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 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.
Claim 3 is 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. It is indefinite as to whether the “strain” is required to be the “strain” as recited in claim 1. The word - - the - - should be inserted before “strain” to avoid this rejection.
Claim Rejections - 35 USC § 103
he 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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Bobeck et al (US 11,542,211) ( with reliance on corresponding provisional application No. 62/169,942).
Regarding claim 1, Provisional application 62/169,942 discloses Gluconacetobacter diazotrophicus as a microbe capable of nitrogen fixation on page 5, lines 10-13 and in section (6) in claim 2. The difference between the composition disclosed in provisional 62/169962, and that recited in applicant’s claims, is that provisional 62/169962 does not disclose that the strain of Gluconacetobacter diazotrophicus is a strain deposited with CABI in the United Kingdom under deposit accession number IMI 504958 or under deposit accession number IMI 504998. It would be obvious to provide a strain of Gluconacetobacter diazotrophicus having properties identical or similar to the strains recited in applicant’s claim 1 as the nitrogen fixation strains of provisional 62/169962. One of ordinary skill in the art would be motivated to do so, since one could determine through routine experimentation which strains would be capable of nitrogen fixation, and there is no evidence on record of unexpected results which would emanate from the use of the strains recited in claim 1, as opposed to other nitrogen fixation strains of Gluconacetobacter diazotrophicus.
There is no “description support” in applicant’s foreign priority document (United Kingdom GB 1413333.4 which was filed on July 28, 2014) for a strain deposited with CABI in the United Kingdom under deposit accession number IMI 504958 (formerly IMI 504853). Accordingly the earliest effective filing date which can be accorded applicant’s claims is July 28, 2015 (the filing date of grandparent application 15/326996), and Bobeck et al is properly available as prior art since the filing date of its corresponding provisional application pre-dates applicant’s earliest effective filing date.
Regarding claim 2, provisional application 62/169942 discloses on page 9, lines 8-11 that the composition can be applied to a plant or plant seed.
Regarding claim 3, provisional application 62/169942 discloses on page 9, lines 3-7 that the microbial inoculant is present in a fertilizer composition.
Regarding claim 4, provisional application 62/169942 discloses a solvent-based formulation. Such formulation would typically be applied as a spray, especially since provisional application 62/169942 discloses that the composition can be applied to the plant or plant part.
Conclusion
The articles by Christina Kennedy, Luc F. M. Rouws, L. F. M. Rous, Rodrigo V. Serrato and Euan K. James are made of record for disclosing various strains of Gluconacetobacter diazotrophicus.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WAYNE A LANGEL whose telephone number is (571) 272-1353. The examiner can normally be reached Monday through Friday from 8:15 am to 4:15 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WAYNE A LANGEL/Primary Examiner, Art Unit 1736