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 .
Election/Restrictions
Newly submitted Claims 89-91 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
It should be noted that newly added Claims 77-88 correspond to originally elected Group VII in the Response to a Restriction Requirement filed on 04/27/2026 by Applicant, and as such will be examined herein. However, newly added Claims 89-91 are drawn to a system comprising an indoor ornamental plant cultivated and/or maintained in the presence of a composition comprising engineered microbes, wherein the composition comprises engineered Pseudomonas putida and Methylobacterium extorquens, wherein the composition further comprises engineered Methylobacterium oryzae, and wherein the system exhibits increased VOC removal when compared to a system comprising a plant not cultivated or maintained in the presence of the composition comprising engineered microbes, which all would have been subject to the restriction requirement set forth in the Office Action dated 02/26/2026 as groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1 with Groups I-VII for lacking the same or a corresponding special technical feature as to form a single general inventive concept.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, Claims 89-91 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant’s election without traverse of Group VII (encompassing Claim 72) in the reply filed on 04/27/2026 is acknowledged. Newly added Claims 77-88 correspond to originally elected Group VII in the Response to a Restriction Requirement filed on 04/27/2026 by Applicant, and as such will be examined herein.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) is acknowledged. As such, the effective filing date of Claims 72 and 77-91 is 04/07/2021.
Status of the Claims
Amendments dated 04/27/2026 have been entered.
Claims 1-71 and 73-76 have been cancelled by Applicant.
Claims 72 and 77-91 are pending.
Claims 89-91 are withdrawn from consideration for being directed to a nonelected invention.
Claims 72 and 77-88 are examined herein.
Information Disclosure Statement
The Information Disclosure Statements filed on 10/08/2024, 03/04/2025, 12/03/2025, and 04/27/2026 are in compliance with the provisions of 37 CFR 1.97 and have been considered in full. Signed copies of the lists of references cited from the IDSs are included with this Office Action.
Specification
The disclosure is objected to because of the following informalities:
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code (paragraph 477). Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
The use of the term "Tween 20" in paragraphs 491, 544, and 548, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term. Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Appropriate correction is required.
Claim Objections
Claims 72, 82, and 87-88 are objected to because of the following informalities:
Claim 72, part (a), line 5 should be amended to recite “…of the VOCs…”.
Claim 72, part (b), line 1 should be amended to recite “…in the VOC levels…”
Claim 82 should be amended to recite “MoCBMB20” to remain consistent with the bacterial strain nomenclature recited in the specification (See paragraphs 104, 432, 528, 535-536; Table 6).
Claim 87 should be amended to recite “MoCBMB20” to remain consistent with the bacterial strain nomenclature recited in the specification (See paragraphs 104, 432, 528, 535-536; Table 6).
Claim 88 should be amended to recite “MoCBMB20” to remain consistent with the bacterial strain nomenclature recited in the specification (See paragraphs 104, 432, 528, 535-536; Table 6).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Indefiniteness
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 72 and 77-88 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. All dependent claims are included in these rejections uncles they include a limitation that overcomes the deficiencies of the parent claim.
Claim 72, as amended, is ambiguous and indefinite in the limitation “engineered” because it is unclear what is encompassed by this recitation. Does the process of engineering encompass genetic and/or non-genetic structural modification to the claimed microbe? What is included in the process of “engineering” and what structural characteristics should be maintained at the end of the process of engineering are not clear. The instant specification does not provide a definition of the term “engineered” in such a way that one of ordinary skill in the art would be able to readily identify the functional and structural differences between the instantly claimed engineered microbe and a non-engineered microbe. Because one of ordinary skill in the art would not readily be able to identify the functional and structural differences between the instantly claimed engineered microbe and a non-engineered microbe, one of ordinary skill in the art would also not be able to discern the scope of what is considered to be an engineered microbe versus a non-engineered microbe, making the metes and bounds of the claimed invention unclear.
Claim 77 is ambiguous and indefinite in the limitation “engineered” because it is unclear what is encompassed by this recitation. Does the process of engineering encompass genetic and/or non-genetic structural modification to the claimed microbe? What is included in the process of “engineering” and what structural characteristics should be maintained at the end of the process of engineering are not clear. The instant specification does not provide a definition of the term “engineered” in such a way that one of ordinary skill in the art would be able to readily identify the functional and structural differences between the instantly claimed engineered microbe and a non-engineered microbe. Because one of ordinary skill in the art would not readily be able to identify the functional and structural differences between the instantly claimed engineered microbe and a non-engineered microbe, one of ordinary skill in the art would also not be able to discern the scope of what is considered to be an engineered microbe versus a non-engineered microbe, making the metes and bounds of the claimed invention unclear.
Claim Rejections - 35 USC § 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 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.
Claim 72 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (Biotechnol. Bioeng. 43: 1146-1152, 1994) and Marx et al. (WO 2016/019249, published 02/04/2016) in view of Sriprapat et al. (Water Air Soil Pollut. 224: 1482, pages 1-9, 2013), Dela Cruz et al. (Environ. Sci. Pollution Res. Springer-Verlag, Berlin, 21: 13909-13928, 2014, IDS Document), and Wei et al. ( Frontiers in plant science 8 (2017): 1318: 1-23).
In regard to Claim 72, Lee et al. (herein referred to as Lee) teaches a method of engineering Pseudomonas putida TB101 bacterial composition (i.e., TB101 bacterial cells) to be genetically modified from a Pseudomonas putida F1 (PpF1) reference strain, wherein the engineered Pseudomonas putida TB101 degrades or mineralizes the VOCs - benzene, toluene and xylene (BTX), or mineralizes the BTX mixture simultaneously. The Pseudomonas putida TB101 bacteria were engineered or constructed, by using a method of modification (See 35 U.S.C. §112(b) rejection above), from a reference strain, P. putida F39/D, a derivative of P. putida F1 (PpF1), which is unable to transform cis-glycol compounds to corresponding catechols. Lee teaches that the Pseudomonas putida TB101 composition used in the methods of the invention had a maximum volumetric degradation rates of BTX of 90, 180 and 460 mg/L h respectively (See Title; 1st and last full paragraphs on pg. 1146; pgs. 1147, 1149 and 1150; Figures 4 and 5; and pg. 1150, left column, last sentence). In the method taught by Lee, the engineered Pseudomonas putida TB101 bacteria simultaneously biodegraded the BTX mixture with the maximum specific degradation rate of 0.27, 0.86, and 2.89 mg/mg biomass/h for benzene, toluene, and p-xylene. The engineered Pseudomonas putida TB101 bacteria completely mineralized benzene, toluene, and p-xylene (See pg. 1151, Conclusions). Given that the prior art engineered Pseudomonas putida TB101 bacteria cells elicited maximum specific degradation rate of benzene, toluene, and p-xylene and showed complete mineralization of benzene, toluene, and p-xylene, the method of Lee necessarily determined the level and rate of change in specific VOC levels (benzene, toluene, and p-xylene) in the environment of the method, finding that VOCs (benzene, toluene, and p-xylene) had been degraded (removed) from the environment as instantly recited. The prior art engineered Pseudomonas putida bacteria read on the instantly claimed engineered Pseudomonas putida microbes. Absent evidence of specific structural features that distinguish the claimed engineered Pseudomonas putida microbes from that of the prior art (See 35 U.S.C. §112(b) and §112(a) rejections above), there is sufficient overlap to reasonably conclude that the prior art engineered Pseudomonas putida are one and the same as the Applicant’s engineered Pseudomonas putida cells. Since the Office does not have the facilities for examining and comparing these engineered Pseudomonas putida microbes, the burden is on the Applicant to show a novel or an unobvious difference between the instantly claimed product and the prior art product. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzerald et al., 05 USPQ 594.
