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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 12-15 and 21-28 in the reply filed on 8/26/25 is acknowledged.
Claims 1-4 and 17-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/26/25.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 22-23 are rejected under 35 U.S.C. 112, first paragraph, as containing subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The invention appears to employ novel biological materials, the M. robertsii has an accession number of USDA ARSEF2575, the M. anisopliae has an accession number of USDA ARSEF549, the M. brunneum has an accession number of USDA ARSEF3297, the M. guizhouense has an accession number of USDA ARSEF977, the M. majus has an accession number of USDA ARSEF297, and the M. acridum has an accession number of USDA ARSEF324; and the Fusarium oxysporum has an accession number of NRRL 32931, the Cadophora malorum has an accession number of bio-12245, the Oidiodendron maius has an accession number of ATCC 60377, the Hyaloscypha bicolor has an accession number of CBS144009, the Pseudogymnoascus sp. has an accession number of ATCC MYA-4855, the Pyronema omphalodes has an accession number of ATCC 14881, the Exophiala oligosperma has an accession number of ATCC28180, and the Amorphotheca resinae has an accession number of ATCC 22711. Since the biological materials are essential to the claimed invention they must be obtainable by a reproducible method set forth in the specification or otherwise readily available to the public. If the biological materials are not so obtainable or available, the requirements of 35 U.S.C. § 112 may be satisfied by a deposit of the biological materials.
From the specification it is not apparent if the biological materials are readily available to the public. It is noted that Applicant has not provided any indication of the deposit of those strains and also there is no indication in the specification as to public availability. Further, there is no information in the specification as to how these strains were isolated, if they comprise any genetic modifications, or any other material impacts they have on practicing the claimed. Therefore, one of ordinary skill in the arts would be unable to replicate the claimed strains in the absence of a deposit.
If the deposit is made under the Budapest Treaty, then an affidavit or declaration by applicant or someone associated with the patent owner who is in a position to make such assurances, or a statement by an attorney of record over his or her signature and registration number, stating that the deposit has been made under the terms of the Budapest Treaty and that all restrictions imposed by the depositor on the availability to the public of the deposited material will be irrevocably removed upon the granting of a patent, would satisfy the deposit requirement made herein. If the deposit has not been made under the Budapest Treaty, then in order to certify that the deposit meets the criteria set forth in 37 C.F.R. §§ 1.801-1.809, Applicant may provide assurance of compliance by an affidavit or declaration, or by a statement by an attorney of record over his or her signature and registration number, showing that:
(a) during the pendency of this application, access to the invention will be afforded to the Commissioner upon request;
(b) all restrictions upon availability to the public will be irrevocably removed upon granting of the patent;
(c) the deposit will be maintained in a public depository for a period of 30 years or 5 years after the last request or for the effective life of the patent, whichever is longer;
(d) a test of the viability of the biological material at the time of deposit will be made (see 37 C.F.R. § 1.807); and
(e) the deposit will be replaced if it should ever become inviable.
Applicant’s attention is directed to M.P.E.P. §2400 in general, and specifically to §2411.05, as well as to 37 C.F.R. § 1.809(d), wherein it is set forth that “the specification shall contain the accession number for the deposit, the date of the deposit, the name and address of the depository, and a description of the deposited material sufficient to specifically identify it and to permit examination.” The specification should be amended to include this information, however, Applicant is cautioned to avoid the entry of new matter into the specification by adding any other information.
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 12-15 and 21-28 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 12 requires a fungi expressing MMD and MIR. It is unclear if both of the claimed fungi need to express both of the claimed proteins or if only one of the fungi need to express both the claimed proteins, or if one fungi expresses one protein and the other expresses the other protein.
For examination purposes any singular or combination of fungi strains either genetically manipulated to express the claimed enzymes or naturally expressing the claimed enzymes meets the claim limitations.
Claims 13-15 and 21-28 fail to remedy this deficiency.
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 12 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over 958 (CN105733958A), Bizily ("Phytoremediation of methylmercury pollution: merB expression in Arabidopsis thaliana confers resistance to organomercurials." Proceedings of the National Academy of Sciences 96.12 (1999): 6808-6813), Hussein ("Potential capacity of Beauveria bassiana and Metarhizium anisopliae in the biosorption of Cd2+ and Pb2+." The Journal of General and Applied Microbiology 57.6 (2011): 347-355 available at https://www.jstage.jst.go.jp/article/jgam/57/6/57_6_347/_pdf)., and Hu ("Trajectory and genomic determinants of fungal-pathogen speciation and host adaptation." Proceedings of the National Academy of Sciences 111.47 (2014): 16796-16801), as evidenced by Hu alkylmercury lyase and Hu Pyruvate/2-oxoglutarate dehydrogenase (of record) and by Mercuric chloride (retrieved from https://www.sciencedirect.com/topics/pharmacology-toxicology-and-pharmaceutical-science/mercurous-chloride on10/7/25).
