DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the pre-AIA first-to-invent provisions..
Status
1. This application is a continuation of 14/005,383 and was filed on 8 August 2025.
Claims 91-106 as filed on 15 April 2022 were examined and rejected in an Office action posted 16 December 2024. Applicant responded on 19 August 2025. No extensive arguments were found accompanying the response.
Claims 91-106 are examined herein.
On 8 August 2025 Applicant filed several terminal disclaimers. None were approved as per the paper of 18 August 2025.
Examiner’s Notes & Claim Interpretation
2. Citations to Applicant’s specification are abbreviated herein “Spec.”
As explained in greater detail below in the rejection under 35 U.S.C. 103, Vessey teaches that bacteria have been known to stimulate plant growth since ancient times, e.g., citing to Theophrastus (372-287 BC) and Virgil. Vessey, p. 571. Vessey refers to such bacteria as plant growth promoting rhizobacteria or PGPR. The initial steps of developing a PGRP inoculum are lost in time.
Withdrawal of Objections and Rejections
3. The objection to claim 91 is withdrawn in view of Applicant’s amendments to the claim.
4. The rejection of claims 91-94, 96, 98-106 under 35 U.S.C. 101 is reconsidered and withdrawn in view of the claim amendments as well as reevaluation in terms of selection and reference to a control plant.
5. The rejection of claim 91 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite regarding control plant versus dead plants is withdrawn in view of Applicant’s amendments to the claims.
6. The rejection of claims 105 and 106 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite regarding reference to a table is withdrawn in view of Applicant’s amendments to the claims.
7. The rejection of claims 91 and 98 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite regarding the recitation of “the one or more plant” is withdrawn in view of Applicant’s amendments to the claims.
35 USC § 112(b)-Based Claim Rejections
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.
8. Claims 91-106 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.
Claim 91 is rejected because it requires measurement of “mean foliar weight” requires a statistical determination of a population of plants but clearly the claim envisions encompassing only a single plant in part (a) and in part (c). Therefore how to measure the required parameter is indefinite.
Claim 104 is rejected because of its use of the limitation “the presence of the mixed population of bacteria of step a).” “The mixed population of bacteria” in step (a) is not defined and not measured. For example, bacteria are microscopic and plants are much larger so two plants three feet apart will not experience the same ‘mixed population of bacteria’ with regard to individual bacteria. further Applicant provides no teachings about the homogeneity or heterogeneity of bacteria in a field. Nor does Applicant teach deliberately inoculating growth media with defined bacterial populations.
Dependent claims are included in the above rejections because they fail to provide limitations obviating
35 USC § 112(a) based Claim Rejections under the written description requirement
The following is a quotation of 35 U.S.C. 112(a):
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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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.
9. Claims 91-106 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 claims contain 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 91 is rejected because it includes the limitation “mixed population of bacteria” in part (a). That limitation does not appear in the priority documents (specification, abstract, and claims filed in September 2013. Nor does it appear in the New Zealand priority application of record in 14/005,383).
The priority documents read broadly on screening a mixed population of microorganisms. Bacteria fall within the scope of that genus, but nothing in the priority documents focuses on only screening bacteria.
Applicant’s BACKGROUND section mentions the commercial application of Rhizobium spp. (p. 2, l. 24), but the priority documents do not contemplate focusing on broadly screening bacteria as distinct from all microorganisms.
Claim 104 has the same limitation.
Dependent claims are included in the above rejections because they fail to provide limitations obviating
35 USC § 103-based Claim Rejections
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.
10. Claims 91 92, 93, 94, 95, 96, 97, 98, 99, 100, 101 104, 105 and 106 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over:
Vessey (2003) Plant Soil 255:571-86 and
Hynes et al. (2008) Can J Microbial 54:248-58 in view of
Glick et al. (1995) Can J Microbial 41 :533-36 and
Elliot (2006) M.Sc. Thesis, Va. Poly. Inst. & State Univ. “Effects of a control release nitrogen fertilizer and thinning on the nitrogen dynamics of a mid-rotation loblolly pine stand in the Piedmont of Virginia”
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459, 467 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
a. Determining the scope and contents of the prior art.
b. Ascertaining the differences between the prior art and the claims at issue.
c. Resolving the level of ordinary skill in the pertinent art.
d. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 91 is drawn to a method for selecting bacteria to increase a plant’s tolerance to an abiotic stress.