Regarding Claim 72, Marx et al. (herein referred to as Marx) teaches that a method of evolution, wherein Methylobacterium extorquens PA1 is recited as an alphaproteobacteria that can grow on reduced single carbon compounds like methanol as the sole source of carbon and energy, wherein mutant strains of M. extorquens PA1 that grow on elevated concentrations of formaldehyde (a VOC) (20 mM) were screened by serially transferring (“engineering”) three replicate populations of WT in minimal media with increasing concentrations of formaldehyde and decreasing concentrations of methanol (a "weaning technique"). After 30 transfers, M. extorquens PA1 mutant strains were obtained that could grow on 20 mM formaldehyde as the sole carbon source (pg. 16, Example 1, last paragraph). Given that the prior art mutant M. extorquens PA1 strains consumed formaldehyde as its primary source of carbon for growth, the method of evolution taught by Marx necessarily determined the level and rate of change in specific VOC levels (formaldehyde) in the environment of the method (the bacterial cell culture for the mutant M. extorquens PA1 strains), finding that VOCs (formaldehyde) had been consumed and metabolized (removed) from the environment as instantly recited. The prior art M. extorquens PA1 strains read on the instantly claimed engineered Methylobacterium exortquens cells. Absent evidence of specific structural features that distinguish the claimed engineered Methylobacterium exortquens cells from that of the prior art (See 35 U.S.C. §112(b) and §112(a) rejections above), there is sufficient overlap to reasonably conclude that the prior art engineered Methylobacterium exortquens are one and the same as the Applicant’s engineered Methylobacterium exortquens microbes. Since the Office does not have the facilities for examining and comparing these engineered Methylobacterium exortquens microbes, the burden is on the Applicant to show a novel or an unobvious difference between the instantly claimed product and the prior art product. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzerald et al., 05 USPQ 594.
However, the methods of engineering microbes for the removal of VOCs from an environment taught by Lee and Marx and the compositions used in the methods of Lee and Marx, are silent regarding the engineered microbes being in the presence of an indoor ornamental plant as claimed.
However, indoor plants that ameliorate air pollutants were well known in the art at the time of the invention. For instance, along with the disclosure of phytoremediation using plants to remove toxins from air as an efficient and cost-effective way to improve indoor air quality, Sriprapat et al. (herein referred to as Sriprapat) identified indoor ornamental plants, including Epipremnum aureum, that remove VOC such a benzene. Sriprapat demonstrated that the indoor plant Zamioculcas zamiifolia reduces the concentration of benzene, toluene, ethyl-benzene, and xylene (BTEX). (See title, Abstract, Introduction, pg. 2, Figure 1, and pg. 9, Conclusions).
Dela Cruz et al. (herein referred to as Dela Cruz) teaches the method of, or the routine and/or conventional use in the art of, the indoor plants such as Epipremnum aureum and Azalea indica for removal of VOCs and also the removal of VOCs by Pseudomonas TVA8 (i.e., Pseudomonas putida). Dela Cruz teaches that Pseudomonas were responsible for a higher VOC removal rate. Dela Cruz also teaches that inoculating plants with such bacteria increases removal rates of VOCs such as benzene, toluene, and xylene (i.e., BTX). Dela Cruz teaches that methods using the inoculation of Pseudomonas TVA8 (i.e., Pseudomonas putida) into plants significantly decreased the time for 95% removal rate of the VOCs compared to a plant without such inoculation. (See pg. 13911-13913, Table 1; last full paragraph on pg. 13916; and the last two lines in left column of pg. 13916).
Additionally, Wei et al. (herein referred to as Wei) teaches the method of, or the routine and/or conventional use in the art of using plants, such as Epipremnum aureum, Osmunda japonica, Selaginella tamariscina, Davallia mariesii, and Polypodium formosanum to direct absorb (remove) formaldehyde (VOC) from the environment. Wei also teaches that formaldehyde can also be assimilated as a carbon source by bacteria, wherein such assimilation occurs in Methylobacterium extorquens through the reactions of the serine cycle, wherein some of bacteria used to colonize roots of plants can also colonize leaves and could be used for phylloremediation of formaldehyde in the air (pg. 11, paragraph bridging left and right column).
Given that engineered P. putida cell and M. extorquens cells and specific indoor ornamental plants were both already known in the art to remove or degrade volatile organic compounds from the environment as set forth previously herein, P. putida was known to be responsible for a higher VOC removal rate when in the presence of indoor ornamental plants such as Epipremnum aureum, and having bacteria like M. extorquens colonize leaves of plants such as Epipremnum aureum for the purpose of phylloremediation of formaldehyde in the air was also well known in the art at the time of the invention, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use methods of engineering microbes for the removal of VOCs from an environment and the engineered microbe compositions taught by Lee and Marx, having the demonstrated capacity to either induce maximum specific degradation rate of benzene, toluene, and p-xylene, having the capacity to induce complete mineralization of benzene, toluene, and p-xylene, or reduce environmental formaldehyde, respectively, in the presence of Sriprapat’s, Dela Cruz’s, or Wei’s indoor ornamental plants, including Epipremnum aureum, to produce the instant invention.
