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 .
Priority
Receipt is acknowledged of certified copies of papers as required by 37 CFR 1.55.
Claim Status
Claims 1 and 3-32 are pending.
Claim 2 is cancelled.
Claims 1, 5 and 14-32 have been amended.
Election/Restriction
Applicant’s election with traverse of Group 1 (claims 1 and 3-13) in the reply filed 6/9/2026 is acknowledged. The traversal is on the grounds that a search of the subject matter of Group I with the subject matter of Group II would not impose an undue burden on the examiner. This is not found persuasive because Applicant has not shown that the groups of inventions have a general inventive concept under PCT rule 13.1. Unity of invention exists only when there is a technical relationship among the claimed inventions involving one or more of the same or corresponding special technical features, meaning those technical features that define a contribution which each of the inventions, considered as a whole, makes over the prior art. As set forth in the restriction requirement mailed 4/21/2026, Applicant’s special technical feature recited in claim 1 is a soil amendment comprising at least one living microorganism capable of solubilizing silicate. The previous prior art is overcome based on the amendment and the argument that Wood does not teach any of the listed silicate solubilizing microorganism species of amended claim 1. However, the instant application still does not make a contribution over the prior art as described below, which in combination teaches a composition comprising Pseudomonas putida, Glomus intraradices, and Paenibacillus macerans (applicant’s elected species combination), which are microorganisms capable of solubilizing silicate. Therefore, the restriction requirement is deemed proper and made final.
Claims 14-32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made with traverse in the reply filed 6/9/2026.
Claims 1 and 3-13 are under consideration to the extent of the elected species, e.g. Pseudomonas putida, Glomus intraradices, and Paenibacillus macerans, and to the extent of the elected nutrient, e.g. protein.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 13 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 13 recites “The soil amendment of claim 11, wherein the at least one microorganism and the silica increase the potency of any added nutrients.” However, as claim 11, nor the independent claim 1 that it relies upon, recite the inclusion of any nutrients. Therefore, it is unclear whether the “any added nutrients” are required as part of the soil amendment composition, or whether the “any added nutrients” are nutrients separately applied to the plants and/or soil and not part of the soil amendment composition, or whether the limitation is merely a functional limitation and the “any added nutrients” are not required, or if some other meaning is contemplated by the phrase. As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3 does not further limit the claim of claim 1. In fact, claim 3 names additional species not listed in claim 1. Claim 1 recites “at least one living microorganism selected from the group consisting of…” which is interpreted as a finite list of potential alternatives and combinations of the listed microorganisms. Claim 3, however, recites “comprises” which is interpreted as an open-ended list of potential alternatives and combinations. Further, claim 3 recites additional microorganisms that are not recited in base claim 1, therefore broadening the scope of claim 1 and not further limiting. Claim 3 recites microorganisms already listed in claim 1, which is just a restatement and not a further limitation of the base claim. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 3-7, and 11-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural organism, potentially in conjunction with other naturally occurring substances, without significantly more.
MPEP § 2106 sets forth the Subject Matter Eligibility Test to determine if a claim is directed to patent eligible subject matter. Step 1 asks if a claim is directed to a statutory category of invention. Applicant’s claims are directed to a product; thus, the answer to Step 1 is Yes.
The analysis then moves to Step 2A, Prong One, which asks if a claim recites to a product of nature. In this case, Applicant’s claims recite microorganisms. The claims further include ingredients such as water, protein and silica, which are naturally occurring. Thus, the claims do recite products of nature. MPEP § 2106.04(b) states that “When a claim recites a nature-based product limitation, examiners should use the markedly different characteristics analysis discussed in MPEP § 2106.04(c) to evaluate the nature-based product limitation and determine the answer to Step 2A.”
MPEP § 2106.04(c)(I) states that “if the nature-based product limitation is not naturally
occurring, for example due to some human intervention, then the markedly different
characteristics analysis must be performed to determine whether the claimed product
limitation is a product of nature exception….” To perform the markedly different characteristic analysis, MPEP § 2106.04(c)(II) states “The markedly different characteristics analysis compares the nature-based product limitation to its naturally occurring counterpart in its natural state. Markedly different characteristics can be expressed as the product’s structure, function, and/or other properties….”