The selection process requires at least two steps with several sub-steps.
In the first sub-step, a plant is placed is “subjected” to growth media. Then it is “”[subjected] to conditions that promote growth.”
The implication is that such a plant is allowed to grow and compared to another plant that is allowed to grow. The control plant is not “subjected” to the “mixed population of bacteria of lines 1-2.
Thus the two plants are in different “presence of mixed population bacteria” but how that is determined is not clear.
Plants are selecting for increased “mean” foliar weight
, A bacterial population from the selected plant is “isolated” or “obtained in a crude form.” This population is used in any successive repeats, presumably as an addition to the growth media, but successive re-isolations or enrichments during the repeats are not required.
Claim 104 is similar.
In the claim amendments of 9 August 2025 Applicant added the limitation “conditions that promote growth” in reference to plants. That limitation does not appear in the specification – the word “promote” only appears in the specification once at page 53, line 24, in reference to actinomycetes. Nevertheless, that seems adequate to establish written description for the limitation. However, “promote” is not given any special meaning other than allowing growth – a plant that grows is reasonably interpreted as under conditions that “promote” growth. Further it is axiomatic that plant growth is promoted by sunlight.
Although the two independent claims allow for repeating the process, they do not require repeating the process.
The claims require growing a plant in the presence of a mixed population bacteria, in other words, soil. The colonization of the nodules in a leguminous plant satisfies the limitation obtaining a bacterial population in crude form.
Further, in a nitrogen-deficient environment, a form of abiotic stress, the colonization of the nodules will provide a selective advantage. See, for example, the last page of Masson-Boivin & Sachs (graphic abstract).
The prior art teaches that bacteria can benefit plant growth. For example, Vessey teaches that bacteria have been known to stimulate plant growth since ancient times, e.g., citing to Theophrastus (372-287 BC) and Virgil. Vessey, p. 571. Vessey refers to such bacteria as plant growth promoting rhizobacteria or PGPR. E.g. Id., abstract. Vessey goes on to write that the "search for PGPR and investigation of their Application modes of action are increasing at a rapid pace as efforts are made to exploit them commercially as biofertilizers. Vessey defines 'biofertilizer:
a substance which contains living microorganisms which, when applied to seed, plant surfaces, or soil, colonizes the rhizosphere or the interior of the plant and promotes growth by increasing the supply or availability of primary nutrients to the host plant.
ld., p. 572.
Hynes et al. teaches screening bacteria for "plant growth-promotion activity" using canola plants - plants were placed in growth media. Hynes et al., p. 250, cols. 1-2. In other words, in “conditions that promote growth.”
Further, Glick et al. teaches isolating "plant growth promoting rhizobacteria (PGPR)" based on ACC deaminase activity since that enzyme allows such bacteria to live with only ACC as a nitrogen source. Glick et al., abstract. Hynes et al. teaches growing the plants with ACC as the sole nitrogen source (pp. 249-250) and thus the plants were grown under nitrogen stress.
Hynes et al. also teaches selecting of plants on the basis of this beneficial activity - "Isolates that promoted canola growth" and then isolating bacteria. Hynes et al., p. 250, col. 2, 1st full para.
Measuring mean foliar mass is an obvious design choice available to an ordinary artisan to measure the benefit, especially in regard to nitrogen as a nutrient. See, for example, Elliot (2006) M.Sc. Thesis, Va. Poly. Inst. & State Univ. “Effects of a control release nitrogen fertilizer and thinning on the nitrogen dynamics of a mid-rotation loblolly pine stand in the Piedmont of Virginia” e.g. Appendix E.
It would have been prima facie obvious to one of ordinary skill in the art at the time of Applicants' invention to practice the inventions of the pending claims as further analyzed below. Given the level of skill in the art at the time of Applicants' invention, one of ordinary skill in the art would have had a reasonable expectation of success.
Therefore claims 91 and 98 are obvious. Since claim 92 merely requires growing the plant it is also obvious. Hynes teaches soil-living bacteria, i.e., the root system of a plant, so claim 93 is obvious. Claim 94 is open-ended as to time after germination and so is obvious. Claim 95 reads on two plants each colonized by bacteria and Hynes et al. does not teach treating each plant separately, and so claims 95 and 97 are also obvious. Claim 99 fails to add any limitations to distinguish its “composition to support plant growth and/or health” from soil so it is also obvious.