Per MPEP 2144.06, it is prima facie obvious to combine two elements each of which is taught by the prior art to be useful for the same purpose, i.e., VOC removal or VOC degradation purpose, in order to form a third product to be used for the very same purpose. ‘[T]he idea of combining them flows logically from them having been individually taught in the prior art.’ In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Since the recited elements were known and available in the prior art and having such elements together in a composition or a system was also known in the art, one skilled in the art would have had the elements together as claimed by known methods with no change in their respective functions, having them in a composition would have yielded predictable results to one of ordinary skill in the art at the time of the invention. See Ex parte Smith,--USPQ2d--, slip op. at 20, (Bd. Pat. App. & Interf. June 25, 2007) (citing KSR, 82 USPQ2d at 1396). In KSR v. Teleflex, 550 U.S. (2007), the Supreme Court decided that when elements, techniques, items, or devices are combined, united, or arranged, and when, in combination, each item performs the function it was designed to perform, the resulting combination --something the court called ‘ordinary innovation’-- is not patentable. This can be true even if there is no teaching, suggestion, or motivation to make the combination. KSR International Co. v. Teleflex Inc.,127 S. Ct. 1727, 1741 (2007) also discloses that ‘[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results’. To establish obviousness, it is not necessary that the motivation come explicitly from the reference itself. The natural presumption that two individually art-known agents are beneficial in a composition used in a method and would provide a third composition used in a method also useful as a VOC-removal composition in a method flows logically from each having been individually taught in the prior art. It should be noted that what would reasonably have been known and used by one of ordinary skill in the art need not be explicitly taught. See In re Nilssen, 851 F.2d 1401, 7 USPQ2d 1500 (Fed. Cir. 1988). As set forth in KSR Int'l Co. v. Teleflex Inc., 27 S. Ct. 1727, 1741-42, 82 USPQ2d 1385, 1397 (2007), '[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103'. See also In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992) ("[T]he law does not require that the references be combined for the reasons contemplated by the inventor"). In the instant case, the teachings expressly and impliedly taught in the cited references provide sufficient reason, suggestion, or motivation to combine their teachings. The test of obviousness is not express suggestion of the claimed invention in any and all of the references, but rather what the references taken collectively would reasonably have suggested to those of ordinary skill in the art presumed to be familiar with them. In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). Obviousness does not require absolute predictability (see In re Lamberti, 192 USPQ 278), but only a reasonable expectation of success (see In re O’Farrell, 7 USPQ 2d 1673, Fed. Cir. 1988).
Therefore, for all the reasons above, the claimed invention is prima facie obvious.
Claims 77, 79-81, and 85-86 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (Biotechnol. Bioeng. 43: 1146-1152, 1994) and Marx et al. (WO 2016/019249, published 02/04/2016) in view of Sriprapat et al. (Water Air Soil Pollut. 224: 1482, pages 1-9, 2013), Dela Cruz et al. (Environ. Sci. Pollution Res. Springer-Verlag, Berlin, 21: 13909-13928, 2014, IDS Document), and Wei et al. ( Frontiers in plant science 8 (2017): 1318: 1-23).
In regard to Claim 77, Lee et al. (herein referred to as Lee) teaches a method of engineering Pseudomonas putida TB101 bacterial composition (i.e., TB101 bacterial cells) to be genetically modified from a Pseudomonas putida F1 (PpF1) reference strain, wherein the engineered Pseudomonas putida TB101 degrades or mineralizes the VOCs - benzene, toluene and xylene (BTX), or mineralizes the BTX mixture simultaneously. The Pseudomonas putida TB101 bacteria were engineered or constructed, by using a method of modification (See 35 U.S.C. §112(b) rejection above), from a reference strain, P. putida F39/D, a derivative of P. putida F1 (PpF1), which is unable to transform cis-glycol compounds to corresponding catechols. Lee teaches that the Pseudomonas putida TB101 composition used in the methods of the invention had a maximum volumetric degradation rates of BTX of 90, 180 and 460 mg/L h respectively (See Title; 1st and last full paragraphs on pg. 1146; pgs. 1147, 1149 and 1150; Figures 4 and 5; and pg. 1150, left column, last sentence). In the method taught by Lee, the engineered Pseudomonas putida TB101 bacteria simultaneously biodegraded the BTX mixture with the maximum specific degradation rate of 0.27, 0.86, and 2.89 mg/mg biomass/h for benzene, toluene, and p-xylene. The engineered Pseudomonas putida TB101 bacteria completely mineralized benzene, toluene, and p-xylene (See pg. 1151, Conclusions). Given that the prior art engineered Pseudomonas putida TB101 bacteria cells elicited maximum specific degradation rate of benzene, toluene, and p-xylene and showed complete mineralization of benzene, toluene, and p-xylene, the method of Lee necessarily determined the reduction in one or more specific VOCs (benzene, toluene, and p-xylene) in the environment of the method, finding that the one or more VOCs (benzene, toluene, and p-xylene) had been degraded (reduced) from the environment as instantly recited.
In regard to Claims 77 and 80, the prior art engineered Pseudomonas putida F1 (PpF1) bacteria read on the instantly claimed engineered Pseudomonas putida cells and Pseudomonas putida F1 (PpF1) cells. Absent evidence of specific structural features that distinguish the claimed engineered Pseudomonas putida cells from that of the prior art (See 35 U.S.C. §112(b) and §112(a) rejections above), there is sufficient overlap to reasonably conclude that the prior art engineered Pseudomonas putida are one and the same as the Applicant’s engineered Pseudomonas putida microbe. Since the Office does not have the facilities for examining and comparing these engineered Pseudomonas putida microbes, the burden is on the Applicant to show a novel or an unobvious difference between the instantly claimed product and the prior art product. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzerald et al., 05 USPQ 594.
Regarding Claim 77, Marx et al. (herein referred to as Marx) teaches that a method of evolution, wherein Methylobacterium extorquens PA1 is recited as an alphaproteobacteria that can grow on reduced single carbon compounds like methanol as the sole source of carbon and energy, wherein mutant strains of M. extorquens PA1 that grow on elevated concentrations of formaldehyde (a VOC) (20 mM) were screened by serially transferring (“engineering”) three replicate populations of WT in minimal media with increasing concentrations of formaldehyde and decreasing concentrations of methanol (a "weaning technique"). After 30 transfers, M. extorquens PA1 mutant strains were obtained that could grow on 20 mM formaldehyde as the sole carbon source (pg. 16, Example 1, last paragraph). Given that the prior art mutant M. extorquens PA1 strains consumed formaldehyde as its primary source of carbon for growth, the method of evolution taught by Marx necessarily determined the reduction in one or more VOCs (formaldehyde) in the environment of the method (the bacterial cell culture for the mutant M. extorquens PA1 strains), finding that the one or more VOCs (formaldehyde) had been consumed and metabolized (reduced) from the environment as instantly recited.
In regard to Claims 77, 81, 85, and 86, the prior art M. extorquens PA1 strains read on the instantly claimed engineered Methylobacterium exortquens microbe, the engineered Methylobacterium exortquens MePa1 strain, wherein Marx teaches that the strain was engineered through serially transferring M. extorquens PA1 strains until M. extorquens PA1 mutant were obtained that could grow on 20 mM formaldehyde as the sole carbon source (directed evolution via serial inoculation). Absent evidence of specific structural features that distinguish the claimed engineered Methylobacterium exortquens cells from that of the prior art (See 35 U.S.C. §112(b) and §112(a) rejections above), there is sufficient overlap to reasonably conclude that the prior art engineered Methylobacterium exortquens are one and the same as the Applicant’s engineered Methylobacterium exortquens microbes. Since the Office does not have the facilities for examining and comparing these engineered Methylobacterium exortquens microbes, the burden is on the Applicant to show a novel or an unobvious difference between the instantly claimed product and the prior art product. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzerald et al., 05 USPQ 594.
