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 Status
Claim 2 was canceled.
Claims 1 and 3-18 are pending.
Claims 5-10 and 14-18 were withdrawn from further consideration (see below).
Claims 1, 3-4 and 11-13 are under consideration.
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 12/28/2025 is acknowledged.
Claim(s) 5-10 and 14-18 were/was withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/28/2025.
Claim Objections
Claim 1 is objected to because of the following informalities: “a pathogenic organism” in line 2 should read “a pathogenic microorganism” to be consistent with “pathogenic microorganism” in line 6. Furthermore, “a pathogenic microorganism” in line 6 should read “the pathogenic microorganism” because “a pathogenic microorganism” has already recited in line 2. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: it is not clear if both Huanglongbing and zebra chip disease recited in line 7-9 occur in the listed plants, or only zebra chip disease occurs in the listed plants. Furthermore, the listed plants are not crop diseases and therefore cannot be listed after “selected from the group consisting of” language. Therefore, it is suggested that Applicant amend line 7-9 as follows:
wherein the crop disease is selected from the group consisting of citrus Huanglongbing, and Zebra chip disease, wherein the crop is selected from the group consisting of potato, tomato, other plants of the family Solanaceae, and plants of the family Apiaceae and Umbelliferae.
Appropriate correction is required.
Claim 1 is objected to because of the following informalities: “family Apiaceae and Umbelliferae” should read “family Apiaceae” because Apiaceae and Umbelliferae refer to the same family of plants and while the name Umbelliferae is still commonly used, Apiaceae is the accepted and preferred name in contemporary nomenclature.
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.
Claims 1, 3-4 and 11-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The invention appears to employ novel biological materials, specifically the Pseudomonas bacterial strains Pseudomonas soli 0617-T307 (Accession No. PTA-126796), Pseudomonas soli 0917-T305 (Accession No. PTA-126797), Pseudomonas soli 0917-T306 (Accession No. PTA-126798), Pseudomonas soli 0917-T307 (Accession No. PTA-126799), Pseudomonas mosselii 0118- T319 (Accession No. PTA-126800), Pseudomonas mosselii 0318-T327 (Accession No. PTA- 126801), and Pseudomonas mosselii 0418-T328 (Accession No. PTA-126802) as recited by instant claims 1 and 11. Since the biological materials are essential to the claimed invention, they must be obtainable by a reproducible method set forth in the specification or otherwise readily available to the public. If the biological materials are not so obtainable or available, the requirements of 35 U.S.C. § 112 may be satisfied by a deposit of the biological materials.
The specification does not disclose a repeatable process to obtain the biological materials and it is not apparent if the biological materials are readily available to the public. It is noted that Applicant has deposited Pseudomonas soli 0617-T307 (Accession No. PTA-126796), Pseudomonas soli 0917-T305 (Accession No. PTA-126797), Pseudomonas soli 0917-T306 (Accession No. PTA-126798), Pseudomonas soli 0917-T307 (Accession No. PTA-126799), Pseudomonas mosselii 0118- T319 (Accession No. PTA-126800), Pseudomonas mosselii 0318-T327 (Accession No. PTA- 126801), and Pseudomonas mosselii 0418-T328 (Accession No. PTA-126802) (paragraph 0042, page 9-10 of instant specification), but there is no indication in the specification as to public availability. If the deposit is made under the Budapest Treaty, then an affidavit or declaration by applicant or someone associated with the patent owner who is in a position to make such assurances, or a statement by an attorney of record over his or her signature and registration number, stating that the deposit has been made under the terms of the Budapest Treaty and that all restrictions imposed by the depositor on the availability to the public of the deposited material will be irrevocably removed upon the granting of a patent, would satisfy the deposit requirement made herein. If the deposit has not been made under the Budapest Treaty, then in order to certify that the deposit meets the criteria set forth in 37 C.F.R. §§ 1.801-1.809, Applicant may provide assurance of compliance by an affidavit or declaration, or by a statement by an attorney of record over his or her signature and registration number, showing that:
(a) during the pendency of this application, access to the invention will be afforded to the Commissioner upon request;
(b) all restrictions upon availability to the public will be irrevocably removed upon granting of the patent;
(c) the deposit will be maintained in a public depository for a period of 30 years or 5 years after the last request or for the effective life of the patent, whichever is longer;
(d) a test of the viability of the biological material at the time of deposit will be made (see 37 C.F.R. § 1.807); and
(e) the deposit will be replaced if it should ever become inviable.
