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 Status
The amendment of 08/12/2026 has been entered. Claims 251-295 are currently pending in this US patent application and were examined on their merits.
Information Disclosure Statement
The information disclosure statements filed in this application on 10/12/2024 and 10/08/2025 have been received and considered.
Withdrawn Rejections
The rejection of claim 293 under 35 U.S.C. 112(b) as being indefinite for depending from a canceled claim as set forth in the previous Office action is withdrawn in light of the amendment of 08/12/2026, which amended claim 293 to depend from claim 251.
Information Disclosure Statement
The information disclosure statement filed 02/19/2026 fails to comply with 37 CFR 1.97(c) because it lacks a timing statement as specified in 37 CFR 1.97(e) and because it lacks the timing fee set forth in 37 CFR 1.17(p). It has been placed in the application file, but the information referred to therein has not been considered.
The information disclosure statements filed in this application on 03/23/2026 and 04/09/2026 have been received and considered.
Claim Interpretation
Multiple claims recite limitations of the recited endophyte strains based on being “selected” for various properties (see claims 254, 257-259, 268-270, 280, and 282-284). The claims do not require any level of the various properties or any particular “selection” step. As such, any strains that meet the other structural requirements of the instant claims will be interpreted to be “selected” for the properties recited in the claims as well.
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 252, 257, 268, 278, and 282 remain 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.
Please note that this rejection has been slightly augmented to incorporate discussion of the newly added limitations to claims 252, 268, and 278. However, because the basis of the rejection is unchanged, the rejection has been maintained.
Claims 252, 257, 268, 278, and 282 recite co-fermenting the recited strains in a “nitrogen limited” medium, “wherein the nitrogen limited growth medium is a medium containing a limited nitrogen source from amino acids,” or selecting strains based on a “nitrogen limited” medium. The instant disclosure provides several examples of “nitrogen limited” media but does not explicitly define this term of degree. As such, one of ordinary skill in the art would be unable to determine the metes and bounds of claims 252, 257, 268, 278, and 282 because it is not clear what concentrations of nitrogen in the medium would qualify as “nitrogen limited” and what concentrations would not be “nitrogen limited.” Therefore, claims 252, 257, 268, 278, and 282 are indefinite.
Therefore, claims 252, 257, 268, 278, and 282 are rejected under 35 U.S.C. 112(b).
In the interest of compact prosecution, the Examiner has interpreted a “nitrogen limited” medium as recited in the instant claims to contain any level of nitrogen.
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)(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 266-271 remain rejected under 35 U.S.C. 102(a)(1) as being anticipated by Doty et al., Symbiosis 47: 23-33 (2009).
Please note that this rejection has been slightly augmented to incorporate discussion of the newly added limitations in the claims of 08/12/2026. However, because the basis of the rejection is unchanged, the rejection has been maintained.
Doty teaches isolating endophytes from willow (Salix sitchensis) cuttings (see entire document, including page 24, right column, paragraph 3). Among the endophytes isolated were strains WW5, WW6, and WW7 (page 25, Table 1; reads on claim 266; Doty is an inventor of the instant application, and page 3 of the instant specification as filed indicates that strains WW5, WW6, and WW7 isolated from Salix sitchensis are of the species Sphingobium sp., Pseudomonas siliginis, and Curtobacterium salicaceae, respectively; the Examiner further notes that the fermentation of three strains satisfies the limitation “at least two” and that claim 266 does not require that the at least two strains be fermented together). Isolated endophytes were grown on a nitrogen-free medium containing phosphate buffer, nutrients, and 1% sucrose (page 25, right column, paragraph 1; reads on claims 266-271; see above under Claim Interpretation for the Examiner’s interpretation of strains “selected for” particular properties).
As such, claims 266-271 are anticipated by Doty and are rejected under 35 U.S.C. 102(a)(1).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claims 251-295 remain rejected under 35 U.S.C. 103 as being unpatentable over US patent application publication 2022/0142170 filed by Ambrose et al., published 05/22/2022, in view of Doty et al., Symbiosis 47: 23-33 (2009), and Rozahon et al., Int. J. System. Evol. Microbiol 64: 3215-3221 (2014).