In this case, the microorganisms named in the instant claims are naturally occurring organisms. Regarding claims 1 and 3, the microorganisms as elected by applicant (Pseudomonas putida, Glomus intraradices, and Paenibacillus macerans) are all found in nature. Compositions, or combinations of naturally occurring nature-based products, are not patent eligible even if the combination itself is not naturally occurring absent the presence of markedly different characteristics in structure, function and/or other properties. There is no indication that including the microorganisms in a soil amendment as commensurate in scope with the stated claims changes the structure, function, or other properties of the microorganisms in any marked way in comparison with the closest naturally occurring counterpart. The closest naturally occurring counterpart for the microorganisms included in the soil amendment is the microorganisms themselves, as the phenotype and properties of the microorganisms are unchanged. Each appears to maintain its natural properties. This does not amount to significantly more than a combination of judicial exception because combining ingredients is well-understood, routine, and conventional in the field. In addition, there is nothing to show that combining the ingredients produces any marked distinction. Thus, the claimed soil amendment as a whole does not display markedly different characteristics in comparison with the naturally occurring counterparts. Therefore, the answer to Step 2A, Prong One, is Yes.
Thus, the analysis must move to Step 2A, Prong Two, which asks if the claim recites additional elements that integrate the judicial exception into a practical application. As discussed in MPEP § 2106.04(d)(2) this evaluation is performed by identifying whether there are additional elements recited in the claim beyond the judicial exception and evaluating these additional elements to determine whether the claim as a whole integrates the exception into a practical application. In this case, Applicant’s claims are directed to a composition with an intended use of treating soil and plants. MPEP § 2106.04(d)(2) specifically states that a claim is only directed to “an intended use of a claimed invention or a field of use limitation, then it cannot integrate a judicial exception under the ‘treatment or prophylaxis’ consideration.” Therefore, Applicant’s intended use in not sufficient to integrate the judicial exception into a practical application. Thus, the answer to Step 2A, Prong Two, is No.
Thus, the analysis must move to Step 2B which asks if the claims recite additional elements that amount to significantly more than the judicial exception. MPEP § 2106.05 states that this evaluation is performed by “Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself.” In this case, the additional element in the claims is the addition of other ingredients, such as a binding agent or protein. Regarding claim 4, this additional ingredient is water. Water is also naturally occurring. Adding the combination of microorganisms to water does not change the phenotypes of the microorganisms or the properties of the composition. Regarding claim 5, this additional ingredient is proteins as elected by applicant. Proteins are naturally occurring as well. Adding protein to a combination of microorganisms does not change the characteristics of the microorganisms or the overall properties of the composition. Regarding claim 6, the additional ingredient is a binding agent. As evidenced by the instant specification, the binding agent may be molasses. Molasses is also naturally occurring. Combining this with the microorganisms does not change the properties of any of the composition components. Regarding claim 7, lyophilization is understood to be drying of the aqueous solution of claim 4. This drying does not change the composition in a notable way, as the microorganisms present in the composition maintain their structure, function and other properties. Regarding claims 11-12, the additional ingredient is silica, wherein the silica is an insoluble silicate. This is also naturally occurring, and combining with a composition comprising microorganisms does not change the overall properties of the composition. Regarding claim 13, the inclusion of a microorganism and silica in combination does not result in any markedly different characteristics. Their combination would not amount to significantly more than the individual components themselves, as there is no change in structure, function or other properties. While claim 13 recites that nutrient potency is increased, there is no evidence of change in the structure, function or properties that amounts to significantly more than the expected activity of the mixture.
