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 .
Remarks
The amendments and remarks filed on 08/27/2025 have been entered and considered. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action. The rejections and/or objections presented herein are the only rejections and/or objections currently outstanding. Any previously presented objections or rejections that are not presented in this Office Action are withdrawn. Claims 1-22 are pending; Claim 23 is cancelled; Claims 1-5, 7-8, 13-20, and 22 are amended; and Claims 1-22 are under examination.
Withdrawal of Objections
The objection to Claims 1, 7-10, and 18-22 in the previous office action is withdrawn due to the amendment of the claims filed on 08/27/2025, except those still present below in this office action.
Withdrawal of Rejections
The rejections of claims 1-22 under 35 U.S.C. 112(b) in the previous office action are withdrawn due to the amendment of the claims filed on 08/27/2025, except those still present below in this office action.
Claim Objections
Claims 1, 7-10, and 18-22 are objected to due to the recitations of “one or more compositions” recited in the claim 1 and “the composition” recited in the claims 7-10 and 18-22. Since the recited limitation “more” refers to at least two compositions, it is suggested to change the “one or more composition” recited in the claim 1 to “one or more compositions” and the recited “the composition” in the claims 7-10 and 18-22 to “the one or more compositions”. Appropriate correction is required.
Claim 13 is objected to due to the recitation of “one or more bacterium of Methylobacterium sp.” Since the recited limitation “more” refers to at least two bacteria, it is suggested to use the plural form of the term and change the recited phrase to “one or more bacteria of Methylobacterium sp.” Appropriate correction is required.
Claim 1 is objected to due to the recitation of “in-furrow” in the preamble of the claim. Since the recited term is referred to a location, it should be changed to a noun form of the term, “a furrow”. This objection I maintained. Appropriate correction is required.
Claim 20 is objected to due to the recitation of “is applied to seed” at line 2 of the claim. To be consistent with the base claim 1, the recited limitation should be changed to “is applied to the legume seed”. This objection I maintained. Appropriate correction is required.
Claims 12, 18, and 19 are objected to due to the recitation of “the one or more Methylobacterium sp.” or “the one or more Methylobacterium”. To be consistent with the base claim 1, the phrases should be changed to “the one or more Methylobacterium bacteria”. Appropriate correction is required.
Claim Rejections - 35 USC § 101
Claims 13-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (specifically, a natural phenomenon) without significantly more.
The claims are directed to a composition which is one of four categories of patent eligible subject matter (Step 1: Yes).
The composition of the base claim 13 comprises: (a) one or more bacteria of Methylobacterium species, and (b) one or more rhizobium bacteria from the family of Rhizobiaceae, Bradyrhizobiaceae or Phyllobacteriaceae, which are all present in nature. There is no indication in the specification that the bacteria recited in the claim have any characteristics (structural or functional) that are significantly different from naturally occurring counterparts in their natural state. Accordingly, the claim 13 is directed to a “product of nature” judicial exception (Step 2A, Prong 1: Yes).
The judicial exception in the claim is not integrated into a practical application because the claim is directed to a product, not a method of use (Step 2A: Prong 2: No).
The claim 13 does not recite any additional limitations/elements to define the claimed composition. As such, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception (Step 2B: No).
Regarding the dependent claims 14-17, they further define the rhizobium and Methylobacterium bacteria, respectively, to be Bradyrhizobium diazoefficiens SEMIA 5080 and/or Bradyrhizobium japonicum 532C, and Methylobacterium radiotolerans, which are all present in nature. There is no indication in the specification that these specifically defined bacteria have any characteristics (structural or functional) that are significantly different from naturally occurring counterparts in their natural state. Accordingly, the claims 14-17 still recite the judicial exception of the base claim 13.
Therefore, Claims 13-17 are deemed to be patent ineligible.
Claim Rejections - 35 USC § 112(b), or 112, Second Paragraph
Claims 1-22 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 pre-AIA the applicant regards as the invention (the new ground of the rejection is necessitated due to Applicant’s amendment to the claims).
Claims 1 and 13 are indefinite due to the recitation of “one or more species of rhizobium strain selected from the families … Phyllobacteriaceae” in the b) of the claims. It is noted that bacterial taxonomic classification organizes bacteria into a hierarchy ranked in the order of Family, Genus, Species, and Strain based on shared characteristics of the bacteria. A bacterial species may comprise multiple different bacterial strains, whereas a bacterial strain can only belong to a single bacterial species. It is unclear how a single “rhizobium strain” recited in the claim can comprise “one or more species” of bacteria. For the purpose of examination, the phrase is interpreted as “one or more bacteria selected from the families … Phyllobacteriaceae”. It is further noted that dependent claims 2-4, 11, 14-16, and 20-22 are rejected for the same reasons and they should be corrected accordingly.
