DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/25/2026 has been entered.
Previous Rejections
Applicant’s arguments, filed 08/25/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 103 - Obviousness
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-5 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Andersch et al (US 2015/0296804 A1).
Andersch taught a method for controlling unwanted microorganisms, characterized in that a disclosed composition was applied to phytopathogenic fungi, phytopathogenic bacteria and/or their habitat [0275]. Application routes included soil application and seed treatment [0019]. The composition included one or more biological control agents [abstract] against Aphanomyces euteiches [0287], where the biological control agents included Streptomyces griseoviridis [0059, 0061].
Claim 1 is rendered prima facie obvious over the teachings of Andersch, because it is prima facie obvious to combine prior art elements according to known methods, in order to yield predictable results. In the instant case, all the claimed elements (e.g., protecting a plant from Aphanomyces euteiches with biological control agents, including Streptomyces griseoviridis) were known in the prior art (e.g., Andersch) and one skilled in the art could have combined the elements as claimed, by known methods, with no change in their respective functions, and the combination would yield nothing more than predictable results (e.g., a biological control composition, and methods thereof, for controlling plant pathogens) to one of ordinary skill in the art. MPEP 2143.A.
Andersch reads on claims 1 and 11.
Further, and regarding the instant claim 11, the claim recites the transitional phrase “consist essentially of”. However, absent a clear indication in the specification or claims of what the basic and novel characteristics of the claimed composition actually are, the term “consisting essentially of” is construed as being equivalent in meaning to the term “comprising”. See MPEP 2164.06(b). No such clear indication is seen here.
Claim 2 is rendered prima facie obvious because Andersch taught Mycostop® [0059].
Claims 3-4 are rendered prima facie obvious because Andersch taught peas, lentils and alfalfa beans [0245, 0304].
Claim 5 is rendered prima facie obvious because Andersch taught a carrier, in a concentration of between 1×105 and about 1×1010 spores/g [0034, 0051].
The instant claim 5 recites between about 102 to about 1011 CFU/g. Andersch taught between 1×105 and about 1×1010 spores/g. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. MPEP 2144.05 A.
Response to Arguments
Applicant's arguments filed 08/25/2026 have been fully considered but they are not persuasive.
Applicant argued that Andersch taught first and second biological control agents comprising extensive lists. Applicant cited to Andersch at paragraph [0059]. Additionally, Applicant cited to Andersch at paragraphs [0250] to [0299] to argue that Andersch taught a broad disclosure of pests. Applicant argued that Andersch did not teach the specific method of plant protection of the pathogen Aphanomyces euteiches with the control agent Streptomyces griseoviridis.
The Examiner is not persuaded by this argument, because the list of bacterial biological control agents in Andersch (¶ [0059]) is at most 110 lines long, providing, according to the Applicant, only one citation to the claimed Streptomyces griseoviridis (1.81). The paragraph cited by the Examiner (¶ [0287]) is at most 30 lines long, disclosing only one claimed pathogen (e.g., Aphanomyces euteiches). The lists (¶s 0059 and 0287) of biocontrol agents and pathogens present "a finite number of identified, predictable solutions," expressly including at least one combination encompassed within claim 1. The Applicant has failed to provide a persuasive reason as to why it would not have been within the skill of the ordinarily skilled artisan to try the limited number of control agents and pathogen, in order to arrive at the claimed method, which would allow for plant protection, as described in Andersch.
Furthermore, the Examiner disagrees with the Applicant’s characterization of Andersch’s disclosure as a teaching spanning “8 columns of an extraordinarily broad disclosure of pests, pathogens, nematodes, fungi, bacteria and other target organisms”. Andersch's disclosure of a multitude of combinations does not necessarily render any particular formulation as less obvious. In the instant case, Andersch was relied upon, at paragraphs [0019, 0059, 0061, 0275 and 0287], to teach the claimed method (plant protection, soil application, seed treatment); biological control agent (Streptomyces griseoviridis); and, pathogen (Aphanomyces euteiches).
In response to the Applicant's argument that the Examiner's conclusion of obviousness was based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the Applicant's disclosure, then such a reconstruction is proper. See MPEP 2145. In the instant case, Andersch taught protecting a plant from Aphanomyces euteiches with biological control agents, including Streptomyces griseoviridis, as previously discussed.
Applicant argued that Andersch does not provide examples or experimental activity of S. griseoviridis against A. euteiches.
The Examiner responds that Andersch is not required to provide examples or experimental activity. Andersch is presumed to be operable/enabling, where efficacy is not a requirement. The burden is on the Applicant to rebut Andersch’s presumption of operability. MPEP 2121.
Applicant argued that Andersch’s teachings of synergistic combinations undercuts the Examiner’s argument against predictable results.
The Examiner disagrees. Andersch’s teachings of other combinations of pathogens and control agents were not relied upon in the rejection of the claims. See the above discussion of Andersch’s teachings of a multitude of combinations as no less obvious than what was taught (e.g., the claimed method). Furthermore, Andersch’s teachings are not excluded by the claims.
Applicant cited to Figure 2 and Example 1 to argue unexpected suppression of activity against A. euteiches by S. griseoviridis strain K61.
The Examiner acknowledges the suppressed activity, but disagrees that the suppression was unexpected. S. griseoviridis strain K61 is a well-known plant protection product. For the purposes of argument only, and not as a basis of rejection, the Examiner cites the European Commission (3/25/2021). See pages 1 and 3, at the 2nd and 4th ¶s, respectively. See also pages 10-11, at the Appendices I-II, for endpoint protection against a wide variety of crop and/or situation. Furthermore, the Applicant’s data [0032] showed that both K61 and the positive control suppressed activity, with a stronger suppression by the positive control. It is expected, rather than unexpected, that the biological control agent would control activity of the plant pathogen. The Applicant’s argument of unexpectedness is found non-persuasive.
Additionally, Andersch taught the claimed strain and concentration (see the Obviousness rejection over claims 2 and 5), as recited in the instant claims 2 and 5, and any suppression would be expected to be inherent to the compound. In the instant case, the methods and compositions of the instant claims (suppressing A. euteiches, comprising contacting, with S. griseoviridis) and those of the prior art (suppressing A. euteiches, comprising contacting, with S. griseoviridis) would reasonably be expected to have substantially the same physical and chemical properties (S. griseoviridis suppressive activity against A. euteiches).
Inherent features need not be recognized at the time of the invention. There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. MPEP 2112 II. It should be noted that biological control agents and their properties are inseparable. If the prior art teaches the identical biological control agents (and amounts thereof), then the properties that the Applicant discloses and/or claims are necessarily present (see MPEP 2112).
Applicant argued that claim 1, to which claim 11 refers, identifies the relevant basic and novel characteristic (the use of a strain of S. griseoviridis having suppressive activity against A. euteiches as the biological control agent), such that Andersch is not prior art over claim 11.
The Examiner disagrees. As previously discussed, S. griseoviridis, is a well-known plant protection product, as has been established by the prior art [see the European Commission]. Assuming (purely arguendo) that the "basic novel characteristics” of the invention is the above-mentioned characteristic (e.g., suppressive activity), it does not appear that additional biological control agents of Andersch would "materially affect" the plant protection of the instant invention.
The disclosure of Andersch does not teach any features that would negate the basic and novel characteristics of the instant invention (e.g. suppressive activity against A. euteiches). Thus, the additional ingredients of Andersch would not be excluded from the instant claims, and the obviousness rejection is maintained.
Conclusion
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/CELESTE A RONEY/Primary Examiner, Art Unit 1612
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