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 .
Applicant’s election of 1/9/26 is acknowledged. Applicant elected Group iv species, drawn to a secretion of a modified cyanobacterium wherein SEQ ID NO:4 (or DNA encoding it) is suppressed or deleted, without traverse.
Species i-iii and v-viii are hereby withdrawn to non-elected invention.
Claims 1-8, 10-11 are also withdrawn as drawn to non-elected invention.
Applicants' arguments filed on 10/24/25, have been fully considered and are deemed to be persuasive to overcome some of the rejections previously applied. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.
Claim 9 (and species iv, only) is still under examination.
Claim Rejections - 35 USC § 112
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.
Claim 9 is 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. In claim 9, it is unclear if the cell secretion occurs due to deletion or attenuation of SEQ ID NO:4 (or DNA encoding it) function or whether secretion is due to something else in the modified cyanobacterium. More specifically, in the preamble, applicant recites “a function of a protein involved in binding between an outer membrane and a cell wall” but fails to specify which function is referred to. Appropriate clarification is required.
Claim 9 is 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. In claim 9, it is unknown what exactly is meant by “cell wall-pyruvic acid modifying enzyme”. More specifically it is indefinite as to whether said enzyme is a protease, a hydrolase, a ligase etc.
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.
Claim 9 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a plant growth promoter comprising secretion of a modified cyanobacterium wherein the function of SEQ ID NO:4 is suppressed or lost, does not reasonably provide enablement for a plant growth promoter comprising a secretion of a modified cyanobacterium wherein the function 90% homologs of SEQ ID NO:4 are suppressed or lost.
The criteria for undue experimentation, summarized in re Wands, 8, USPQ2n 1400 (Fed. Cir. 1988) are: 1) the quantity of experimentation necessary, 2) the amount of direction or guidance presented, 3) the presence and absence of working examples, 4) the nature of the invention, 5) the state of prior art, 6) the relative skill of those in the art, 7) the predictability or unpredictability of the art, and 8) the breadth of the claims.
The specification fails to teach which specific regions of SEQ ID NO:4 polypeptide are in charge of modulating (inhibiting) secretions in the host cyanobacterium, wherein said secretions induce plant growth. As applicant is aware, 90% homologs of SEQ ID NO:4, which in the sequence listing is disclosed to comprise 300 amino acids total, allow for up to (90/100X300=27) 27 amino acids in SEQ ID NO:4 be deleted, substituted, added etc. Given the fact that some mutations in a polypeptide can potentially result in activation or enhancement of its function, some guidance as to which specific amino acids in homologs of SEQ ID NO:4 should be deleted or suppressed or even absent, to ensure that its host cyanobacterium secrets a product with plant growth promoter activity is needed, wherein said information is currently not provided in the disclosure.
No examples of plant growth inducing secretions obtained by cyanobacteria wherein SEQ ID NO:4 homologs have been identified and deleted can be found either.
The prior art is totally silent as to what regions (or specific amino acids) in SEQ ID NO:4 result in modulation of cell wall-pyruvic acid modification (whatever said phrase means, see 112 second above) such that a cyanobacterium host of SEQ ID NO:4 homologs lacking said regions or said critical amino acids secrets products with plant growth promotion activity.
Therefore, given the lack of examples and scarcity of information as to specific regions or critical amino acids in 90% homologs of SEQ ID NO:4 which need to be absent such that said homologs in cyanobacterium host result in a secretion having plant growth promoter activity and considering the unpredictability of prior art as to the critical residues in SEQ ID NO:4 which must be absent in the claimed homologs to ensure that their host secrets a product which induces plant growth, it is believed that the claim goes beyond the scope of the disclosure and is not fully enabled.
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.
Claim 9 is rejected under 35 U.S.C. 102(b)(2) as anticipated by Haselkorn et al., “Haselkorn” (US patent No. 5,539,092, 7/1996) or, in the alternative, under 35 U.S.C. 103 as obvious over Haselkorn.
Haselkorn teaches about a cyanobacterium Anabaena 7120 (which inherently lacks SEQ ID NO:4 in its entirety or lacks SEQ ID NO:4 homologs having at least 90% identity thereto, see sequence alignment attached showing only sequences having 54% identity to SEQ ID NO:4 of this invention). In column 10, line 2, of said patent, extract of said bacterium has been explicitly mentioned, wherein said extract inherently comprises any secretion of said bacteria and wherein said secretion inherently has plant promoter activity, anticipating claim 9 or in the least rendering it obvious.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARYAM MONSHIPOURI whose telephone number is (571)272-0932. The examiner can normally be reached full-flex.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melenie L 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.
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/MARYAM MONSHIPOURI/Primary Examiner, Art Unit 1651
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