Claims 1 and 13 are indefinite due to the recitation of “improving … yield potential”. According to the Google dictionary, the term “potential” in the yield potential limitation has a meaning of “possibility”. It is unclear how a possibility can be improved. For the purpose of examination, the recited limitation “yield potential” is interpreted as “yield” and the recited phrase is interpreted as “improving … a plant yield”. This rejection is maintained.
Claims 9 and 10 are indefinite due to the recited limitation of “the total number of root nodules present”. There is no sufficient antecedent basis for this limitation in the claim. Furthermore, it is unclear where the recited “root nodules” are present. For the purpose of examination, the recited limitation is interpreted as “a total number of root nodules present in a plant grown from the legume seed which is applied with the composition”. This rejection is maintained.
Claims 11-12, 18, and 20 are indefinite due to the recitation of “a rate of about 0.10 to about 109 cfu/seed” or “a rate of 0.10 to 109 cfu/seed”. Examiner notes that the “cfu” stands for a “colony forming unit”. For a bacterial cell to form a colony, the bacterial cell must be an intact whole cell and viable. As such, the lowest number of cfu is one, i.e. 1 cfu. It is unclear how the recited 0.1 cfu can be used for defining the count of bacterial cells. For the purpose of examination, the recited phrases in the claims 11-12 and the claims 18 and 20 are interpreted as “a rate of 1 to about 109 cfu/seed” and “a rate of 1 to 109 cfu/seed”, respectively. This rejection is maintained.
The remaining claims are rejected for depending from an indefinite claim.
Claim Rejections - 35 USC § 102
Claims 1, 6-10, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Newman et al. (US 2017/0107160, 2017, of record). This rejection is amended.
Newman et al. teach a fertilizer composition comprising hopanoid-producing nitrogen-fixing bacteria (rhizobia) as well as a method of applying the composition as biofertilizer to a leguminous plant or seed thereof, or a furrow, soil surrounding the plant/seed to stimulate plant growth and plant yield, with enhanced tolerance to diverse stresses in plant-microbe symbiotic microenvironments (abstract, paras 0007, 0009—0015, 0019-0020, 0122, Claims 1-5 and 20-23), wherein the nitrogen-fixing bacteria/rhizobia in the families Rhizobiaceae, Bradyrhizobiaceae or Phyllobacteriaceae (para 0057/lines 4-6 from bottom); wherein the leguminous plant or seed thereof is soybean (Glycine max) or a seed thereof (paras. 0060/line 3, and 0067/line 4, claim 20); and wherein the hopanoid-producing bacteria/rhizobia can be bacteria that have been genetically engineered (claims 6 and 10).
Regarding the instant claims 1, 6, and 13, Newman et al. specifically teach a biofertilizer composition for a leguminous plant, in a form suitable for administration to one or more leguminous plant or a seed thereof, and/or for administration to a soil surrounding the one or more leguminous plant or seed thereof, comprising nitrogen-fixing bacteria capable of producing C35 hopanoid, comprising Bradyrhizobium BTAi1, Bradyrhizobium japonicum, Bradyrhizobium diazoefficiens, Bradyrhizobium ORS278, and Methylobacterium nodulans (Claim 5) (Note: these bacteria read on the bacteria/rhizobia recited in the a) and b) of the instant claims 1 and 13), as well as a method of using the biofertilizer composition for fertilizing a leguminous plant (stimulating plant growth and plant yield), wherein the method comprises applying the composition to a leguminous plant or soil surrounding the plant for a time and under conditions to allow symbiosis of the nitrogen-fixing bacteria with the leguminous plant (Claim 21); and wherein the method comprising coating and/or inoculating one or more seeds of the leguminous plant with the biofertilizer composition (Claims 21, 23), and wherein the leguminous plant is a soybean plant (Glycine max) (Claim 20).
