DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Election/Restriction
Applicant’s election without traverse of Group I, claims 1-7, 10, and 18-19, and the species P. putida, P. chrysosporium, and I. lacteus, L. casei, L. plantarum, B. subtilis, and S. cerevisiae, and glucose in the reply filed on 3 August 2026, is acknowledged.
Status of Claims
Claims 1-10 and 13-19 are pending in the instant Office Action.
Claims 8-9 and 13-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 3 August 2026.
Claims 2, 4-7, and 18-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3 August 2026.
Claims 1, 3, and 10 are under consideration in the instant Office Action, to the extent of the following elected species:
the at least one first microbial species are P. putida, P. chrysosporium, and I. lacteus;
the at least one second microbial species are L. casei, L. plantarum, B. subtilis, and S. cerevisiae; and
the at least one carbon source is glucose.
NOTE: Applicant stated in line 9 of pg. 2 of the response that claims 20-23 read on the elected species. Applicant is notified that claims 20-23 are not pending in the instant application and only claims 1-19 were submitted on 28 June 2023.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 28 June 2023, and 19 August 2025, were filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDSs are being considered by the examiner.
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.
Claim 1 recites “a mixture of microbial species” that comprises at least one first microbial species and at least one second microbial species. Claim 3 then recites “wherein the microbial species are lyophilized”. There is no antecedent basis for the phrase “the microbial species.” Claim 1 never introduces “the microbial species” as a discrete claim element; it introduces i) a mixture and ii) two separately defined “at least one” species groups. It is unclear whether “the microbial species” in claim 3 is intended to refer to the mixture as a whole, every species present in the mixture, only the “at least one first microbial species,”, only “the at least one second microbial species,” or both groups. Additionally, the functional limitation “are lyophilized” does not resolve the ambiguity. It is unclear whether the claim requires: lyophilization of the finished mixture, separate lyophilization of each species before they are combined, or lyophilization of some but not all of the recited species. One of ordinary skill in the art cannot determine the metes and bounds of the lyophilization limitation with reasonable certainty.
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 therefore, subject to the conditions and requirements of this title.
Claims 1 and 10 are rejected under 35 USC 101 because the claimed invention is directed to a natural product without significantly more as outlined in MPEP § 2106. Claim 1 and its dependent claims are directed to a composition of matter and therefore fall within a statutory category. The claims recite products of nature, which claim naturally occurring phenomena and are within the law of nature judicial exception. See MPEP § 2106.04(b). No claim or specification passage requires a genetically modified strain, a new isolate defined by a unique deposit, or a structural change to any cell. This judicial exception is not integrated into a practical application because the specification and claims treat the microbial species as the active ingredients and do not add additional elements, improve or alter the species, or display any markedly different characteristics, amounting to reciting only the natural-based product exhibiting its natural phenomenon. See MPEP § 2106.04(c). Following analysis according to MPEP § 2106.05, because the product claimed in instant claim 1 does not recite significantly more, also known as an “inventive concept”, than the judicial exception it is therefore ineligible under 35 U.S.C. § 101. For further information on recitation of significantly more than the judicial exception, see MPEP § 2106.05(d).
While claim 10 recites water and an optional carbon source in addition to the microbial species, this claim also does not amount to significantly more than the judicial exception. Water and optional carbon sources are present in nature near the claimed microbial species and, in many cases, are necessary for the microbial species to exist in nature. Because the additional elements of water and an optional carbon source do not “transform the nature of the claim” to be significantly more than the judicial exception, claim 10 is also ineligible under 35 U.S.C. § 101 for reciting natural phenomenon resulting from the recited natural-based product. See Alice Corp., 573 U.S. at 217, 110 USPQ2d at 1981 and MPEP § 2106.04.II.A.2.
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 1, 3, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over DiTuro (U.S. Patent Application Publication No. US 2015/0057153 A1, published on 26 February 2015, cited by Applicant in the IDS filed on 28 June 2023) in view of Halttunen et al. (Biosci. Microflora 2003, 22 (3), 93., hereafter referred to as Halttunen), Kirillova et al. (Int. J. Microbiol. 2017, 2017 (1), 1., hereafter referred to as Kirillova), Novotný et al. (Appl. Microbiol. Biotechnol. 2000, 54, 850., hereafter referred to as Novotný), and Massoud et al. (Elec. J. Biotechnol. 2019, 37, 56., hereafter referred to as Massoud).