Ambrose teaches methods of improving plant characteristics by introducing fungal endophytes to the plants (see entire document, including paragraph 0003). The endophyte composition may contain bacteria of genera including Bacillus, Curtobacterium, Pseudomonas, Rhizobium, and Sphingomonas (paragraph 0110). The complex endophyte may be cultured on a culture medium (paragraph 0123; cf. claims 251-252, 257-259, 261-262, 264, 266, 268-270, 275, 277-278, 280, 282-284, 288, and 292). The endophyte composition may be added as a coating onto seeds prior to planting and may be applied to the seeds and allowed to dry (paragraphs 0222 and 0246; cf. claims 277 and 289-290). The composition may be prepared as a microencapsulated particle (paragraph 0224; cf. claim 265). The composition may contain alginate (paragraph 0226), desiccants such as mannitol (paragraph 0229), and nutrient additives (paragraph 0231; cf. claims 255-256, 260, 266-267, 271, 276, 281, and 285). In one embodiment, the composition contains between 106 and 107 CFU/mL (paragraph 0238; cf. claims 253, 279, and 293-295).
However, Ambrose does not teach that the Curtobacterium, Pseudomonas, Rhizobium, and Sphingomonas strains in the endophyte composition are the ones recited in instant claim 251.
Doty teaches isolating endophytes from willow (Salix sitchensis) cuttings (see entire document, including page 24, right column, paragraph 3). Among the endophytes isolated were strains WW5, WW6, and WW7 (page 25, Table 1; cf. claims 251, 261-263, 266, 272-274, 277, and 286-287; Doty is an inventor of the instant application, and page 3 of the instant specification as filed indicates that strains WW5, WW6, and WW7 isolated from Salix sitchensis are of the species Sphingobium sp., Pseudomonas siliginis, and Curtobacterium salicaceae, respectively; page 11 of the instant specification as filed indicates that strains WW5, WW6, and WW7 make iron siderophore compounds as recited in instant claim 263).
Rozahon teaches that Rhizobium populi is a nitrogen-fixing, plant growth-promoting bacterium isolated from Populus euphratica trees (see entire document, including page 3215, abstract and left column, paragraph 1; cf. claims 251, 261-262, 266, 272-274, 277, and 286-287).
While Ambrose does not teach that the Curtobacterium, Pseudomonas, Rhizobium, and Sphingomonas strains in the endophyte composition are Sphingobium sp. WW5, Pseudomonas siliginis, Curtobacterium salicaceae, and Rhizobium populi, it would have been obvious to one of ordinary skill in the art to use the WW5, WW6, and WW7 of Doty as the Sphingomonas, Pseudomonas, and Curtobacterium strains of Ambrose because Doty teaches that all of these microbes are endophytes isolated from plants. Similarly, it would have been obvious to one of ordinary skill in the art to use the Rhizobium populi of Rozahon as the Rhizobium microbe in the endophyte composition of Ambrose because Rozahon teaches that Rhizobium populi is a nitrogen-fixing, plant growth-promoting bacterium isolated from Populus euphratica trees. One of ordinary skill in the art would have a reasonable expectation that using the strains of Doty and Rozahon in the endophyte composition of Ambrose would successfully result in the production of an endophyte composition that can improve plant characteristics.
Ambrose, Doty, and Rozahon do not teach that the endophyte composition contains the amounts recited in instant claims 293-295. However, the instantly recited amounts would be within the realm of routine experimentation. Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05 part II A. It would have been obvious to one of ordinary skill in the art at the time Applicants' invention was made to determine all operable and optimal concentrations of the endophyte strains in the composition of Ambrose, Doty, and Rozahon because the concentrations of endophyte strains in a composition applied to plants are art-recognized, result-effective variables known to affect the characteristics of the plant to which the endophyte composition is applied, which would have been optimized in the art to provide the desired enhancement in plant characteristics.
Therefore, claims 251-295 are rendered obvious by Ambrose in view of Doty and Rozahon and are rejected under 35 U.S.C. 103.
The Supreme Court has acknowledged:
When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation…103 likely bars its patentability…if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill. A court must ask whether the improvement is more than the predictable use of prior-art elements according to their established functions……the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results (see KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 U.S. 2007) (emphasis added).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant has traversed the above Claim Interpretation of the term “selected for” in the instant claims. Applicant states that the ordinary meaning of the term “selected for” implies a deliberate selection to choose strains exhibiting those properties at a meaningful level and requires that the recited ability actually be present (remarks, page 9). This argument has been fully considered but has not been found persuasive.
The Examiner notes that, contrary to Applicant’s assertion, the claims do not require any particular level of the recited activity, including a “meaningful” level, the meaning of which is unclear. As such, the Examiner maintains the interpretation of the term “selected for” presented above.
Applicant has traversed the above rejection of the claims under 35 U.S.C. 112(b). Applicant states that terms of degree are not indefinite when enough certainty has been provided to one of skill in the art when read in the context of the invention (remarks, page 10). This argument has been fully considered but has not been found persuasive.
