DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/06/2026 has been entered.
Claim Status
The amendment of 03/06/2026 has been entered. Claims 61-63 and 66-75 are currently pending in this US patent application and were examined on their merits.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 61-63 and 66-75 are rejected under 35 U.S.C. 103(a) as being unpatentable over Zhao et al., Brazilian J. Microbiol. 42: 567-575 (2011; cited on the IDS filed 04/27/2023), in view of Vardharajula et al., J. Plant Interactions 6(1): 1-14 (March 1, 2011).
Zhao teaches a method of selecting microorganisms that benefit for plant growth (page 567, title and abstract). For Claims 61-63, 66 and 73: the reference teaches a method comprising a) subjecting one or more crop plants to a growth medium (growth involves multiplying the plant, for claim 62; the Examiner notes that any plant may be considered a “crop plant”) in the presence of a first set of one or more microorganisms (wherein plant material: nodules/roots as the source of microorganisms, page 568, left column, 2nd full paragraph, line 2++, for claim 73) by subjecting healthy plants (two or more plants, page 568, left column, 2nd full paragraph++) growing in northwestern China which inherently with a first set of microorganisms in the soil as growth medium and wherein the growth medium/soil comprises abiotic stressor under dry climate (page 570, right column, 1st full paragraph, line 4++, for claim 63) as drought/heat (“drought” and “heat” are not claimed/defined to be distinct from teaching of dry climate in northwestern China in cited art, wherein the natural soil/growth medium conferring abiotic stress: dry/drought, for claim 66); b) selecting one or more plant parts/nodules based on increased resistance/tolerance of drought/heat: health growth (claims 63 and 66, page 572, Table 2, claim 79 and nutrient utilization such as phosphate solubilization, page 572, Table 1, claim 80); c) acquiring a second set of one or more microorganisms from the nodules of the said healthy plants: MQ23 and MQ23R (page 570, right column, 2nd full paragraph++) which have a different set of microorganisms as the whole plants when growing in Northwestern China; and d) repeating steps a) to c) one or more times wherein the second set of microorganisms from nodules in step c) is used as the first set of microorganisms in step a) of any successive repeat by subjecting the nodule/root to grow in greenhouse conditions (at 28oC which is considered warm/heat condition of abiotic stressor because “heat” is not claimed/defined to be distinct from teaching of warm temperature in greenhouse condition in cited art, page 568, left column, 2nd full paragraph, line 20++). For claim 67, Zhao teaches different selection criteria are used in different iterations: such as first round selection of healthy plants from northwestern China (page 568, left column, 2nd full paragraph++) and in the greenhouse selection round: nodules were selected (page 568, left column, last line++). For Claim 68: the reference teaches the second set of microorganisms are acquired in crude form (“crude form” is not defined in the instant specification to be distinct from the teaching of cited art, therefore any nodule mixture meets the limitation, page 570, left column, 1st full paragraph, line 2++). For Claim 69: the reference teaches separating the two or more microorganism into individual isolates (page 569, left column, 2nd full paragraph++), selecting two individual isolates: MQ23 and MQ23R (page 570, right column, 1st full paragraph++) and combining the selected two individual isolates (page 572, Table 1) which is used as a first set of microorganisms in step a) in plant inoculation assay (page 572, left column, 1st full paragraph++). For Claim 74: the reference teaches method selects for one or more endophytes: MQ23 and MQ23R (page 570, right column, 1st full paragraph++). For Claim 75: the reference teaches combining the selected two microorganisms (co-inoculated MQ23 and MQ23R, page 572, Tables 1-2) with sterilized vermiculate, for example as one additional ingredient to support plant growth (page 569, right column, end of 4th paragraph).
Zhao does not explicitly teach repeating steps a) to c) one or more times using the acquired second set as first set of microorganisms as recited in claims 61 and 70, two or more methods performed separately and the second set of microorganisms are combined as recited in claims 71-72. Zhao also does not teach that the abiotic stressor is drought, as recited in instant claim 61.
