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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 13, 2025 has been entered.
DETAILED ACTION
3. Claims 1, 3, 9 – 11, 13 – 14, 16, and 20 – 23 are pending in this application. Applicant’s Amendment and Remarks, filed October 13, is entered, wherein claims 1, 3, 9, 11, and 22 – 23 are amended, claims 13 – 14, 16, and 20 – 21 are withdrawn, and claims 2, 4 – 8, 12, 15, 17 – 19, and 24 are canceled.
Priority
4. This application is a national stage application of PCT/EP2019/083146, filed November 29, 2019, which claims benefit of domestic application 62/772,810, filed November 29, 2018.
Withdrawn Objections
5. The objection of claim 1 in the previous Office Action, mailed August 14, 2025, is withdrawn in view of the amended claim 1.
Withdrawn Rejections
6. The rejection of claims 1, 3, 5 – 10, 17 – 19, and 23 in the previous Office Action, mailed August 14, 2025, has been considered and is withdrawn in view of the amended claim 1.
The rejection of claim 22 in the previous Office Action, mailed August 14, 2025, has been considered and is withdrawn in view of the amended claim 1.
The rejection of claims 11 and 24 in the previous Office Action, mailed August 14, 2025, has been considered and is withdrawn in view of the amended claim 1.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
i. Determining the scope and contents of the prior art.
ii. Ascertaining the differences between the prior art and the claims at issue.
iii. Resolving the level of ordinary skill in the pertinent art.
iv. Considering objective evidence present in the application indicating obviousness or
nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3, 9 – 11, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (US5916029) in view of Ji (WO2014/005555A1).
a. Regarding claims 1, 3, 9 – 11, and 23, Smith et al. teach the process of coating seeds with dry, dormant microorganisms according to the invention includes an initial step of forming the dry, dormant microorganisms. Seeds are then coated with a composition comprising the dry, dormant microorganisms, water, and an additive effective for enhancing survival of the microorganisms during exposure to the water used in the coating and subsequent drying process (Abstract). This is an improved process for coating seeds with beneficial microorganisms such as agricultural inoculants (Col. 1, lines 7 – 9). Seed coating is a popular method for applying bacterial inoculants and other beneficial bacteria such as biopesticides to the target plants (Col. 1, lines 61 – 63). The additive for enhancing survival upon drying on seeds is most effectively a carbohydrate. Microorganisms are used in an amount effective to have a plant-growth promoting / pesticidal effect on the plant that germinates from the seed. This process also allows the addition of a microbial agent plus additional beneficial additives in a continuous seed treating process (Col. 2, lines 32 – 40). The dry, dormant microorganisms are mixed with an aqueous solution containing the carbohydrate in an amount effective to minimize the loss of viable cells during the subsequent drying process. The carbohydrate concentration in the solution should be about 0.5 to 75% weight carbohydrate to total volume of the solution (w/v) or v/v, preferably 20 – 50% w/v or v/v, depending upon the specific carbohydrate compound (Col. 4, lines 31 – 38). The amount of the microorganism-carrier composition added to the carbohydrate solution is preferably in the range of 1 to 30% w/v, especially 5 – 30% w/v (e.g. 20% w/v equals 20g solid in 80 mL liquid) (Col. 5, lines 9 – 12). Prolonged exposure to moisture following planting causes the microorganisms coated on the seeds to rehydrate and begin to multiply in soil and interact with the emerging plant root (Col. 5, lines 38 – 41). The composition used to coat the seeds has a strong effect on the viability of the bacteria coated on the seeds. The carbohydrate compounds useful for enhancing survival after temporary rehydration according to the invention include gums (Col. 5, lines 46 – 50). Finally, Smith et al. conduct an experiment, which shows different concentrations of R.meliloti bacteria and additives (Col. 7, Table 1):
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However, Smith et al. do not explicitly teach that the carbohydrate is a guar derivative contains a carboxymethyl group and a hydroxypropyl group with the DS for anionic substituent groups ranging from 0.01 to 3.0.
