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 .
This office action is in response to the application filed on December 16, 2022. The earliest effective filing date of the application is June 16, 2020.
Status of Application
The preliminary amendments filed June 26, 2023 have been entered. The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 19, 24, 35, 41 – 43
Newly cancelled claims: 1 – 18, 20 – 23, 25 – 34, 36 – 40, 44 – 55
Amended claims: 19, 24, 35, 41 – 43
Claims currently under consideration: 19, 24, 35, 41 – 43
Specification
The disclosure is objected to because of the following informalities:
On page 42 of the instant specification, between the rows denoting Debaromyces hansenii ATC 3239 and Duganella zoogloeoides ATCC 25935, the strain number column appears to assign strain number ATCC 25935 to Debaromyces hansenii, however strain number ATCC 25935 is a strain of Duganella zoogloeoides.
On page 48 of the instant specification, between the rows denoting Streptomyces cerevisiae and Sanguibacter keddieii DSM 10542, the strain number column appears to assign strain number DSM 10542 to Streptomyces cerevisiae, however strain number DSM 10542 is a strain of Sanguibacter keddieii.
Appropriate correction is required.
Claim Objections
Claim 19 is objected to because of the following informalities: Claim 19 recites “Table B or E” and “Table F.” MPEP 2173.05(s) states “where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience.” Appropriate correction is required.
Claim 24 is objected to because of the following informalities: “an heterologous microbe” in line 2 should be “a heterologous microbe”. Appropriate correction is required.
Claim 35 is objected to because of the following informalities: “a herbaceous plant” in line 1 should be “an herbaceous plant”. Appropriate correction is required.
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.
Claims 19, 24, 35, and 41 – 43 are 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.
Claims 19, 35, 41, and 42 recite “diversified microbial ecology” which renders the claim indefinite. The term “diversified microbial ecology” is 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. It is unclear what the metes and bounds of “diversified” are intended to encompass. Diversified may be interpreted to require two different species of microbe, while other interpretations may merely require two microbes of the same species have different genes. For the purpose of examination, “diversified microbial ecology” is interpreted to mean more than one species of microbe.
Claim 19 recites “derived” which renders the claim indefinite. The term “derived” is 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. It is unclear what the metes and bounds of “derived” are intended to encompass. Molecular elements, such as carbon, can be derived from edible leaves. For the purpose of examination, “derived”, within the context of claim 19, is interpreted to mean any composition comprising any physical matter originally from the microgreen leaf of a plant of the Eruca genus, including the leaf itself.
Claims 19 recites “the heterologous microbe” in line 6, which renders the claim indefinite. It is unclear whether “the heterologous microbe” is referring to both microbes, or just one. It is unclear whether one or both microbes can be selected from Table F. For the purpose of examination, it is interpreted that both microbes can be selected from Table F.
Claim 24 recites “agricultural microgreen plants” which renders the claim indefinite. The term “agricultural” is 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. The term “agricultural” may mean the plant is cultivated, grown at a large scale, edible, or something else. For the purpose of examination, the term “agricultural” is interpreted to mean “edible”.
Claim 41 recites the term “substantially” which is a relative term which renders the claim indefinite. The term “substantially” is 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. The metes and bounds of how much microbial ecology must be retained in the edible leaves is made unclear by the term “substantially”. For the purpose of examination, any amount of microbial ecology in the edible leaves is considered “substantially retained in the edible leaves”.
Claim 42 recites “enhanced” which is a relative term which renders the claim indefinite. The term “enhanced” is 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. It is unclear upon what basis the term “enhanced” is referring to when claiming “enhanced production of endogenous metabolites”. For the purpose of examination, it is interpreted that “enhanced production of endogenous metabolites” means the plant has produced endogenous metabolites as if it is healthy.
Claim 43 recites “the heterologous microbe” in line 2, which renders the claim indefinite. It is unclear whether “the heterologous microbe” is referring to both microbes, or just one. It is unclear whether the edible leaves comprise detectable amounts of one or both microbes. For the purpose of examination, it is interpreted that the edible leaves comprise detectable amounts of both microbes.