DiTuro teaches compositions and methods for improving water quality via enhancement of “natural bacterial processes and altering environmental conditions in situ” (Abstract). The water quality improvement comprises treating pollution in potable water, ground water, wastewater, and surface water (para. [0007]) with a mixture of one or more microorganisms (claim 2). In some embodiments, the microorganisms comprise Pseudomonas putida (para. [0022] and [0036], example compositions Pond Treatment and Wastewater Treatment Pucks, and Examples), Hanerochaete chrysosporium (para. [0036], Wastewater Treatment and Grease Trap Treatment Pucks), which is interpreted as equivalent to the elected Phanerochaete chrysosporium, species from the Lactobacillus family (claim 3, para. [0022], Pond Treatment Puck, and Examples), Bacillus subtilis (para. [0022] and [0036], Pond Treatment, Wastewater Treatment, and Grease Trap Treatment Pucks, and Examples), and yeasts (para. [0034]). DiTuro teaches that the microbes in their invention may be lyophilized (para. [0017], [0035], and [0157] and Examples). While the water treatment pucks taught by DiTuro are anhydrous, they are taught to require water to activate which is considered equivalent to the inoculant comprising the bacterial species and water recited in instant claim 10 (Examples).
DiTuro does not teach the specific species of the Lactobacillus family L. casei and L. plantarum, the inclusion of Irpex lacteus and Saccharomyces cerevisiae, nor the inclusion of glucose. These deficiencies are offset by the teachings of Halttunen, Kirillova, Novotný, and Massoud.
Halttunen teaches the ability of lactic acid bacteria (LAB) to remove cadmium (Cd) from aqueous solution and its applicability for applications in food (Abstract). Cadmium exposure is taught to impose serious health risks to humans and its removal from foods and the environment is taught to be important (pg. 93, Introduction, para. 1). LAB, taught to be widely used in food products, were tested for their ability to remove Cd from aqueous test solutions, including L. rhamnosus, L. johnsonii, L. casei, and B. lactis (pg. 93, Introduction, para. 1 and Materials and Methods, para. 1). All tested strains were found to be able to remove Cd from test solutions, with one strain of L. rhamnosus being unable to remove Cd at all tested concentrations and B. lactis being unable to remove Cd after more than 5 min. of exposure to the test solution (pg. 94, Results, para. 1-2). Interestingly, Halttunen found that L. casei did not display concentration-dependent Cd removal, but instead removed Cd at an approximately constant amount even when present in smaller amounts (pg. 94, Results, para. 2, Fig. 1-2, and pg. 96, left col., final para.). Halttunen concluded that the tested LAB were successful at removing the contaminant Cd and should be investigated for use in liquid food decontamination (pg. 96, right col, final para.).
Kirillova teaches the resistance and bioremediation ability of Lactobacillus strains to lead (Pb) and Cd (Title). Both Pb and Cd are taught to be toxic heavy metals that cause serious health issues in humans, demonstrating the need for bioremediation (pg. 1, Introduction, para. 1-2). LAB are taught to be known decontaminating bacteria, with Kirillova noting that L. casei are capable of binding Cd and Pb (pg. 1, right col., para. 1), but the mechanism and possibility of heavy metal accumulation are taught to be relatively unknown (pg. 1, right col., final para. - pg. 2, left col., para. 1). Utilizing 4 L. plantarum strains, 3 L. fermentum strains, L. brevis, L. buchneri, and L. rhamnosus, Kirillova investigated the cell surface characteristics, ability to remove Cd and Pb from aqueous solutions, and solution behavior of prevalent LAB (pg. 2, left col., para. 2).
Kirillova found that all of the Lactobacillus strains were “highly tolerant to Cd and Pb”, with L. fermentum and L. plantarum strains being identified as “potential Pb and Cd removing bacteria” (pg. 5, Discussion, para. 1). However, experimental results found that none of the tested Lactobacillus strains were capable of removing lead from test solutions (pg. 4, right col., final para. and Table 2). All of the tested L. plantarum strains removed Cd from test solutions, including the highest tested efficiency, and Kirillova concluded that use of these LAB for bioaccumulation and biosorption of heavy metals are “prosperous detoxification strategies as they prevent the exposure of heavy metals to body cells and tissues” (Table 2 and pg. 6, left col., final para.).