However, the methods of engineering microbes for the removal of VOCs from an environment taught by Lee and Marx and the compositions used in the methods of Lee and Marx, are silent regarding the engineered microbes being in the presence of an indoor ornamental plant as claimed, or more specifically a Epipremnum aureum as claimed.
However, regarding Claims 77 and 79, indoor plants that ameliorate air pollutants were well known in the art at the time of the invention. For instance, along with the disclosure of phytoremediation using plants to remove toxins from air as an efficient and cost-effective way to improve indoor air quality, Sriprapat et al. (herein referred to as Sriprapat) identified indoor ornamental plants, including Epipremnum aureum, that remove VOC such a benzene. Sriprapat demonstrated that the indoor plant Zamioculcas zamiifolia reduces the concentration of benzene, toluene, ethyl-benzene, and xylene (BTEX). (See title, Abstract, Introduction, pg. 2, Figure 1, and pg. 9, Conclusions).
Dela Cruz et al. (herein referred to as Dela Cruz) teaches the method of, or the routine and/or conventional use in the art of, the indoor plants such as Epipremnum aureum and Azalea indica for removal of VOCs and also the removal of VOCs by Pseudomonas TVA8 (i.e., Pseudomonas putida). Dela Cruz teaches that Pseudomonas were responsible for a higher VOC removal rate. Dela Cruz also teaches that inoculating plants with such bacteria increases removal rates of VOCs such as benzene, toluene, and xylene (i.e., BTX). Dela Cruz teaches that methods using the inoculation of Pseudomonas TVA8 (i.e., Pseudomonas putida) into plants significantly decreased the time for 95% removal rate of the VOCs compared to a plant without such inoculation. (See pg. 13911-13913, Table 1; last full paragraph on pg. 13916; and the last two lines in left column of pg. 13916).
Additionally, Wei et al. (herein referred to as Wei) teaches the method of, or the routine and/or conventional use in the art of using plants, such as Epipremnum aureum, Osmunda japonica, Selaginella tamariscina, Davallia mariesii, and Polypodium formosanum to direct absorb (remove) formaldehyde (VOC) from the environment. Wei also teaches that formaldehyde can also be assimilated as a carbon source by bacteria, wherein such assimilation occurs in Methylobacterium extorquens through the reactions of the serine cycle, wherein some of bacteria used to colonize roots of plants can also colonize leaves and could be used for phylloremediation of formaldehyde in the air (pg. 11, paragraph bridging left and right column).
Given that engineered P. putida cell and M. extorquens cells and specific indoor ornamental plants were both already known in the art to remove or degrade volatile organic compounds from the environment as set forth previously herein, P. putida was known to be responsible for a higher VOC removal rate when in the presence of indoor ornamental plants such as Epipremnum aureum, and having bacteria like M. extorquens colonize leaves of plants such as Epipremnum aureum for the purpose of phylloremediation of formaldehyde in the air was also well known in the art at the time of the invention, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use methods of engineering microbes for the removal of VOCs from an environment and the engineered microbe compositions taught by Lee and Marx, having the demonstrated capacity to either induce maximum specific degradation rate of benzene, toluene, and p-xylene, having the capacity to induce complete mineralization of benzene, toluene, and p-xylene, or reduce environmental formaldehyde, respectively, in the presence of Sriprapat’s, Dela Cruz’s, or Wei’s indoor ornamental plants, particularly Epipremnum aureum, to produce the instant invention.
Per MPEP 2144.06, it is prima facie obvious to combine two elements each of which is taught by the prior art to be useful for the same purpose, i.e., VOC removal or VOC degradation purpose (specifically BTX and formaldehyde), in order to form a third product to be used for the very same purpose. ‘[T]he idea of combining them flows logically from them having been individually taught in the prior art.’ In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Since the recited elements were known and available in the prior art and having such elements together in a composition or a system was also known in the art, one skilled in the art would have had the elements together as claimed by known methods with no change in their respective functions, having them in a composition would have yielded predictable results to one of ordinary skill in the art at the time of the invention. See Ex parte Smith,--USPQ2d--, slip op. at 20, (Bd. Pat. App. & Interf. June 25, 2007) (citing KSR, 82 USPQ2d at 1396). In KSR v. Teleflex, 550 U.S. (2007), the Supreme Court decided that when elements, techniques, items, or devices are combined, united, or arranged, and when, in combination, each item performs the function it was designed to perform, the resulting combination --something the court called ‘ordinary innovation’-- is not patentable. This can be true even if there is no teaching, suggestion, or motivation to make the combination. KSR International Co. v. Teleflex Inc.,127 S. Ct. 1727, 1741 (2007) also discloses that ‘[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results’. To establish obviousness, it is not necessary that the motivation come explicitly from the reference itself. The natural presumption that two individually art-known agents are beneficial in a composition used in a method and would provide a third composition used in a method also useful as a VOC-removal composition (specifically BTX and formaldehyde) in a method flows logically from each having been individually taught in the prior art. It should be noted that what would reasonably have been known and used by one of ordinary skill in the art need not be explicitly taught. See In re Nilssen, 851 F.2d 1401, 7 USPQ2d 1500 (Fed. Cir. 1988). As set forth in KSR Int'l Co. v. Teleflex Inc., 27 S. Ct. 1727, 1741-42, 82 USPQ2d 1385, 1397 (2007), '[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103'. See also In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992) ("[T]he law does not require that the references be combined for the reasons contemplated by the inventor"). In the instant case, the teachings expressly and impliedly taught in the cited references provide sufficient reason, suggestion, or motivation to combine their teachings. The test of obviousness is not express suggestion of the claimed invention in any and all of the references, but rather what the references taken collectively would reasonably have suggested to those of ordinary skill in the art presumed to be familiar with them. In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). Obviousness does not require absolute predictability (see In re Lamberti, 192 USPQ 278), but only a reasonable expectation of success (see In re O’Farrell, 7 USPQ 2d 1673, Fed. Cir. 1988).
Therefore, for all the reasons above, the claimed invention is prima facie obvious.
Claims 77, 79-81, and 83-86 are rejected under 35 U.S.C. 103 as being unpatentable over Chicca et al. (Environ. Sci. Pollution Res. 27: 36203-36214, 18 June 2020, IDS Document) and Marx et al. (WO 2016/019249, published 02/04/2016) in view of Sriprapat et al. (Water Air Soil Pollut. 224: 1482, pages 1-9, 2013), Dela Cruz et al. (Environ. Sci. Pollution Res. Springer-Verlag, Berlin, 21: 13909-13928, 2014, IDS Document), and Wei et al. ( Frontiers in plant science 8 (2017): 1318: 1-23).
