DETAILED ACTION
The present application, filed on or after March 16, 2013, is being exa mined under the first inventor to file provisions of the AIA .
Claims 1, 3, 4, 6-9, 11-17, 19-21 are pending in the instant application. Claims 6, 9 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention.
Claims 1, 3, 4, 7, 8, 11-17, 19-21 are under consideration in this Office Action.
In view of the claim amendment, arguments, and copy of the certificate of deposit filed 02/05/26, the previous rejections of the claims under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, have been withdrawn.
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 of this title, 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 1, 3, 4, 7, 8, 11-17, 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Eng et al. (Optimized Jasmonic Acid Production by Lasiodiplodia theobromae Reveals Formation of Valuable Plant Secondary Metabolites. PLoS One. 2016 Dec 1; 11(12):e0167627; IDs filed 11/18/2022) in view of CN107227264 (10/03/2017; IDS filed 11/18/2022), Padder et al. (Quorum sensing: A less known mode of communication among fungi. Microbiol Res. 2018 May;210:51-58. Epub 2018 Mar 21; IDS filed 11/18/2022).
The arguments filed 02/05/2026 have been considered but are not persuasive.
According to MPEP 2111, claims must be given their broadest reasonable interpretation in light of the specification. Thus, while claims must be given their broadest reasonable interpretation consistent with the specification, limitations of the specification cannot be read into the claims to thereby narrow the scope of the claims. Applicants stated that the inventors found that the claimed process for producing jasmonate using a filamentous fungus of the genus Lasiodiploda wherein the nutrient medium comprises at least one fungal quorum sensing molecule or at least one jasmonate production elicitor produced results that were unexpectedly successful, where a jasmonate production elicitor (Example 4, FIG. 7) surprisingly increased the amount of jasmonate recovered. In Example 4, jasmonate production elicitors of Indole-3-acetic acid sodium salt (IAA), salicylic acid sodium salt (SA), acetylsalicylic acid (ASA), sodium butyrate, valproic acid sodium salt (VA), and hydrogen peroxide were used in the production of jasmonate by Lasiodiplodia Iranensis. However, the claims are not limited to a specific jasmonate production elicitor as shown in Example 4 and FIG.7 and the claims are not limited to increased the amount of jasmonate recovered compared to cultivating a filamentous fungus organisms of the genus Lasiodiplodia without the jasmonate production elicitor.
Therefore, 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 method of Eng et al. by using the Lasiodiplodia iranensis of CN107227264 in the method of Eng et al. and including at least one fungal quorum sensing molecule including farnesol as taught by Padder et al. and at least one jasmonate production elicitor including indole-3-acetic acid as taught by Eng et al.; where one of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do this in order to obtain simple method for producing a jasmonate. Hence, the claimed invention as a whole is prima facie obvious.
Amending the claims to recite the specific jasmonate production elicitors of Indole-3-acetic acid sodium salt (IAA), salicylic acid sodium salt (SA), acetylsalicylic acid (ASA), sodium butyrate, valproic acid sodium salt (VA), and hydrogen peroxide; and that the Lasiodiplodia Iranensis produces increased amounts of jasmonate recovered when culturing with the said the specific jasmonate production elicitors of Indole-3-acetic acid sodium salt (IAA), salicylic acid sodium salt (SA), acetylsalicylic acid (ASA), sodium butyrate, valproic acid sodium salt (VA), and hydrogen peroxide compared to culturing without the specific jasmonate production elicitor would aid in overcoming the rejection.
The reference teachings and rejection of record have been restated below.
