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 .
Election/Restrictions
Applicant's election with traverse of group II, claims 51 – 56, 58 60 – 61, 74 – 81; and species Pseudomonas siliginis, in the reply filed on December 31, 2025 is acknowledged. The traversal is on the grounds that the restriction requirement fails to indicate reasons for the requirement; that the groups have the same functions and bacteria, resulting in the same, coextensive search; there is no serious burden; and that the requirement must show separate classification, separate status in the art or different fields of search.
This is not found persuasive because the restrictions requirement clearly set forth reasons for the requirement in that the groups have at least different classification and different issues under 35 U.S.C. 101 and 35 U.S.C. 112(a). Moreover, the groups were separately classified in the restriction requirement indicating separate status and different fields of search. The groups were indicated independent and distinct in that they do not require the same bacterial strains, activity or components. Even as currently amended to recite the same functions, the groups remain independent and distinct because the composition of group I requires a media composition that is not required by Group II and no specific strain of bacteria in at least claims 1 – 6, 12, 21, 34 – 37, 40 – 41, 45 - 46 which encompass significantly more endophytic bacteria than the claims of Group II. In this regard, the invention of group I encompasses any and all endophytic bacteria which includes at least 200 genera across 16 phyla (p.2 of Ali et al., 2021). Ali indicates data from the rice plant alone shows 4 phyla, 6 classes, 22 orders, 46 families and 74 genera of endophytic bacterial communities have been mined (p.3, fig.1); while the invention of Group II encompasses 4 species, or 24 combinations excluding the innumerous strains therein. While these groups may overlap in search, the search is not coextensive with respect to the millions of combinations encompassed by group I versus the at least 24 combinations encompassed by group II, clearly establishing an undue burden on search. It is further iterated that examining the groups together exert a serious examination burden as they certainly have different issues under 35 U.S.C. 101 and 35 U.S.C. 112(a).
The requirement is still deemed proper and is therefore made FINAL.
Claims 1 – 6, 12 – 18, 21, 32 – 37, 40 – 41, 45 – 46, 51 – 56, 58, 60 – 61 and 74 – 81 are pending; claims 1 – 6, 12 – 18, 21, 32 – 37, 40 – 41, 45 – 46 are withdrawn as being drawn to a non elected groups; claims 53 – 54, 56, 61 do not read on the elected species; claims 51, 54, 55, 58, 60 and 74 – 81 have been considered on the merits insofar as they read on the elected species.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on October 12, 2024; October 8, 2025; and February 19, 2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Specification
The specification is objected to for reciting Herbiconjux, which should be properly spelled Herbiconiux. Appropriate correction is required.
Claim Objections
Claim 74 is objected to because of the following informalities:
Herbiconjux should be spelled Herbiconiux. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 77 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 77 recites a composition comprising an endophytic bacterial strain wherein the strain is tolerant to biocides. The specification fails to describe any heterologous endophytic bacterial strain that is tolerant to “biocides.” The claim is considered a genus claim that encompass a wide array of biocides, or any substance that destroys living things. The specification fails to set forth a representative number of examples in order to reasonably verify possession of such an endophyte strain having tolerance to a potentially enormous number of compounds.
The MPEP states that written description for a genus can be achieved by a representative number of species within a broad generic. It is unquestionable that the claims are broad generics, with respect to all substances that can kill or destroy any living thing. The instant disclosure fails to identify a single strain that is “tolerant to biocides.” The possible variations in endophytes are limitless with potentially millions of types of substance that might kill the bacteria let alone any biocide for any living thing. While the specification does teach specific endophytic strains (e.g., WW5, WW6, WW7, PTDI and WPI) in combination with various commercial fungicides, insecticides and herbicides (e.g., examples 11 – 14), this is not a sufficient description of any strain in combination with any biocide. Moreover, the specification fails to describe any immortal endophytic bacterial strain.
The purpose of the written description requirement is to ensure that the inventor had possession, as of the filing date of the application, of the specific subject matter later claimed by them. A patent specification must describe an invention and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention. Thus, an applicant complies with the written description requirement "by describing the invention, with all its claimed limitations" and by using "such descriptive means as words, structures, figures, diagrams, formulas, etc., that set forth the claimed invention." The specification lacks sufficient variety of species of biocides or strains that are tolerant of the biocides to reflect this variance in the genus since the specification does not provide any examples of such a genus of strains or biocides. Accordingly, the specification fails to provide adequate written description for the genus of “biocides” or endophytic strains tolerant thereof, and does not reasonably convey to one skilled in the relevant art that the inventors, at the time the application was filed had possession of the entire scope of the claimed invention Moreover, the specification neither describes the complete structure of a representative number of species, nor describes a representative number of species in terms of partial structure and relevant identifying characteristics. Absent of such teachings and guidance as to the structure and function of these biocides or strains, the specification does not describe the claimed strains or compounds in such full, clear, concise and exact terms so as to indicate that Applicant had possession of these endophytes or biocides at the time of filing of the present application.