Regarding Claims 7-10, Newman et al. teach that the nitrogen-fixing bacteria are symbiotic N-fixing soil bacteria, and they form root nodules with plants/legumes, which fertilize a plant and/or a soil (paras 0027, 0056, 0058, 0057/lines 4-6 from bottom, 0061-62); and as indicated above, the bacteria/rhizobia along with hopanoid stimulate plant growth and plant yield with enhanced tolerance to diverse stresses in plant-microbe symbiotic soil environments. Thus, it is expected that application of the rhizobia/bacteria would have led to increased weights and numbers of root nodule. Furthermore, the limitations recited in the claims are directed to an outcome or function of the application of the rhizobia/bacteria, rather than steps of the claimed method, i.e. the limitations are directed to what the method does, not to what the method is. Newman et al. teach a method having the same step as that of the claimed method. In the absence of evidence to the contrary, it is presumed that a method having substantially the same steps is capable of performing substantially the same function and generating substantially the same outcome. As such, the teachings of Newman et al. read on Claims 7-10.
Therefore, in view of the teachings of Newman et al., the composition and method of Claims 1, 6-10, and 13 are anticipated by the composition and method of Newman et al.
Claim Rejections - 35 USC § 103
Claims 1-3, 6-10, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Newman et al. (US 2017/0107160, 2017, of record) in view of Gomes et al. (BMC Genomics, 2014, 15:643, pages 1-19, of record). This rejection is amended.
The teachings of Newman et al. are described above.
Regarding Claims 2-3 and 14-15, Newman et al. teach the fertilizer composition comprises a rhizobium Bradyrhizobium diazoefficiens, but they are silent about a specific strain of the B. diazoefficiens and do not teach the strain SEMIA 5080.
It would have been obvious to one of ordinary skill in the art to specifically include Bradyrhizobium diazoefficiens strain SEMIA 5080 in the fertilization composition in the method of Newman et al. for providing efficient N2-fixaxtion to a legume plant, thus improving growth and yield of the plant, specifically soybean, because it is well known in the art that B. diazoefficiens SEMIA 5080 is an outstanding N2-fixer for legumes and is commercially available as plant inoculants. In support, Gomes et al. teach that symbiosis of legumes with soil-borne N2-fixing bacteria (often referred as rhizobia) can provide more than 60% of plant’s N requirements (page 1/col 1/lines 4-6); and that the strain SEMIA 5080 of species Bradyrhizobium diazoefficiens has an outstanding efficiency in fixing nitrogen, and has been used in commercial inoculants for application to crops of soybean (Glycine max) (abstract/lines 1-3)
Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention.
Claims 1-3, 6-11, 13-15, and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Newman et al. (US 2017/0107160, 2017, of record) in view of Gomes et al. (BMC Genomics, 2014, 15:643, pages 1-19, of record), as applied to Claims 1-3, 6-10, and 13-15, further in view of Campo et al. (Symbiosis, 2009, 48:154-163, of record), as evidenced by NCBI printout of Bradyrhizobium diazoefficiens SEMIA 5080 (retrieved from the website of https://www.ncbi.nlm.nih.gov/Taxonomy on 2/14/2025, of record) and Sharma et al. (J Food Sci Technol, 2014, 51(3):551–557, of record). This rejection is amended.
The teachings of Newman et al. and Gomes et al. are described above.
Regarding Claims 11, 20 and 22, Newman et al. and Gomes et al do not teach a specific rate of the one or more rhizobium, Bradyrhizobium diazoefficiens SEMIA 5080, for coating a seed of legume/soybean.
It would have been obvious to one of ordinary skill in the art to apply the rhizobium, specifically B. diazoefficiens SEMIA 5080, in the fertilization composition at the claimed rate to a seed of legume/soybean in the method suggested by Newman et al. for coating the seed thus improving root nodulation, plant growth or plant yield, because it is well known in the art to apply B. diazoefficiens SEMIA 5080 to a legume/soybean seed at a rate falling into the claimed ranges, e.g. 8.7 x 105 to 1.1 x 106 cfu per seed. In support, Campo et al. teach applying superior Bradyrhizobium strains, specifically including B. japonicum SEMIA 5080, to soybean seeds for improving biological nitrogen fixation of soybean crop (abstract/lines 1-2, the para spanning both columns in page 154, page 155/col. 2/para 1), wherein the B. japonicum SEMIA 5080 is in an inoculant of approximately 109 cells (i.e. cfu) per gram (page 155, right col., para 1, lines 6-7), and applied to soybean seeds at a recommended dose rate of 500 g inoculant per 500 kg seeds (page 155, right col., para 2, lines 3-4 from bottom). Examiner notes that Bradyrhizobium japonicum SEMIA 5080 taught by Campo et al. is a synonym of Bradyrhizobium diazoefficiens SEMIA 5080, as evidenced by the NCBI printout of Bradyrhizobium diazoefficiens SEMIA 5080 (see page 1, the section “Other names”). It is noted that 100 soybean seeds have a weight from 8.7–11.1 grams, as evidenced by Sharma et al., who teach that a 100-seed weight for soybean ranges from 8.7–11.1 grams (abstract/lines 6-7, page 552/last 3 lines). As such, the 500 kg seeds have a number of seeds from 4.5 x 105 to 5.7 x 105. Accordingly, the recommended dose rate of Campo et al. can be converted to 8.7 x 105 to 1.1 x 106 cfu per seed, which reads on the rates recited in the claims 11 and 20.