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 19, 24, 35, and 41 – 43 are rejected under 35 U.S.C. 101 as evidenced by Agrawal et al. (Latex: A Model for Understanding Mechanisms, Ecology, and Evolution of Plant Defense Against Herbivory. Annu. Rev. Ecol. Evol. Syst. Vol. 40. Pp. 311 – 331 (2009)).
MPEP § 2106 sets forth the Subject Matter Eligibility Test to determine if a claim is directed to patent eligible subject matter. The following analysis is presented within the framework enumerated in MPEP § 2106.
Subject Matter Eligibility Test
Step 1: Applicant’s claims are directed to a product.
Step 2A, Prong 1:
Claim 19 recites a composition comprising the naturally occurring phenomena: leaves of a microgreen plant of the Eruca genus, and two microbial species from Tables B or E which were identified to naturally exist on fruits and vegetables as stated in the instant specification ([00211]; [00240 – 00241]).
Claim 24 recites a composition comprising the naturally occurring phenomena: a seed or seedling of an agricultural microgreen plant, and a heterologous microbe. The composition also comprises (i) a carrier, a tackifier, a microbial stabilizer, a fungicide, an antibacterial agent, an herbicide, a nematicide, an insecticide, a plant growth regulator, a rodenticide, and a nutrient; and (ii) a polymeric substance or an adhesive substance or a polymeric-adhesive substance. Absent evidence to the contrary, (i) and (ii) encompass naturally occurring products. For example, the specification states a carrier may be water ([00146]); and polymeric substances, such as latex, are known to occur in nature.
Claims 35 and 41 – 43 recite compositions comprising the naturally occurring phenomena: edible leaves of an herbaceous plant selected from a member of the Eruca genus, and heterologous microbes.
Claims 19, 24, 35, and 41 - 43 recite nature-based product limitations – they must be evaluated by the markedly different characteristics analysis. See MPEP § 2106.04 (b) - (c).
Markedly different characteristics analysis
If the nature-based product limitation is not naturally occurring, for example due to some human intervention, then the markedly different characteristics analysis must be performed to determine whether the claimed product limitation is a product of nature exception. See MPEP § 2106.04(c)(I). The markedly different characteristics analysis compares the nature-based product limitation to its naturally occurring counterpart in its natural state. Markedly different characteristics can be expressed as the product’s structure, function, and/or other properties. See MPEP § 2106.04(c)(II).
In this case, there is no modification of the ingredients within the claimed composition.
Regarding claims 19, 35, and 41 – 43, while the leaves of the plant of the Eruca genus may be naturally separated from the original plant, there is no process claimed that alters the plant matter in a way that modifies its natural composition. While the microorganisms claimed may have been identified on plants other than the Eruca genus, they are not modified by their addition to a plant alternative to their origin.
Regarding claim 24, while the seed or seedling may have a microbial substance applied to its exterior, there is no process claimed that alters the plant matter in a way that modifies its natural composition. While the microorganisms claimed may have been identified on plants other than the seed or seedling, they are not modified by their addition to a plant alternative to their origin. In regards to the composition applied to the seed or seedling further comprising (i) a carrier (i.e., water), a tackifier, a microbial stabilizer, a fungicide, an antibacterial agent, an herbicide, a nematicide, an insecticide, a plant growth regulator, a rodenticide, and a nutrient; and (ii) a polymeric substance or an adhesive substance or a polymeric-adhesive substance, plant latex is naturally produced by about 10% of flowering plants, as evidenced by Agrawal (p. 312, Introduction). Plant latex comprises natural polymers, such as rubber, and water, and becomes sticky when exposed to air (i.e., latex is also an adhesive), as evidenced by Agrawal (p. 316, Rubber). The limitations of claim 24 encompass applying a composition comprising plant latex and a heterologous microbe to a seed or seedling, without significantly more.