Thus, the written description requirement has not been satisfied.
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 51, 54, 55, 58, 60 and 74 – 81 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.
Claim 51 and its dependents are drawn to a plant inoculant comprising at least one heterologous endophyte bacterial strain, however is rendered indefinite for reciting “heterologous” as it unclear how heterologous intends to qualify the endophytic strain. It is unclear if the strains are genetically “heterologous” (e.g., encoding a heterologous gene); are intended to be in a heterologous mixture (thereby requiring at least 2 different species or strains); or if the term is relative to the intended use of the inoculant (e.g., application to a plant that naturally lacks the strain). Clarification is required.
Claim 58 is drawn to a composition however is rendered indefinite for reciting “microbial nutrient package” as the phrase is not adequately defined by the claim language or specification such that one in the art can clearly delineate the scope of the claim.
Claim 74 is drawn to a composition however is rendered vague and indefinite for reciting “further comprises one or more additional” and “and” in line 4 because it is unclear if the claim requires “one or more” of the species or all of the species. Clarification is required.
Claim 74 is further indefinite for reciting “biocontrol bacterial species” because the phrase is not adequately defined by the claim language or specification such that one would know what is included and excluded from the scope of the claim.
In claim 77, lines 3 – 4, the recitation of “used either as separate applications or as a mixture applied” because it is unclear whether the additional components are part of the inoculant composition. The recited intended use casts uncertainly as to whether these additionally recited components are part of the composition or if the claim intends to recite an intended use of the inoculant composition, e.g. apply with other actives sequentially. Clarification is required. For purposes of examination, the composition is interpreted to further comprise the recited components in the same composition as the inoculant; while the application of the composition is interpreted as an intended use.
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 51, 54, 55, 60 and 74 – 76 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a product of nature without significantly more.
Step 1: Yes. The claims are drawn to an inoculant composition, which is a composition of matter.
Step 2A, Prong 1: Yes. The claims recite an inoculant composition comprising one or more endophytic bacteria, which are products of nature. The specification indicates that each of the claimed strains, Pseudomonas siliginis (WW6), Curtobacterium salicaceae (WW7), Rhizobium populi (PDTI), and Sphingomonas yanoikuyae (WW5), were discovered in branches of willow and poplar trees (paragraph 0006 of the published application), where Pseudomonas siliginis, Curtobacterium Salicaceae and Sphingomonas yanoikuyae inhabit the Salix sitchensis and Rhizobium populi inhabits Populus trichocarpa (see Doty et al., 2009). In claim 76, strain WPI, Rhodoturula graminis, is obtained from Populus trichocarpa (see Firrincieli et al., 2015).
Step 2A, Prong 2: No. The claims do not recite additional elements that integrate these products of nature in a practical application. The activities and characteristics recited in claims 54, 55 and 60 are all properties of the natural strains (See Rho et al., 2020 and Doty et al., 2009); the strains of claim 74 are found together in nature (e.g., WW5, WW6 and WW7 are all “biocontrol bacterial species”) and may therefore co-ferment in nature; and yeast strain WPI inhabits Populus trichocarpa (see Firrincieli et al.). Therefore, the claims encompass strains that are found together in nature, or is a product of nature.
Step 2B: No. The claims do not recite any additional elements; therefore no limitations amount to significantly more than the product of nature.
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.
Claims 51, 54 – 55, 58, 60, 74, 76 – 80 are rejected under 35 U.S.C. 102a1 as being anticipated by Rho et al. (2020).
Regarding claims 51, 74 and 76, Rho teaches compositions comprising Pseudomonas siliginis (WW6), Curtobacterium salicaceae (WW7), Rhizobium populi (PDTI), Sphingomonas yanoikuyae (WW5) and Rhodoturula graminis (WP1) for heterologous application to an apple tree (plant inoculant) (p.3, Table 1).
Regarding claims 54 and 55, although Rho does not teach each of the claimed properties, since the strains are the same as those claimed, they must also exhibit the same traits, characteristics and activity.
Regarding claim 58, the compositions include multiple bacterial strains with plant growth promoting properties, or are plant biostimulants (p.3).
Regarding claim 60, the strains are confirmed to have nitrogenase reductase nif H (p.3).