In regard to Claim 77, Chicca et al. (herein referred to as Chicca) put one of ordinary skill in the art on notice that methods of engineering strains of P. putida using serial inoculation for the purpose of VOC removal from an environment are well known and conventional in the art. Chicca teaches a method using a RMM composition comprising the modified (i.e., engineered) P. putida AQ8 AHL- mutant bacteria which showed greater depletion of at least one BTEX (i.e., VOC) component at 12 hours post-incubation with each of the BTEX components compared to the AQ8 reference strain of P. putida. The bacteria were obtained by subjecting to repeated (serial) passage (i.e., directed evolution through serial inoculation as defined at least at paragraph [535] of the instant specification and as claimed also in instant dependent Claims 83-84). The P. putida AQ8 AHL- mutant bacteria were derived from the AQ8 reference strain of P. putida AQ8. (See Figures 3c, 3d, 3e, 3a and 3b; pg. 36209, lines 1-3; pg. 36204, last full paragraph; pg. 36205, including 5th and 6th full sentences of the 1st full paragraph; pg. 36206, the sections ‘Growth of bacteria in LB and in RMM in the presence of BTEX as sole carbon sources’, ‘BTEX depletion’ and ‘BTEX measurement’; pg. 36208, the section ‘BTEX depletion’; sentence bridging pgs. 36204-36205). Based on the teachings of the prior art and the 35 U.S.C. §112(b) rejections above, it appears that the prior art engineered Pseudomonas putida bacteria that were engineered using serial inoculation read on the instantly claimed engineered Pseudomonas putida microbes as recited in Claims 77, 80, and 83-84. Absent evidence of specific structural features that distinguish the claimed engineered Pseudomonas putida cells from that of the prior art (See 35 U.S.C. §112(b) and §112(a) rejections above), there is sufficient overlap to reasonably conclude that the prior art engineered Pseudomonas putida are one and the same as the Applicant’s engineered Pseudomonas putida microbe. Since the Office does not have the facilities for examining and comparing these engineered Pseudomonas putida microbe, the burden is on the Applicant to show a novel or an unobvious difference between the instantly claimed product and the prior art product. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzerald et al., 05 USPQ 594.
Regarding Claim 77, Marx et al. (herein referred to as Marx) teaches that a method of evolution, wherein Methylobacterium extorquens PA1 is recited as an alphaproteobacteria that can grow on reduced single carbon compounds like methanol as the sole source of carbon and energy, wherein mutant strains of M. extorquens PA1 that grow on elevated concentrations of formaldehyde (a VOC) (20 mM) were screened by serially transferring (“engineering”) three replicate populations of WT in minimal media with increasing concentrations of formaldehyde and decreasing concentrations of methanol (a "weaning technique"). After 30 transfers, M. extorquens PA1 mutant strains were obtained that could grow on 20 mM formaldehyde as the sole carbon source (pg. 16, Example 1, last paragraph). Given that the prior art mutant M. extorquens PA1 strains consumed formaldehyde as its primary source of carbon for growth, the method of evolution taught by Marx necessarily determined the reduction in one or more VOCs (formaldehyde) in the environment of the method (the bacterial cell culture for the mutant M. extorquens PA1 strains), finding that the one or more VOCs (formaldehyde) had been consumed and metabolized (reduced) from the environment as instantly recited.
In regard to Claims 77, 81, 85, and 86, the prior art M. extorquens PA1 strains read on the instantly claimed engineered Methylobacterium exortquens microbe, the engineered Methylobacterium exortquens MePa1 strain, wherein Marx teaches that the strain was engineered through serially transferring M. extorquens PA1 strains until M. extorquens PA1 mutant were obtained that could grow on 20 mM formaldehyde as the sole carbon source (directed evolution via serial inoculation). Absent evidence of specific structural features that distinguish the claimed engineered Methylobacterium exortquens cells from that of the prior art (See 35 U.S.C. §112(b) and §112(a) rejections above), there is sufficient overlap to reasonably conclude that the prior art engineered Methylobacterium exortquens are one and the same as the Applicant’s engineered Methylobacterium exortquens microbes. Since the Office does not have the facilities for examining and comparing these engineered Methylobacterium exortquens microbes, the burden is on the Applicant to show a novel or an unobvious difference between the instantly claimed product and the prior art product. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzerald et al., 05 USPQ 594.
However, the methods of engineering microbes for the removal of VOCs from an environment taught by Lee and Chicca and the compositions used in the methods of Chicca and Marx, are silent regarding the engineered microbes being in the presence of an indoor ornamental plant as claimed, or more specifically a Epipremnum aureum as claimed.
However, regarding Claims 77 and 79, indoor plants that ameliorate air pollutants were well known in the art at the time of the invention. For instance, along with the disclosure of phytoremediation using plants to remove toxins from air as an efficient and cost-effective way to improve indoor air quality, Sriprapat et al. (herein referred to as Sriprapat) identified indoor ornamental plants, including Epipremnum aureum, that remove VOC such a benzene. Sriprapat demonstrated that the indoor plant Zamioculcas zamiifolia reduces the concentration of benzene, toluene, ethyl-benzene, and xylene (BTEX). (See title, Abstract, Introduction, pg. 2, Figure 1, and pg. 9, Conclusions).
Dela Cruz et al. (herein referred to as Dela Cruz) teaches the method of, or the routine and/or conventional use in the art of, the indoor plants such as Epipremnum aureum and Azalea indica for removal of VOCs and also the removal of VOCs by Pseudomonas TVA8 (i.e., Pseudomonas putida). Dela Cruz teaches that Pseudomonas were responsible for a higher VOC removal rate. Dela Cruz also teaches that inoculating plants with such bacteria increases removal rates of VOCs such as benzene, toluene, and xylene (i.e., BTX). Dela Cruz teaches that methods using the inoculation of Pseudomonas TVA8 (i.e., Pseudomonas putida) into plants significantly decreased the time for 95% removal rate of the VOCs compared to a plant without such inoculation. (See pg. 13911-13913, Table 1; last full paragraph on pg. 13916; and the last two lines in left column of pg. 13916).
Additionally, Wei et al. (herein referred to as Wei) teaches the method of, or the routine and.or conventional use in the art of using plants, such as Epipremnum aureum, Osmunda japonica, Selaginella tamariscina, Davallia mariesii, and Polypodium formosanum to direct absorb (remove) formaldehyde (VOC) from the environment. Wei also teaches that formaldehyde can also be assimilated as a carbon source by bacteria, wherein such assimilation occurs in Methylobacterium extorquens through the reactions of the serine cycle, wherein some of bacteria used to colonize roots of plants can also colonize leaves and could be used for phylloremediation of formaldehyde in the air (pg. 11, paragraph bridging left and right column).