In the instant application, each naturally occurring claim element has the same effect it always had. The claimed naturally occurring products perform in their natural way. Their use in combination does not improve in any way their natural functioning. They serve the ends nature originally provided and act quite independently of any effort of the patentee. As such, the characteristics of the claimed invention are not markedly different from their naturally occurring counterparts. Therefore, the claims are drawn to mixtures of naturally occurring products. Thus, the claims are directed to a judicial exception.
Step 2A, Prong 2: Nothing is done with these naturally occurring products therefore there is no practical application.
Step 2B: Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself. See MPEP § 2106.05. In this case, there are no additional elements.
Therefore, claims 19, 24, 35, and 41 – 43 are not directed to patent eligible subject matter.
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.
Claim 19 is rejected under 35 U.S.C. 102(a)(1) as anticipated by Be Mindful (Soup/Salad/Sauce Tuesday: Miso Soup with Micro-Green Arugula. Be Mindful Be Human. (2017, April 25). https://www.bemindfulbehuman.com/index.php/soupsaladsauce-tuesday-miso-soup-with-micro-green-arugula/).
Be Mindful teaches a miso soup comprising leaves of arugula (i.e., a member of the Eruca genus) microgreens with their roots removed (p. 1, Image; p. 6, Ingredients).
While Be Mindful does not teach at least a portion of the microgreen plant comprises a diversified microbial ecology comprising at least one two heterologous microbes, wherein the heterologous microbes comprise at least two microbial species selected from any two of the species shown in Table B or Table E, or wherein the heterologous microbe comprises a nucleic acid sequence that has at least 97% identity to any one of the sequences shown in Table F, this recitation is directed toward a method of production of the product of claim 19. MPEP § 2113.I teaches even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. Therefore, the structure implied by the process steps of claims 19 have been considered when assessing the patentability of the product.
The structure implied by claim 19 is interpreted to be a food product comprising any physical matter originally from the leaf of a plant of the Eruca genus, including the leaf itself. The plant of the Eruca genus comprises a diversified microbial ecology on at least a portion of the plant, not necessarily the leaves.
A food product comprising arugula (i.e., a member of the Eruca genus) microgreens with a diversified microbial ecology on the roots of the plant, wherein the roots are removed before adding to the food product, is encompassed by claim 19. Therefore, the product of claim 19 is anticipated by Be Mindful.
Claims 35 and 42 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Cheese Grotto (Blanched Asparagus with Arugula, Pine Nuts, and Shaved Parm. Cheese Grotto. (2019, March 27). https://cheesegrotto.com/blogs/journal/blanched-asparagus-with-arugula-pine-nuts-and-shaved-parm?srsltid=AfmBOoq3QzsuSrQ7l87D0eHv6YEDE4UG9Q2mjhjC9dxoDjAr3SUUKFSA).
Regarding claim 35, Cheese Grotto teaches an asparagus salad comprising blanched arugula (i.e., a member of the Eruca genus) leaves (p. 2 – 3, Ingredients and Directions).
While Cheese Grotto does not teach at least a portion of the herbaceous plant comprises a diversified microbial ecology comprising at least two heterologous microbe microbes, this recitation is directed toward a method of production of the product of claim 35. MPEP § 2113.I teaches even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. Therefore, the structure implied by the process steps of claims 35 have been considered when assessing the patentability of the product.
The structure implied by claim 35 is interpreted to be a food product comprising the edible leaves of a plant of the Eruca genus. The plant of the Eruca genus selected for use in a food product comprises a diversified microbial ecology on at least a portion of the plant, not necessarily the leaves.
As to the claim language the "at least two heterologous microbes that (i) synergistically benefit growth of the herbaceous plant or (ii) synergistically benefit resistance of the herbaceous plant to abiotic stress selected from temperature and moisture level", this recitation is deemed to be an intended use in so far as the structure of the product is concerned. In article claims, a claimed intended use must result in structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. MPEP 2111.02. Given asparagus salad comprising blanched arugula (i.e., a member of the Eruca genus) leaves of Cheese Grotto is identical to that of the presently claimed in terms of structure and composition, it meets the intended use of the claimed article.