Applicant’s attention is directed to M.P.E.P. §2400 in general, and specifically to §2411.05, as well as to 37 C.F.R. § 1.809(d), wherein it is set forth that “the specification shall contain the accession number for the deposit, the date of the deposit, the name and address of the depository, and a description of the deposited material sufficient to specifically identify it and to permit examination.” The specification should be amended to include this information, however, Applicant is cautioned to avoid the entry of new matter into the specification by adding any other information.
Claim Rejections - 35 USC § 102
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)(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.
Claim(s) 1, 3-4 and 11-13 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Yang et al (WO2022/075969; published 4/14/2022; effectively filed on 10/5/2020; PTO-892).
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claim 1 and 11, Yang teaches a method of growing bacteria to enhance production of protective metabolites, comprising: i. growing Pseudomonas bacteria (claim 1). Yang teaches that the bacteria is selected from the group consisting of Pseudomonas soli 0617-T307 (Accession No. PTA-126796), Pseudomonas soli 0917-T305 (Accession No. PTA-126797), Pseudomonas soli 0917-T306 (Accession No. PTA-126798), Pseudomonas soli 0917-T307 (Accession No. PTA-126799), Pseudomonas mosselii 0118-T319 (Accession No. PTA-126800), Pseudomonas mosselii 0318-T327 (Accession No. PTA-126801), and Pseudomonas mosselii 0418-T328 (Accession No. PTA- 126802) (claim 3). Yang teaches formula (I) (claim 6). Yang teaches “In a seventh aspect, a method of controlling bacterial crop diseases is provided. The method includes several steps. A first step includes producing an agricultural composition comprising protective metabolites from Pseudomonas bacteria purified by the method of the fifth aspect or any of the respects thereof. A second step includes applying said agricultural composition to crops to inhibit the growth of pathogenic microorganisms.” [0060].
Regarding wherein-clause of claim 1 “wherein the crop disease is selected from the group consisting of citrus Huanglongbing, Zebra chip disease of potato, tomato, and other plants of the family Solanaceae, and plants of the family Apiaceae and Umbelliferae”, this wherein-clause is for intended use and does not change the active process steps (i) and (ii) of instant claim 1.
Regarding claim 4 and 12, Yang teaches “the crop is selected from one or more of Bananas, apples, pears, crabapples, citrus, potatoes, pumpkins, onions, rice, African violets, plant species of Cruciferae, Solanaceae, Cucurbitaceae including carrots, potatoes, tomatoes, eggplants, leafy greens, squashes and cucurbits, peppers and green peppers, olive, stone and pome fruit plants including olives, peaches, walnuts.” [0054].
Regarding claim 3 and 13, wherein-clause of instant claim 3 and 13 is intended use and does not change the active process steps of claimed method of instant claim 1 and 11. Therefore, Yang teaches same method as claimed by instant claim 3 and 13 because Yang teaches same active process steps (i) and (ii) of instant claims 1 and 11. Furthermore, same metabolite formula (I) taught by Yang will have same functional characteristics of controlling crop disease by a pathogenic microorganism recited by instant claim 3 and of activating the expression of a defense marker gene recited by instant claim 13.
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 1, 3-4 and 11-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 11,582,973 B2 (hereinafter patent’973; PTO-892). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Regarding claim 1 and 11, claim 1 of patent’973 claims
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Therefore, patent’973 claims same active process steps (i) and (ii) of instant claims 1 and 11.
Although patent’973 does not claim wherein-clause “wherein the crop disease is selected from the group consisting of citrus Huanglongbing, Zebra chip disease of potato, tomato, and other plants of the family Solanaceae, and plants of the family Apiaceae and Umbelliferae”, this wherein-clause is for intended use and does not change the active process steps (i) and (ii) of instant claim 1.
Regarding claim 3 and 13, wherein-clause of instant claim 3 and 13 is intended use and does not change the active process steps of claimed method. Therefore, patent’973 claims same method as claimed by instant claim 3 and 13 because patent’973 claims same active process steps (i) and (ii) of instant claims.
Regarding claim 4 and 12, claim 4 of patent’973 claims “wherein the crop is selected from the group consisting of bananas, apples, pears, crabapples, citrus, potatoes, pumpkins, onions, rice, African violets, plant species of Cruciferae, Solanaceae, Cucurbitaceae including carrots, potatoes, tomatoes, eggplants, leafy greens, squashes and cucurbits, peppers and green peppers, olives, stone and pome fruit plants including olives, peaches, and walnuts.”.
