DETAILED ACTION
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 .
There is no support for the amendment within the instant application specification. See 112a New Matter Rejection.
Applicant’s amendment to the claims filed on 2/4/2026 in response to the Non-Final Rejection mailed on 8/5/2025 is acknowledged. This listing of claims replaces all prior listings of claims in the application.
Claims 1, 4, 6-8, 16-18, 20-23, 26-30 are pending.
Claims 16-17, 20-23 are withdrawn from consideration pursuant to 37 CFR 1.142(b).
Claims 2-3, 5, 9-15, 19, 24-25 are cancelled.
Claims 1, 4, 6-8, 18, 26-30 are now under examination.
Applicant’s remarks filed on 2/4/2026 in response to the Non-Final Rejection mailed on 8/5/2025 have been fully considered and are deemed persuasive to overcome at least one of the rejections and/or objections as previously applied.
The text of those sections of Title 35 U.S. Code not included in the instant action can be found in the prior Office Action.
Withdrawn Rejections
The rejection of claims 1, 4, 6-8, 18, 26-27 under 35 U.S.C. 101 is withdrawn in view of Applicant’s amendment of claim 1 to add ‘wherein the composition is formulated as an oil-based emulsion or oil-based dispersion and wherein the composition retains pesticidal activity after storage at ambient temperature such that viability of the strain is maintained at a level sufficient to achieve efficacy comparable to that of a freshly prepared composition.’
New Claim Rejections - 35 USC § 112
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, 4, 6-8, 18, 26-30 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 claim(s) contains 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.
The following new matter is within amended claims dated 2/4/2026: page 2 claim 1, lines 5-7. The added material which is not supported by the original disclosure is as follows ‘wherein the composition retains pesticidal activity after storage at ambient temperature such that viability of the strain is maintained at a level sufficient to achieve efficacy comparable to that of a freshly prepared composition’
RESPONSE TO REMARKS: Beginning on p. 5 of Applicant’s remarks dated 2/4/2026, Applicant in summary contends support for the recitation that the composition retains viability after storage at a comparable level to a freshly prepared composition can be found in at least Example 6 (the results obtained show that the OD formulation had nematocidal activity against RKN), as well as p. 12, I. 2 (other ingredients do not adversely affect the strain of the invention).
This argument is rendered moot. Examiner contends that the recitation ‘‘wherein the composition retains pesticidal activity after storage at ambient temperature such that viability of the strain is maintained at a level sufficient to achieve efficacy comparable to that of a freshly prepared composition’ is not clearly supported in the instant application claims and/or specification. Examiner welcomes Applicant to provide additional information regarding how the amendment is clearly disclosed in the instant application.
Applicant contends that example 6 demonstrates that composition according to the present claims retains comparable pesticidal activity to freshly prepared technical-grade material, indicating preserved biological function following formulation and storage.
This argument is moot. Examiner contends that Applicant recites ‘freshly prepared composition’ within the instant application claim 1. Examiner contends that Applicant does not recite ‘freshly prepared technical-grade material’ of which Applicant notes is recited within the instant application specification example 6.
Applicant contends that the Castillo Declaration (already of record) (%%3-6) supports the examples in the specification with empirical evidence that the oil-based formulation maintains high viability after 48 hours at ambient temperature, whereas water-based controls showed significant viability loss.
This argument is moot. Examiner contends that the Castillo Declaration that Applicant contends supports the examples in the specification with empirical evidence that the oil-based formulation maintains high viability after 48 hours at ambient temperature, whereas water-based controls showed significant viability loss is of no relevance to the limitation added to amended claim 1. As a reminder, Applicant recites ‘wherein the composition retains pesticidal activity after storage at ambient temperature such that viability of the strain is maintained at a level sufficient to achieve efficacy comparable to that of a freshly prepared composition.’ Examiner contends that based on Applicant’s own assertion, the Castillo Declaration merely supports the finding of adding oil within the formulation of the pesticide of the invention aids the Microbacterium esteramoaticum strain is maintaining pesticidal activity for 48 hours vs adding water within the formulation of the pesticide that contains Microbacterium esteramoaticum strain. Based on Applicant’s remarks, there is no disclosure of ‘freshly prepared composition’ and is not the same as being “equivalent to “freshly prepared composition”
New Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 4, 6-8, 18, 26-30 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1 (claims 4, 6-8, 18, 26-30 dependent therefrom), the recitation of the phrase ‘viability of the strain is maintained at a level sufficient to achieve efficacy comparable to that of a freshly prepared composition’ is indefinite because it is unclear what the scope of the phrase is intended to encompass structurally. It is unclear what the phrase ‘viability of the strain is maintained at a level sufficient to achieve efficacy comparable to that of a freshly prepared composition’ is intended to encompass as Applicant has not specified the limitations of ‘to achieve efficacy.’ Said recitation is indefinite as it is unclear the degree upon which Application is measuring ‘efficacy.’ In addition, the recitation ‘a freshly prepared composition’ is indefinite as Applicant has not defined in the instant application specification and claims the parameter of ‘freshly prepared.’ Additionally, the phrase ‘viability of the strain is maintained at a level sufficient to achieve efficacy comparable to that of a freshly prepared composition’ is a relative phrase which renders the claim indefinite. The phrase is a term of degree, unless Applicants can show how one of skill in the art can measure this property in quantifiable terms. Accordingly, the metes and bounds upon which patent protection is sought cannot be ascertained from the claim. It is suggested that applicant clarify the meaning of the claim. See Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. §112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162 (Feb. 9, 2011), page 7165.
RESPONSE TO REMARKS: Applicants remarks filed on 2/4/2026 have been fully considered; however, they are rendered moot in view of the new rejection set forth above, which is necessitated by applicants’ amendment to the claims. Examiner contends that the recitation ‘viability of the strain is maintained at a level sufficient to achieve efficacy comparable to that of a freshly prepared composition’ is indefinite as it is unknown what the limitations of ‘a freshly prepared composition’ encompasses. Applicant has not provided any definition within the specification of claims of the instant application of what defines ‘freshly prepared composition.’
Conclusion
Status of Claims
Claims 1, 4, 6-8, 18, 26-30 are pending.
Claims 16-17, 20-23 are withdrawn from consideration pursuant to 37 CFR 1.142(b).
Claims 2-3, 5, 9-15, 19, 24-25 are cancelled.
Claims 1, 4, 6-8, 18, 26-30 are rejected.
No claims are in condition for allowance.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICA NICOLE JONES-FOSTER whose telephone number is (571)270-0360. The examiner can normally be reached mf 7:30a - 4:30p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Manjunath Rao can be reached at 571-272-0939. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERICA NICOLE JONES-FOSTER/Examiner, Art Unit 1656
/MANJUNATH N RAO/Supervisory Patent Examiner, Art Unit 1656
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