Regarding Claim 21, the further limitation requires one or more rhizobium recited in claim 1 to be applied to soil at a rate in a range of 106 – 1016 cfu per hectare. However, the claim does not recite any limitation to require that the claimed method comprises an active step of applying the rhizobium to soil. Given the step of applying to soil is an optional step in claim 1 and the cited prior art renders applying rhizobium to a legume seed at the claimed rates to be obvious, the combined teachings of the cited prior art meet the limitation of claim 21.
Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention.
Claims 1-2, 4, 6-10, 13-14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Newman et al. (US 2017/0107160, 2017, of record) in view of Soulemanov et al. (Microbiol. Res., 2002, 157:25–28, of record). This rejection is amended.
The teachings of Newman et al. are described above.
Regarding Claims 2, 4, 14, and 16, Newman et al. teach the fertilizer composition comprises a rhizobium Bradyrhizobium japonicum, but they are silent about a specific strain of the B. japonicum and do not teach the strain 532C.
It would have been obvious to one of ordinary skill in the art to specifically include Bradyrhizobium japonicum strain 532C in the fertilization composition in the method of Newman et al. for improving root nodulation, growth and yield of a leguminous plant, specifically soybean, because it is well known in the art that B. japonicum strain 532C effectively nodulates the leguminous plant soybean and is commercially available as plant inoculants; and the strain 532C has the advantage of being effective even under cool soil conditions. In support, Soulemanov et al. teach that Bradyrhizobium japonicum 532C effectively nodulates soybean and is used in commercial inoculants; and in Canada, the strain 532C has been found to be more effective under cool spring soil conditions, which are common conditions in soybean growing areas (abstract/lines 1-3; page 25/col. 2: para 1/lines 6-10, last para/lines 1-3).
Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention.
Claims 1, 6-13 and 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over Newman et al. (US 2017/0107160, 2017, of record) in view of Maltzahn et al. (WO 2015/035099, 2015, of record). This rejection is amended.
The teachings of Newman et al. are described above.
Regarding Claims 11-12, 18, and 20, Newman et al. do not teach a specific rate for applying to a leguminous seed a bacterium of Methylobacterium sp. or a rhizobium in the families Rhizobiaceae, Bradyrhizobiaceae, or Phyllobacteriaceae recited in claim 1.
Maltzahn et al. teach a method for providing benefit to a seed or seedling of a plant, or to the plant (e.g. Glycine max/soybean plant) for improving plant nodulation, plant health, and plant yield, comprising: applying a composition comprising bacterial endophytes to the seed or seedling or plant, which confers the benefits of: increased root biomass or length, increased height, shoot length, leaf number, or overall biomass, increased tolerance to environmental stress, and/or an increased plant hormone/metabolite level (abstract, page 3/lines 8-11 and15-22, page 7/para 1, Claims 52-55, 95, 99-100, 112, and 128), wherein the endophytes can be one or more bacteria from Methylobacterium species (reading on the Methylobacterium sp. in claim 1), Bosea species, Bradyrhizobium species Rhizobium species, and/or Shinella species (these read on the rhizobium and the families in claim 1) (page 69/last para, page 70/line 1); and wherein the bacterial endophytes are applied to the seed, seedling, or plant at a rate of at least 1 cfu, at least 100, at least 10000, or at least 30000 or more cfu per plant seed, or in a rage of 102 – 108 cfu per seed, or specifically 2 x106 or 3.13 x107 cfu per seed (page 14/lines 23-25, page 117/lines 4-8, page 216/lines 4-5, page 219/line 26-page 220/line 1, page 312/lines 17-19) (Note: the rates taught by Maltzahn et al. read on the claimed rates).
