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 .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 16, 2025, that includes a response to the Final Office Action mailed April 17, 2025, has been entered. Claims 33, 35, and 50 have been amended; claims 1-24, 27-29, 31, 32, 34, 36-38, 41, and 43-45 have been canceled; and claim 51 has been newly added. Claims 25, 26, 30, 39, 40, 42, and 49 have been withdrawn. Claims 33, 35, 46-48, 50, and 51 are under examination.
Withdrawal of Prior Objection - Abstract
The abstract of the disclosure has been satisfactorily amended. Therefore, the objection to the abstract presented in the Final Office Action mailed April 17, 2025 is hereby withdrawn.
Withdrawal of Prior Claim Objections
Claims 33 and 50 have been satisfactorily amended. Therefore, the objections to these claims presented in the Final Office Action mailed April 17, 2025 are hereby withdrawn.
Drawings
The drawings are objected to because of the following:
1. Figure 8A remains illegible. Moreover, presently amended Figure 8A is not in compliance with 37 CFR 1.84(u)(1), which requires that “partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be preceded by the abbreviation ‘FIG.’”.
2. Figure 8C was not objected to in the Final Office Action mailed April 17, 2025. However, Applicant submitted an amended Figure 8C, which also is not in compliance with 37 CFR 1.84(u)(1), which requires that “partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be preceded by the abbreviation ‘FIG.’”.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. 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 33, 35, 46-48, 50, and 51 are rejected under 35 U.S.C. 103 as being unpatentable over Silva Junior et al. (J. Plant Pathology. 2012; 94(2): 427-430), in view of Cardinale et al. (Microbiological Research. 2015; 181: 22-32).
Applicant Claims
Applicant’s elected subject matter is directed to a plant or part thereof infected with Curtobacterium flaccumfaciens (strain D3-25); wherein the plant is wheat of the species Triticum aestivum, and wherein the Curtobacterium flaccumfaciens produces indole acetic acid (IAA).
Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Silva Junior et al. disclose a wheat plant of the species Triticum aestivum inoculated with Curtobacterium flaccumfaciens, wherein the Curtobacterium flaccumfaciens colonized the wheat plant as an endophyte, and wherein the wheat plant developed no signs of pathology such as wilt or leaf necrosis.
Cardinale et al. disclose that a cereal crop (e.g. barley) inoculated with Curtobacterium flaccumfaciens (i.e. “culture strain E108”) exhibits enhanced growth by up to 300% under salt stress, with significant accumulation of the biomass and water content in both leaves and stems, achieved in part by the Curtobacterium flaccumfaciens endophyte producing indole acetic acid (IAA).
Ascertainment of the Difference Between the Scope of the Prior Art and the Claims (MPEP §2141.02)
Silva Junior et al. do not explicitly disclose “strain D3-25”, and that the Curtobacterium flaccumfaciens promotes drought stress tolerance in part by producing indole acetic acid (IAA). These deficiencies are cured by the teachings of Cardinale et al.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious for one of ordinary skill in the art at the time the present application was filed to combine the respective teachings of Silva Junior et al. and Cardinale et al., outlined supra, to devise Applicant’s presently claimed plant.
Silva Junior et al. disclose a wheat plant of the species Triticum aestivum inoculated with Curtobacterium flaccumfaciens, wherein the Curtobacterium flaccumfaciens colonized the wheat plant as an endophyte, and wherein the wheat plant developed no signs of pathology such as wilt or leaf necrosis. Since Cardinale et al. disclose that a cereal crop (e.g. barley) inoculated with Curtobacterium flaccumfaciens exhibits enhanced growth by up to 300% under salt stress, with significant accumulation of the biomass and water content in both leaves and stems, achieved in part by the Curtobacterium flaccumfaciens endophyte producing indole acetic acid (IAA), and since Cardinale et al. further disclose that wheat, like barley, is susceptible to salt stress, one of ordinary skill in the art would thus be motivated to inoculate a wheat plant of the species Triticum aestivum with Curtobacterium flaccumfaciens that produces IAA, with the reasonable expectation that the resulting wheat plant will exhibit enhanced growth by up to 300% under salt stress, with significant accumulation of the biomass and water content in both leaves and stems, and thus will successfully exhibit improved salt and drought stress tolerance.
