25 are rejected. No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/EMILY F EIX/Examiner, Art Unit 1653
/JENNIFER M.H. TICHY/Primary Examiner, Art Unit 1653