DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office Action is in response to the paper filed 21 November, 2025. Claims 10-13, and 18 have been amended. Claims 1-9, 14-17, and 19-23 have been cancelled.
The species other than Aureobasidium pullulans having SEQ ID NO: 8 in claims 10 and 18, and the species other than i) in claim 11, remain withdrawn. Claims 10-13 and 18 are currently pending and under examination.
This continuation-in-part application claims benefit of priority to U.S. Provisional Application No. 63/203575, filed July 27, 2021, and U.S. Application No. 17/266489, filed February 5, 2021, which is a §371 Application of PCT/US2019/045932, filed August 9, 2019, which claims benefit of priority to U.S. Provisional Application No. 62/716742, filed August 9, 2018.
Withdrawal of Rejections:
The rejection of claims 11-13 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement, is withdrawn.
The rejection of claims 10-13 and 18 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite, is withdrawn.
New Rejections Necessitated by Amendment:
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 10-13 and 18 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 claim(s) contains 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 10, 11, and 18 have been amended to recite that the 16S rDNA sequence is now only required to have 97% identity to the recited sequence of the generic bacterial species.
These claims and those depending therefrom are considered genus claims that encompass a wide array of bacterial species. The specification fails to set forth a representative number of examples in order to reasonably verify possession of such a potentially enormous number of species. The MPEP states that written description for a genus can be achieved by a representative number of species within a broad generic. It is unquestionable that the claims are broad generics, with respect to any species of Aureobasidium pullulans having 97% identity to SEQ ID NO: 8.
The purpose of the written description requirement is to ensure that the inventor had
possession, as of the filing date of the application, of the specific subject matter later claimed by
him or her. A patent specification must describe an invention and do so in sufficient detail that
one skilled in the art can clearly conclude that the inventor invented the claimed invention. Thus,
an applicant complies with the written description requirement "by describing the invention, with
all its claimed limitations, not that which makes it obvious," and by using "such descriptive means as words, structures, figures, diagrams, formulas, etc., that set forth the claimed invention."
Here, the specification lacks a sufficient variety of species of Aureobasidium pullulans with less than 100% identity to SEQ ID NO: 8 that are shown to be effective for the claimed use of killing a harmful plant in combination with citrus oil, arginine, and sugar to reflect this variance in the claimed method. In fact, there are no additional species of Aureobasidium pullulans recited with a 16S rDNA sequence having 97% or greater, but less than 100% identity, to SEQ ID NO: 8 set forth in the specification as originally filed.
Accordingly, the specification fails to provide adequate written description for the claimed method using any Aureobasidium pullulans strain having 97% identity to SEQ ID NO: 8, and does not reasonably convey to one skilled in the relevant art that the inventors, at the time the application was filed had possession of the entire scope of the claimed invention. Moreover, the specification neither describes the complete structure of a representative number of species, nor describes a representative number of species in terms of partial structure and relevant identifying characteristics of a species of Aureobasidium pullulans with less than 100% identity to SEQ ID NO: 8 that are shown to be effective for the claimed use of killing a harmful plant in combination with citrus oil, arginine, and sugar. Absent of such teachings and guidance as to the structure and function of these Aureobasidium pullulans species with 97% or more identity to SEQ ID NO: 8, the specification does not describe the claimed method in such full, clear, concise and exact terms so as to indicate that applicant had possession at the time of filing of the present application. Thus, the written description requirement has not been satisfied.
Claims 12 and 13 are included in this rejection, as they depend from above rejected claim 10, and fail to remedy the noted deficiencies.
Response to Arguments
In view of Applicant’s amendments, all previous rejections have been withdrawn. Therefore, Applicant’s arguments are moot. However, new rejections have been set forth above.
Conclusion
No claims are allowable. However, the claims appear to be free of the art.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER M.H. TICHY whose telephone number is (571)272-3274. The examiner can normally be reached Monday-Thursday, 9:00am-7:00pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sharmila G. Landau can be reached at (571)272-0614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER M.H. TICHY/Primary Examiner, Art Unit 1653
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