Therefore, one of ordinary skill in the art, having found a Curtobacterium flaccumfaciens strain in the wild that produces IAA, such as e.g. strain “D3-25”, would thus be motivated to employ this specific strain as just described with the reasonable expectation of success in producing a wheat plant that will exhibit enhanced growth by up to 300% under salt stress, with significant accumulation of the biomass and water content in both leaves and stems, and thus will successfully exhibit improved salt and drought stress tolerance.
In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a).
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.
Response to Arguments
Applicant's arguments filed October 16, 2025 have been fully considered but they are not persuasive.
i) Applicant contends that “the Office errantly contends that…the Office can somehow ignore express limitations requiring a specific environmental stress tolerance (i.e. drought stress tolerance)”; that “all claims…require that the specified endophyte improve drought stress tolerance of the plant”; that “contrary to the teachings” of Cardinale, “the Office errantly conflates…salt stress resistance with the drought stress resistance as recited in the present claims”; that “beneficial effects of bacterial inoculants are stress-dependent…the longer the plant is exposed to the stressor…the more pronounced the benefit of the bacterial inoculant”; that neither of the cited references “describe anything regarding improvement in drought stress tolerance in a plant inoculated with a strain of Curtobacterium flaccumfaciens”; that “a PSA would understand that bacteria of the same species do not necessarily share the same complement of phenotypes”; that “a person of ordinary skill in the art would not be motivated to combine the teachings of” Silvia Junior and Cardinale “to solve the problem of drought stress”; that “organisms of the same species may have identical 16S rRNA sequences, be classified in the same clade by whole genome average nucleotide identity (ANI), but have completely different phenotypes”; and that “bacterial strains are genomically dynamic and evolve to adapt to their environmental conditions…bacterial strains derived from different geographical locations under different stresses have evolved to adapt to their specific environmental conditions…the strains of the present invention were isolated from drought related conditions to solve the very different purposes of enhancing drought tolerance”.
The Examiner, however, would like to point out the following:
1. In stark contrast to Applicant’s assertion, the Office is not ignoring the express limitation requiring drought stress tolerance. However, the present claims are directed to a product, not to a method of using the product. The claimed product is a plant or plant part infected with an endophyte, with the elected species being a wheat plant or part thereof infected with the endophyte Curtobacterium flaccumfaciens, strain D3-25. One of ordinary skill in the art in view of the cited prior art, and having found a new strain of Curtobacterium flaccumfaciens in the wild, specifically Curtobacterium flaccumfaciens D3-25, would arrive at the presently claimed product with a reasonable expectation of success for the reasons discussed in the 35 USC 103 rejection. If Curtobacterium flaccumfaciens, strain D3-25 imparts drought stress tolerance to the wheat plant or part thereof, then the product will have this property, regardless of whether the cited prior art expressly discloses this property.
2. Moreover, the reason one of ordinary skill in the art would have arrived at the claimed product, e.g. a wheat plant or part thereof infected with the endophyte Curtobacterium flaccumfaciens, strain D3-25, need not be for the specific purpose of imparting drought stress tolerance to the plant. One of ordinary skill in the art may have had their own reasons for infecting the wheat plant with the endophyte. Regardless of the reasons why one of ordinary skill in the art may have arrived at the claimed product, if the endophyte imparts drought stress tolerance, it will continue to do so even if the cited prior art does not expressly disclose the property, and even if one of ordinary skill in the art arrived at the claimed product for reasons other than the specific reason of imparting drought stress tolerance. Applicant cannot expect that only they can arrive at the claimed product and have the property of drought stress tolerance, but then expect that one of ordinary skill in the art arriving at the very same product cannot have drought stress tolerance because they did not infect the plant with the endophyte for this specific stated purpose.