Eng et al. teach method for producing a jasmonate (see Pg. 1, Abstract, to improve the production of jasmonic acid by Lasiodiplodia theobromae strain 2334; Pg. 3, first paragraph, to optimize the cultivation conditions of L. theobromae in order to increase jasmonic acid (JA) yield), the method comprising cultivating a strain of a filamentous fungus organism in a nutrient medium under agitation (Pg. 10, Table 5 ... shake cultures of l. theobromae strain 2334; Pg. 5, second paragraph, we cultivated L. theobromae strain 2334 in shake flasks ... using culture medium supplemented with KNO3 as nitrogen source), wherein the nutrient medium comprises at least one carbon source, and at least one nitrogen source; and isolating a jasmonate product from the nutrient medium (Pg. 3, last paragraph, JAs ... extraction was performed as described previously with some minor modifications. Metabolites were extracted from the culture filtrate at 4C under constant shaking (200 rpm, 60 min) in the dark using 0.75 ml MeOH and 2.5 ml Methyl-tert-butylether). Eng et al. teaches cultures grown in medium containing potassium nitrate as nitrogen source produced higher amounts of jasmonic acid than analogous cultures supplemented with ammonium nitrate; Pg. 8, Table1 ... indole-3-carboxylic acid (ICA) and salicylic acid (SA) in the culture medium of L. theobromae strain 2334 ... Culture filtrate was obtained after 9 days of growth in medium containing KNO3 as nitrogen source and cultivated as surface culture of ... 250 mb ... An additional experiment was performed as surface culture of 250 mb using medium. Eng et al. teaches on page 14, paragraphs 1-3, that besides minor amounts of chorismate, we found that trace amounts of IAA (0.03–0.07 mg.L-1, data not shown) were formed by L. theobromae strain 2334. Eng et al. teaches that although IAA has been mainly detected in plants, also microorganisms as well as some animals have the capacity to produce IAA, where in plants IAA functions as regulator of plant development, whereas in animals antitumor activity has been reported
The teachings of the Eng et al. differ from the claims in that Eng et al. does not teach the claimed method using a nutrient medium comprising at least one fungal quorum sensing molecule or at least one jasmonate production elicitor.
Padder et al. teaches a fungal quorum sensing molecule (see Pg. 52, right-hand column, first paragraph, a cell density lower than 106cells/ml, filamentous forms are developed in C. albicans, whereas at higher cell densities the fungus grows as budding yeasts; Pg. 52, left-hand column, first paragraph, filamentation control in pathogenic polymorphic fungus C. albicans by farnesol revealed the phenomenon of QS (Quorum sensing] ... Due to the accumulation of sesquiterpene alcohol farnesol, dense cultures of human opportunistic pathogenic fungus C. albicans has been reported to display a reduced tendency for the yeast-to-hyphal switch, inferring the role of farnesol in inhibiting hyphae formation).
The specification of the instant application states in paragraph [0031] that fungal quorum sensing molecules that may be used according to the present teachings include, but are not limited to, one or more of farnesol.
CN107227264 teaches Lasiodiplodia iranensis bacterium and a method for fermenting and producing jasmonic acid, belonging to the field of biotechnology where the present invention provides a strain DWH-2 capable of producing jasmonic acid, which is identified as Lasiodiplodia iranensis by ITS. CN107227264 teaches that the strain has been preserved in the China Center for Type Culture Collection on May 27, 2017, and the preservation number is: CCTCC NO: M2017288. CN107227264 teaches DWH-2 is cultured on solid medium for 4 to 5 days, and fermented statically in the transfer fermentation medium for 6 to 10 days, and can produce more than 1500 mg/L of jasmonic acid. CN107227264 teaches The invention provides a method for producing jasmonic acid by microbial fermentation, which has great advantages compared with the chemical synthesis method. Claim 2 of CN107227264 suggests growth can be in a rotary or reciprocating shaker. See abstract of CN107227264 and claims.
Therefore, 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 method of Eng et al. by using the Lasiodiplodia iranensis of CN107227264 in the method of Eng et al. and including at least one fungal quorum sensing molecule including farnesol as taught by Padder et al. and at least one jasmonate production elicitor including indole-3-acetic acid as taught by Eng et al. One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do this in order to obtain simple method for producing a jasmonate. It would have been obvious to include two or more of the recited quorum sensing molecules, the jasmonate production elicitor, any of the carbon sources, any recited growth hormone, and adjusting their amounts recited in the claims as routine optimization and/or as desired in view of the reference teachings for production of jasmonate. One of ordinary skill in the art before the effective filing date of the claimed invention would have a reasonable expectation of success in view of the reference teachings showing the production of jasmonate using Lasiodiplodia iranensis. Hence, the claimed invention as a whole is prima facie 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).
Claims 1, 3, 4, 7, 8, 11-17, 19-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15, 20-22, 24, 26 of Serial No. Application 18915912. Applicant’s statement that the rejection be deferred has been considered. However, until a terminal disclaimer is filed the claims stand rejected for reasons of record as restated below.
Although the conflicting claims are not identical, they are not patentably distinct from each other for the following reasons. The claims and/or specification of the copending application teach the claimed method for producing a jasmonate, the method comprising: cultivating a strain of a filamentous fungus organism in a nutrient medium under agitation, wherein the nutrient medium comprises at least one fungal quorum sensing molecule or at least one jasmonate production elicitor, at least one carbon source, and at least one nitrogen, source; and isolating a jasmonate product from the nutrient medium. Thus, the teachings anticipate the claimed invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL 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 mailing date of this final action.
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/CHRISTIAN L FRONDA/Primary Examiner, Art Unit 1652
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