Novotný teaches a characterization of the fungus Irpex lacteus and its ability to degrade “polycyclic aromatic hydrocarbons” (PAHs) (Abstract). I. lacteus is taught to be a white rot fungus that produces various extracellular enzymes (pg. 850, right col., para. 2). Whit rot fungi are taught to typically produce ligninolytic enzymes including lignin peroxidase (LIP), Mn-dependent peroxidase (MnP), laccase, and peroxide-producing oxidases, but information on I. lacteus is taught to be limited (pg. 850, right col., para. 3-4). Utilizing enzyme assays, PAH biodegradation studies, and soil analysis (pg. 850-851, Materials and methods), Novotný found that I. lacteus is a “robust fungus, growing well on synthetic media and in soil…[and] the ability to efficiently colonize non-sterile soil in competition with autochthonous soil microflora” (pg. 851, right col., final para.). The fungus is taught to be resistant to toxic chemicals, to produce LIP, MnP, and laccase enzymes like other white rot fungi (pg. 852, left col., para. 1-2). Novotný concluded that I. lacteus is a fungal species that can degrade PAHs, which Novotný notes are toxic chemicals, and is “a suitable fungal organism for use in bioremediation technologies” (pg. 852, right col., final para.).
Massoud teaches the hazards of heavy metal contamination in foods and the environment and characterizes the ability of S. cerevisiae to absorb heavy metals (Abstract). Food safety and environmental health are taught to be threatened by heavy metal pollution, demonstrating a clear need for remediation, and Massoud teaches that S. cerevisiae is an appealing biomaterial for remediation due to its easy cultivation and manipulation, high biomass production, and safety to humans and the environment (pg. 57, Introduction, para. 1-5). S. cerevisiae is taught to be capable of removing Zn, Ni, Cu, Cd, Hg, Pb, Cr, and As from solutions, with the highest biosorption capacity observed around room temperature (pg. 57, 2.1. Metal ion concentration and 2.2. Temperature). Massoud further teaches that glucose is a “suitable source of energy for the yeasts and increases their bioremediation capacity”, with glucose-treated S. cerevisiae demonstrating increased Cd, Cr, Cu, Zn, and Ni biosorption, that glucose-treated yeast is inexpensively obtained from the fermentation industry, and that glucose treatment of yeast “facilitates an adequate energy supply, which helps the cells to accumulate substantially more metals from the solution” (pg. 58, 2.5. Glucose treatment). Massoud concludes that heavy metal pollution is “one of the most serious environmental problems” of recent years and that S. cerevisiae is an effective and inexpensive biosorbent (pg. 58, 3. Conclusion).
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, in view of the teachings of Halttunen, Kirillova, Novotný, and Massoud to use the Lactobacillus species L. casei and L. plantarum and to include Irpex lacteus, Saccharomyces cerevisiae, and glucose in the invention of DiTuro because combining prior art elements according to known methods to impart known benefits yields predictable results. The teachings of DiTuro rendered obvious a composition comprising a mixture of one or more microorganisms which may include Pseudomonas putida, Hanerochaete chrysosporium, which is interpreted as equivalent to the elected Phanerochaete chrysosporium, species from the Lactobacillus family, and yeasts. DiTuro further taught that the bacteria in their invention may be lyophilized and that they require water to activate which is considered equivalent to the inoculant comprising the bacterial species and water recited in instant claim 10.
In view of the teachings of Halttunen and Kirillova, an ordinary artisan would be motivated to select the specific Lactobacillus species L. casei and L. plantarum because both references teach the species to be capable of removing toxic heavy metals from solution, which the ordinary artisan would recognize as desirable in a composition that is intended to improve water quality. In addition, DiTuro does not teach a specific Lactobacillus species and the teachings of Halttunen and Kirillova provide missing information that one of ordinary skill would require to complete their invention.