Given that engineered P. putida cell and M. extorquens cells and specific indoor ornamental plants were both already known in the art to remove or degrade volatile organic compounds from the environment as set forth previously herein, P. putida was known to be responsible for a higher VOC removal rate when in the presence of indoor ornamental plants such as Epipremnum aureum, and having bacteria like M. extorquens colonize leaves of plants such as Epipremnum aureum for the purpose of phylloremediation of formaldehyde in the air was also well known in the art at the time of the invention, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use methods of engineering microbes for the removal of VOCs from an environment and the engineered microbe compositions taught by Chicca and Marx, having the demonstrated capacity to either remove or degrade BTEX, or reduce environmental formaldehyde, respectively, in the presence of Sriprapat’s, Dela Cruz’s, or Wei’s indoor ornamental plants, particularly Epipremnum aureum, to produce the instant invention.
Per MPEP 2144.06, it is prima facie obvious to combine two elements each of which is taught by the prior art to be useful for the same purpose, i.e., VOC removal or VOC degradation purpose (specifically BTEX and formaldehyde), in order to form a third product to be used for the very same purpose. ‘[T]he idea of combining them flows logically from them having been individually taught in the prior art.’ In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Since the recited elements were known and available in the prior art and having such elements together in a composition or a system was also known in the art, one skilled in the art would have had the elements together as claimed by known methods with no change in their respective functions, having them in a composition would have yielded predictable results to one of ordinary skill in the art at the time of the invention. See Ex parte Smith,--USPQ2d--, slip op. at 20, (Bd. Pat. App. & Interf. June 25, 2007) (citing KSR, 82 USPQ2d at 1396). In KSR v. Teleflex, 550 U.S. (2007), the Supreme Court decided that when elements, techniques, items, or devices are combined, united, or arranged, and when, in combination, each item performs the function it was designed to perform, the resulting combination --something the court called ‘ordinary innovation’-- is not patentable. This can be true even if there is no teaching, suggestion, or motivation to make the combination. KSR International Co. v. Teleflex Inc.,127 S. Ct. 1727, 1741 (2007) also discloses that ‘[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results’. To establish obviousness, it is not necessary that the motivation come explicitly from the reference itself. The natural presumption that two individually art-known agents are beneficial in a composition used in a method and would provide a third composition used in a method also useful as a VOC-removal composition (specifically BTEX and formaldehyde) in a method flows logically from each having been individually taught in the prior art. It should be noted that what would reasonably have been known and used by one of ordinary skill in the art need not be explicitly taught. See In re Nilssen, 851 F.2d 1401, 7 USPQ2d 1500 (Fed. Cir. 1988). As set forth in KSR Int'l Co. v. Teleflex Inc., 27 S. Ct. 1727, 1741-42, 82 USPQ2d 1385, 1397 (2007), '[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103'. See also In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992) ("[T]he law does not require that the references be combined for the reasons contemplated by the inventor"). In the instant case, the teachings expressly and impliedly taught in the cited references provide sufficient reason, suggestion, or motivation to combine their teachings. The test of obviousness is not express suggestion of the claimed invention in any and all of the references, but rather what the references taken collectively would reasonably have suggested to those of ordinary skill in the art presumed to be familiar with them. In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). Obviousness does not require absolute predictability (see In re Lamberti, 192 USPQ 278), but only a reasonable expectation of success (see In re O’Farrell, 7 USPQ 2d 1673, Fed. Cir. 1988).
Therefore, for all the reasons above, the claimed invention is prima facie obvious.
Claim 78 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (Biotechnol. Bioeng. 43: 1146-1152, 1994) and Marx et al. (WO 2016/019249, published 02/04/2016) in view of Sriprapat et al. (Water Air Soil Pollut. 224: 1482, pages 1-9, 2013), Dela Cruz et al. (Environ. Sci. Pollution Res. Springer-Verlag, Berlin, 21: 13909-13928, 2014, IDS Document), and Wei et al. ( Frontiers in plant science 8 (2017): 1318: 1-23) as applied to Claim 77 above, and further in view of Joe et al. (Journal of Applied Microbiology 116.2 (2014): 408-423).
The teachings of Lee, Marx, Sriprapat, Dela Cruz, and Wei as they are applied to Claim 77 are set forth previous herein and are incorporated by reference.
However, the combined teachings of Lee, Marx, Sriprapat, Dela Cruz, and Wei do not teach the limitation wherein the composition further comprises Methylobacterium oryzae.
In regard to Claim 78, Joe et al. (herein referred to as Joe) which teaches a method of co-cultivation of A. brasilense CW903 and methylobacterial strains M. oryzae CBMB20 and M. suomiense CBMB120 which conferred a better shelf life and stress abatement in inoculated tomato plants and reduced ethylene levels under water‐stressed conditions (Abstract). As such, the teachings of Joe show that Methylobacterium oryzae CBMB20 strain is a known bacterial strain in the art that can be included in a consortium of beneficial bacteria that are provided to a given plant’s environment, particularly the root rhizosphere of the plant (pg. 412, left column, first paragraph). The teachings of Joe also show that Methylobacterium oryzae CBMB20 strain is a known bacterial strain in the art that can be included in a consortium of bacteria for the purpose of endowing the chosen plant with beneficial traits to said plant’s growth and overall health by decreasing ethylene levels in the plant and increasing plant dry weight (pg. 418, paragraph bridging left and right column; right column, first full paragraph). It is noted that Claim 78 does not require the Methylobacterium oryzae to be “engineered” or have any function, much less the function of decreasing or reducing VOCs in the plant-microbe environment.
As such, it would have been obvious to one of ordinary skill in the art to include the Methylobacterium oryzae CBMB20 strain taught by Joe in the consortium of bacteria taught by Lee and Marx in the presence of Sriprapat’s, Dela Cruz’s, or Wei’s indoor ornamental plants, particularly Epipremnum aureum, to produce the instant invention. One of ordinary skill in the art would have been motivated to include the Methylobacterium oryzae CBMB20 strain taught by Joe in the consortium of bacteria taught by Lee and Marx in the presence of Sriprapat’s, Dela Cruz’s, or Wei’s indoor ornamental plants because it would provide the additive effect of providing beneficial traits to the indoor ornamental plant’s growth and overall health, while the bacterium taught by Lee and Marx provide the benefit of decreasing VOC levels in the environment, creating a consortium of three beneficial bacteria to the plant’s environment. The rationale to support a conclusion that the claims would have
been obvious is that all the claimed elements were known in the prior art, and one of ordinary skill could
have combined these elements as claimed with no change to their respective functions. Thus the
combination yielding predictable results would have been expected by a skilled artisan.
Therefore, for all the reasons above, the claimed invention is prima facie obvious.
Nonstatutory 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.