The Examiner notes that, in the instant case, no information has been provided to one of skill in the art as to how much nitrogen constitutes a “nitrogen limited” medium and that the amendment to recite that the medium “is a medium containing a limited nitrogen source from amino acids” does not provide any further information about how much nitrogen constitutes a “nitrogen limited” medium or a “limited” nitrogen source.
Applicant has traversed the above rejection of the claims under 35 U.S.C. 102(a)(1). Applicant states that claim 266 has been amended to recite fermenting at least two strains and that Doty does not disclose fermenting at least two strains (remarks, pages 10-11). This argument has been fully considered but has not been found persuasive.
As discussed above and in the previous Office action, Doty discloses the fermentation of three strains. As three is greater than two, Doty’s fermentation of three strains satisfies the limitation “at least two of the…strains” recited in instant claim 266. Claim 266 includes no requirement that the strains be fermented together.
Applicant has traversed the above rejection of the claims under 35 U.S.C. 103 as being unpatentable over Ambrose in view of Doty and Rozahon. Applicant states that Ambrose teaches fermenting complex endophytes, bacteria that reside within a fungal host, and that the instant claims are drawn to methods that involve fermenting isolated bacterial strains without the presence of a fungal host (remarks, pages 11-12). This argument has been fully considered but has not been found persuasive.
The Examiner notes that the instant claims are written using open-ended “comprising” language and do not preclude the presence of any other organisms, such as a fungal host, in the claimed methods, contrary to Applicant’s assertion.
Applicant states that Ambrose’s preferred genera do not overlap with the claimed genera (remarks, page 12). This argument has been fully considered but has not been found persuasive.
The Examiner notes that prior art is valid for all of the information it contains, not simply for preferred embodiments. See MPEP § 2123.
Applicant states that neither Doty nor Rozahon disclose fungal endophytes, and so one of ordinary skill in the art would not look to them to seek alternative endophytes for use in Ambrose (remarks, page 12). This argument has been fully considered but has not been found persuasive.
As discussed above and in the previous Office action, while Ambrose does not teach that the Curtobacterium, Pseudomonas, Rhizobium, and Sphingomonas strains in the endophyte composition are Sphingobium sp. WW5, Pseudomonas siliginis, Curtobacterium salicaceae, and Rhizobium populi, it would have been obvious to one of ordinary skill in the art to use the WW5, WW6, and WW7 of Doty as the Sphingomonas, Pseudomonas, and Curtobacterium strains of Ambrose because Doty teaches that all of these microbes are endophytes isolated from plants. Similarly, it would have been obvious to one of ordinary skill in the art to use the Rhizobium populi of Rozahon as the Rhizobium microbe in the endophyte composition of Ambrose because Rozahon teaches that Rhizobium populi is a nitrogen-fixing, plant growth-promoting bacterium isolated from Populus euphratica trees. One of ordinary skill in the art would have a reasonable expectation that using the strains of Doty and Rozahon in the endophyte composition of Ambrose would successfully result in the production of an endophyte composition that can improve plant characteristics. As the strains of Doty and Rozahon are known endophytes, one of ordinary skill in the art would be motivated to use them in Ambrose’s endophyte composition. Applicant has provided no evidence that Doty or Rozahon’s endophytes would not be expected to function in Ambrose’s composition. Applicant has merely asserted this argument in a single sentence. Arguments by an attorney do not take the place of evidence on the record. See MPEP § 2145 (I).
Applicant states that the instantly recited methods produce unexpected results that overcome the rejection of the claims under 35 U.S.C. 103 (remarks, pages 12-18). This argument has been fully considered but has not been found persuasive.
The Examiner notes that the instant claims are significantly broader than any of the experiments discussed in the instant disclosure. Quite a few variables are involved in the disclosed experimental results, including the exact formulation added to the plants (i.e., which strains, fermented together in what manner, in what concentrations, provided in which format), which plant was examined, and what type of soil/stress conditions were applied to the plants. The disclosed experiments vary these elements significantly, with some experiments examining the effects of one formulation on wheat and others examining the effects of other formulations on corn, for example. None of the instant claims are limited to the specific conditions of any of the actual experiments performed, and Applicant has provided no evidence as to why one of ordinary skill in the art would expect the alleged unexpected results obtained from highly specific experiments to be observed over the entire breadth of the claimed methods. Because Applicant’s allegedly unexpected results are not commensurate in scope with the instant claims, they are not sufficient to overcome the rejection of record under 35 U.S.C. 103.
Therefore, the Examiner has maintained the rejections presented above.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin M. Bowers, whose telephone number is (571)272-2897. The examiner can normally be reached Tuesday-Thursday, 6:30-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sharmila Landau, can be reached at (571)272-0614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Erin M. Bowers/Primary Examiner, Art Unit 1653 10/08/2026
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