By blanching the arugula as taught by Cheese Grotto, the microbial ecology is killed. There is no structural difference between blanched arugula comprising a diversified microbial ecology on any portion of the plant and blanched arugula without a diversified microbial ecology. A food product comprising arugula (i.e., a member of the Eruca genus) leaves with a diversified microbial ecology on any portion of the plant, wherein the arugula (i.e., a member of the Eruca genus) leaves are blanched is encompassed by claim 35. Therefore, the product of claim 35 anticipated by Cheese Grotto.
Regarding claim 42, the invention encompassed by claim 35 is anticipated by Cheese Grotto. Cheese Grotto teaches an asparagus salad comprising blanched arugula (i.e., a member of the Eruca genus) leaves (p. 2 – 3, Ingredients and Directions).
While Cheese Grotto does not teach the diversified microbial ecology produces a heterologous metabolite or enhance the production of endogenous metabolites in a tissue of the herbaceous plant, this recitation is directed toward a method of production of the product of claim 42. MPEP § 2113.I teaches even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. Therefore, the structure implied by the process steps of claims 42 have been considered when assessing the patentability of the product.
The structure implied by claim 42 is interpreted to be a food product comprising the edible leaves of a plant of the Eruca genus. The plant of the Eruca genus selected for use in a food product comprises a diversified microbial ecology on at least a portion of the plant, not necessarily the leaves, wherein the diversified microbial ecology produces a heterologous metabolite or plant has produced endogenous metabolites as if it is healthy.
By blanching the arugula as taught by Cheese Grotto, the microbial ecology is killed. There is no structural difference between blanched arugula comprising a diversified microbial ecology on any portion of the plant and blanched arugula without a diversified microbial ecology. A food product comprising arugula (i.e., a member of the Eruca genus) leaves with a diversified microbial ecology on any portion of the plant, wherein the arugula (i.e., a member of the Eruca genus) leaves are blanched is encompassed by claim 42. Therefore, the product of claim 42 anticipated by Cheese Grotto.
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.
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.
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.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Wood et al. (WO 2019133923 A1).
The term “microgreen” is a phase of life of a plant, not a type of plant, therefore any plant can be a microgreen. The term “microgreen” in the context of claim 24 is not considered to be limiting because the claim is directed toward a seed or seedling.
Wood teaches a microbial-based composition (i.e., product comprising heterologous microbes) for use as a plant growth promoting and silage-enhancing agent comprising a co-cultured microorganism consortium (i.e., heterologous microbes – Abstract; [0010]). Wood teaches the microorganism consortium (i.e., heterologous microbes) may comprise two or more co-cultured microorganisms ([0066]). Wood teaches vegetable crops for which the microbial-based composition (i.e., product comprising heterologous microbes) can be found useful include leafy and salad vegetables ([0146]). Wood teaches seeds may be soaked in a microbial-based composition (i.e., product comprising heterologous microbes) prior to planting ([0140]).
Wood teaches the microbial-based composition (i.e., product comprising heterologous microbes) provides qualities useful in the agricultural industry as a microbial inoculant (i.e., the product colonizes plants) that promotes plant health and plant growth ([0012]). By inoculating the plant by soaking the seed in the microbial-based composition (i.e., product comprising heterologous microbes), the microbial-based composition (i.e., product comprising heterologous microbes) would necessarily colonize the plant.