It would have been obvious to one of ordinary skill in the art to apply the bacterium of Methylobacterium sp. and the rhizobium of Rhizobiaceae, Bradyrhizobiaceae or Phyllobacteriaceae in the fertilization composition respectively at the claimed rate to a seed of legume/soybean in the method of Newman et al. for coating the seed thus improving root nodulation, plant growth or plant yield, because it is well known in the art to apply beneficial bacteria including those of Methylobacterium sp. and those of Rhizobiaceae, Bradyrhizobiaceae or Phyllobacteriaceae to a legume/soybean seed at a rate falling into the claimed ranges, e.g. 1x102 – 1x108 cfu per seed, 2 x106 or 3.13 x107 cfu per seed, as supported by Maltzahn et al. Furthermore, Examiner notes that the claimed rates are in extremely broad ranges, which are well within the purview of one of ordinary skill in the art having the cited references before him/her as a guide. Thus, the claims 11-12, 18, and 20 would have been obvious over the combined teachings of Newman et al. and Maltzahn et al.
Regarding Claims 19 and 21, these claims are directed to the method of claim 1 with the added limitations that one or more rhizobium or bacteria recited in the a) or b) are applied to soil at a rate in a range of 106 – 1016 cfu per hectare. However, the claims do not recite any limitation to require that the claimed method comprises an active step of applying the rhizobium/bacteria to soil. Given the step of applying to soil is an optional step in claim 1 and the cited prior art renders applying rhizobium/bacteria to a legume seed at the claimed rates to be obvious, the combined teachings of Newman et al. and Maltzahn et al. meet the limitations of claims 19 and 21.
Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention.
Claims 1, 5-10, 13, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Newman et al. (US 2017/0107160, 2017, of record) in view of Priya et al. (Int. J. Curr. Microbiol. App. Sci, 8(8): 394-405, published on Aug. 10, 2019, of record). This rejection is amended.
The teachings of Newman et al. are described above.
Regarding Claims 5 and 17, Newman et al. teach the fertilization composition comprises a bacterium of Methylobacterium species, and they do not teach the fertilization composition comprises the bacterium Methylobacterium radiotolerants.
It would have been obvious to one of ordinary skill in the art to further include Methylobacterium radiotolerants in the fertilization composition in the method of Newman et al. for enhancing anti-pathogenic activities of a leguminous plant, and further improving seed gemination, root nodulation, growth, and yield of the plant, because it is well known in the art that M. radiotolerants effectively nodulates a leguminous plant, improves growth and yield of the plant, increases seed gemination; and enhances the plant’s resistance activities against plant pathogens. In support, Priya et al. teach that M. radiotolerants enhances seed gemination as well as root nodulation, growth, and biomass yield of groundnut plant through increased root colonization, increased root length, shoot length, and seeding length (abstract, Table 1); and that M. radiotolerants has ability to induce systemic resistance activity (ISR) against groundnut seed-borne fungal pathogen (abstract, last 3 lines); wherein M. radiotolerants is applied to groundnut seeds (the para spanning pages 396 and 397). Priya et al. further teach that groundnut is one of the most widespread and important food legumes in the world (page 394, left col., lines 1-3).
Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention.
Response to Arguments
Applicant's arguments in the response filed on 08/27/2025 (pages 5-6) have been fully considered but they are either moot because of the objection has been withdrawn, or not persuasive for the following reasons. Applicant argued in the para spanning pages 5 and 6 that the term “in-furrow” refers to the method of applying fertilizers to a seed furrow. Examiner notes that the preamble of the claim 1 defines locations for the application of the composition. It is not proper to use the “in-furrow” to define the location since the “in-furrow” stands for a method, not a location, as admitted by Applicant. As such, this term should be changed to its noun form “a furrow” (or other noun terms), as indicated above in the claim objection. In addition, Applicant's arguments about the objection of claim 20 in page 6 of the response are not persuasive because the claim 20 was not fully amended as Applicant indicated. Thus, this objection is maintained for the reasons indicated above.
Applicant's arguments about the rejection of Claims 1-22 under 35 U.S.C. 102(b) in the response filed on 08/27/2025 (page 7) have been fully considered but they are either moot because the rejection has been withdrawn, or unpersuasive and not sufficient to overcome the rejection for the following reasons. Specifically, Applicant did not address the rejection of Claims 11-12, 18, and 20 due to the recitation of "0.1 cfu” and the claims have not been amended to overcome this rejection. Applicant is reminded of 37 C.F.R. 1.111, requiring a complete reply to every ground of objection and rejection in the prior office action. In addition, Applicant’s comments about agreeing with Examiner’s interpretation of “yield potential” and “the total number of root nodules” in Claims 1, 13, and/or 9-10 are not sufficient to overcome the rejection, because Applicant did not amend the claims. As such, the rejection is maintained in this office action.