Ji teaches a method to increase the growth of a plant by coating a seed of said plant with a composition comprising at least a cationic guar (Abstract). Cationic guars used in the invention may be carboxymethylhydroxypropyl guar (CMHP guar) (page 7, lines 1 – 2). The MS of cationic guars is between 0 and 3 and the DS of cationic guars is between 0.005 and 3 (page 7, lines 7 – 9; lines 12 – 15). The cationic guar may have an average molecular weight of between about 100,000 Da to 3,500,000 Da (page 7, lines 27 – 28). In one example, the weight ratio of guar/seed is 0.2% (page 12, lines 7 – 8).
It would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to substitute the carbohydrate used as an additive in the coating composition to enhance survival of microorganisms as taught by Smith et al. with CMHP guar in view of Ji because both Smith et al. and Ji teach methods involving seed coating to promote plant growth. It would have been obvious for one of ordinary skill to substitute the carbohydrate as taught by Smith et al. with CMHP guar in view of Ji because CMHP guar is known in the art for the purpose of component in a coating composition for seed, and it would have been obvious to substitute the material known for the same purpose. For the ratio of microorganism and guar derivative, Smith et al. provide the concentrations of bacteria and additive. Based on the data, the ratio of microorganism to carbohydrate, such as methylcellulose, is 7.1 x 108 CFU/g. This value may be optimized by routine experimentation for the ratio of microorganism to guar derivative. Furthermore, Ji teach the weight ratio of guar/seed is 0.2%. After calculation, the guar derivative used is 200 g/quintal seed. In the instant specification, the guar derivative used is in an amount ranging from 50 to 500 g/quintal seed (page 9, line 34). As the amount of guar derivative used in Ji is within the scope of the invention and both Smith et al. and Ji teach all the limitations, the result of “increase a growth rate of the microorganism” would be achieved. Therefore, one of the ordinary skill in the art would have had a reasonable expectation of success to substitute the carbohydrate used as an additive in the coating composition to enhance survival of microorganisms as taught by Smith et al. with CMHP guar in view of Ji because it is well known to substitute materials used for the same purpose.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (US5916029) in view of Ji (WO2014/005555A1) as applied to claims 1, 3, 9 – 11, and 23 above, and further in view of Boonstra et al. (US3912713, cited in the previous Office Action).
b. Regarding claim 22, the references teach the limitations discussed above.
However, these references do not teach that the guar derivative is formed through introduction of a guar polysaccharide to one or more derivatizing agents containing a reactive group comprising an anionic group.
Boonstra et al. teach a method of producing non-lumping derivatives of guar gum, which comprises derivatizing guar gum in the form of guar gum splits at a moisture content of 20 – 80% by weight (Col. 2, lines 1 – 5), wherein the derivatizing agent is acrylonitrile (Col 2, line 36).
It would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to consider producing the guar derivative as taught by Ji with the method of producing guar derivatives in view of Boonstra et al. because Boonstra et al. teach the production of guar derivatives using derivatizing agents, such as acrylonitrile, and such method will yield non-lumping guar gum derivatives, which is an improved product. One would have been motivated to combine the guar derivative as taught by Gangotri et al. with the method of producing guar derivatives in view of Boonstra et al. because the method of producing guar derivatives disclosed by Boonstra et al. will yield improved and predictable results of non-lumping guar derivatives. Therefore, one of the ordinary skill in the art would have had a reasonable expectation of success consider producing the guar derivative as taught by Ji with the method of producing guar derivatives in view of Boonstra et al. because Ji teaches the guar derivatives and the method disclosed by Boonstra et al. will yield an improved guar derivatives.
Responses to Applicant’s Remarks:
Applicant’s Remarks, filed October 13, 2025, have been fully considered and are found to be not persuasive.