Wood further teaches the microbial-based composition (i.e., product comprising heterologous microbes) is a bioadjuvant which comprises adding the microbial-based composition (i.e., product comprising heterologous microbes) to a tank mix containing fertilizer (i.e., a nutrient), pesticide, surfactant, chemical agent, or combination of these or other ingredients ([0015]). Wood teaches the microbial-based composition (i.e., product comprising heterologous microbes) comprises one or more of wetting, disbursing and/or solubilizing agents mixed in a suitable proportion with a deodorizer extracted from essential oils and additives required to keep the entire formulation stable over a period of at least one year. Wood teaches in this embodiment, the microbial-based composition (i.e., product comprising heterologous microbes) comprises fatty acids, small chain peptides, biopolymers (i.e., polymeric substances), and polyols from the culture broth of the microorganism consortium (i.e., heterologous microbes – [0042]; [0065]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Wood, as described above, to soak a seed of a leafy or salad vegetables (i.e., agricultural/edible plant) in a microbial-based composition (i.e., product comprising heterologous microbes) formulated as a microbial inoculant comprising a microorganism consortium (i.e., heterologous microbes), a fertilizer (i.e., a nutrient), and biopolymers (i.e., polymeric substances) because these techniques and compositions are known to be used in plant growth promotion techniques.
Claims 41 and 43 are rejected under 35 U.S.C. 103 as being unpatentable over Cheese Grotto (Blanched Asparagus with Arugula, Pine Nuts, and Shaved Parm. Cheese Grotto. (2019, March 27). https://cheesegrotto.com/blogs/journal/blanched-asparagus-with-arugula-pine-nuts-and-shaved-parm?srsltid=AfmBOoq3QzsuSrQ7l87D0eHv6YEDE4UG9Q2mjhjC9dxoDjAr3SUUKFSA) as applied to claim 35 above and further in view of Wood et al. (WO 2019133923 A1).
Regarding claims 41, the invention encompassed by claim 35 is anticipated by Cheese Grotto.
Cheese Grotto teaches an asparagus salad comprising blanched arugula (i.e., a member of the Eruca genus) leaves (p. 2 – 3, Ingredients and Directions).
Cheese Grotto does not teach a diversified microbial ecology is substantially retained in the edible leaves of the arugula (i.e., a member of the Eruca genus).
Wood teaches a microbial-based composition (i.e., product comprising a diversified microbial ecology) for use as a plant growth promoting and silage-enhancing agent comprising a co-cultured microorganism consortium (i.e., a diversified microbial ecology – Abstract; [0010]). Wood teaches the microorganism consortium (i.e., diversified microbial ecology) may comprise two or more co-cultured microorganisms ([0066]). Wood teaches the microbial-based composition (i.e., product comprising a diversified microbial ecology) may, when delivered to a plant’s root, foliar surface (i.e., leaves), or tissue system, improve nutrient availability (i.e., synergistically benefit growth of the herbaceous plant) and, in some embodiments, fertilizer efficiency ([0012]). Wood teaches vegetable crops for which the microbial-based composition (i.e., product comprising a diversified microbial ecology) can be found useful include leafy and salad vegetables such as … rocket (arugula – i.e., a member of the Eruca genus – [0146]).
Cheese Grotto and Wood are combinable because they are concerned with the same field of endeavor, namely, preparing arugula. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to apply the microbial-based composition (i.e., product comprising a diversified microbial ecology) to the arugula’s (i.e., a member of the Eruca genus) foliar surface (i.e., leaves), as taught by Wood in the product of Cheese Grotto because when delivered to a plant’s foliar surface (i.e., leaves), the microbial-based composition (i.e., product comprising a diversified microbial ecology) improves nutrient availability and, in some embodiments, fertilizer efficiency.
Wood teaches the microbial-based composition (i.e., product comprising a diversified microbial ecology) provides qualities useful in the agricultural industry as a microbial inoculant (i.e., the product colonizes plants) that promotes plant health and plant growth ([0012]). Because the product is an inoculant, the surface upon which it is applied, when used as taught by Wood, is colonized by the co-cultured microorganism consortium (i.e., a diversified microbial ecology) within the product, thereby being substantially retained in the surface in a detectable amount.
Regarding claim 43, the invention encompassed by claim 35 is anticipated by Cheese Grotto.
Cheese Grotto teaches an asparagus salad comprising blanched arugula (i.e., a member of the Eruca genus) leaves (p. 2 – 3, Ingredients and Directions).
