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 .
Applicant’s election with traverse of Group I, claims 1-7 and 9-20, in the reply filed on 1 December 2025 is acknowledged.
Applicant’s traversal is on the grounds that the Groups of claims are linked by a technical feature which makes a contribution over the prior art. However, contrary to Applicant’s assertion the technical feature that is common to all the Groups is not a discovery that the claimed fermented composition suppresses plant bacterial wilt. The claims are much broader than that, and there is no evidence that a fermented product of each and any of the plethora of recited botanicals. The common feature is the fermented product, which is well-known (i.e., Manda 31).
There is an examination and search burden for these patentably distinct inventions due to their mutually exclusive characteristics. The inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search queries); and/or the prior art applicable to one invention would not likely be applicable to another invention; and/or the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112(a).
Furthermore, if the composition that has have elected is found allowable, then the method claims can be rejoined.
Claim 8 is withdrawn as being directed to a nonelected invention
Claims 1-7 and 9-20 are presented for examination on the merits.
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 1-7 and 9-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a “plant vitality adjuvant comprising a fermented composition as a main raw material (i.e., Manda 31),
does not reasonably provide enablement for a fermented product of one or more fruits selected from one or more of the recited botanicals as claimed. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to practice the invention commensurate in scope with these claims.
See Genentech v. Novo Nordisk, 108 F. 3d 1361, 1366 “Patent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable. See Brenner v. Manson, 383 U.S. 519, 536, 86 S. Ct. 1033, 1042-43, 16 L. Ed. 2d 69, 148 USPQ 689, 696 (1966) (stating, in context of the utility requirement, that "a patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion.") Tossing out the mere germ of an idea does not constitute enabling disclosure. While every aspect of a generic claim certainly need not have been carried out by an inventor, or exemplified in the specification, reasonable detail must be provided in order to enable members of the public to understand and carry out the invention.” In re Fisher, 427 F.2d 833, 166 USPQ 18 (CCPA 1970), held that "Inventor should be allowed to dominate future patentable inventions of others where those inventions were based in some way on his teachings, since such improvements while unobvious from his teachings, are still within his contribution, since improvement was made possible by his work; however, he must not be permitted to achieve this dominance by claims which are insufficiently supported and, hence, not in compliance with first paragraph of 35 U.S.C. 112; that paragraph requires that scope of claims must bear a reasonable correlation to scope of enablement provided by specification to persons of ordinary skill in the art; in cases involving predictable factors, such as mechanical or electrical elements, a single embodiment provides broad enablement in the sense that, once imagined, other embodiments can be made without difficulty and their performance characteristics predicted by resort to known scientific law; in cases involving unpredictable factors, such as most chemical reactions and physiological activity, scope of enablement varies inversely with degree of unpredictability of factors involved." (Emphasis added)
Undue experimentation would be required to practice the invention as claimed due to the quantity of experimentation necessary; limited amount of guidance and limited number of working examples provided in the specification; nature of the invention; state of the prior art; relative skill level of those in the art; predictability or unpredictability in the art; and breadth of the claims. In re Wands, 8USPQ2d 1400, 1404 (Fed. Cir. 1988).
Applicant’s claims are drawn to an plant vitality adjuvant for suppressing a bacterial wilt disease of a plant, comprising a fermented composition as a main raw material, wherein the fermented composition is obtained by fermenting and aging one or more fruits selected from any of a long list of raw materials. However, the specification provides examples, only showing that Manda 31 could have an inhibitory effect on bacterial wilt disease.
However, unpredictability with regard to natural extracts due to their highly complex nature has been well documented. Revilla et al. (J. Agric. Food Chem. (1998), vol. 46, pp. 4592-4597) showed that the slightest variations in polarity of solvent and reaction time upon grape extraction provided respective products with unique characteristic properties (See tables 1, 2, 4, 5, 6 and 7 in Revilla). In turn, each product would possess varying pharmacological properties based upon their respective methods of extraction. Thus, the functional property of an extract of beeswax bloom as an anti-inflammatory is not considered to be predictable because the type of extraction used to produce the extract would have a significant impact on the chemical characteristics of the extract.
Raskin et al. clearly establish the grave unpredictability of elucidating active ingredients from natural sources:
Multi-component botanical therapeutics also present unique challenges in identifying their active ingredients and in validating their clinical effects. Activity-guided fractionation and reconstitution experiments currently used to characterize compound interferences within a mixture are cumbersome and time consuming…..While chromatographic analysis is often employed to produce biochemical fingerprints used for product comparison…..in the absence of information about the identity of active ingredients, such analysis is hardly reliable, since chromatography provides an incomplete picture of the qualitative and quantitative comparison of a complex extract (p. 3426, col. 2 – p. 3427, col. 1) emphasis added.