Provisional Nonstatutory Double Patenting Rejection over Application No. 18/645,045 in view of the co-pending specification
Claims 72 and 77-88 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 19-21, 24, 26, and 27 of copending Application No. 18/645,045 in view of the co-pending specification. Although the claims at issue are not identical, they are not patentably distinct from each other because:
In view of instant Claim 72, the claims of ‘045 teach a method of reducing or removing at least one VOC from an environment [relevant to Claim 72, preamble reciting “a method of removal of volatile organic compounds from an environment” and part (b) reciting “determining a level and rate of change in VOC levels in the environment”], the method comprising cultivating or maintaining a composition comprising engineered microbes in an environment comprising the at least one VOC [relevant to Claim 72 part (a) reciting “…cultivating an maintain an indoor ornamental plant in the presence of a composition comprising engineered microbes…” and “…the environment comprising a readily detectable and quantifiable concentration of VOCs…”], wherein the cultivating or maintaining is performed in media surrounding a host plant or a container comprising a host plant [relevant to Claim 72 part (a) reciting “…cultivating or maintaining an indoor ornamental plant in the presence of a composition comprising engineered microbes…”], wherein the composition includes one or more engineered Pseudomonas putida cells that are genetically modified from a Pseudomonas putida reference strain using directed evolution [relevant to Claim 72 part (a) reciting “…wherein the composition comprises Pseudomonas putida…”], wherein the one or more engineered Pseudomonas putida cells are characterized by one or both of greater volatile organic compound (VOC) removal and greater VOC metabolism when compared to the Pseudomonas putida reference strain [relevant to Claim 72 part (a) reciting “a composition comprising engineered microbes, wherein the composition comprises Pseudomonas putida…” and part (b) reciting “determining a level and rate of change in VOC levels in the environment.”], wherein the cultivating or maintaining achieves colonization of one or more of the host plant's rhizosphere, phyllosphere, and endosphere [relevant to Claim 72 part (a) reciting “cultivating and maintaining an indoor ornamental plant in the presence of a composition comprising engineered microbes…”], wherein the colonization is of the rhizosphere and the composition comprises an engineered Pseudomonas putida (F1) (PpF 1) [relevant to Claim 72 (part a) “…cultivating or maintaining said engineered an indoor ornamental plant in the presence of a composition comprising engineered microbes, wherein the composition comprises Pseudomonas putida…”], wherein the colonization is of the rhizosphere and the composition comprises an engineered Methylobacterium extorquens (PA1) (MePAl) [relevant to Claim 72 part (a) reciting “…cultivating or maintaining said engineered an indoor ornamental plant in the presence of a composition comprising engineered microbes, wherein the composition comprises… Methylobacterium extorquens…”].
In regard to instant claim 72, the claims of ‘045 do not teach explicitly teach an embodiment of the invention wherein the host plant used in the methods of the invention is an ornamental indoor plant. However, the specification of copending ‘045 teaches that the host plants used in the methods of the copending invention include indoor ornamental plants (paragraphs 86, 136-138, 140-153) as well as examples of using indoor ornamental plants in the methods of the invention (Example 10).
In regard to Claim 72, a person with ordinary skill in the art at the time this application was filed would have found using an indoor ornamental plant taught by the instant application obvious in view of the teachings of the co-pending application ‘045 because using an ornamental indoor houseplant in a method for the removal of volatile organic compounds (such as the method taught in Claims 19-21, 24, 26, and 27 of ‘045) is an alternative, functional embodiment of the co-pending application. Additionally, one of ordinary skill in the art would have had a reasonable expectation of success in removing volatile organic compounds from an environment using an ornamental indoor houseplant, as taught by ‘045, in a method for the removal of volatile organic compounds (such as the method taught in Claims 19-21, 24, 26, and 27 of ‘045), based on the explicitly recited alternative functional embodiment of the invention taught by the specification of co-pending ‘045, because ‘045 explicitly teaches that the host plants used in the methods of the copending invention include indoor ornamental plants (paragraphs 86, 136-138, 140-153) with examples of successful BTEX (volatile organic compound) phytoremediation using ornamental indoor plants in the presence of engineered Pseudomonas putida and Methylobacterium extorquens microbes (Example 10).
As such, a person with ordinary skill in the art would have found it obvious to use the instantly claimed indoor ornamental plant in the claimed method of ‘045 with a reasonable expectation of arriving at the presently claimed subject matter.
In view of instant claims 77-88, the claims of ‘045 teach a method of reducing or removing at least one VOC from an environment [relevant to Claim 77 part (b) reciting “…reducing a level of the one or more VOCs in the environment…”], the method comprising cultivating or maintaining a composition comprising engineered microbes in an environment comprising the at least one VOC [relevant to Claim 77 part (a) reciting “…cultivating or maintaining an indoor ornamental plant in the presence of a composition comprising engineered microbes…”], wherein the cultivating or maintaining is performed in media surrounding a host plant or a container comprising a host plant {relevant to Claim 77 part (a) reciting “…cultivating or maintaining an indoor ornamental plant in the presence of a composition comprising engineered microbes…”], wherein the composition includes one or more engineered Pseudomonas putida cells that are genetically modified from a Pseudomonas putida reference strain using directed evolution [relevant to Claim 77 part (a) reciting “…wherein the composition comprises Pseudomonas putida…” and Claim 80 and 83], wherein the one or more engineered Pseudomonas putida cells are characterized by one or both of greater volatile organic compound (VOC) removal and greater VOC metabolism when compared to the Pseudomonas putida reference strain [relevant to Claim 77 part (a) reciting “a composition comprising engineered microbes, wherein the composition comprises Pseudomonas putida…” and part (b) reciting “…reducing a level of the one or more VOCs in the environment], and wherein the VOC is benzene, toluene ethylbenzene or xylene (BTEX) [relevant to Claim 77 part (b) reciting “…wherein the VOCs comprise of benzene, toluene, ethylbenzene and xylene (BTEX), formaldehyde, or a combination of BTEX and formaldehyde.”], wherein the cultivating or maintaining achieves colonization of one or more of the host plant's rhizosphere, phyllosphere, and endosphere [relevant to Claim 77 part (a) reciting “cultivating and maintaining an indoor ornamental plant in the presence of a composition comprising engineered microbes…”], wherein the colonization is of the rhizosphere and the composition comprises an engineered Pseudomonas putida (F1) (PpF1) [relevant to Claims 77 part (a) and Claim 80], wherein the colonization is of the rhizosphere and the composition comprises an engineered Methylobacterium extorquens (PA1) (MePAl) [relevant to Claim 77 part (a) reciting ““…cultivating or maintaining said engineered an indoor ornamental plant in the presence of a composition comprising engineered microbes, wherein the composition comprises… Methylobacterium extorquens…” and Claim 81], wherein the colonization is of the rhizosphere and the composition comprises an engineered Methylobacterium oryzae (CBM20) (MoCBM20) [relevant to Claims 78 and 82].