Vardharajula teaches that the inoculation of plants with beneficial microorganisms promotes plant growth and increases drought tolerance in arid or semiarid areas (see entire document, including page 1, left column, paragraph 1). Bacillus spp. were isolated from the rhizospheres of different crops grown in semiarid locations and evaluated for their ability to grow under water-stress conditions (page 2, right column, paragraph 2; cf. steps (a)-(c) of claim 61). Seeds were inoculated with the most drought-tolerant of the Bacillus isolates and grown under drought stress that was induced by discontinuing watering (page 3, right column, paragraph 1; cf. step (d) of claim 61; this teaching represents the repetition of steps (a) and (b) of claim 61). Bacteria were isolated and enumerated from the soil and rhizoplane following cultivation (page 3, right column, paragraph 2; cf. step (d) of claim 61; this teaching represents the repetition of step (c) of claim 61).
While Zhao does not explicitly teach repeating steps a) to c) one or more times using the acquired second set as first set of microorganisms as recited in claims 61 and 70, two or more methods performed separately and the second set of microorganisms are combined as recited in claims 71-72, Zhao teaches repeating steps a)-c) under greenhouse conditions (at 28oC, which is considered warm/heat condition of abiotic stressor and which is not the same original drought/dry field condition in northwestern China, page 568, left column, 2nd full paragraph, line 20++) to isolate microorganisms (page 568, left column, last line++) with excellent performance of drought tolerance (page 570, right column, 1st full paragraph, line 6++) and re-isolation of strain (MQ23R, page 570, left column, 1st full paragraph, line 6++) from plant nodules/roots (under greenhouse condition, which is also considered a method performed separately) and combination/co-inoculation of MQ23 and MQ23II (page 572, left column, line 2++).
Therefore, it would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to repeat the selection steps as claimed for microorganisms or combination of microbes with drought/heat tolerance.
A person of ordinary skill in the art would have been motivated before the effective filing date of the claimed invention to make the modification because the cited reference teaches method of screening for bacterial from plants with drought/heat tolerant and Zhao teaches repeating claimed steps a)-c) under greenhouse condition to isolate microorganisms (page 568, left column, last line++) with excellent performance of drought tolerance (page 570, right column, 1st full paragraph, line 6++). In addition, it is obvious for one of ordinary skill in the art to repeat and combine the screening steps/method/microbes as claimed to obtain predictable results of successful screening of microorganisms/endophytes with drought/heat tolerance as taught and motivated by Zhao.
An ordinary skilled artisan would have reasonable expectation of success of achieving such modifications because all of the cited references teach the various steps of the claimed method including repeat the selection steps to select for endophytes and combine the isolated microorganisms, etc., is routine and known in the art.
While Zhao does not teach performing the method with drought as the abiotic stressor, it would have been obvious to one of ordinary skill in the art to do so because Vardharajula teaches that the inoculation of plants with beneficial microorganisms promotes plant growth and increases drought tolerance in arid or semiarid areas and that bacteria can be isolated from the rhizospheres of crops grown in these areas and screened for their ability to improve plant drought tolerance. One of ordinary skill in the art would have a reasonable expectation that performing the method of Zhao with the drought stress of Vardharajula would successfully result in the identification of microorganisms with the ability to improve the growth of plants under drought stress conditions.
Therefore, claims 61-63 and 66-75 are rendered obvious by Zhao in view of Vardharajula and are rejected under 35 U.S.C. 103.
The Supreme Court has acknowledged:
When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation…103 likely bars its patentability…if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill. A court must ask whether the improvement is more than the predictable use of prior-art elements according to their established functions……the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results (see KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 U.S. 2007) (emphasis added).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 61-63 and 66-75 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over at least claims 1-4 and 8-15 of USPN10900029 in view of Zhao and Vardharajula. Although the conflicting claims are not identical, they are not patentably distinct from each other, because both claims direct to method for the selection of microorganisms capable of improving plant health with similar steps. The patent directs to improved nitrogen fixation whereas the instant application direct to improved resistance to drought/heat. However, Zhao and Vardharajula teach similar (see rejections above) method of selecting microorganisms that improves resistance of plant against drought with success. Therefore, it is obvious for one of ordinary skill in the art to combine the teachings with Zhao and Vardharajula to achieve expected success of selection of microorganisms capable of improving resistance of plants to drought. Accordingly, the method of the instant application is ‘rendered obvious’ by the patent in view of Zhao and Vardharajula.
