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 .
This Office Action is in response to the paper filed 19 March 2026. Claim 21 has been amended. The species of yeasts in claim 21, remain withdrawn. Claims 21, 24, 26, 30-38, and 40, and the species of bacteria, including Bacillus amyloliquefaciens, are currently pending and under examination.
This Application is a national phase application under 35 U.S.C. §371 of International Application No. PCT/US2019/068711, filed 27 December 2019, which claims priority to U.S. Provisional Application No. 62/788222, filed 4 January 2019.
Withdrawal of Rejections:
The rejection of claims 21, 24, 26, 30-38, and 40 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite, is withdrawn.
Maintenance/Modification of Rejections Necessitated by Amendment
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 21, 24, 26, 30-38, and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Farmer et al. (IDS; WO 2018/094075; Published 24 May 2018).
With regard to claim 21, Farmer et al. teach a method for controlling agricultural pests, the method comprising applying to the pest, a plant, and/or soil, a composition comprising broth in which a microorganism is cultivated, and one or more biosurfactants produced by the microorganism during cultivation, the microorganism including a bacterium selected from Bacillus subtilis, Bacillus amyloliquefaciens, Bacillus licheniformis, Rhodococcus erythropolis, or Pseudomonas chlororaphis (Abs.; p. 4, line 17-21; p. 8, line 4-23; p. 9, line 31 to p. 10, line 15; p. 13, line 20-33; p. 21, line 4-21; p. 27, line 16-26; claim 1, 9).
Farmer et al. further teach that the microorganisms in the broth may be intact or lysed (p. 17, line 16-18), wherein the lysed broth includes the disrupted cell membranes of the microorganisms and their released cell contents (see for example Art or Record: Creative Bioarray). As Farmer et al. expressly teach that the microorganisms in the broth may be lysed, it would have been obvious to an ordinary artisan to select one of the two expressly taught options, including providing lysed microorganisms in the broth. Thus, Farmer et al. renders obvious providing a broth containing lysed microorganisms and the internal contents of the lysed microorganism. Further, it is noted that there does not appear to be a structural difference between microbial hydrolysate (externally lysed) and microbial autolysate (internally lysed) (see Spec., p. 4, line 4-7; p. 14, line 19-22).
The newly presented limitation in claim 21 is directed to an autolysate of the microorganism, which is produced by the claimed process. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Here, the composition of Farmer et al. includes a lysate of a microorganism, which identically includes all the internal components of the ruptured microorganisms, and is likewise included in a composition with a biosurfactant of the microorganism. The lysate-containing composition of Farmer et al. is used for the same purpose as claimed: to control agricultural pests, by application to the pest, a plant, and/or soil. Functionally, the lysate-containing composition of Farmer et al. is the same as the claimed autolysate-containing composition. Therefore, the lysate-containing composition of Farmer et al. is the same as, or would have rendered obvious, the autolysate-containing composition produced by the claimed process.
PNG
media_image1.png
18
19
media_image1.png
Greyscale
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
It is also noted that the claims under examination are directed to a method for controlling an agricultural pest, and not to a method of making a composition for controlling an agricultural pest.
With regard to claim 24, Farmer et al. teach that the composition is formulated as a powder or granules (p. 15, line 29-30).
With regard to claim 26, Farmer et al. teach that the composition further comprises citronella, peppermint oil, mineral oil, or garlic oil (p. 17, line 13-21).
With regard to claim 30, Farmer et al. teach that the composition is dispersed in water as a carrier prior to application (Ex. 7, 8; p. 7, line 27-28).
With regard to claims 31-34, Farmer et al. teach that the composition is applied to a plants’ roots, which is directly to the roots, to the soil, to the plant’s stems, flowers, and leaves, which is the plant’s above ground mass; and wherein the composition is applied using an irrigation system (p. 21, line 4-21; p. 27, line 16-26).
With regard to claim 35, Farmer et al. teach that the pests to be controlled include nematodes, viruses, and parasites (Abs.; p. 2, line 5-9; p. 22, line 12 to p. 24, line 7).
With regard to claim 36, Farmer et al. teach that the plants to be treated with the composition include citrus, tomato, sugar beet soybean, corn, potato, sugarcane, grapes, lettuce, almond, onion, carrot, berries, cotton, sod, and turfgrass (p. 24, line 9 to p. 27, line 15).
With regard to claim 37, Farmer et al. teach that plants that benefit from application of the composition include citrus plants (p. 24, line 10-13). While it is not specifically taught that the citrus plants are affected by citrus greening disease and/or citrus canker disease, as the composition of Farmer et al. is a biopesticidal composition, and it is taught to apply the composition to citrus plants, it would have been obvious to one of ordinary skill in the art to apply the composition to citrus plants in need of treatment with a pesticidal composition.
With regard to claim 38, Farmer et al. teach that the composition is applied from a backpack sprayer (p. 21, line 4-6), which is a handheld lawn and garden sprayer.
With regard to claim 40, Farmer et al. teach that the composition comprises a biosurfactant, including a sophorolipid (Abs.; Ex. 1; claim 1, 3).