Claim Rejections - 35 USC § 102/103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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.
Claims 1-7 and 9-20 are rejected under 35 U.S.C. 102(a)(1 ) as anticipated by or, in the alternative, under 35 U.S.C. 103(a) as obvious over Matsuura (US6,395,315).
A plant vitality adjuvant comprising a fermented composition as a main raw material (i.e., Manda 31) is claimed.
Matsuura discloses a plant growth promoter composition (Manda 31) comprising, as a main raw material, a fermented composition obtained by fermenting and aging one or more fruits selected from apples, persimmons, bananas, pineapples, akebia, silvervine, figs, wild strawberries, strawberries, wild vines, grapes, Myrica, peaches, Ume (Japanese apricots), blueberries, and raspberries, one or more citrus fruits selected from navel oranges, Hassaku oranges, mandarin oranges, Sour oranges, oranges, Iyokan oranges, kumquats, Yuzu (citrons), Kabosu oranges, shaddocks, Ponkan oranges, lemons, and limes, one or more edible roots selected from Burdock, carrots, garlic, lotus root, and lily bulbs, one or more grains selected from brown rice, glutinous rice, rice, millet, corn, wheat, barley, Foxtail millet, and Sawa millet, one or more beans and sesames selected from soybeans, black soybeans, black sesame, white sesame, Azuki beans, and walnuts, one or more types of seaweed selected from Konbu, Wakame, Hijiki, and Aonori (laver), Kawanori (laver), one or more saccharides selected from black sugar, fructose, and glucose, and one or more items selected from honey, starch, cucumbers, Perilla, and celery. The reference further indicates that by using Manda 31 as a plant growth promoter, plants themselves grow in a remarkably healthy manner, spread their roots well and gain enhanced nutrient absorbing capacity, consequently increasing resistance against disease damage caused by environmental changes such as insufficient sunlight and climate irregularities, as well as against weeds and insects.
Note: The claims elected for examination are composition claims which comprise Applicant’s Manda 31 product. The intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is inherent in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. In the instant case, the intended use does not create a structural difference, thus the intended use is not limited (see e.g., MPEP 2112). Simply stating a composition is “configured for” is insufficient and without more is equivalent to stating the intended use.
Please note that when applicant claims a composition in terms of function and the compositions of the prior art appear to be the same, the Examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejections (MPEP 2112).
A composition of matter that is old in the art cannot be patented by one who discovers a previously unknown property of that composition. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 227 U.S.P.Q. (BNA) 773 (Fed. Cir. 1985).
It is noted that there is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003) (rejecting the contention that inherent anticipation requires recognition by a person of ordinary skill in the art before the critical date and allowing expert testimony with respect to post-critical date clinical trials to show inherency); see also Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004)(“[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.”); Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1348-49 (Fed. Cir. 1999) (“Because sufficient aeration’ was inherent in the prior art, it is irrelevant that the prior art did not recognize the key aspect of [the] invention…. An inherent structure, composition, or function is not necessarily known.”)>; SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343-44, 74 USPQ2d 1398, 1406-07 (Fed. Cir. 2005) (holding that a prior art patent to an anhydrous form of a compound “inherently” anticipated the claimed hemihydrate form of the compound because practicing the process in the prior art to manufacture the anhydrous compound “inherently results in at least trace amounts of” the claimed hemihydrate even if the prior art did not discuss or recognize the hemihydrate) (See MPEP 2112).
Consequently, the claimed product appears to be anticipated by the cited reference.
Alternatively, the instant claims rejected under U.S.C. 103(a) as being unpatentable over Matsuura (US6,395,315) in view of e.g. Rodriquez Quintero (US2015/0223470).
Matsuura is cited for the teaching of Manda 31 as set forth above.
A configuration in which tomato bacterial wilt disease is inhibited by applying various fermented compositions into soil, is well-known as evidenced by Rodriquiez Quintero.
Accordingly, the claimed invention as a whole was at least prima facie obvious, if not anticipated by the reference, especially in the absence of sufficient, clear, and convincing evidence to the contrary.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL G FIEBIG whose telephone number is (571)270-5366. The examiner can normally be reached M-F 8-4.
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/RUSSELL G FIEBIG/ Examiner, Art Unit 1655