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 .
Response to Election/Restriction
Applicant's response, with traverse, to the Restriction/Election requirement filed on 11/18/2025 is acknowledged. The applicant elected Group II which includes claims 2-5.
The applicant argues that he claims have been amended so that the special technical feature of the sequentially inoculated fermentation broth is incorporated into claim 2. The Applicant asserts that this special technical feature is not taught by Karuppiah et al. or Wu et al. (both in IDS 7/27/23)
Karuppiah et al. teach the following sequential inoculation:
1% (v/v) of T. asperellum is precultured in broth at 28 °C for 48 hours;
After step i), 0.1% (v/v) of B. amyloliquefaciens is inoculated into the preculture broth and co-cultivation occurs for 2 days (48 hours) at 28°C.
The Special technical feature differs in a) the amount of Bacillus (0.1% vs. 2-3%) and b) the duration of the preculture (48 hrs vs. 35-45 hours).
However Johnson et al. (US 608917) teaches that when coculturing Trichoderma and Bacillus, the concentration of microbes and the culture time can be optimized. Johnson et al. teach Trichoderma can be cultured at 28 °C for 8 hours before adding Bacillus (col 7, lines 50-60). The amount of microbes in the co-culture can be 50:50 (col 8, lines 5-10), which reads on the ranges disclosed in claim 1 since both Trichoderma and Bacillus can be added at 2% v/v.
Considering these references it appears the special technical features remains obvious over known techniques to produce a fermentation broth by sequentially inoculating Trichoderma and Bacillus. Since it is obvious, it does not make a contribution over the prior art and the lack of unity remains.
Claims 2-5 are examined in this Office Action, and 1, 6-13 remain withdrawn.
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 2-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 is indefinite because it is unclear how the preamble limits the fermentation broth obtained in claim 1. Claim 2 requires the seed-coating agent (SCA) comprise the fermentation broth of claim 1. The Specification provides no definition for SCA and the Specification indicates the SCA is formed after separation of the broth by centrifugation and the addition of diatomaceous earth (Specification, paragraph bridging pgs 15-16, and pg. 17, step 5). This makes the metes and bounds of claim 2 unclear because it is not known what structural limitations the preamble imparts to the composition. Also claim 2 limits the fermentation broth of claim 1 which has 1-2% v/v Trichoderma and 2-3% v/v of Bacillus. These units are unclear because they do not define how much of each microbe is inoculated. The concentration of each microbe in the volume is not clear, therefore it is difficult to compare it to the other co-culture techniques in the art.
Claim 2 requires the SCA comprises the fermentation broth produced according to claim 1. Claim 4 limits the SCA to a dry powder. This contradicts claim 2 since a dry powder is not a broth (i.e. liquid). Also claim 5 appears to be a concentrated form of the microbes obtained from the fermentation broth by solid-liquid separation (Specification, paragraph bridging pgs. 15-16), which also contradicts claim 2 since the fermentation broth is no long present after the solid-liquid separation.
Claim 3 is rejected because of the phrase “a marker of alamethicin”. This phrase is not defined in the Specification and could read on components other than alamethicin. For example, a marker of alamethicin (a small peptide) could include an antibody or other binding agent that indicates its presence. Applicant should consider amending this claim to “a content of a of alamethicin”. This makes the limitation consistent with how the other components are claimed. Also it is unclear if claim 3 is listing the properties of the fermentation broth of claim 2. In the Specification the fermentation broth has an alamethicin content of 0.1-0.5 μg/L and a IAA content of 2,000-2,500 μ/L (Specification, pg. 15, bottom of page). These values are far above the fermentation broth as claimed in 2. Therefore it is unclear how claim 3 further limits claim 2 since the broths appear to have different contents.
Claim 5 is rejected because it limits the amount of brassinolide in the composition to 12-20% w/w but then limits “the brassinolide is in the form of a 0.1% solution”. In this case it appears the brassinolide is both in the composition and apart as a 0.1% solution.