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 22, 24, 30-38, and 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-6, and 8-10 of U.S. Patent No. 11,959,062. Although the claims at issue are not identical, they are not patentably distinct from each other because both encompass a method for controlling an agricultural pest, comprising contacting the pest, plant, plant environment, plant part, or soil with a composition comprising a broth including a microorganism, the microorganism in intact or lysed form (see Col. 7, line 26), and one or more biosurfactants produced by the microorganism during cultivation thereof, and wherein the microorganism is a bacterium selected from Bacillus subtilis or Bacillus amyloliquefaciens (Instant claim: 21, 24, 30-8, 40; Cited patent claim: 1, 4-6, 8-10). Further, as discussed in the obviousness rejection above, the newly added limitation directed to production of autolysate is a product-by-process limitation, where the lysate of the cited patent document either is, or renders obvious, the autolysate produced by the process as claimed. Additionally, it is noted that there does not appear to be a structural difference between microbial hydrolysate (externally lysed) and microbial autolysate (internally lysed) (see Spec., p. 4, line 4-7; p. 14, line 19-22).
Claims 22, 24, 30-38, and 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-9 of U.S. Patent No. 11,760,969. Although the claims at issue are not identical, they are not patentably distinct from each other because both encompass a method for controlling an agricultural pest, comprising contacting the pest, plant, plant environment, plant part, or soil with a composition comprising a broth including a microorganism, the microorganism in intact or lysed form (see Col. 7, line 26), which is a hydrolysate of a microorganism, and one or more biosurfactants produced by the microorganism during cultivation thereof, and wherein the microorganism is Bacillus amyloliquefaciens (Instant claim: 21, 24, 30-38, 40; Cited patent claim: 1, 5-9). Further, as discussed in the obviousness rejection above, the newly added limitation directed to production of autolysate, where the lysate of the cited patent document either is, or renders obvious, the lysate produced by the process as claimed. Additionally, it is noted that there does not appear to be a structural difference between microbial hydrolysate (externally lysed) and microbial autolysate (internally lysed) (see Spec., p. 4, line 4-7; p. 14, line 19-22).
Claims 21, 24, 26, 30-38, and 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 5-8 of U.S. Patent No. 11,758,924. Although the claims at issue are not identical, they are not patentably distinct from each other because both encompass a method for controlling an agricultural pest, comprising contacting the pest, plant, plant environment, plant part, or soil with a composition comprising a broth including a microorganism, the microorganism in intact or lysed form (see Col. 9, line 8-9), which is a hydrolysate of a microorganism, and one or more biosurfactants produced by the microorganism during cultivation thereof, wherein the microorganism is Bacillus amyloliquefaciens and Bacillus subtilis, and wherein the composition further includes garlic extract (Instant claim: 21, 24, 26, 30-38, 40; Cited patent claim: 1, 3, 5-8). Further, as discussed in the obviousness rejection above, the newly added limitation directed to production of autolysate is a product-by-process limitation, where the lysate of the cited patent document either is, or renders obvious, the autolysate produced by the process as claimed. Additionally, it is noted that there does not appear to be a structural difference between microbial hydrolysate (externally lysed) and microbial autolysate (internally lysed) (see Spec., p. 4, line 4-7; p. 14, line 19-22).
Claims 21, 24, 30-38, and 40 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 6-8, 12, 13, 15-18, and 31-36 of copending Application No. 17/771643 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both encompass a method for controlling an agricultural pest, comprising contacting the pest, plant, plant environment, plant part, or soil with a composition comprising a broth including a microorganism, the microorganism in intact or lysed form (see Spec., p. 12, line 32-33), which is a hydrolysate of a microorganism, and one or more biosurfactants produced by the microorganism during cultivation thereof, and wherein the microorganism is a bacterium selected from Bacillus subtilis, Bacillus amyloliquefaciens, Bacillus licheniformis, or Pseudomonas chlororaphis (Instant claim: 21, 24, 30-38, 40; Cited patent claim: 1, 3, 4, 6-8, 12, 13, 15-18, 31-36). Further, as discussed in the obviousness rejection above, the newly added limitation directed to production of autolysate is a product-by-process limitation, where the lysate of the cited patent document either is, or renders obvious, the autolysate produced by the process as claimed. Additionally, it is noted that there does not appear to be a structural difference between microbial hydrolysate (externally lysed) and microbial autolysate (internally lysed) (see Spec., p. 4, line 4-7; p. 14, line 19-22).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Regarding the obviousness rejection, Applicant urges that Farmer et al. do not teach the newly added limitation regarding the formation of autolysate of the microorganism. With regard to the non-statutory double patenting rejections, Applicant likewise urges that autolysate and its process of making are not present in the cited patent claims/documents.
Applicant’s arguments have been fully considered, but have not been found persuasive.
The newly presented claim limitations in claim 21 have been addressed in the modified rejections above.
Conclusion
No claims are allowable.
Previously Presented Art of Record:
Creative Bioarray, Cell Lysates: Composition, Properties, and Preparation, Accessed 12/13/2025, Available online at: www.creative-bioarray.com/support/cell-lysates-composition-properties-and-preparation.htm#:~:text=The%20complexity%20of%20cell%20lysates,of%20the %20lysate%27s%20molecular%20landscape (cell lysate includes the disrupted cell walls/membranes of the lysed cell and the released cell contents, which can include metabolites, enzymes, proteins, nucleic acids, small molecules, cofactors, lipids, and organelles).
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 JENNIFER M.H. TICHY whose telephone number is (571)272-3274. The examiner can normally be reached Monday-Thursday, 9:00am-7:00pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sharmila G. Landau can be reached at (571)272-0614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER M.H. TICHY/Primary Examiner, Art Unit 1653
Prosecution Insights