Applicant's arguments about the rejection of Claims 13-17 under 35 U.S.C. 101 in the response filed on 08/27/2025 (page 6) have been fully considered but they are not persuasive. Applicant’s arguments are based on the bacteria recited in the claims may exhibit independently in nature and a mixture of these bacteria is not necessarily available in nature. These arguments cannot rule out that the claimed bacteria may exist together in nature. Examiner notes that bacteria of Methylobacterium species as well as rhizobium bacteria from family of Rhizobiaceae, Bradyrhizobiaceae or Phyllobacteriaceae, recited in the claims, are all present in nature, and they are associated with plants and commonly present in soil, as evidenced by the specification of the instant application (page 1) and the attached printout of Methylobacterium-WikipediA (see page 1), which teaches Methylobacterium bacteria are commonly found in soil and association with plants. As such, the claimed bacteria occur naturally and they may be present together in soil surrounding plants. Thus, the composition of the claims 13-17 falls into the judicial exception, and the claims are not patent ineligible for all the reasons indicated above.
Applicant's arguments about the rejection of Claims 1, 6-10, and 13 under 35 U.S.C. 102(a)(1) as being anticipated by Newman in the response filed on 08/27/2025 (pages 8-9) have been fully considered but they are not persuasive for the following reasons.
Applicant argued in page 8, para 2 of the response that N2-fixing rhizobia taught by Newman are naturally incapable of generating C35 hopanoids and they are genetically engineered to obtain ability of generating C35 hopanoid, whereas the current application does not relate to any genetic modification of rhizobia. These arguments are misleading and unpersuasive. Examiner would like to remind that the instant claims do not recite any limitation to limit the claimed rhizobium/rhizobia to be naturally occurring bacteria, not being genetically engineered. As such, the rhizobium/rhizobia recited in the instant claims encompass those genetically engineered; and the genetically engineered rhizobia taught by Newman read on the rhizobium recited in the instant claim 1 and its dependent claims. Furthermore, the rhizobia taught by Newman are not limited to those rhizobia naturally incapable of generating C35 hopanoid and genetically engineered to generate C35 hopanoids. Newman expressively teaches that their fertilizer composition comprises N2-fixing rhizobia that are not genetically engineered and are naturally capable of generating C35 hopanoids (see claim 3, paras 0013/last 6 lines, 0063/lines 1-3, and 0064/lines 1-6). As such, even the instant claims recite limitations to limit the rhizobium/rhizobia to be not genetically engineered, the rhizobia of Newman still read on the claimed rhizobium/rhizobia.
Applicant’s continuous arguments in last para of page 8 in the response are not persuasive. Newman teaches a method comprising exactly the same active step as the method of the claim 1, wherein the composition used in the method of Newman comprises exactly the same N2-fixing bacteria as those defined in (a) and (b) of the claims 1 and 13, as indicated in the 102(a)(1) rejection above. In addition, Newman teaches their composition of N2-fixing rhizobia is a biofertilizer, which stimulates plant growth and improves plant health and yield, thus meeting the claimed limitation. With regard to the limitation about improving plant nodulation in the claim 1, this is directed to outcome of the claimed method. It is presumed that a method having substantially the same steps is capable of performing substantially the same function and generating substantially the same outcome. Thus, the teachings of Newman et al. meet the claimed limitation. Overall, the claimed method is not distinct from the method of Newman et al.
Applicant's arguments about the rejections of Claims 1-22 under 35 U.S.C. 103 over Newman in view of Gomes, Campo, Soulemanov, Maltzahn, and/or Priya in the 08/27/2025 response (page 9) have been fully considered but they are not persuasive.
In this section, Applicant depended on the same arguments previously presented for the 102(a)(1) rejection in page 8 of the response, which have been found not persuasive as Examiner explained above.
Overall, Newman et al. in combination with the cited prior art suggest each and every single element of the claimed method and composition. The conclusion of the obviousness of the claims 1-22 has been established based on the cited prior art for all the reasons indicated above.
Conclusion
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 extension fee 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 date of this final action.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to Qing Xu, Ph.D., whose telephone number is (571) 272-3076. The examiner can normally be reached on Monday-Friday from 9:30 AM to 5:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Manjunath N. Rao, can be reached at (571) 272-0939. Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to the receptionist whose telephone number is (571) 272-1600.
/Qing Xu/
Patent Examiner
Art Unit 1656
/MANJUNATH N RAO/Supervisory Patent Examiner, Art Unit 1656