In view of the teachings of Novotný, the person of ordinary skill would be motivated to include the fungus Irpex lacteus in the invention of DiTuro because Novotný teaches that the species degrades toxic PAHs and is “a suitable fungal organism for use in bioremediation technologies”, which the ordinary artisan would recognize as desirable in a composition that is intended to improve water quality. Finally, in view of the teachings of Massoud one of ordinary skill would be motivated to include S. cerevisiae and glucose in their composition because Massoud teaches that the yeast species is safe to humans and the environment, that S. cerevisiae is an effective and inexpensive biosorbent of many heavy metals, that glucose “facilitates an adequate energy supply, which helps the cells to accumulate substantially more metals from the solution”, and that glucose-treated S. cerevisiae can be obtained inexpensively from the fermentation industry. The ordinary artisan would find these properties desirable in their water treatment composition and would be motivated to include S. cerevisiae and glucose. In addition, while DiTuro teaches that their composition may comprise yeast, they do not teach a specific yeast species, and the teachings of Massoud provide missing information that one of ordinary skill would require to complete their invention. As a result, there is a reasonable expectation of success in arriving at the invention of claims 1, 3, and 10 in view of the teachings of DiTuro, Halttunen, Kirillova, Novotný, and Massoud.
Claims 1 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (Chinese Patent Application Publication CN 109852557 A, published on 7 June 2019, provided by Applicant in the IDS filed on 28 June 2023, references to English translation, hereafter referred to as Wang) in view of Novotný (Appl. Microbiol. Biotechnol. 2000, 54, 850.) and Halttunen (Biosci. Microflora 2003, 22 (3), 93.).
Wang teaches a composite bacterial agent for the processing of city and town storage waste (Abstract). The composite bacterial agent comprises, among other species, Bacillus subtilis, Pseudomonas putida, Saccharomyces cerevisiae, Phanerochaete chrysosporium, and Lactobacillus plantarum (Abstract). The composition is further taught to comprise a carrier, which in one embodiment is glucose (pg. 3, lines 21-23 and claim 5), and Wang teaches that glucose may also be used to culture the bacteria of their composition (pg. 5, lines 20-37). Finally, Wang teaches that in some embodiments the solvent of their culture medium is milk, which comprises water (pg. 5, lines 20-38).
Wang does not teach the specific species Irpex lacteus and Lactobacillus casei. These deficiencies are offset by the teachings of Novotný and Halttunen.
Novotný and Halttunen have been described above.
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, in view of the teachings of Novotný and Halttunen to use Irpex lacteus and Lactobacillus casei in the invention of Wang because combining prior art elements according to known methods to impart known benefits yields predictable results. The teachings of Wang rendered obvious a composition comprising a mixture of one or more microorganisms which may include Bacillus subtilis, Pseudomonas putida, Saccharomyces cerevisiae, Phanerochaete chrysosporium, and Lactobacillus plantarum, as well as water and glucose.
In view of the teachings of Novotný, the person of ordinary skill would be motivated to include the fungus Irpex lacteus in the invention of Wang because Novotný teaches that the species degrades toxic PAHs and is “a suitable fungal organism for use in bioremediation technologies”, which the ordinary artisan would recognize as desirable in a composition that is intended to process residential wastewater. In view of the teachings of Halttunen, an ordinary artisan would be motivated to include L. casei in addition to the other Lactobacillus species because Halttunen teaches the species to be capable of removing toxic heavy metals from solution, which the ordinary artisan would recognize as desirable in a composition that is intended to treat wastewater. As a result, there is a reasonable expectation of success in arriving at the invention of claims 1 and 10 in view of the teachings of Wang, Halttunen, and Novotný.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (Chinese Patent Application Publication CN 109852557 A, published on 7 June 2019, provided by Applicant in the IDS filed on 28 June 2023, references to English translation, hereafter referred to as Wang) in view of Novotný (Appl. Microbiol. Biotechnol. 2000, 54, 850.) and Halttunen (Biosci. Microflora 2003, 22 (3), 93.) as applied to claims 1 and 10 above, and further in view of DiTuro (U.S. Patent Application Publication No. US 2015/0057153 A1, published on 26 February 2015, cited by Applicant in the IDS filed on 28 June 2023).
Wang, Novotný, and Halttunen have been described above.