Claims 1, 3-4 and 11-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,089,595 (hereinafter patent’595; PTO-892). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Regarding claims 1 and 11, claim 1 of patent’595 claims
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Regarding wherein-clause of claim 1 “wherein the crop disease is selected from the group consisting of citrus Huanglongbing, Zebra chip disease of potato, tomato, and other plants of the family Solanaceae, and plants of the family Apiaceae and Umbelliferae”, claim 2 of patent’595 claims that the crop disease is Citrus Greening Disease, or Zebra chip disease. “Citrus Huanglongbing” of claim 1 is alternative name for Citrus Greening Disease.
Although patent’595 does not claim wherein-clause “wherein the Pseudomonas bacterial strain is selected from the group consisting of Pseudomonas soli 0617-T307 (Accession No. PTA-126796), Pseudomonas soli 0917-T305 (Accession No. PTA-126797), Pseudomonas soli 0917-T306 (Accession No. PTA-126798), Pseudomonas soli 0917-T307 (Accession No. PTA-126799), Pseudomonas mosselii 0118-T319 (Accession No. PTA-126800), Pseudomonas mosselii 0318-T327 (Accession No. PTA- 126801), and Pseudomonas mosselii 0418-T328 (Accession No. PTA-126802)”, this wherein-clause is for describing which bacterial strains the formula (I) is produced from and do not change the active process steps (i) and (ii) of instant claims 1 and 11.
Regarding claim 3, claim 3 of patent’595 claims that the pathogenic microorganism is Candidatus Liberibacter asiaticus, Liberibacter crescens, Ca. Liberibacter americanus, Ca. Liberibacter africanus, and Ca. Liberibacter solanacearum.
Regarding claim 4 and 12, patent’595 claims that the crop is citrus.
Regarding claim 13, wherein-clause of instant claim 13 is intended use and does not change the active process steps of claimed method. Therefore, patent’595 claims same method as claimed by instant claim 13 because patent’595 claims same active process steps (i) and (ii) of instant claims.
Claims 1, 3-4 and 11-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-40 of U.S. Patent No. 12,167,733 (hereinafter patent’733; PTO-892). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Regarding claim 1 and 11, claim 1 of patent’733 claims
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Regarding wherein-clause of claim 1 “wherein the crop disease is selected from the group consisting of citrus Huanglongbing, Zebra chip disease of potato, tomato, and other plants of the family Solanaceae, and plants of the family Apiaceae and Umbelliferae”, and “wherein the Pseudomonas bacterial strain is selected from the group consisting of Pseudomonas soli 0617-T307 (Accession No. PTA-126796), Pseudomonas soli 0917-T305 (Accession No. PTA-126797), Pseudomonas soli 0917-T306 (Accession No. PTA-126798), Pseudomonas soli 0917-T307 (Accession No. PTA-126799), Pseudomonas mosselii 0118-T319 (Accession No. PTA-126800), Pseudomonas mosselii 0318-T327 (Accession No. PTA- 126801), and Pseudomonas mosselii 0418-T328 (Accession No. PTA-126802)”, this wherein-clause is for intended use and do not change the active process steps (i) and (ii) of instant claims 1 and 11.
Regarding claim 4 and 12, claim 4 of patent’733 claims that the crop is citrus.
Regarding claim 3 and 13, wherein-clause of instant claim 3 and 13 is intended use and does not change the active process steps of claimed method. Therefore, patent’733 claims same method as claimed by instant claim 3 and 13 because patent’733 claims same active process steps (i) and (ii) of instant claims.
Claims 1, 3-4 and 11-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-13 of copending Application No. 18/963593 (hereinafter application’593; US2025/0089722; PTO-892). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Regarding claim 1 and 11, claim 1 of application’593 claims
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Claim 7 of application’593 claims
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Regarding wherein-clause of claim 1 “wherein the crop disease is selected from the group consisting of citrus Huanglongbing, Zebra chip disease of potato, tomato, and other plants of the family Solanaceae, and plants of the family Apiaceae and Umbelliferae”, this wherein-clause is for intended use and does not change the active process steps (i) and (ii) of instant claims 1 and 11.
Regarding claims 3-4 and 12-13, wherein-clause of claims 3-4 and 12-13 is for intended use and does not change the active process steps (i) and (ii) of instant claims. Because application’593 claims same active process steps (i) and (ii) of instant claims, application’593 claims same method claimed by instant claims 3-4 and 12-13.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claim is allowed.
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/CHEOM-GIL CHEONG/Examiner, Art Unit 1645
/MISOOK YU/Supervisory Patent Examiner, Art Unit 1641