Claim Interpretation
Claims 2-5 are product-by-process claims that require the process steps disclosed to make the fermentation broth in claim 1. M.P.E.P. § 2113 reads, “Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps.”
“Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979)
The use of 35 U.S.C. §§ 102 and 103 rejections for product-by-process claims has been approved by the courts. “[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Also it appears the amount of alamethicin and indoleacetic acid are the result of the co-culture of Trichoderma and Bacillus. The Specification indicates these are produced by the microbes during fermentation (Specification, pg. 15 bottom). Therefore it appears coculturing these microbes will also produce these compounds.
Considering the previously listed 35 USC 112 2nd issues and the product-by-process limitations described, the claims are interpreted as a composition of comprising Trichoderma and Bacillus in the form of a dry powder with any concentration of brassinolide.
The Applicant may wish to amend the claims to actual components of the final form of the SCA. They also may wish to point out the advantages of the sequential inoculation vs. typical simultaneous co-culturing.
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.
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Karuppiah et al. (Microb Cell Fact, 2019, in IDS 7/27/23).
Karuppiah et al. teach a composition of Trichoderma and Bacillus made by the following sequential inoculation (Karuppiah, pg. 12, col 2, top):
1% (v/v) of T. asperellum is precultured in broth at 28 °C for 48 hours; and
After step i), 0.1% (v/v) of B. amyloliquefaciens is inoculated into the preculture broth and co-cultivation occurs for 2 days (48 hours) at 28°C.
Considering the claim interpretation provided above, these claims are rendered obvious in view of the process of Karuppiah.
Claim(s) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson (US 6808917).
Johnson teaches a mix Trichoderma and Bacillus co-cultured at a ratio of 10:90 to 90:10 by volume (col 10, lines 45-55). These can be added to a wettable powder to make a dry composition (col 9, lines 64-67).
Considering the claim interpretation provided above, these claims are rendered obvious in view of the process of Johnson.
Claim(s) 2-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson (US 6808917) as applied to claims 2-5 above, and further in view of CN 111631231. Since CN’231 is in Chinese, a Google Patents translation has been provided. All citations to CN’231 are to this translation.
Johnson teaches a mix Trichoderma and Bacillus co-cultured at a ratio of 10:90 to 90:10 by volume (col 10, lines 45-55). These can be added to a wettable powder to make a dry composition (col 9, lines 64-67).
Johnson does not teach that their wettable powder is diatomaceous earth and their composition comprises brassinolide. However this would be obvious in view of CN’231 who teach a seed coating composition that comprises Trichoderma and Bacillus at 0.1-1000 billion cfu/g (CN’231, Summary of Invention, 2nd and 3rd paragraphs). Their seed coating composition comprises ~10% brassinolide as a plant growth regulator (CN’231, Summary of Invention, 2nd and 5th paragraphs). Their seed coating composition comprises ~43-98.79% diatomaceous earth as a filler (CN’231, Summary of Invention, 2nd and 6th paragraphs). It would be obvious to use the diatomaceous earth as the powder in Johnson since CN’231 teach this is a suitable carrier for Trichoderma and Bacillus. It would also be obvious to add brassinolide to the overall composition since it adds a plant growth enhancing property to the invention.
Therefore the invention as a whole would have been 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
Request for Interview
The Examiner believes an interview would be useful in progressing this case to at least overcome the 35 USC 112 rejections to better define the invention for searching. The Applicant is encourage to contact Thane Underdahl at (303) 297-4299 to discuss the claims/claim amendments to place this case in condition for allowance prior to replying to this Office Action.
In response to this office action the applicant should specifically point out the support for any amendments made to the disclosure, including the claims (MPEP 714.02 and 2163.06).
CONTACT INFORMATION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THANE E UNDERDAHL whose telephone number is (303) 297-4299. The examiner can normally be reached Monday through Thursday, M-F 8-5 MST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at (571) 272-3311.The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THANE UNDERDAHL/Primary Examiner, Art Unit 1699