Wang, Novotný, and Halttunen do not teach the bacterial species in their invention to be lyophilized. This deficiency is offset by the teachings of DiTuro.
DiTuro has been described above.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the filing of the instant application, in view of the teachings of DiTuro to lyophilize the microbial species in the invention rendered obvious by the teachings of Wang, Novotný, and Halttunen because the application of a known technique in similar products in the same way yields predictable results. The teachings of Wang, Novotný, and Halttunen rendered obvious a composition comprising a mixture of one or more microorganisms which may include Bacillus subtilis, Pseudomonas putida, Saccharomyces cerevisiae, Phanerochaete chrysosporium, Lactobacillus plantarum, Irpex lacteus, and Lactobacillus casei, as well as water and glucose.
In view of the teachings of DiTuro, an ordinary artisan would be motivated to lyophilize the microbial species in their invention prior to adding to water because DiTuro teaches that this technique allows the formulation of the composition as an anhydrous puck that can be added to water to begin treatment. A person of ordinary skill in the art would recognize the benefits of added storage capabilities and portability of a solid puck and would therefore be motivated to use the technique in their composition. As a result, there is a reasonable expectation of success in arriving at the invention of claim 3 in view of the teachings of Wang, Novotný, and Halttunen and further in view of the teachings of DiTuro.
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, and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18/542,091 in view of Massoud (Elec. J. Biotechnol. 2019, 37, 56.) and DiTuro (U.S. Patent Application Publication No. US 2015/0057153 A1, published on 26 February 2015, cited by Applicant in the IDS filed on 28 June 2023).
This is a provisional nonstatutory double patenting rejection.
Commonly assigned copending Application No. 18/542,091 recites a method of retting plant material comprising application of a mixture of microbial species which may include P. putida, P. chrysosporium, I. lacteus, B. subtilis, L. casei, L. plantarum, and S. cerevisiae (claims 1-6). The composition, referred to as a microbial inoculant, is further recited to be used in combination with water and an optional carbon source (claim 4).
Commonly assigned copending Application No. ‘091 does not recite the specific carbon source to be glucose nor the microbial species to be lyophilized. These deficiencies are offset by the teachings of Massoud and DiTuro.
Massoud and DiTuro have been described above.
Instant claims 1, 3, and 10 are obvious variations of copending Application No. 18/542,091 because it would have been prima facie obvious to a person of ordinary skill in the art at the time of filing to modify the method recited in Application ‘091 to lyophilize the microbial species and select the specific carbon source glucose in view of the teachings of Massoud and DiTuro.
One of ordinary skill in the art would be motivated to select glucose as the specific carbon source in the method recited by ‘091 because Massoud teaches that glucose treatment of S. cerevisiae “facilitates an adequate energy supply, which helps the cells to accumulate substantially more metals from the solution”, which the ordinary artisan would recognize as desirable in a composition that comprises S. cerevisiae. In addition, Application ‘091 recites an optional carbon source but does not recite a specific species and the teachings of Massoud provide missing information that the ordinary artisan would need to complete their invention.
A person of ordinary skill in the art would further be motivated to lyophilize the microbial species recited in the method of ‘091 in view of the teachings of DiTuro because DiTuro teaches that that this technique allows the formulation of the composition as an anhydrous puck that can be added to water to begin treatment. A person of ordinary skill in the art would recognize the benefits of added storage capabilities and portability of a solid puck and would therefore be motivated to use the technique in their composition. Finally, while the invention of commonly assigned copending Application ‘091 is recited to be a method and method of use, both comprise the step of applying a composition that is an obvious variation of the invention recited in instant claims 1, 3, and 10 in view of the teachings of Massoud and DiTuro and reciting the invention as a method rather than a composition does not make the invention patentably distinct.
Claims 1, 3, and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/559,245 in view of Taha et al. (Appl. Soil Ecol. 2018, 124, 163., hereafter referred to as Taha.), Novotný (Appl. Microbiol. Biotechnol. 2000, 54, 850.), Kirillova (Int. J. Microbiol. 2017, 2017 (1), 1.), Halttunen (Biosci. Microflora 2003, 22 (3), 93.), and Massoud (Elec. J. Biotechnol. 2019, 37, 56.).
This is a provisional nonstatutory double patenting rejection.
