DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11 June 2025 has been entered.
Claim 21 has been cancelled. Claims 1, 8, and 10-12, and the non-elected species in claims 2, 3, and 7 remain withdrawn. Claims 2-4, 6, 7, 9, and 13-17 are currently pending and under examination.
In view of the elected species of a biologically pure culture of Paenibacillus terrae strain NRRL B-67615 being deemed to be free of the art, the species of biologically pure cultures of Paenibacillus terrae strain NRRL B-50972 and Paenibacillus terrae strain NRRL B-67129 are rejoined and hereafter examined.
The present application is a 35 U.S.C. §371 national phase entry of International Application No. PCT/US2019/051638, filed September 18, 2019, which claims the benefit under 35 U.S.C. § 119 of U.S. Provisional Patent Application No. 62/734057, filed September 20, 2018.
Withdrawal of Rejections:
The rejection of claims 2-4, 6, 7, 9, and 13-17 under 35 U.S.C. 103 as being unpatentable over Siepe et al., is withdrawn.
The rejection of claim 21 under 35 U.S.C. 103 as being unpatentable over Celik et al., in view of Kim et al., is withdrawn.
New Objections/Rejections:
Claim Objections
Claim 6 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 2-4, 7, 9, and 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Siepe et al., (WO 2017/137353; Published Aug. 17, 2017 – Previously Presented), in view of Beau et al. (US 2016/0278388; Published 2016).
With regard to claims 2, 3, 7, and 9, Siepe et al. teach a method of protecting a plant from pathogens and infection, including from pathogenic fungi and bacteria, and from an animal pest including an insect, by applying to the animal pest, the plant, its seed, or growth soil, an insecticidally effective amount of a composition comprising a biologically pure culture of Paenibacillus (Abs.; p. 9, line 1 to p. 10, line 8; p. 14, line 11-13; p. 34, line 10-20; p. 44, line 9-13; p. 47, line 43 to p. 48, line 9; claim 1), the Paenibacillus including Paenibacillus terrae (p. 19, line 15-18; claim 2). The plant or seed including cereals such as wheat and rice, fruits, and vegetables, which are a “useful plant” as defined by Applicant (see Spec. para. 56-57; “useful plants” as used in the present context refers to crop plants which are employed as plants for obtaining foodstuffs, feedstuffs, fuels or for industrial purposes”), wherein the plant is protected from phytopathogenic insects or pests, including lepidopteran pests, including Agrotis spp., Alabama argillacea, Anticarsia spp., Bupalus piniarius, Capua reticulana, Cheimatobia brumata, Choristoneura fumiferana, Dendrolimus pini, Diaphania nitidalis, Earias insulana, Feltia spp., Galleria mellonella, Heliothis spp., Lymantria spp., Mamestra brassicae, Pectinophora gossypiella, Phyllocnistis citrella, Pieris spp., Pseudoplusia includens, Spodoptera spp., Tortrix viridana, Trichoplusia spp. (p. 40, line 36 to p. 41, line 31). As Siepe et al. expressly teach that the Paenibacillus includes Paenibacillus terrae, it would have been obvious to one of ordinary skill in the art to utilize Paenibacillus terrae as the Paenibacillus in the composition utilized in the method.
Siepe et al. teach that a Paenibacillus spp., including Paenibacillus terrae, is present as the first component in the composition used in the method (p. 9, line 1-2; p. 19, line 15-18; claims 1-2), and desirably produces fungicidal metabolites, including fusaricidins (p. 24, line 10-19; p. 27, line 9-13).
However, Siepe et al. do not teach that the Paenibacillus terrae strain is specifically Paenibacillus terrae strain NRRL B-50972 or Paenibacillus terrae strain NRRL B-67129.
Beau et al. teach the treatment of plant diseases by inclusion of strains including Paenibacillus terrae strain NRRL B-50972 or Paenibacillus terrae strain NRRL B-67129 in a composition for application to the plant, plant part, or locus of a plant, to treat, prevent, and control fungal and bacterial diseases in the plant (Para. 18-19, 40-45, 143). Wherein the strains produce metabolites, including fusaricidins (Table. 15; claim 1, 6).
It would have been obvious to one of ordinary skill in the art to combine the teachings of Siepe et al. and Beau et al., because both teach protecting a plant from pathogenic fungi and bacteria by application of a composition to the plant, plant part, or plant locus, with a composition comprising a Paenibacillus strain, including Paenibacillus terrae, which produce fusaricidins as metabolites. The inclusion of Paenibacillus terrae strain NRRL B-50972 or Paenibacillus terrae strain NRRL B-67129 in a composition for application to a plant, plant part, or plant locus for treatment and prevention of fungal and bacterial diseases is known in the art as taught by Beau et al. The use of either of Paenibacillus terrae strain NRRL B-50972 or Paenibacillus terrae strain NRRL B-67129 as the component one Paenibacillus terrae in the composition used in the method of Siepe et al. amounts to the simple substitution of one known Paenibacillus terrae strain that produces fusaricidins, and has antifungal and antibacterial properties, for another. As such, the strains as taught by Beau et al. would have been expected to predictably and successfully provide a Paenibacillus terrae strain effective for use in the method of Siepe et al.
With regard to claim 4, Siepe et al. teach that the plant to be treated, and therefore the seeds of said plant, have been modified, including my mutagenesis or genetic engineering (p. 35, line 8-17), which indicates that the seed is a transgenic seed.
With regard to claim 13, Siepe et al. teach that the composition further comprises a metabolite of the Paenibacillus terrae (p. 19, line 15-18), wherein metabolites are a fermentation product.
With regard to claim 14, Siepe et al. teach that the composition is a liquid formulation (p. 48, line 28-30).
With regard to claim 15, Siepe et al. teach that the composition is applied as a seed treatment at about 1x103 to 5x1016 CFU/seed (p. 55, line 3642), wherein the composition is applied as a liquid formulation (p. 48, line 28-30). While it is not specifically taught that the composition comprises at least about 1x104 CFU/mL of the liquid formulation, it would have been routine for an ordinary artisan to determine the appropriate amount of the composition to apply based on the type of plant, the location, the climate, and the pest to be treated. Additionally, please also note that "the discovery of an optimum value of a variable in a known process is usually obvious." Pfizer v. Apotex, 480 F.3d at 1368. The rationale for determining the optimal parameters for prior art result effective variables "flows from the 'normal desire of scientists or artisans to improve upon what is already generally known.'" Id. (quoting In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003)). Accordingly, it would have been obvious to optimize the amount of the Paenibacillus terrae in the liquid composition, including to at least about 1x104 CFU/mL, to result in the application of an effective amount of the composition based on factors including the type of plant, the location, the climate, and the pest to be treated, when practicing the method as taught by Siepe et al. and Beau et al.
With regard to claim 16, Siepe et al. teach that the composition further comprises
an agriculturally acceptable carrier (p. 48, line 22-24; p. 54, line 1-8), or a stabilizer (p. 51, line 9-14).
With regard to claim 17, Siepe et al. teach that the composition is applied at about 1x1012 to 5x1014 CFU per hectare (p. 55, line 20-31), which is fully encompassed within about 1x104 to about 1x1014 CFU per hectare.
Response to Arguments
All previous rejections have been withdrawn; therefore, Applicant’s arguments are moot. However, new rejections have been set forth above.
Conclusion
No claims are allowable.
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/JENNIFER M.H. TICHY/Primary Examiner, Art Unit 1653
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