Cheese Grotto does not teach the edible leaves of the arugula (i.e., a member of the Eruca genus) comprise detectable amounts of the heterologous microbe.
Wood teaches a microbial-based composition (i.e., product comprising a diversified microbial ecology) for use as a plant growth promoting and silage-enhancing agent comprising a co-cultured microorganism consortium (i.e., a diversified microbial ecology – Abstract; [0010]). Wood teaches the microorganism consortium (i.e., diversified microbial ecology) may comprise two or more co-cultured microorganisms ([0066]). Wood teaches the microbial-based composition (i.e., product comprising a diversified microbial ecology) may, when delivered to a plant’s root, foliar surface (i.e., leaves), or tissue system, improve nutrient availability (i.e., synergistically benefit growth of the herbaceous plant) and, in some embodiments, fertilizer efficiency ([0012]). Wood teaches vegetable crops for which the microbial-based composition (i.e., product comprising a diversified microbial ecology) can be found useful include leafy and salad vegetables such as … rocket (arugula – i.e., a member of the Eruca genus – [0146]).
Cheese Grotto and Wood are combinable because they are concerned with the same field of endeavor, namely, preparing arugula. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to apply the microbial-based composition (i.e., product comprising a diversified microbial ecology) to the arugula’s (i.e., a member of the Eruca genus) foliar surface (i.e., leaves), as taught by Wood in the product of Cheese Grotto because when delivered to a plant’s foliar surface (i.e., leaves), the microbial-based composition (i.e., product comprising a diversified microbial ecology) improves nutrient availability and, in some embodiments, fertilizer efficiency.
Wood teaches the microbial-based composition (i.e., product comprising a diversified microbial ecology) provides qualities useful in the agricultural industry as a microbial inoculant (i.e., the product colonizes plants) that promotes plant health and plant growth ([0012]). Because the product is an inoculant, the surface upon which it is applied, when used as taught by Wood, is colonized by the co-cultured microorganism consortium (i.e., a diversified microbial ecology) within the product, thereby being substantially retained in the surface in a detectable amount.
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.
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Claim 19 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 74, 76, and 77 of copending Application No. 18/747,158 in view of Rana et al. (Arugula. In: Vegetable Crop Science 1st Edition. CRC Press. Pp. 269 – 276. (2017)) and Choe et al. (The Science behind Microgreens as an Exciting New Food for the 21st Century. Journal of Agricultural and Food Chemistry. Vol. 66(44). Pp. 11519 – 11530. (2018)).
Claim 74 of the reference application teaches “a nutritive food product comprising at least a portion of an edible plant selected from the group consisting of: a vine crop, a leafy vegetable, a cucurbit, a root vegetable, and a perennial and annual bush.” Claim 19 of the instant application recites “a nutritive food product comprising a preparation derived from edible leaves of a microgreen plant selected from a member of the Eruca genus” which is a narrower limitation.
Claim 74 of copending Application No. 18/747,158 does not require the edible plant be a member of the Eruca genus.
Rana teaches arugula, a member of the Eruca genus, is a very low-calorie vegetable, but it provides immensely health-benefiting phytochemicals, antioxidants and vitamins such as vitamin A, thiamine, riboflavin, niacin, pantothenic acid, pyridoxine, vitamin C and vitamin K (p. 269, Composition). Rana teaches arugula contains alpha-lipoic acid, which has been shown to lower glucose levels, increase insulin sensitivity and prevent oxidative stress-induced changes in patients with diabetes (p. 270, Medicinal Uses).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have selected arugula as the leafy vegetable in the nutritive food product of claim 74 of copending Application No. 18/747,158, as suggested by Rana because arugula is a highly nutritious low-calorie food that comprises alpha-lipoic acid, which has been shown to lower glucose levels, increase insulin sensitivity and prevent oxidative stress-induced changes in patients with diabetes.
Claim 74 of copending Application No. 18/747,158 does not require the edible plant be a microgreen.