Commonly assigned copending Application No. 18/559,245 recites a composition for promoting plant growth or plant resistance to pathogens comprising at least one microbial species which may be P. putida and/or B. subtilis (claims 1-3). The composition is further recited as comprising lyophilized microbial species (claim 4), water (claim 5), and a carbon source which may be glucose (claims 6-8).
Commonly assigned copending Application No. 18/559,245 does not recite the microbial species P. chrysosporium, I. lacteus, L. casei or plantarum, or S. cerevisiae. These deficiencies are offset by the teachings of Taha, Novotný, Halttunen, Kirillova, and Massoud.
Taha teaches the use of P. chrysosporium in bioremediation applications to degrade toxic PAHs (Abstract). The organic PAHs are taught to be environmental pollutants that are governed by regulations, demonstrating the need for bioremediation (pg. 164, left col., para. 2-5). Microbial treatment of PAHs is taught to be less expensive than physical and chemical degradation technologies, with potential for large scale operation, and P. chrysosporium in particular is promising due to its ability “not only to degrade large number of PAH fractions but also…the capability to secrete a cocktail of ligninolytic enzymes which act synergistically against a batter of lignin-related and PAH compounds” (pg. 164, left col., final para. - pg. 165, right col., para. 1). Taha used P. chrysosporium in a buffer solution (pg. 165, left col., para. 1) to treat solid granules and slurry from a wastewater treatment plant (pg. 164, 2.1. Biosolids collection) and found that the species was able to biodegrade PAHs in relatively high concentrations, making the microbe “a novel, effective and economic technology for PAH removal” (pg. 169, 4. Conclusions).
Novotný, Halttunen, Kirillova, and Massoud have been described above.
Instant claims 1, 3, and 10 are obvious variations of copending Application No. ‘245 because it would have been prima facie obvious to a person of ordinary skill in the art at the time of filing to modify the invention recited in Application ‘245 to comprise the microbial species P. chrysosporium, I. lacteus, L. casei or plantarum, or S. cerevisiae in view of the teachings of Taha, Novotný, Halttunen, Kirillova, and Massoud.
A person of ordinary skill in the art would be motivated to use P. chrysosporium in the composition comprising at least one microbial species in view of the teachings of Taha because Taha teaches that the species degrades toxic PAHs at relatively high concentrations and is an effective and economically appealing bioremediation technology, which the ordinary artisan would recognize as desirable in a composition that is intended to protect plants from potential harms in the soil and/or water. Further, Taha teaches that P. chrysosporium is effective against both solid and liquid waste compositions, which is a broad applicability that the ordinary artisan would find appealing in their composition.
In view of the teachings of Novotný, the person of ordinary skill would be motivated to include the fungus Irpex lacteus in the invention recited by ‘245 because Novotný teaches that the species degrades toxic PAHs and is “a suitable fungal organism for use in bioremediation technologies”, which the ordinary artisan would recognize as desirable in a composition that is intended to protect plants from potential harms in the soil and/or water. In view of the teachings of Halttunen and Kirillova, an ordinary artisan would be motivated to include the Lactobacillus species L. casei and L. plantarum because both references teach the species to be capable of removing toxic heavy metals from solution, which the ordinary artisan would recognize as desirable in a composition that is intended to protect plants from potential harms in the soil and/or water.
Finally, in view of the teachings of Massoud one of ordinary skill would be motivated to include S. cerevisiae in their composition because Massoud teaches that the yeast species is safe to humans and the environment, that S. cerevisiae is an effective and inexpensive biosorbent of many heavy metals, that glucose “facilitates an adequate energy supply, which helps the cells to accumulate substantially more metals from the solution”, and that glucose-treated S. cerevisiae can be obtained inexpensively from the fermentation industry. The ordinary artisan would find these properties desirable in their water treatment composition and would be motivated to include S. cerevisiae. In addition, Application ‘245 recites their composition comprising glucose, while Massoud teaches will improve the efficacy of S. cerevisiae and the ordinary artisan would recognize as compatible with the invention recited in Application ‘245.