Regarding claim 12 and 21, 958 teaches a Fusarium oxysporum for the bioremediation of heavy metals (abstract). 958 teaches the fungus is a plant endophytic fungus (symbiotic relationship with plants). 958 teaches that the fungi can be applied to a plant (p2 paragraphs 10-11). 958 teaches the plant can comprise mercuric chloride (p3 paragraph 12). As evidenced by Mercuric chloride, mercuric chloride is divalent (p3 3rd full paragraph).
958 does not explicitly teach a methylmercury or the Metarhizium fungus.
Bizily teaches that methylmercury is an environmental hazard (abstract). Hussein teaches Metarhizium can absorb heavy metals (abstract). Hussein teaches mercury is a heavy metal (introduction).
958, Bizley, and Hussein do not teach the claimed enzymes.
Hu studies the genetics of Metarhizium fungi (title and abstract). As evidenced by Hu alkylmercury lyase, the Metarhizium fungi contains a gene with the accession number XP_007825874 and therefore is the claimed MMD as evidenced by instant claim 2. As evidenced by Hu Pyruvate/2-oxoglutarate dehydrogenase the Metarhizium fungi contains a gene with the accession number XP_007824121 and therefore is the claimed MIR as evidenced by instant claim 21.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify heavy metal treatment using a fungi/plant of 958 by treating methylmercury as taught by Bizley using a fungi comprising a MMD as taught by Hussein and Hu. One of ordinary skill in the art would be motivated to do so because methylmercury is a known environmental hazard. Metarhizium is able to absorb heavy metals and mercury is a heavy metal. There would be a reasonable expectation of success as 958, Bizley, Hussein, and Hu are in the same field of endeavor of heavy metals and fungi.
Claim 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over 958 (CN105733958A), Bizily ("Phytoremediation of methylmercury pollution: merB expression in Arabidopsis thaliana confers resistance to organomercurials." Proceedings of the National Academy of Sciences 96.12 (1999): 6808-6813) Hussein ("Potential capacity of Beauveria bassiana and Metarhizium anisopliae in the biosorption of Cd2+ and Pb2+." The Journal of General and Applied Microbiology 57.6 (2011): 347-355 available at https://www.jstage.jst.go.jp/article/jgam/57/6/57_6_347/_pdf)., and Hu ("Trajectory and genomic determinants of fungal-pathogen speciation and host adaptation." Proceedings of the National Academy of Sciences 111.47 (2014): 16796-16801), as evidenced by Hu alkylmercury lyase and Hu Pyruvate/2-oxoglutarate dehydrogenase (of record) and by Mercuric chloride (retrieved from https://www.sciencedirect.com/topics/pharmacology-toxicology-and-pharmaceutical-science/mercurous-chloride on10/7/25)., as applied to claims 12 and 21 above, and further in view of Bovet (US20150232867A1)
Regarding claims 13-14, 958, Bizley, Hussein, and Hu do not explicitly teach Pennisetum purpureum and Alba.
Bovet teaches plants for heavy metal reduction (abstract). Bovert teaches methylmercury can be treated with their invention ([0224]). Bovet teaches that Pennisetum purpureum and Acer can be used in their invention ([0199-0200]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the use Pennisetum purpureum and Alba as the plants in the invention of 958, Bizley, Hussein and Hu above. One of ordinary skill in the art would be motivated to do so because this is a simple substitution of known plants for heavy metal reduction. There would be a reasonable expectation of success as Bovet, 958, Bizley, Hussein and Hu are in the same field of endeavor of heavy metal.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over 958 (CN105733958A), Bizily ("Phytoremediation of methylmercury pollution: merB expression in Arabidopsis thaliana confers resistance to organomercurials." Proceedings of the National Academy of Sciences 96.12 (1999): 6808-6813) Hussein ("Potential capacity of Beauveria bassiana and Metarhizium anisopliae in the biosorption of Cd2+ and Pb2+." The Journal of General and Applied Microbiology 57.6 (2011): 347-355 available at https://www.jstage.jst.go.jp/article/jgam/57/6/57_6_347/_pdf)., and Hu ("Trajectory and genomic determinants of fungal-pathogen speciation and host adaptation." Proceedings of the National Academy of Sciences 111.47 (2014): 16796-16801), as evidenced by Hu alkylmercury lyase and Hu Pyruvate/2-oxoglutarate dehydrogenase (of record) and by Mercuric chloride (retrieved from https://www.sciencedirect.com/topics/pharmacology-toxicology-and-pharmaceutical-science/mercurous-chloride on10/7/25), as applied to claims 12 and 21 above, and further in view of Maltzahn (20170020138)
Regarding claim 15, 958 teaches the fungi can be applied to the root (p2 paragraph 18).
958, Bizley, Hussein and Hu do not teach the spore concentration applied to the plant.
Maltzahn teaches an agricultural endophyte-plant compositions, and methods of use (title). Maltzahn teaches that the spores should be grown to at least 102 CFU/ml (spores suspension) ([0015]). This overlaps the claimed range and therefore the claimed range is prima facia obvious. Maltzahn teaches that 10 mL of the suspension can be used ([0520]).
Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the fungi in the concentration and amounts as taught by Maltzahn in the invention of 958, Bizley, Hussein and Hu above. One of ordinary skill in the art would be motivated to do so because 958, Bizley, Hussein and Hu do not provide concentrations and one of ordinary skill in the arts would be motivated to experiment with the fungi quantity. There would be a reasonable expectation of success as Maltzahn, 958, Bizley, Hussein and Hu are in the same field of endeavor of plant endophytes.
Claims 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over 958 (CN105733958A), Bizily ("Phytoremediation of methylmercury pollution: merB expression in Arabidopsis thaliana confers resistance to organomercurials." Proceedings of the National Academy of Sciences 96.12 (1999): 6808-6813) Hussein ("Potential capacity of Beauveria bassiana and Metarhizium anisopliae in the biosorption of Cd2+ and Pb2+." The Journal of General and Applied Microbiology 57.6 (2011): 347-355 available at https://www.jstage.jst.go.jp/article/jgam/57/6/57_6_347/_pdf)., and Hu ("Trajectory and genomic determinants of fungal-pathogen speciation and host adaptation." Proceedings of the National Academy of Sciences 111.47 (2014): 16796-16801), as evidenced by Hu alkylmercury lyase and Hu Pyruvate/2-oxoglutarate dehydrogenase (of record) and by Mercuric chloride (retrieved from https://www.sciencedirect.com/topics/pharmacology-toxicology-and-pharmaceutical-science/mercurous-chloride on10/7/25), as applied to claims 12 and 21 above, as applied to claims 12 and 12 above, and further in view of ARSEF strain list (retrieved from https://www.ars.usda.gov/ARSUserFiles/80620520/arsefpdfs/indices.july2011.pdf on 10/7/35) and Zhang (Zhang "The genome of opportunistic fungal pathogen Fusarium oxysporum carries a unique set of lineage-specific chromosomes." Communications biology 3.1 (2020): 50)
Regarding claim 22-23, Hu teaches their strain is M. robertsii (table 1). 958 teaches a Fusarium oxysporum for the bioremediation of heavy metals (abstract).
958, Bizley, Hussein and Hu do not explicitly teach the claimed deposit numbers
ARESF strain list indicated a strain of M. robertsii with the deposit number 2575 (p469). Zhang teaches a F. oxyzporum with a deposit number of NRRL 32931 (abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the strains of ARESF and NRRL in the method of 958, Bizley, Hussein and Hu above. One of ordinary skill in the art would be motivated to do so because this is a simple substitution of known strains. There would be a reasonable expectation of success as ARESF, Zhang, 958, Bizley, Hussein and Hu are in the same field of endeavor of fungi.
Claim 24-28 are rejected under 35 U.S.C. 103 as being unpatentable over are rejected under 35 U.S.C. 103 as being unpatentable over 958 (CN105733958A), Bizily ("Phytoremediation of methylmercury pollution: merB expression in Arabidopsis thaliana confers resistance to organomercurials." Proceedings of the National Academy of Sciences 96.12 (1999): 6808-6813) Hussein ("Potential capacity of Beauveria bassiana and Metarhizium anisopliae in the biosorption of Cd2+ and Pb2+." The Journal of General and Applied Microbiology 57.6 (2011): 347-355 available at https://www.jstage.jst.go.jp/article/jgam/57/6/57_6_347/_pdf)., and Hu ("Trajectory and genomic determinants of fungal-pathogen speciation and host adaptation." Proceedings of the National Academy of Sciences 111.47 (2014): 16796-16801), as evidenced by Hu alkylmercury lyase and Hu Pyruvate/2-oxoglutarate dehydrogenase (of record) and by Mercuric chloride (retrieved from https://www.sciencedirect.com/topics/pharmacology-toxicology-and-pharmaceutical-science/mercurous-chloride on10/7/25), as applied to claims 12 and 12 above, and further in view of ARSEF strain list (retrieved from https://www.ars.usda.gov/ARSUserFiles/80620520/arsefpdfs/indices.july2011.pdf on 10/7/35) and Zhang (Zhang "The genome of opportunistic fungal pathogen Fusarium oxysporum carries a unique set of lineage-specific chromosomes." Communications biology 3.1 (2020): 50), as applied to claims 12, 21 and 22-23 above, and further in view of Bovet (US20150232867A1)
Regarding claims 24-28, Zhang, ARSEF, 958, Bizley, Hussein, and Hu do not explicitly teach Pennisetum purpureum and Alba.
Bovet teaches plants for heavy metal reduction (abstract). Bovert teaches methylmercury can be treated with their invention ([0224]). Bovet teaches that Pennisetum purpureum and Acer can be used in their invention ([0199-0200]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the strains of ARESF and NRRL in the method of 958, Bizley, Hussein and Hu above. One of ordinary skill in the art would be motivated to do so because this is a simple substitution of known strains. There would be a reasonable expectation of success as ARESF, Zhang, 958, Bizley, Hussein and Hu are in the same field of endeavor of fungi.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TREVOR L KANE whose telephone number is (571)272-0265. The examiner can normally be reached M-F 7:00 am-4:00pm.
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, Melenie Gordon can be reached at 571-272-8037. 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.
/TREVOR KANE/Examiner, Art Unit 1657
/ROBERT J YAMASAKI/Primary Examiner, Art Unit 1657