Choe teaches arugula microgreens have more concentrated nutrients per fresh weight than fully grown arugula (p. 11522, paragraph 4). More specifically, arugula microgreens have three times more ascorbic acid (i.e., vitamin C), and four times more beta carotene (i.e., vitamin A) per fresh weight than fully grown arugula (p. 11522, Table 2).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have selected arugula in the microgreen phase of life as the leafy vegetable in the nutritive food product of claim 74 of copending Application No. 18/747,158, as suggested by Choe because arugula microgreens have more concentrated nutrients per fresh weight than fully grown arugula.
Claim 76 teaches the selection of microbial species from Tables B or E. The tables appear to be identical between applications.
Claim 77 teaches the selection of microbial species from Table F. The table appears to be identical between applications.
Therefore, claim 19 is unpatentable over claims 74, 76, and 77 of copending Application No. 18/747,158.
This is a provisional nonstatutory double patenting rejection.
Claim 24 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 83, and 86 of copending Application No. 18/747,158.
Claim 83 of the reference application teaches “a seed or seedling of an edible plant.” Claim 24 of the instant application recites “a seed or seedling of an agricultural microgreen plant” which is a narrower limitation. While “agricultural” may have many possible meanings, “agricultural” is interpreted to mean the microgreen is of an edible plant. “Microgreen” is a phase of life of a plant, not a type of plant. Therefore, the recitations “a seed or seedling of an edible plant” and “a seed or seedling of an agricultural microgreen plant” encompass the same limitation.
Claim 83 of copending Application No. 18/747,158 does not require the seed or seedling be a microgreen.
Claim 86 teaches the formulation further comprises at least one member selected from the group consisting of an agriculturally compatible carrier, a tackifier, a microbial stabilizer, a fungicide, an antibacterial agent, an herbicide, a nematicide, an insecticide, a plant growth regulator, a rodenticide, a nutrient, and a polymeric and/or adhesive substance.
Therefore, claim 24 is unpatentable over claims 83 and 86 of copending Application No. 18/747,158.
This is a provisional nonstatutory double patenting rejection.
Claim 35 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 74, 79, and 80 of copending Application No. 18/747,158 in view of Rana et al. (Arugula. In: Vegetable Crop Science 1st Edition. CRC Press. Pp. 269 – 276. (2017)).
Claim 74 of the reference application teaches “a nutritive food product comprising at least a portion of an edible plant selected from the group consisting of: a vine crop, a leafy vegetable, a cucurbit, a root vegetable, and a perennial and annual bush.” Claim 35 of the instant application recites “a nutritive food product comprising edible leaves of an herbaceous plant selected from a member of the Eruca genus” which is a narrower limitation.
Claim 74 of copending Application No. 18/747,158 does not require the edible plant be a member of the Eruca genus.
Rana teaches arugula, a member of the Eruca genus, is a very low-calorie vegetable, but it provides immensely health-benefiting phytochemicals, antioxidants and vitamins such as vitamin A, thiamine, riboflavin, niacin, pantothenic acid, pyridoxine, vitamin C and vitamin K (p. 269, Composition). Rana teaches arugula contains alpha-lipoic acid, which has been shown to lower glucose levels, increase insulin sensitivity and prevent oxidative stress-induced changes in patients with diabetes (p. 270, Medicinal Uses).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have selected arugula as the leafy vegetable in the nutritive food product of claim 74 of copending Application No. 18/747,158, as suggested by Rana because arugula is a highly nutritious low-calorie food that comprises alpha-lipoic acid, which has been shown to lower glucose levels, increase insulin sensitivity and prevent oxidative stress-induced changes in patients with diabetes.
Claim 79 teaches the diversified microbial ecology comprising the at least one heterologous microbe benefits growth of the edible plant.
Claim 80 teaches the diversified microbial ecology comprising the at least one heterologous microbe improves resistance of the edible plant to an abiotic stress selected from temperature and moisture level.
Therefore, claim 35 is unpatentable over claims 74, 79, and 80 of copending Application No. 18/747,158.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claims are allowed.
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/L.J.M./
Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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