Claims 1, 3, and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5-9 of copending Application No. 18/559,249 in view of Taha et al. (Appl. Soil Ecol. 2018, 124, 163., hereafter referred to as Taha.), Novotný (Appl. Microbiol. Biotechnol. 2000, 54, 850.), Kirillova (Int. J. Microbiol. 2017, 2017 (1), 1.), Halttunen (Biosci. Microflora 2003, 22 (3), 93.), and Yu et al. (Genet. Mol. Res. 2015, 14 (4), 14717., hereafter referred to as Yu).
This is a provisional nonstatutory double patenting rejection.
Commonly assigned copending Application No. 18/559,249 recites a composition for promoting plant rooting or seed germination comprising at least one microbial species which may be P. putida and/or S. cerevisiae (claims 1-3). The composition is further recited as comprising lyophilized microbial species (claim 5), water (claim 6), and a carbon source which may be glucose (claims 7-9).
Commonly assigned copending Application No. 18/559,249 does not recite the microbial species P. chrysosporium, I. lacteus, L. casei or plantarum, or B. subtilis. These deficiencies are offset by the teachings of Taha, Novotný, Halttunen, Kirillova, and Yu.
Taha, Novotný, Halttunen, and Kirillova have been described above.
Yu teaches the ability of the B. subtilis strain Bs-15 to degrade glyphosate and bioremediate soil (Abstract). Glyphosate, while being among the “most extensively used herbicides in agriculture”, is taught to alter the biological function of soil, impact nutrient availability and disease severity, and ultimately threaten agricultural production demonstrating a need for glyphosate degradation and biological remediation strategies (pg. 14718, Introduction, para. 1-2). Via degradation and plant studies in solution and soil, Yu concludes that B. subtilis Bs-15 promotes plant growth and controls plant diseases while also degrading glyphosate and tolerating high glyphosate concentrations (pg. 14728, Conclusions). The Bs-15 strain is taught to be capable of playing “an important role in the bioremediation of glyphosate-contaminated soils” (pg. 14728, Conclusions).
Instant claims 1, 3, and 10 are obvious variations of copending Application No. 18/559,249 because it would have been prima facie obvious to a person of ordinary skill in the art at the time of filing to modify the invention recited by Application ‘249 to comprise the microbial species P. chrysosporium, I. lacteus, L. casei or plantarum, or B. subtilis in view of the teachings of Taha, Novotný, Halttunen, Kirillova, and Yu.
A person of ordinary skill in the art would be motivated to use P. chrysosporium in the composition comprising at least one microbial species in view of the teachings of Taha because Taha teaches that the species degrades toxic PAHs at relatively high concentrations and is an effective and economically appealing bioremediation technology, which the ordinary artisan would recognize as desirable in a composition that is intended to promote plant growth. Further, Taha teaches that P. chrysosporium is effective against both solid and liquid waste compositions, which is a broad applicability that the ordinary artisan would find appealing in their composition.
In view of the teachings of Novotný, the person of ordinary skill would be motivated to include the fungus Irpex lacteus in the invention recited by ‘249 because Novotný teaches that the species degrades toxic PAHs and is “a suitable fungal organism for use in bioremediation technologies”, which the ordinary artisan would recognize as desirable in a composition that is intended to promote plant growth. In view of the teachings of Halttunen and Kirillova, an ordinary artisan would be motivated to include the Lactobacillus species L. casei and L. plantarum because both references teach the species to be capable of removing toxic heavy metals from solution, which the ordinary artisan would recognize as desirable in a composition that is intended to be applied to plants and/or soil.
Finally, in view of the teachings of Yu one of ordinary skill in the art would be motivated to include the microbial species B. subtilis in the composition recited in ‘249 because Yu teaches the Bs-15 strain of the species to promote plant growth and provide bioremediation of soil from glyphosate. A person of ordinary skill would recognize these capabilities as useful in a composition that is applied to plants and/or soil to promote plant growth and would be motivated to include the species in their invention.
Claims 1, 3, and 10 are directed to an invention not patentably distinct from claims 1-6 of commonly assigned copending Application No. 18/542,091, claims 1-8 of commonly assigned copending Application No. 18/559,245, and claims 1-3 and 5-9 of commonly assigned copending Application No. 18/559,249. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned copending Application Nos. 18/542,091, 18/559,245, and 18/559,249, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Conclusion
No claims are allowed.
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/S.J.S./
Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619
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