Applicant argues that Gangotri et al. and Jain et al. are directed to testing guar and guar derivatives as gelling agents for in vitro culture microorganisms, while Parvathy et al. and Cheng et al. disclose the synthesis of guar derivatives as well as the molecular characteristics, but none of these references teaches or suggests a method of applying a biostimulant composition comprising the claimed guar derivative and a microorganism to a plant, seed, or soil. Applicant argues that the amended claim 1 with the removal of contacting microorganism and a guar derivative in the presence of a culture medium containing agar in vitro will overcome the rejection because one of ordinary skill would have no motivation to combine Gangotri et al, Parvathy et al., Cheng et al, and Jain et al. to arrive at the instant claims. Applicant argues that the amended claim 22 will overcome the rejection because claim 22 depends from claim 1 and Boonstra do not provide what Gangotri et al., Parvathy et al., Cheng et al., and Jain et al. lack. Applicant argues that the amended claim 11 encompasses a method for increasing the growth rate of a bacterium by “contacting at least one seed with a guar derivative containing a carboxymethyl group and a hydroxypropyl group and exhibiting a degree of substitution (DS) for anionic substituent groups ranging from 0.01 to 3.0.” will overcome the rejection because neither teaching nor suggesting the use of guar derivatives to enhance the growth of microbes on seeds. Moreover, Applicant believes that the microorganism:guar derivative of 7.00 x 105 CFU/g produces a biostimulant effect that would increase bacteria growth between 44 – 57% is unexpected. These arguments are not persuasive because the new rejection is over Smith et al. in view of Ji, which address both old and new limitations. Smith et al. teach a coating composition to be applied on seed comprising microorganism and carbohydrate and Ji teaches a coating composition applied on seed comprising CMHP guar. It would have been obvious to substitute the general carbohydrate with CMHP guar because both references teach the coating composition used for the same purpose. For the unexpected results, the data provided are not commensurate in scope with the claims because the claims recite microorganism, which is broader than what the results provided.
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 1, 3, 9 – 11, and 23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 7 – 8, 11 – 12, 15, and 21 of copending Application No. 17/298,272 in view of Ji (WO2014/005555A1).
a. Regarding 1, 3, 9 – 11, and 23, ‘272 teaches a method comprising increasing the growth rate of microorganisms by using Cyamopsis tetragonoloba (guar) gum on a seed (claim 1), wherein the microorganisms are bacteria (claim 3). The microorganism and the guar gum are combined in a ratio microorganism:guar gum ranging from 1 x 104 to 1 x 1015 CFU/g (claim 7). ‘272 teaches a method for increasing the growth rate of microorganisms, wherein the method comprises a step of contacting at least one seed with guar gum (claim 8). ‘272 also teaches a biostimulant composition comprising at least one microorganism and guar gum (claim 11), wherein the biostimulant composition has microorganism:guar gum ratio ranging from 1 x 104 to 1 x 1015 CFU/g (claim 12), wherein a seed is coated with the biostimulant composition (claim 15), wherein the microorganism in the biostimulant composition is a bacterium (claim 21).
However, ‘272 does not teach the biostimulant composition comprises guar derivative, wherein the guar derivative contains a carboxymethyl group and a hydroxypropyl group and exhibits a DS ranging from 0.01 to 3.0. ‘272 does not teach the concentration of guar derivative that will increase the growth rate of the microorganism at least 5% compared to without a presence of the guar derivative.
Ji teaches a method to increase the growth of a plant by coating a seed of said plant with a composition comprising at least a cationic guar (Abstract). Cationic guars used in the invention may be carboxymethylhydroxypropyl guar (CMHP guar) (page 7, lines 1 – 2). The MS of cationic guars is between 0 and 3 and the DS of cationic guars is between 0.005 and 3 (page 7, lines 7 – 9; lines 12 – 15). The cationic guar may have an average molecular weight of between about 100,000 Da to 3,500,000 Da (page 7, lines 27 – 28). In one example, the weight ratio of guar/seed is 0.2% (page 12, lines 7 – 8).