Overall, the claims outlined above all relate back to a naturally occurring composition, wherein all the components are naturally occurring and their combination does not result in any markedly different characteristics. The microorganisms Pseudomonas putida, Glomus intraradices, and Paenibacillus macerans are all naturally occurring. Combining them into a single embodiment does not result in any change in their structure, function or other properties. The addition of other elements such as water, protein, binding agent, or silica, does not result in any markedly different characteristics of the overall composition. Further, as described supra, the additional ingredients are also naturally occurring. Compositions, or combinations of naturally occurring nature-based products, are not patent eligible even if the combination itself is not naturally occurring absent the presence of markedly different characteristics in structure, function and/or other properties. Non-limiting examples of markedly different characteristics include biological or pharmacological functions or activities; chemical and physical properties; phenotype; and structure and form. This conclusion finds support in Funk Brothers Seed Co. v Kalo Inoculant Co., 33 U.S. 127, 131 (1948) and is re-iterated in Myriad, 133 S.Ct. at 2117 which states that “the composition was not patent eligible because the patent holder did not alter the bacteria in any way.”
In addition, Applicant’s intended use of treating soil is not considered to amount to significantly more. As discussed in MPEP § 2106.05(I)(A), “Generally linking the use of the judicial exception to a particular technological environment or field of use” is not considered to be enough to qualify as significantly more. An intended use of a claimed composition only generally links the exception to the field of use. Therefore, the additional elements are not considered to amount to significantly more. Thus, the answer to Step 2B is No. Consequently, the claims are not directed to patent eligible subject matter.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Akhtar et al. (Australasian Plant Pathology, 2007, 36, 175-180, published March 2007) in view of Li et al. (Advanced Journal of Microbiology Research, 2020, 14(4), 001-007, published April 2020).
Akhtar teaches a combination of microorganisms for preventing plant disease, including root-rot, as well as encouraging overall growth and health. Akhtar evaluated the combination of Glomus intraradices, Pseudomonas putida, and Paenibacillus polymyxa specifically on chickpea plants (abstract). Akhtar determined that the combination of the three microorganisms led to an overall increase in plant shoot dry weight greater than any individual microorganism alone or without any microorganism at all (results par. 1). The combination also led to an increase in pods per plant, which is an indication of plant health (results par. 3). Importantly, treating chickpea plants with the combination of microorganisms led to an overall reduction in galling, nematode multiplication, and root-rot index (abstract).
However, Akhtar does not teach the inclusion of Paenibacillus macerans; Akhtar teaches the inclusion of Paenibacillus polymyxa.
This deficiency is made up for by the teachings of Li.
Li teaches the biofilm formation ability of various strains and species of Paenibacillus microorganisms. Li explores the potential of their use against tomato bacterial wilt (abstract). In general, biofilm formation is involved in antimicrobial activity (intro par. 2). The formation of the biofilm inhibits the proliferation of other pathogenic microorganisms (intro par. 2). In general, Li describes the relationship between biofilm formation ability of specific Paenibacillus strains and the antibacterial activity they incur (intro par. 3). Important to Li’s evaluation is the lack of significant difference between biofilm formation and subsequent antimicrobial activity of Paenibacillus polymyxa and Paenibacillus macerans (discussion par. 7). This demonstrates the interchangeability of P. polymyxa and P. macerans when applied to plant health and prevention of disease.
It would have been prima facie obvious before the effective filing date of the instant invention to combine Pseudomonas putida, Glomus intraradices, and Paenibacillus macerans into a single composition for plant health, as evidenced by the prior art. It is demonstrated that P. polymyxa and P. macerans are equivalent in their ability to promote plant health and prevent disease as taught by Li, so it would have been obvious to swap one for the other in a composition as taught by Akhtar. The resulting composition would combine P. putida, G. intraradices, and P. macerans into a single embodiment for plant health, which would read on the elected species and instant claims 1 and 3.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
Claims 1 and 3-13 are rejected under 35 U.S.C. 103 as being unpatentable over Wood et al. (US20210023145A1, published 1/28/2021, priority to 3/14/2018) in view of Akhtar et al. (Australasian Plant Pathology, 2007, 36, 175-180, published March 2007) and Li et al. (Advanced Journal of Microbiology Research, 2020, 14(4), 001-007, published April 2020) as evidenced by PubChem (Calcium Silicate (Compound)) and the specification.