Claim 100 requires an increase of at least 10% but that is an obvious choice as an advantageous number, especially, e.g. in the case of a forage crop such as alfalfa, and such an increase is also taught by Elliot in Figure E1 page 120. Thus claim 100 is obvious.
Hynes et al. teaches using “biofertilizer” to improve phosphate metabolism (1st pg.) and thus claim 101 is obvious. Since Hynes et al. teaches two forms of stress, claim 96 is obvious.
Under the above analysis claim 104, which is similar to claim 91, is also obvious.
Claim 105 now recites “Pseudomonas sp.” Claim 106 recites P veronii. Hynes et al. also teaches P veronii (p. 253 (mid)) and thus claim 105 and claim 106 are obvious.
10. Claims 102 and 103 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over:
Vessey (2003) Plant Soil 255:571-86; and
Hynes et al. (2008) Can J Microbial 54:248-58 in view of
Glick et al. (1995) Can J Microbial 41 :533-36; and
Elliot (2006) M.Sc. Thesis, Va. Poly. Inst. & State Univ;
in further view of Rodriquez et al., (2008) ISME J 2:404-16.
As seen above, claims 91 and 104 are obvious in view of the references cited above. Claims 105 and 106 add the element of drought tolerance and salt tolerance.
The plants taught by Rodriquez et al. grow in a natural "growth medium" and given the broad meaning of “promote” growth (e.g. sunlight) and are subject to continuous abiotic stress. Id., p. 408.
Rodriquez et al. also discloses that microorganisms associated with the plants in the stressful environment (i.e. phenotypically protecting the plant) were isolated. Id., p 408,
Rodriquez et al. initially identified the symbiosis in a coastal environment and during laboratory growth maintained a "constant exposure" to the high salt (Id., see 2nd col.,
only full para.). Also studied was drought stress. Id. 500 mM NaCl (Id.) is over 50 ppm. Given the teachings of the primary references, it would be obvious to broaden the analysis of Rodriquez et al. to screen for bacteria. Thus claims 102 and 103 are obvious.
Returning to claim 96, since Rodriquez et al. teaches two forms of stress, claim 96 is again obvious.
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).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
As noted above, on 8 August 2025 Applicant filed several terminal disclaimers. None were approved as per the paper of 18 August 2025.
11. Claims 91-106 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over, e.g. claims 1-4, 9-12 and 14 U.S. Patent No. 11,866,698 B2. Although the conflicting claims are not identical they are not patentably distinct from each other.
Claim 1 of U.S. Patent No. 11,866,698 B2 is drawn to obtaining a “microbial composition” to benefit growing plants. At least two rounds of selection are required. Focusing on bacteria is an obvious species of microbes. The benefits listed in claim 20 include those increasing foliar weight. Claim 21 admits that such a microbial community might exist already. Claims 2-4 read on formulations (e.g. instant Spec., p. 27). Claims 9-12 recite various well-known crops. Claim 14 reads on soil.
Although the instant claims do not require repeating the microbial selection, they allow it. Further, bacteria are a well-known species of microbes (e.g., pp. 34-35).
12. Claims 91-106 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over, e.g. claims 1-10 and 13-30 U.S. Patent No. 9,365,847 B2. Although the conflicting claims are not identical they are not patentably distinct from each other.
Claim 1 of U.S. Patent No 9,365,847 B2 is drawn to obtaining a microbial community” to benefit growing plants. There are at least two rounds of selection. Focusing on bacteria is an obvious species of microbes. The benefits listed in claim 28 include those increasing foliar weight. Claim 30 admits that such a microbial community might exist already.
Although the instant claims do not require repeating the microbial selection, they allow it. Further, bacteria are a well-known species of microbes (e.g., pp. 34-35). As explained above, increasing foliar weight is an obvious way of observing benefit to a plant.
13. Claims 91-106 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over, e.g. claims 1-30 U.S. Patent No. 9,260,713 B2. Although the conflicting claims are not identical they are not patentably distinct from each other.
The claims of the ‘713 Patent is drawn to a method for finding microorganisms capable of benefiting a plant. Claim 14 lists various phenotypes including those associated with increased foliar mass.
At least two rounds of selection are required. Focusing on bacteria is an obvious species of microorganisms. The benefits listed in claim 14 include those increasing foliar weight. Claims 17 and 25 admit that such a microbial community might exist already. C
Although the instant claims do not require repeating the microbial selection, they allow it. Further, bacteria are a well-known species of microbes (e.g., pp. 34-35). As explained above, increasing foliar weight is an obvious way of observing benefit to a plant.
