DETAILED ACTION
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 Amendments
Applicant has amended claims 3-4, 6, and 9 to obviate claim objections, as well as cancelled claims 15-16. No new matter has been added.
Accordingly, claims 1, 3-4, 6, and 8-14 remain pending and have been examined on the merits.
Information Disclosure Statement
Applicant requested that the IDS filed on 4/10/2023 be reconsidered since an English translation for foreign patent document #1 was submitted.
Review of the application files revealed that the English translation of CN 109452271 was indeed submitted but previously overlooked. Hence, the IDS has been reannotated to indicate that said document has been considered.
Specification
RE: Objection to the specification
The amendments to the specification are sufficient to overcome the objection.
Claim Objections
RE: Objection to the claims
All minor informalities in claims 3-4, 6, and 9 have been corrected. Moreover, identical claims 15-16 have been cancelled. Claim objections have been withdrawn.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
RE: Rejection of claims 1, 3, 6, 8, 10-11, and 15 under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Niu et al.
Traversal of rejections is based on Niu et al. allegedly not teaching a composition or method that improves rainfastness and/or bioefficacy of microorganisms after water exposure. Applicant contends that rainfastness refers to how resistant a substance is washed off of a surface, which is asserted to be different from water retention aimed by said prior art’s nutritious land colloid.
The traversal has been fully considered and is found unpersuasive. Niu et al. performs the same step of combining microorganisms like phosphate-solubilizing microorganisms (reads on “beneficial microorganisms”) with a colloid like guar gum (reads on “at least one guar gum”) and applying the resulting mixture called “nutritious water-retaining land colloid” to an arid, a semi-arid, or a sandy land (reads on “an agricultural target”, which is defined as encompassing soil; lines 34-35, page 11). The disclosed nutritious land colloid comprises humic acid which helps retain water as applicant pointed out. However, it also contains a colloid like guar gum, which forms a viscous solution or gel in water and holds all components in place. Since a colloid such as guar gum naturally binds humic acid, microorganisms, and hydrophilic monomer together, it inherently improves rainfastness. A chemical composition and its properties are inseparable. Thus, if the prior art teaches using equivalent compositions the same way, the same effects would be necessarily produced.
Hence, the anticipation rejections still stand (but have been modified in consideration of the cancellation of claim 15).
Modified rejections
Claims 1, 3, 6, 8, and 10-11 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Niu et al. (Pub. No. CN 107011477 A).
Niu et al. discloses a nutritious water-retaining land colloid for grass seeds, a method for preparing said colloid, and a method for using it (Abstract; par. [0002]).
The nutritious land colloid comprises microorganisms in a nutrient matrix with soil cultivation properties (par. [0006]), wherein suitable microorganisms include one or more phosphate-solubilizing bacteria, potassium-solubilizing bacteria, nitrogen-fixing bacteria, Bacillus, and Rhizobium (par. [0011]).
The nutritious land colloid is prepared by first heating a potassium humate aqueous solution and mixing it with a colloid like guar gum, simultaneously adding an aqueous solution of hydrophilic monomer and an aqueous solution of cross-linking agent and initiator to the colloid-containing potassium humate aqueous solution to initiate crosslinking, heating the resulting mixture while stirring, and cooling the heated mixture before adding a buffer and microorganisms (par. [0010], [0016]-[0020], [0035]).
Niu et al. reads on the instant application as follows:
Regarding claim 1: mixing the nutritious land colloid, which comprises microorganisms like phosphate-solubilizing bacteria (which are beneficial microorganism) and colloid like guar gum, with grass seeds and then spraying it on soil (par. [0022]-[0024], [0043]) is equivalent to “combining or applying together said beneficial microorganism with at least one guar gum on said agricultural target”.
The colloid’s effect of retaining the microorganisms and water on the grass seed and sprayed soil meets the intended function of “improving rainfastness of at least one beneficial microorganism on an agricultural target”.
Regarding claim 3: mixing a potassium humate aqueous solution with a colloid like guar gum to form a colloid-containing potassium humate aqueous solution, which is subsequently added with an aqueous solution of hydrophilic monomer and an aqueous solution of cross-linking agent and initiator, is the same as “providing a guar gum”.
Adding microorganisms to the colloid-containing mixture, thereby producing a nutritious land colloid, is analogous to “combining said guar gum with at least one beneficial microorganism to obtain the solution”.
Combining the produced nutritious land colloid with grass seeds and then spraying the formed combination on soil is akin to “spraying the resulting solution on the agricultural target”.
Regarding claim 6: combining the colloid like guar gum and microorganisms such as the beneficial phosphate-solubilizing bacteria to yield a nutritious land colloid, followed by combining with grass seeds prior to spraying on soil, which is exposed to environmental conditions like rain and help arid or semi-arid areas to grow green vegetation, improve the soil, and improve the environment (based the nutritious land colloid having the ability to retain water like rain water; par. [0006]), thus meeting “A method to increase bioefficacy of a beneficial microorganism comprising the step of (i) combining or applying together said beneficial microorganism with at least an effective amount of one guar gum and subsequently (ii) submitting said beneficial microorganism to exposure to water.”
Regarding claim 8: the colloid like guar gum being crosslinked is identical to “wherein said guar gum is crosslinked”.