Claims 61-63 and 66-75 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over at least claims 1-4 and 8-16 of USPN9809812 in view of Zhao and Vardharajula. Although the conflicting claims are not identical, they are not patentably distinct from each other, because both claims direct to method for the selection of microorganisms capable of improving plant health with similar steps. The patent directs to imparting beneficial phenotypes to a plant whereas the instant application direct to improved resistance to drought/heat. However, Zhao and Vardharajula teach similar (see rejections above) method of selecting microorganisms that improves resistance of plant against drought with success. Therefore, it is obvious for one of ordinary skill in the art to combine the teachings with Zhao and Vardharajula to achieve expected success of selection of microorganisms capable of improving resistance of plants to drought. Accordingly, the method of the instant application is ‘rendered obvious’ by the patent in view of Zhao and Vardharajula.
Claims 61-63 and 66-75 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over at least claims 1-3 and 16 of USPN11466266 in view of Zhao and Vardharajula. Although the conflicting claims are not identical, they are not patentably distinct from each other, because both claims direct to method for the selection of microorganisms capable of imparting beneficial phenotypes to a plant with similar steps. The patent directs to imparting beneficial phenotypes to a plant whereas the instant application direct to improved resistance to drought/heat. However, Zhao and Vardharajula teach similar (see rejections above) method of selecting microorganisms that improves resistance of plant against drought with success. Therefore, it is obvious for one of ordinary skill in the art to combine the teachings with Zhao and Vardharajula to achieve expected success of selection of microorganisms capable of improving resistance of plants to drought. Accordingly, the method of the instant application is ‘rendered obvious’ by the patent in view of Zhao and Vardharajula.
Claims 61-63 and 66-75 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over at least claims 1-2, 10 and 19-20 of USPN9365847 in view of Zhao and Vardharajula. Although the conflicting claims are not identical, they are not patentably distinct from each other, because both claims direct to method for the selection of microorganisms capable of imparting beneficial phenotypes to a plant with similar steps. The patent directs to imparting beneficial phenotypes to a plant whereas the instant application direct to improved resistance to drought/heat. However, Zhao and Vardharajula teach similar (see rejections above) method of selecting microorganisms that improves resistance of plant against drought with success. Therefore, it is obvious for one of ordinary skill in the art to combine the teachings with Zhao and Vardharajula to achieve expected success of selection of microorganisms capable of improving resistance of plants to drought. Accordingly, the method of the instant application is ‘rendered obvious’ by the patent in view of Zhao and Vardharajula.
Claims 61-63 and 66-75 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over at least claims 1-2, 4, 11-12 and 18-19 of USPN9260713 in view of Zhao and Vardharajula. Although the conflicting claims are not identical, they are not patentably distinct from each other, because both claims direct to method for the selection of microorganisms capable of imparting beneficial phenotypes to a plant with similar steps. The patent directs to imparting beneficial phenotypes to a cereal plant whereas the instant application direct to improved plant resistance to drought/heat. However, Zhao and Vardharajula teach similar (see rejections above) method of selecting microorganisms that improves resistance of plant against drought with success. Therefore, it is obvious for one of ordinary skill in the art to combine the teachings with Zhao and Vardharajula to achieve expected success of selection of microorganisms capable of improving resistance of plants to drought. Accordingly, the method of the instant application is ‘rendered obvious’ by the patent in view of Zhao and Vardharajula.
Claims 61-63 and 66-75 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over at least claims 1, 4, 5-7 and 16-17 of USPN9150851 in view of Zhao and Vardharajula. Although the conflicting claims are not identical, they are not patentably distinct from each other, because both claims direct to method for the selection of microorganisms capable of imparting beneficial phenotypes to a plant with similar steps. The patent directs to imparting beneficial phenotypes to a plant whereas the instant application direct to improved plant resistance to drought/heat. However, Zhao and Vardharajula teach similar (see rejections above) method of selecting microorganisms that improves resistance of plant against drought with success. Therefore, it is obvious for one of ordinary skill in the art to combine the teachings with Zhao and Vardharajula to achieve expected success of selection of microorganisms capable of improving resistance of plants to drought. Accordingly, the method of the instant application is ‘rendered obvious’ by the patent in view of Zhao and Vardharajula.