Advisory note: Wood (US20210023145A1) is being applied as prior art under 35 U.S.C. 102(a)(1) as of its publication date as well as under 35 U.S.C. 102(a)(2) as of its earliest effectively filing date.
Wood teaches probiotic compositions containing a consortium of microbes, wherein the composition is useful in agriculture, food and animal feed, health, and as a chemical replacement (par. [0001]). It is described by Wood that microorganisms are often used to enhance composting and as soil amendments (par. [0002]). Wood teaches that this composition includes lactic acid microorganisms co-cultured with other Bacilli bacteria and yeast (par. [0001]). Compositions may include microorganisms that are phototrophic, lactic acid, probiotic, and/or sulfide-utilizing (par. [0024]). Wood provides examples of such microorganisms, and names Pseudomonas putida as one such organism (cf. claim 1 and 3). The composition may be in liquid form comprising an aqueous suspension of components, including the microorganism, as the microorganism is a component of the composition (par. [0042]) (cf. claim 4). Wood continues that the composition may further comprise a variety of nutritional agents “including vitamins, minerals, essential and non-essential amino acids, carbohydrates, lipids, foodstuffs, dietary supplements, and the like” (par. [0045]) (cf. claim 5). Wood further teaches that the composition may include excipients, and names binders as one such excipient (par. [0049]). The composition may also be in dry form, “produced by evaporation, spray-drying, lyophilization, or the like” (par. [0032]). This dry composition may be in the form of a wettable powder, granules, dust, pellet, or colloidal concentrate (par. [0042]) (cf. claims 7-8). In some embodiments, the composition is encapsulated (par. [0032]) wherein the dry form is formulated to dissolve immediately upon wetting or dissolve, in a controlled-release, sustained-release, or other time-dependent manner (par. [0042]) (cf. claim 9-10). In a further embodiment, Wood teaches that the excipient may include a lubricant, and provides minerals such as talc or silica as prime examples (par. [0054]) (cf. claim 11). In another embodiment, Wood teaches that the excipient may include a filler, and names calcium silicate as an example (par. [0050]) (cf. claim 12).
However, Wood does not teach the specific combination of Pseudomonas putida, Glomus intraradices, and Paenibacillus macerans.
This deficiency is made up for by Akhtar and Li.
Akhtar and Li have been described supra.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instantly claimed invention to take the teachings of Wood and develop a soil amendment similar to that as instantly claimed. The teachings of Wood include microorganisms in a composition that could be used in agriculture as a soil amendment, including Pseudomonas putida, which is a microorganism that is known to be capable of solubilizing silica, along with other added ingredients such as nutrients and silica. It would have been obvious to further add G. intraradices and P. macerans to the composition as the inclusion of G. intraradices and a Paenibacillus species synergistically improve overall plant health and antimicrobial properties, as taught by Akhtar. Though Akhtar teaches P. polymyxa, Li has demonstrated that P. polymyxa and P. macerans provide the same benefit to the plants. They are therefore interchangeable as they are equivalent in their properties, as described supra. As the composition can be in a liquid aqueous form, the microorganism that is a component of the composition must be suspended in the solution. When the composition is lyophilized and developed into a solid form, it may be encased and designed to dissolve upon introduction to water (i.e. water-soluble) in order to provide controlled-release properties as described supra. This will automatically control the release of the components, including the microorganism, as claimed in the instant claims. One such added ingredient that may be present in the composition is calcium silicate as described supra. Calcium silicate is necessarily an insoluble silicate, as evidenced by PubChem’s Calcium Silicate (Compound) page, rendering obvious instant claim 12.
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The inclusion of silica is also taught by Wood, in conjunction with the microorganism. This combination will necessarily increase potency of any added protein nutrient, as evidenced by the instant specification, which discloses that a “microorganism and… silica may increase the potency of any nutrients” (par. [0012). Therefore, claim 13 is rejected.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the reference.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW RYAN BURKE whose telephone number is (571)272-8949. The examiner can normally be reached Mon-Fri. 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached at 5712720827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW RYAN BURKE/Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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