3. Silva Junior alone discloses a wheat plant of the species Triticum aestivum inoculated with the endophyte Curtobacterium flaccumfaciens. Cardinale discloses that a cereal crop (e.g. barley) inoculated with Curtobacterium flaccumfaciens (i.e. “culture strain E108”) exhibits enhanced growth by up to 300% under salt stress, with significant accumulation of the biomass and water content in both leaves and stems, achieved in part by the Curtobacterium flaccumfaciens endophyte producing indole acetic acid (IAA). Cardinale further discloses that wheat, like barley, is susceptible to salt stress. The rejection is based on the premise that it would be obvious to thus arrive at a wheat plant of the species Triticum aestivum inoculated with the endophyte Curtobacterium flaccumfaciens, strain D3-25, with the reasonable expectation that the resulting plant will exhibit enhanced growth under salt stress. Applicant has provided no evidence to the contrary.
4. In stark contrast to Applicant’s assertion, salt stress tolerance and drought stress tolerance are not mutually exclusive, even if salt stress and drought stress are not precisely one and the exact same thing. As anyone of ordinary skill in the art would readily know, both salt stress and drought stress are abiotic environmental stresses that have some overlapping features and mechanisms, and can trigger some common stress response pathways in plants. A lack of sufficient water in the soil can lead to higher salt concentrations in the soil. Indeed, as one of ordinary skill in the art would generally know, plants use similar stress signaling pathways and produce some of the same protective compounds to adapt to both drought and salt stresses. Both stresses trigger the production of similar plant hormones, such as auxins. Applicant has not established that the endophytes that impart salt stress tolerance do not also impart drought stress tolerance, especially drought stress that leads to higher salt concentrations in the soil. Indeed, Applicant’s claims provide that the Curtobacterium flaccumfaciens endophyte, strain D3-25, promoting drought stress tolerance produces the specific auxin phytohormone, IAA, which presumably facilitates the improved tolerancve to drought stress. The cited prior art discloses that the Curtobacterium flaccumfaciens endophyte that imparts salt stress tolerance also produces the specific auxin phytohormone, IAA. Applicant has not provided any evidence of any kind whatsoever that the Curtobacterium flaccumfaciens endophytes that impart salt stress tolerance do not also impart drought stress tolerance, and vice versa. Indeed, the similar production of IAA would point to another conclusion, that the Curtobacterium flaccumfaciens endophytes would impart both salt stress tolerance and drought stress tolerance via at least IAA.
5. Moreover, as Applicant has pointed out, “bacterial strains are genomically dynamic and evolve to adapt to their environmental conditions”. Hence, even if one of ordinary skill in the art arrived at the claimed product under the expectation of imparting salt stress tolerance, one of ordinary skill in the art would, according to Applicant, thus expect that if the same product were placed under drought stress, that the endophyte under this stress, if not already fully able to impart improved drought stress tolerance, will adapt to impart improved drought stress tolerance. Finally, if, as Applicant asserts, one of ordinary skill in the art would know that isolating endophytes present under certain environmental conditions, such as drought stress, are expected to impart drought stress tolerance to the plant, it would thus be obvious, having found a Curtobacterium flaccumfaciens endophyte strain present in drought stress conditions, to expect that this particular endophyte strain will impart drought stress tolerance to a plant. Therefore, this would simply not a patentable advance in the art, but rather the work of the ordinary mechanic in the art with predictable results.
For the foregoing reasons, the 35 USC 103 rejection is hereby maintained.
Conclusion
No claims are allowed.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID BROWE whose telephone number is (571)270-1320. The examiner can normally be reached Monday - Friday, 9:30 AM to 6 PM EST.
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, Johann Richter can be reached at 571-272-0646. 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.
/DAVID BROWE/Primary Examiner, Art Unit 1617