Claims 61-63 and 66-75 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 10-12 and 16-26 of co-pending application 17/141494 in view of Zhao and Vardharajula. Although the conflicting claims are not identical, they are not patentably distinct from each other, because both claims direct to method for the selection of microorganisms capable of improving plant health with similar steps. The co-pending application directs to improving resistance to fungal pathogen whereas the instant application direct to improved resistance to drought/heat. However, Zhao and Vardharajula teach similar (see rejections above) method of selecting microorganisms that improves resistance of plant against drought with success. Therefore, it is obvious for one of ordinary skill in the art to combine the teachings with Zhao and Vardharajula to achieve expected success of selection of microorganisms capable of improving resistance of plants to drought. Accordingly, the method of the instant application is ‘rendered obvious’ by the patent in view of Zhao and Vardharajula.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Response to Arguments
Applicant has traversed the above rejections of the claims under 35 U.S.C. 103(a) as being unpatentable over Zhao in view of Vardharajula. Applicant states that Zhao does not teach every limitation of the instant claims and that Vardharajula also does not teach certain limitations of the instant claims. Applicant states that the differences in host/plant specificity and microbe-plant interaction context, the biological and ecological specialization of Bacillus strains, the differences in plant growth promotion mechanisms, and the recognition of cross-host plant growth promotion in the field would prevent barriers that would cause one of ordinary skill in the art to have no reasonable expectation of success in combining Zhao with Vardharajula (remarks, pages 5-7). This argument has been fully considered but has not been found persuasive.
In response to applicant's arguments against the references individually, 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). The Examiner notes that the above-presented rejection is predicated not upon Zhao alone or Vardharajula alone but, rather, on the combination of Zhao and Vardharajula. The elements of the instant claims that Applicant states are not taught by Vardharajula (namely, the performance of an iterative screening process of microorganisms on plants) are taught by Zhao. As discussed above and in the previous Office action, while Zhao does not teach performing the method with drought as the abiotic stressor, it would have been obvious to one of ordinary skill in the art to do so because Vardharajula teaches that the inoculation of plants with beneficial microorganisms promotes plant growth and increases drought tolerance in arid or semiarid areas and that bacteria can be isolated from the rhizospheres of crops grown in these areas and screened for their ability to improve plant drought tolerance. One of ordinary skill in the art would have a reasonable expectation that performing the method of Zhao with the drought stress of Vardharajula would successfully result in the identification of microorganisms with the ability to improve the growth of plants under drought stress conditions. Vardharajula need not supply every element of the instantly claimed method; rather, Vardharajula in combination with Zhao only needs to supply the missing element from Zhao in order for the instant claims to be rendered obvious by Zhao in view of Vardharajula. The Examiner further notes that, in response to applicant's argument that the Bacillus spp. of Vardharajula would not be expected to function identically to the Bacillus cereus MQ23 of Zhao, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The rejection presented above and in the previous Office action does not involve the use of Vardharajula’s specific microorganisms on Zhao’s specific plants. Rather, Vardharajula teaches that the inoculation of plants with beneficial microorganisms promotes plant growth and increases drought tolerance in arid or semiarid areas and that bacteria can be isolated from the rhizospheres of crops grown in these areas and screened for their ability to improve plant drought tolerance, which would give one of ordinary skill in the art a reasonable expectation that performing the method of Zhao with the drought stress of Vardharajula would successfully result in the identification of microorganisms with the ability to improve the growth of plants under drought stress conditions.
Applicant has traversed the above rejections and provisional rejections of the claims on the ground of nonstatutory double patenting as being patentably indistinct from various U.S. Patents and copending applications in view of Zhao and Vardharajula. Applicant states that Zhao and Vardharajula provide no reasonable expectation of success (remarks, pages 7-8). This argument has been fully considered but has not been found persuasive because the Examiner does not agree with Applicant’s assertion that one of ordinary skill in the art would have no reasonable expectation of success in combining Zhao and Vardharajula, as discussed above.
Therefore, the Examiner has maintained the rejections presented above.
Conclusion
No claims are allowed.
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/Erin M. Bowers/Primary Examiner, Art Unit 1653 03/12/2026