DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
2. The information disclosure statements (IDS) submitted on 02/02/23 and 05/03/23 were filed and entered. The submissions are in compliance with the provisions of 37 CFR 1.97 and have been considered by the Examiner.
Election/Restrictions
3. Applicant's election, with traverse, of Group I and species: Firmicutes, White Blister, and Class Sordariomycetes, in the reply filed on 12/10/25, is acknowledged.
The traversal is on the ground(s) that (A) the Written Opinion of the International Searching Authority (PCT /EP2021/071388) found unity of invention (Box IV on the Written Opinion is not checked which would indicate the absence of a "lack of unity of invention") and on this basis alone, the Restriction Requirement is unwarranted and should be withdrawn (see Remarks, page 9) and (B) the four groups of claims are inexorably linked so there would be no additional search burden present during examination and any art relevant to one group would be relevant to all four (see Remarks, page 10).
This is not found persuasive because (A) the USPTO is not bound by the anything found on the International Search Report and/or the Written Opinion and to demand such is improper; and (B) “inexorably linked” is not the metric by which Unity of Invention is evaluated. In contrast, as is properly set forth in the Restriction Requirement, the four groups of inventions identified do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical feature. In other words, the four groups lack unity of invention because even though the inventions of the groups require the shared technical feature of a composition comprising nicotinic acid, biotin and methionine, this shared technical feature is not a special technical feature as it does not make a contribution over the prior art in view of, for example, Sorjima et al. 2011 (US 2011/0009262 A1; see rejection below). Consequently, it remains the Office’s position that Unity of Invention is lacking; see 37 CFR 1.475(b) and MPEP 1800. Further, with regards to a lack of burden and co-extensive art, the Office disagrees and notes the groups of inventions require different search queries and are likely to raise different non-prior art issues under the other statutes; thus, these arguments are not persuasive.
The requirement is still deemed proper and is therefore made FINAL.
Claim Status
4. The amendment, filed 12/10/25, has been entered.
5. Claims 1-20 are pending. Claims 8-15 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/10/25. Claims 1-7 and 16-20 are under examination.
6. The current claim set includes improper status identifier(s). For example, claim 2 is marked “Previously Presented” but has markings to indicate current amendments (e.g. see line 14) and claim 9 is marked “Currently Amended” yet has no corresponding markings to indicate amendments (e.g. see 37 CRF 1.121(c) and MPEP 714). Appropriate correction is required in the next response to avoid a Notice of Non-compliance.
Claim Objections
7. Claims 1, 2, 5, 6, 7, 16, 19, and 20 are each objected to because of the following informalities: improper formatting (see MPEP 608.01(m)). Each claim is improperly formatted with dashes as bullets wherein simple line indentations are used to demarcate steps in a method and/or components in a product. In addition, it is noted that a dash is also accepted notation for the negative (i.e. without); thus, it is potentially unclear if the components/steps are required or not. The Office suggests the removal of all dashes and the use of indentations, with or without, commas and/or semicolons and/or lettering (e.g. see claims 10 and 11) to properly demarcate the required components. Appropriate correction is required.
8. Claim 4 is objected to because of the following informalities: improper Markush-type language (i.e. see MPEP 2173.05 (h)). The proper language for a list of alternatively useable species is either (a) wherein R is selected from the group consisting of A, B, C and D or (b) wherein R is A, B, C, or D; however claim 4 uses a combination of both (see lines 4 and 5). Appropriate correction is required.
Claim Rejections - 35 USC § 112
9. 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.
10. Claims 2-3, 5, 7 and 16-17 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 2 is indefinite because of the use of parentheses. Although parenthesis may be appropriate when defining an abbreviation or acronym, the inclusion of parentheses for phrases (e.g. see lines 8-9), raises uncertainty as to whether the feature in the parentheses is optional or always present. Thus, clarification is required to ascertain the metes and bounds of these claims.
The terms/phrases “slow release” and “discouraged” in claims 2, 7, 16, and 17 are each a relative term/phrase which renders the claim indefinite. The terms “slow release” and “discouraged” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In other words, to what degree of “slow” and “discouraged” would be included vs. excluded in the scope? Accordingly, clarification is required to remove scope ambiguity.
Further, claims 2, 3, 5, 7, 16, and 17 are each indefinite because it is unclear if the component recited is required or not based on the claimed range of concentrations encompassing 0 grams per liter (i.e. not required). For the purpose of compact prosecution, any claimed range encompassing 0 has been interpreted as an optional component (e.g. slow release amino acid in claims 2, 7, and 16; yeast extract and yeast autolysate in claims 3, 7, and 17; and calcium nitrate in claim 5). Nevertheless, clarification is required to ascertain what Applicant intended to encompass by including zero in the claimed range.
Accordingly, clarification is required to remove scope ambiguity and ascertain the metes and bounds of these claims.
Claim Rejections - 35 USC § 102
11. 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.
12. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
13. Claims 1-3, 6, 16-17, 19 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Abdou et al. 1975 (US 3,871,967).
Abdou teaches a nutrient medium composition for growing microorganisms (i.e. a fermentation medium) comprising 0.005-0.02 g/l of nicotinic acid, 0.0001-0.0004 g/ml biotin, 0.15-0.6 g/l of methionine; along with 1-4 g/l of glucose and 0.4-1.6 g of additional amino acids such as histidine (e.g. see Abdou claim 1; meeting limitations found in instant claims 1, 6, 19 and 20).
With regards to “…for a production of a plant health promoting microorganism”; this limitation in the preamble does not add an additional component to the fermentation medium and thus has been interpreted as an intended use thereof; see MPEP 2144.07.
With regards to components in claims 2, 3, 16 and 17; it is noted these elements include 0 g/l (i.e. none) and thus Abdou also meets the broadest reasonable interpretation of these limitations (i.e. optional; see 112(b) rejection above).
Therefore, Abdou anticipates the invention as claimed.
Claim Rejections - 35 USC § 102
13. Claims 1-4, 6-7, 16-17, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Soejima et al. 2011 (US 2011/0009262).
Soejima teach media for growing root health promoting microorganisms for improving plant health comprising 10 g/l glucose, 1 mg/l of nicotinic acid, 0.01 g/l of biotin, 0.1 g/l of methionine, and additional amino acids such as 0.1 g/l of arginine and 0.2 g/l of cysteine (e.g. see [0008-12, 0037, 0052, ] and Example 1; meeting limitations in instant claims 1, 4, 6, and 20). Soejima teaches compositions comprising GYP (glucose, yeast and peptone) comprising 20 g of glucose, 10 g of yeast extract and 10 g of peptone per liter of water, with and without amino acids such as phenylalanine and tryptophan; see [0054-58, 0014] and Examples 1 and 6; meeting limitations found in instant claims 2, 3, 7, 16, and 17). Thus, Soejima anticipates the invention as claimed.
Claim Rejections - 35 USC § 103
14. 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.
15. 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.
16. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
17. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
18. Claims 1-7 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Soejima et al. 2011 (US 2011/0009262) in view of Hughes et al. 1991 (Metal speciation and microbial growth – the hard and soft facts; Journal of General Microbiology 137: 725-734).
The teachings of Soejima are set forth above.
With regards to the specific concentrations in claims 5 and 18-19; it is noted that MPEP 2144.05 states, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical (emphasis added). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997)." In the instant case, it is the Office’s position that all concentrations in all claims amount to results-effective variable(s) and thus there is motivation for one of ordinary skill to optimize each of them through routine experimentation (see MPEP 2144.05II(B)).
Therefore, the difference between the prior art and the invention is the inclusion of the trace elements found in dependent claim 5.
However, Hughes teaches microorganisms require certain essential metallic elements for growth and function (see page 725, left column) which are typically added to growth media (see page 725, right column), including Manganese, Copper, Molybdenum, Calcium and Iron (see Figure 1 and Tables 2 and 3).
Therefore, it would have been prima facie obvious, before the effective filing date of the claimed invention, to a person of ordinary skill in the art, to modify the base composition for culturing microorganisms for improving plant health, as taught by Soejima, by adding trace elements including Manganese, Copper, Molybdenum, Calcium and/or Iron, in optimized concentrations, because each of these elements was already recognized as required for growth and functioning of microorganisms. Thus, each element is taught in the prior art and the combination has a beneficial result; however, the combination amounts to no more than a predictable use of prior art elements according to their established functions. The person of ordinary skill in the art would have been motivated to make the modification because these elements were recognized as essential for growing microorganisms, as taught by Hughes. The person of ordinary skill in the art would have had a reasonable expectation of success because Soejima had already taught a fermentation medium for growing microorganisms containing the primary components of nicotinic acid, biotin, and methionine and Hughes had already taught that trace elements such as Manganese, Copper, Molybdenum, Calcium and/or Iron were essential for microbial growth and function. Therefore, the combination leads to expected results because each element performs the same function as it does individually.
Additionally, KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007), discloses that applying a known technique to a known device, method or product ready for improvement is obvious because a particular known technique is recognized as part of the ordinary capabilities of one skilled in the art. In the instant case, Soejima contains a “base” product of a microbial growth media containing nicotinic acid, biotin and methionine; and Hughes contains a similar method for growing microorganisms wherein the technique of adding trace elements to fermentation media, is taught as advantageous. Thus, one of ordinary skill in the art would have recognized that applying the known technique taught by Hughes would have yielded predictable results (i.e. the same advantages) and an improved system.
Therefore, the claimed invention is prima facie obvious in view of the teachings of the prior art, absent any convincing evidence to the contrary.
Conclusion
19. No claims are allowed.
20. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARY MAILLE LYONS whose telephone number is (571)272-2966. The examiner can normally be reached on Monday-Friday 8 am to 5 pm EST. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http: //www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dan Kolker can be reached on (571)-272-3181. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
21. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARY MAILLE LYONS/Examiner, Art Unit 1645
January 20, 2026