Regarding claim 10: the nutritious land colloid comprising a colloid like guar gum in the amount of 1-5 parts by weight (par. [0008]) corresponds to “An agricultural composition comprising at least one guar gum”.
The one or more microorganisms, which includes beneficial bacteria such as phosphate-solubilizing bacteria, potassium-solubilizing bacteria, nitrogen-fixing bacteria, Bacillus, and Rhizobium, are the same as “and at least one beneficial microorganism”.
Although Niu et al. does not explicitly teach that the amount of the colloid in the the nutritious land colloid to be “a sufficient amount to improve rainfastness of said beneficial microorganism on an agricultural target”, it is an inherent property of crosslinked guar gum to exhibit greater structural integrity which makes it less prone to degradation and withstand harsh environmental conditions, thus increasing the ability to retain mixed in materials like microorganisms.
Regarding claim 11: the crosslinked colloid, such as guar gum, is equivalent to “wherein said guar gum is crosslinked”.
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.
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.
RE: Rejection of claims 1, 3-4, 6, and 8-16 under 35 U.S.C. 103 as being unpatentable over Niu et al. in view of Castaing et al.
Applicant argues that Niu et al. does not disclose a composition and method for improving rainfastness and/or bioefficacy of microorganisms after exposure to water, and that Castaing et al. fails to remedy this deficiency.
Applicant’s argument has been considered and is found unpersuasive for the same reason discussed above (see examiner’s rebuttal in the 35 U.S.C. 102 section). Moreover, Castaing et al. is only applied as a secondary reference to address the limitations of some dependent claims, specifically with regards to the specified average molecular weight of the guar gum and the beneficial microorganism being a biopesticide.
The claims of the instant application are therefore still deemed obvious over the cited prior art. But in light of claim cancellations, the rejections of record have been modified.
Modified rejections
Claims 1, 3-4, 6, and 8-14 are rejected under 35 U.S.C. 103 as being unpatentable over Niu et al. (Pub. No. CN 107011477 A) in view of Castaing et al. (Pub. No. WO 2020/109559 A1).
Niu et al.’s teachings are set forth above and applied herein. Niu et al. is found to anticipate claims 1, 3, 6, 8, and 10-11.
Niu et al. is comparable to the claims below:
Regarding claims 9 and 12: the guar gum is further required to have “an average molecular weight of between about 100,000 Daltons and 2,000,000 Daltons”.
Niu et al. is different from the instant claims in that it does not specify the average molecular weight of guar gum.
Nevertheless, Castaing et al. provides fungicide compositions comprising a biofungicide and a non-derivatized guar gum (Abstract) that can be formulated as a liquid composition for application to seeds and/or soil (lines 30-34, page 8). Castaing et al. teaches that a suitable average molecular weight for guar gum in such compositions is between 100,000 Daltons and 4,500,000 Daltons (lines 14-20, page 6). A person with ordinary skill in the art would have therefore used guar gum having an average molecular weight of 100,000-4,500,000 Daltons in Niu et al. with reasonable expectation that a nutritious land colloid would be successfully produced.
Claims 9 and 12 are thus obvious over Niu et al. in view of Castaing et al..
Regarding claims 13-14: the at least one beneficial microorganism is additionally specified to be “a biopesticide”.
Niu et al. does not particularly teach having a biopesticide as the one or more microorganisms.
Castaing et al., however, teaches that certain bacteria possess strong activity against fungi that cause diseases in plants. It is a good alternative to chemical agents as they are safer to humans and more environmentally friendly (lines 7-26, page 1). In addition, Castaing et al. shows that guar gum can stimulate the growth in biopesticides like Bacillus thuringiensis. Since Niu et al.’s nutritious land colloid contains a colloid like guar gum and one or more microorganisms like Bacillus, it would have been obvious to use a biopesticide as the microorganism because such modification would advantageously help fight or inhibit fungal disease and avoid plant damage. Obviousness is based on the rationale that some teaching, suggestion, or motivation in the prior art would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. See MPEP § 2143.01 and KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007).
Hence, claims 13-14 are obvious over Niu et al. in view of Castaing et al..
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
RE: Nonstatutory double patenting rejections
Applicant did not submit any arguments against the double patenting rejections and merely requests that said rejections be held in abeyance.
However, nonstatutory double patenting rejections cannot be held in abeyance. See MPEP 804(I)(B)(1). Accordingly, it is proper to maintain the rejections (but they have been modified to account for claim amendments in the co-pending application).
Modified rejections
Claims 1, 10, and 13-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, 7-10, 12-14, 16, and 20-21 of co-pending Application No. 17/298310.
The co-pending application is drawn to a fungicide composition comprising a biofungicide and a non-derivatized guar gum, as well as a kit and methods of using said composition. Although the claims at issue are not identical, they are not patentably distinct from each other because the biofungicide is required to be selected from a group that includes beneficial microorganisms like B. subtilis, B. megaterium, B. thuringiensis, and B. japonicum. In one embodiment, the method is directed to treating a plant with the fungicide composition by applying it onto the foliage such as by spraying it onto the plant’s leaves.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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 MICHELLE F PAGUIO FRISING whose telephone number is (571)272-6224. The examiner can normally be reached Monday-Friday, 8:00 a.m. - 4:00 p.m..
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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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/Michelle F. Paguio Frising/Primary Examiner, Art Unit 1651
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