14. Claims 91-106 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over, e.g. claims 1-27 U.S. Patent No. 9,150,851 B2. Although the conflicting claims are not identical they are not patentably distinct from each other.
The claims of the ‘851 Patent are drawn to a method for selecting microorganisms capable of benefiting a plant. At least two rounds of selection are required. Focusing on bacteria is an obvious species of microorganisms.
Although the instant claims do not require repeating the microbial selection, they allow it. Further, bacteria are a well-known species of microbes (e.g., pp. 34-35). As explained above, increasing foliar weight is an obvious way of observing benefit to a plant.
15. Claims 91-106 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over, e.g. claims 1-14 U.S. Patent No. 9,732,335 B2. Although the conflicting claims are not identical they are not patentably distinct from each other.
The claims of the ‘335 Patent are drawn to a method for selecting microorganisms capable of benefiting a plant. At least two rounds of selection are required. Focusing on bacteria is an obvious species of microorganisms.
Although the instant claims do not require repeating the microbial selection, they allow it. Further, bacteria are a well-known species of microbes (e.g., pp. 34-35). As explained above, increasing foliar weight is an obvious way of observing benefit to a plant.
16. Claims 91-106 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over, e.g. claims 1-20 U.S. Patent No. 10,900,029 B2. Although the conflicting claims are not identical they are not patentably distinct from each other.
The claims of the ‘267 Patent are drawn to a method for selecting microorganisms capable of benefiting a plant to improve nitrogen availability. At least two rounds of selection are required. Focusing on bacteria is an obvious species of microorganisms. Combinations are claimed.
Although the instant claims do not require repeating the microbial selection, they allow it. Further, bacteria are a well-known species of microbes (e.g., pp. 34-35). As explained above, increasing foliar weight is an obvious way of observing benefit to a plant.
17. Claims 91-106 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over, e.g. claims 1-23 U.S. Patent No. 11,466,266 B2. Although the conflicting claims are not identical they are not patentably distinct from each other.
The claims of the ‘266 Patent are drawn to a method for selecting microorganisms capable of benefiting a plurality of plants to benefit plants. At least two rounds of selection are required. Also, a plurality is required. Focusing on bacteria is an obvious species of microorganisms.
Although the instant claims do not require repeating the microbial selection, they allow it. Further, bacteria are a well-known species of microbes (e.g., pp. 34-35). The instant pending claims also envision more than one plant. As explained above, increasing foliar weight is an obvious way of observing benefit to a plant.
18. Claims 91-103 are rejected on the ground of nonstatutory double patenting as being unpatentable over pending the claims of U.S. Patent No. application serial no. 17/488,123. These claims are still pending. Although the conflicting claims are not identical they are not patentably distinct from each other.
The claims of the above application are drawn to a method for selecting microorganisms capable of benefiting a plurality of plants to benefit plants in the face of drought. At least two rounds of selection are required.
Focusing on bacteria is an obvious species of microorganisms. Further, drought is a well-known and important abiotic stress (e.g. instant Spec., p. 45, ll. 15-19). Focusing on drought is obvious.
Although the instant claims do not require repeating the microbial selection, they allow it. Further, bacteria are a well-known species of microbes (e.g., pp. 34-35). The instant pending claims also envision more than one plant. As explained above, increasing foliar weight is an obvious way of observing benefit to a plant.
19. Claims 91-106 are rejected on the ground of nonstatutory double patenting as being unpatentable over the pending claims of U.S. Patent No. application serial no. 17/716,526. These claims are still pending. Although the conflicting claims are not identical they are not patentably distinct from each other.
The claims of the above application are drawn to a method for selecting microorganisms capable of benefiting a plurality of plants to benefit plants. At least two rounds of selection are required. Also, a plurality is required. Focusing on bacteria is an obvious species of microorganisms.
Although the instant claims do not require repeating the microbial selection, they allow it. Further, bacteria are a well-known species of microbes (e.g., pp. 34-35). The instant pending claims also envision more than one plant. As explained above, increasing foliar weight is an obvious way of observing benefit to a plant.
Conclusion
20. No claim is allowed.
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.
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/RUSSELL T BOGGS/Examiner, Art Unit 1663