It would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to substitute the guar gum in the biostimulant for the seed coating as taught by ‘272 with CMHP guar in view of Ji because both ‘272 and Ji teach methods involving seed coating. It would have been obvious for one of ordinary skill to substitute the guar derivative as taught by ‘272 with CMHP guar in view of Ji because CMHP guar is known in the art for the purpose of component in a coating composition for seed, and it would have been obvious to substitute the material known for the same purpose. Furthermore, Ji teach the weight ratio of guar/seed is 0.2%. After calculation, the guar derivative used is 200 g/quintal seed. In the instant specification, the guar derivative used is in an amount ranging from 50 to 500 g/quintal seed (page 9, line 34). As the amount of guar derivative used in Ji is within the scope of the invention and both ‘272. and Ji teach all the limitations, the result of “increase a growth rate of the microorganism” would be achieved. Therefore, one of the ordinary skill in the art would have had a reasonable expectation of success to substitute the guar derivative in the biostimulant for the seed coating as taught by ‘272 with CMHP guar in view of Ji because it is well known to substitute materials used for the same purpose.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 3, and 9 – 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5, 7, 11, 15, and 15 – 17 of U.S. Patent No. 12398367B2 in view of Ji (WO2014/005555A1).
b. Regarding 1, 3, and 9 – 11, ‘367B2 teaches a method comprising applying a biostimulant composition comprising microorganisms and the cationic hydroxyalkyl guar to a seed to increase growth of the microorganisms, wherein said cationic hydroxyalkyl guar is present at a concentration to increase the growth rate of the microorganisms at least 5% compared to without the presence of the cationic hydroxyalkyl guar (claim 1), wherein the microorganisms are bacteria (claims 2 and 14). The hydroxyalkyl guar is hydroxypropyl guar (claim 5) with a DS of between 0.005 and 1 (claim 7) and a MS between 0.1 and 1.7 (claim 11). ‘367B2 also teaches a seed coated with the biostimulant composition, wherein the biostimulant composition comprising at least one microorganism and at least one cationic hydroxyalkyl guar, wherein said cationic hydroxyalkyl guar is present at a concentration to increase the growth rate of the microorganism at least 5% compared to without the presence of the cationic hydroxyalkyl guar (claims 15 and 17), wherein the microorganism is a bacterium (claim 16).
However, ‘367B2 does not teach that the guar derivative contains a carboxymethyl group and a hydroxypropyl group and the concentration of said guar derivative. ‘367B2 also does not teach the average molecular weight of the guar derivative.
Ji teaches a method to increase the growth of a plant by coating a seed of said plant with a composition comprising at least a cationic guar (Abstract). Cationic guars used in the invention may be carboxymethylhydroxypropyl guar (CMHP guar) (page 7, lines 1 – 2). The MS of cationic guars is between 0 and 3 and the DS of cationic guars is between 0.005 and 3 (page 7, lines 7 – 9; lines 12 – 15). The cationic guar may have an average molecular weight of between about 100,000 Da to 3,500,000 Da (page 7, lines 27 – 28). In one example, the weight ratio of guar/seed is 0.2% (page 12, lines 7 – 8).
It would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to substitute the cationic hydroxyalkyl guar in the biostimulant for the seed coating as taught by ‘367B2 with CMHP guar in view of Ji because both ‘367B2 and Ji teach methods involving seed coating. It would have been obvious for one of ordinary skill to substitute the cationic hydroxyalkyl guar as taught by ‘367B2 with CMHP guar in view of Ji because CMHP guar is known in the art for the purpose of component in a coating composition for seed, and it would have been obvious to substitute the material known for the same purpose. Furthermore, Ji teach the weight ratio of guar/seed is 0.2%. After calculation, the guar derivative used is 200 g/quintal seed. In the instant specification, the guar derivative used is in an amount ranging from 50 to 500 g/quintal seed (page 9, line 34). As the amount of guar derivative used in Ji is within the scope of the invention and both ‘367B2 and Ji teach all the limitations, the result of “increase a growth rate of the microorganism” would be achieved. Therefore, one of the ordinary skill in the art would have had a reasonable expectation of success to substitute the cationic hydroxyalkyl guar in the biostimulant for the seed coating as taught by ‘367B2 with CMHP guar in view of Ji because it is well known to substitute materials used for the same purpose.
Conclusion
No claim is found to be allowable.
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/H.Y.L./Examiner, Art Unit 1693
/SCARLETT Y GOON/Supervisory Patent Examiner, Art Unit 1693