In regard to instant Claims 77 and 79, the claims of ‘045 do not teach explicitly teach an embodiment of the invention wherein the host plant used in the methods of the invention is an ornamental indoor plant, or specifically is a Epipremnum aurem plant. However, the specification of copending ‘045 teaches that the host plants used in the methods of the copending invention include indoor ornamental plants (paragraphs 86, 136-138, 140-153), specifically Epipremnum aurem plants (paragraph 137) as well as examples of using indoor ornamental plants, specifically an Epipremnum aurem plant, in the methods of the invention (Example 10).
In regard to instant Claims 77 and 79, a person with ordinary skill in the art at the time this application was filed would have found using an indoor ornamental plant, specifically an Epipremnum aurem plant, taught by the instant application obvious in view of the teachings of the co-pending application ‘045 because using an ornamental indoor houseplant, specifically an Epipremnum aurem plant, in a method for the removal of volatile organic compounds (such as the method taught in Claims 19-21, 24, 26, and 27 of ‘045) is an alternative, functional embodiment of the co-pending application. Additionally, one of ordinary skill in the art would have had a reasonable expectation of success in removing volatile organic compounds from an environment using an ornamental indoor houseplant, specifically an Epipremnum aurem plant, as taught by the copending specification of ‘045, in a method for the removal of volatile organic compounds (such as the method taught in Claims 19-21, 24, 26, and 27 of ‘045), based on the explicitly recited alternative functional embodiment of the invention taught by the specification of co-pending ‘045, because ‘045 explicitly teaches that the host plants used in the methods of the copending invention include indoor ornamental plants (paragraphs 86, 136-138, 140-153) specifically Epipremnum aurem plants (paragraph 137), with examples of successful BTEX (volatile organic compound) phytoremediation using Epipremnum aurem plants in the presence of engineered Pseudomonas putida ppF1, Methylobacterium extorquens MePa1, and Methylobacterium oryzae MoCBMb20 microbes (Example 10, paragraphs 557-559).
As such, a person with ordinary skill in the art would have found it obvious to use the instantly claimed indoor ornamental plant, specifically Epipremnum aurem plant, in the claimed method of ‘045 with a reasonable expectation of arriving at the presently claimed subject matter.
Regarding Claims 84-88, while the claims of ‘045 teach engineered Pseudomonas putida (F1) (PpF 1), engineered Methylobacterium extorquens (PA1) (MePAl), and engineered Methylobacterium oryzae (CBM20) (MoCBM20), the copending claims only teach that one or more engineered Pseudomonas putida cells that are genetically modified from a Pseudomonas putida reference strain using directed evolution, without explicitly reciting that the rest of the engineered strains have undergone direct evolution, or more specifically that all the strains have undergone serial inoculation (a species of the genus “directed evolution” engineering).
However, the specification of copending ‘045 teaches the directed evolution of microbes suitable for microbiome colonization of certain compositions (e.g., plant tissues, and/or soil/media) described in the methods of the invention (paragraph 531), wherein the methods comprise directed evolution, microbes of interest (e.g., those described herein) are serially inoculated (i.e, serial inoculation) in a series of liquid media (e.g., liquid mineral media ) that have incremental increases in pollutant concentrations (e.g., Formaldehyde, and/or BTEX etc.) for the purpose of identifying microbes of interest with potential biodegradation capabilities (paragraph 533). The specification of copending ‘045 teaches that Methylobacterium extorquens PAI (paragraph 536), Methylobacterium oryzae CBMB20 (paragraph 536), and Pseudomonas putida F1 (paragraph 537) underwent serial inoculation for directed evolution, wherein each engineered strain had increased VOC tolerance after 8-12 rounds of directed evolution (pg. 299, Table 7).
In regards to instant Claims 83-88, person with ordinary skill in the art at the time this application was filed would have found using methods of directed evolution, such as serial inoculation, to engineer the claimed bacterial strains taught by the instant application obvious in view of the teachings of the co-pending application ‘045 because using methods of directed evolution, such as serial inoculation, to engineer bacterial strains used in a method for the removal of volatile organic compounds (such as the method taught in Claims 19-21, 24, 26, and 27 of ‘045) is an alternative, functional embodiment of the co-pending application, wherein serial inoculation is used on the same bacterial strains as the instant application. Additionally, one of ordinary skill in the art would have had a reasonable expectation of success in removing volatile organic compounds from an environment using engineered bacterial strains that have undergone directed evolution through serial inoculation, based on the explicitly recited alternative functional embodiment of the invention taught by the specification of co-pending ‘045, because ‘045 explicitly teaches that the methods of engineering microbes used in the copending invention include directed evolution using serial inoculation, with examples of successful BTEX (volatile organic compound) phytoremediation using Epipremnum aurem plants in the presence of engineered Pseudomonas putida ppF1, Methylobacterium extorquens MePa1, and Methylobacterium oryzae MoCBMb20 microbes (Example 10, paragraphs 557-559), wherein Methylobacterium extorquens PA1 (paragraph 536), Methylobacterium oryzae CBMB20 (paragraph 536), and Pseudomonas putida F1 (paragraph 537) underwent serial inoculation for directed evolution, wherein each engineered strain had increased VOC tolerance after 8-12 rounds of directed evolution (pg. 299, Table 7).
As such, a person with ordinary skill in the art would have found it obvious to use the instantly methods of engineering microbes via directed evolution, specifically serial inoculation, in the claimed method of ‘045 with a reasonable expectation of arriving at the presently claimed subject matter.
This is a provisional nonstatutory double patenting rejection.
Closest Prior Art
Claims 82, and 87-88 appear to be free of the prior art, given the failure of the prior art to provide a nexus between the use of an engineered/modified composition comprising Methylobacterium oryzae CBMB20 strain in the presence of an indoor ornamental plant, or specifically wherein the engineered Methylobacterium oryzae CBMB20 strain is included in a method for the purpose of changing VOC levels of an environment comprising the bacterial strain and an indoor ornamental plant (when the bacterial strain is in the presence of an indoor ornamental plant), or a method with the purpose of reducing VOC levels when the bacterial strain is in the presence of an indoor ornamental plant. The closest prior art to Claims 82 and 87-88 can be found in Joe et al. (Journal of Applied Microbiology 116.2 (2014): 408-423) which teaches a method of co-cultivation of A. brasilense CW903 and methylobacterial strains M. oryzae CBMB20 and M. suomiense CBMB120 which conferred a better shelf life and stress abatement in inoculated tomato plants and reduced ethylene levels under water‐stressed conditions (Abstract).
Conclusion
No claims are allowed.
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/KELSEY L MCWILLIAMS/Examiner, Art Unit 1663
/Amjad Abraham/SPE, Art Unit 1663
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