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 .
Claim Interpretation
The claimed strains have undergone several name changes. Since the prior art uses the previous names, the following table indicates how they were renamed and, for the purpose of this action, are considered synonyms. These names were taken from Mary Ellen Sanders (ISAPP, April 15, 2020).
Prior Name
Current Name
Lactobacillus fermentum
Limosilactobacillus fermentum
Lactobacillus casei
Lacticaseibacillus casei
Lactobacillus plantarum
Lactiplantibacillus plantarum
35 U.S.C. 101 REJECTION BASED ON JUDICIAL EXCEPTIONS
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 12-14 and 28 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claim(s) 12-14 have been amended to a kit comprising:
Limosilactobacillus fermentum;
Lacticaseibacillus casei;
Lactiplantibacillus plantarum; and
a yeast.
The kit is interpreted as a collection of bottles/containers, each holding one of these naturally occurring microbes. The microbes are not mixed into a composition, but read as a collection of discrete microbes in generic containers where no limitation differentiation them form their natural counterpart.
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.
Claim(s) 12, 13, and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wood et al. (WO 2019/133923, published July 04/2019).
Wood et al. teach a plant fertilizing composition consisting of at least two microorganisms selected from the group consisting of [0061]:
Lactobacillus casei;
Lactobacillus fermentum;
Lactobacillus plantarum; and
Saccharomyces cerevisiae.
Wood et al. teach the composition comprises one of more specific strains of Lactobacillus plantarum [0093] which reads on at least two strains of L. plantarum so the composition would comprise 5 microorganism (2 x L. plantarum, 1 x L. Case, 1 x L. fermentum, and 1 x S. cerevisiae). The composition can include calcium including calcium carbonate and/or calcium phosphate [0071, 0495].
While Wood et al. does not expressly teach all the claim limitations in a single embodiment, it would be obvious for one of ordinary skill in the art to perform the claimed method after reviewing the entire disclosure. Therefore the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response To Applicant’s Arguments
Applicant's arguments have been fully considered but they are not persuasive. Wood et al. was used in a previous rejection. Some of the Applicant’s arguments are pertinent to this rejection.
The Applicant argues that Wood et al. requires a consortia of bacteria that is selected from a long laundry list of microorganisms useful as a fertilizer. This is not persuasive because [0061] of Wood et al. clearly teach at least two microorganisms from a list of 14 microbes. Which is not considered overwhelming nor so broad that it does not teach the Applicant’s invention. It is not outside one of ordinary skill to choose a composition of all 14 microbes since they are all taught for the same purpose. While [0093] of Wood et al. does teach a long list of Lactobacillus plantarum strains, claims 12 and 13 do not limit the bacteria to a particular strain, and it would be obvious for one of ordinary skill to select any two or more for the invention since they are taught as suitable for enhancing plant growth.
The Applicant argues that the claims and Experiments disclosed by Wood et al. do not teach the bacterial combination of the current claims. M.P.E.P. § 2123 state:
"The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994)
In the instant case, all of the microorganisms claimed are expressly taught in a single paragraph of Wood et al. Considering Wood et al. for all it contains appears to read on the claimed composition, which is simply a composition or kit comprising four specifically named microbes. However obviousness rejections such as this, are often overcome by a teaching of unexpected results and amending the claims so they are commensurate with these results.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wood et al. (WO 2019/133923) as applied to claims 12, 13, and 28 above, and further in view of CN106927941A. This rejection is new because the references (Wood et al. and CN’794) are recombined in a different order with a different rational.
Wood et al. teach a plant fertilizing composition consisting of at least two microorganisms selected from the group consisting of [0061]:
Lactobacillus casei;
Lactobacillus fermentum;
Lactobacillus plantarum; and
Saccharomyces cerevisiae.
The composition can include calcium including calcium carbonate and/or calcium phosphate [0071, 0495]. This composition is suitable to fertilize corn, wheat, rice, fruit crops, peanut, sugar cane and tobacco (Wood, [0145, 0146, 0150]). Wood et al. teach the composition comprises one of more specific strains of Lactobacillus plantarum [0093] which reads on at least two strains of L. plantarum. Wood et al. does not teach a specific strain of L. plantarum subsp. plantarum. This would be obvious in view of CN’941 teach a fertilizer composition comprising (pg. 7, see F and G):
Lactobacillus plantarum (Lactobacillus plantarum Holland) P-8; and
Saccharomyces cerevisiae.
for rice, wheat, corn, sugarcane, tobacco, peanut and fruit plants (pg. 4, last full paragraph). Lactobacillus plantarum P-8 was renamed Lactobacillus plantarum subsp. plantarum P-8 or Lactiplantibacillus plantarum subsp. plantarum P-8 as supported by (NCBI Taxonomy ID 767468).
It would be obvious for one of ordinary skill in the art to use the Lactobacillus plantarum P-8 strain in the composition of Wood et al. since this strain is suitable as a fertilizing composition for the same crops. One of ordinary skill would recognize the L. plantarum P-8 strain as an equivalent microbe for the composition of Wood et al. since it is taught to fertilize the same plants (MPEP 2144.06 and 2141 III (B)).
Therefore the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
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.
In response to this office action the applicant should specifically point out the support for any amendments made to the disclosure, including the claims (MPEP 714.02 and 2163.06).
CONTACT INFORMATION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THANE E UNDERDAHL whose telephone number is (303) 297-4299. The examiner can normally be reached Monday through Thursday, M-F 8-5 MST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at (571) 272-3311.The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THANE UNDERDAHL/Primary Examiner, Art Unit 1699