Regarding claims 77 – 80, the inoculant is added to a liquid medium (adjuvant to enhance application efficiency) and poured into pots around the roots (p.3). In this regard, the inoculant further comprises a carrier for enhancing application to seed, foliar parts and soil.
The reference anticipates the claimed subject matter.
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.
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.
Claims 51, 54 – 55, 58, 60 and 74 – 81 are rejected under 35 U.S.C. 103 as being unpatentable over Rho et al. (2020) in view of Ambrose et al. (US 10212940)
Regarding claims 51, 74 and 76, Rho teaches compositions comprising Pseudomonas siliginis (WW6), Curtobacterium salicaceae (WW7), Rhizobium populi (PDTI), Sphingomonas yanoikuyae (WW5) and Rhodoturula graminis (WP1) for heterologous application to an apple tree (plant inoculant) (p.3, Table 1).
Regarding claims 54 and 55, although Rho does not teach each of the claimed properties, since the strains are the same as those claimed, they must also exhibit the same traits, characteristics and activity.
Regarding claims 58 and 77 – 81, the compositions include multiple bacterial strains with plant growth promoting properties, or are plant biostimulants (p.3) and liquid for application. Rho does not teach the plant inoculant composition wherein it further includes a prebiotic such as a microbial nutrient package, osmoprotectant, buffer, seed lubricant, fungicide, insecticide, herbicide, prebiotic, fertilizer or wherein the bacteria are encapsulated in beads. However, at the time the claims were filed, adding these various components to endophytic bacterial compositions and encapsulating bacteria was well known and practiced in the art. In support, Ambrose teaches endophytic bacterial compositions wherein the compositions include preservatives, carriers, fungicides, nematicides, bactericides, insecticides, herbicides (col.3 line 50 – 68; col.6 line 50 – 55; col.16 line 54-64, col.52 - 54), and are combinable with Bacillus, Curtobacterium, Pseudomonas, Rhizobium and Sphingomonas (col.25 line 18 – 39). Ambrose further teaches encapsulating the bacteria (figures 4, 5, col.52 line 60 – 65). As such, at the time claims were filed, it would have been obvious to one of ordinary skill in the art to include the claimed common additives and carriers to the inoculant compositions of Rho as a matter of routine practice in the art and with a reasonable expectation for successfully obtaining an effective plant inoculant.
Regarding claim 60, the strains are confirmed to have nitrogenase reductase nif H (p.3).
Regarding claim 75, Rho does not teach co-fermenting the species. However, Ambrose teaches the endophyte compositions can be cultured together on a culture medium (col.27 line 45 – 50, col.34 line 10 - 23). As such, at the time claims were filed, it would have been obvious to one of ordinary skill in the art to co-ferment the endophytic bacteria as a matter of routine practice in the art and with a reasonable expectation for successfully obtaining an effective plant inoculant.
Thus, the invention as a whole is prima facie obvious over the references, especially in the absence of evidence to the contrary.
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.
Claims 51, 54 – 55, 58, 60 and 74 – 81 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over:
Claims 251 – 255, 257 – 275, 277 – 295 of copending Application No. 18/223, 989;
Claims 47 – 51, 54 – 55, 58, 66 – 67, 72, 79, 81, 86, 95, 98, 107, 109 – 111, 114 – 115, 117, 123 – 125, 137, 139, 144, 151, 155 – 156, 162, 166, 170, 172 – 173, 183, 185 of copending Application No. 18/134, 993; and
Claims 1 – 22 of copending Application No. 19/374, 874 (reference applications).
Although the claims at issue are not identical, they are not patentably distinct from each other because each of the claim sets are drawn to a plant inoculant composition comprising at least one heterologous endophyte bacterial strain selected from Pseudomonas siliginis, Curtobacterium salicaceae, Rhizobium populi, and Sphingomonas yanoikuyae, wherein they are the same strains (e.g., WW6, WW7, PTDI, WW5, respectively), have the same characteristics and activity, are further combined with at least one of a microbial nutrient package, a plant biostimulant, an osmoprotectant, a buffer, and a seed lubricant; one or more additional Rhizobium species, Mycorrhizae species, Bacillus species, Azotobacter species, Azospirillum species, Sphingobium species, Herbiconjux species, and biocontrol bacterial species; are co-fermented; further includes yeast strain WP1; and further includes one or more of a fungicide, an insecticide, an herbicide, a biostimulant, a plant growth regulator, a prebiotic, an adjuvant, a fertilizer, a carrier, or is in a microbead o bead.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUTH A DAVIS whose telephone number is (571)272-0915. The examiner can normally be reached Monday - Friday (8am - 4pm).
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/RUTH A DAVIS/Primary Examiner, Art Unit 1699