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 .
Formal Matters
Receipt of Applicant’s response dated 07/20/2026 is acknowledged.
Claims 1-3 and 6-21 are pending.
Claims 4-5 are canceled.
Claims 1-3 and 6-20 are amended.
Claim 21 is new.
Claims 13-15 and 17 remain withdrawn from consideration as being drawn to a nonelected invention.
Claims 1-3, 6-12, 16, and 18-21 are under consideration in the instant Office action to the extent of the elected species, i.e., the at least one aerobic rhizopheric microorganism is Bacillus subtilis (See Election/Restriction section of Office action dated 04/29/2026 wherein the Examiner details that the provisional election of CECT 30573 as the species of microorganism strain is free of the prior art, and accordingly, the provisional election of species requirement has been modified to include the additional species of Bacillus subtilis) and the fertilizer is NPK compound fertilizers.
OBJECTIONS/REJECTIONS WITHDRAWN
Drawings
The objection to the drawings regarding “FIG. 1” needing to be amended to “The Figure” set forth in the Office action dated 04/29/2026 has been withdrawn in light of Applicant’s replacement drawings.
Specification
The objections to the specification and to the abstract set forth in the Office action dated 04/29/2026 have been withdrawn in light of Applicant’s amendments to the specification and to the abstract.
Claim Objections
The objections to the claims set forth in the Office action dated 04/29/2026 have been withdrawn, with the exception of two (See MAINTAINED GROUNDS OF OBJECTION section below), in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 112(a)
The rejection set forth in the Office action dated 04/29/2026 has been withdrawn in light of Applicant’s submission of the declaration dated 07/20/2026.
Claim Rejections - 35 USC § 112(b)
The rejections set forth in the Office action dated 04/29/2026 have been withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 103
The rejection set forth in the Office action dated 04/29/2026 has been withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection set forth below as necessitated by Applicant’s amendments to the claims.
MAINTAINED GROUNDS OF OBJECTION
Drawings
The drawings remain objected to because, in the figure legend, “CBLUT 9” should be amended to “CBLUT9” in order to improve consistency with the specification.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Response to Applicant’s Arguments - Drawings
The above objection is neither addressed in Applicant’s replacement drawings dated 07/20/2026 nor in Applicant’s Remarks dated 07/20/2026, and therefore, the above objection is hereby maintained.
Claim Objections
Claim 16 remains objected to because, in the fourth to last line, “nitrate as only” should be amended to “nitrate as the only” for grammatical correctness.
Claim 19 remains objected to because, spanning lines 2-3, “is a species of the Bacillus subtilis or Bacillus megaterium” should be amended to “is of the species Bacillus subtilis or Bacillus megaterium” in order to improve claim readability (See Page 5 Lines 17-19 of the specification for this suggested language).
Appropriate correction is required.
Response to Applicant’s Arguments - Claim Objections
In Applicant’s Remarks dated 07/20/2026, Applicant states that each of claims 1, 11, 16, and 19 have been amended to address the issues including that in claim 16 “nitrate as only” should read “nitrate as the only” and that in claim 19 “is a species of the Bacillus subtilis or Bacillus megaterium” should read “is of the species Bacillus subtilis or Bacillus megaterium”, however these changes have not been made in the claim set dated 07/20/2026, and therefore, the above objections are hereby maintained.
NEW GROUNDS OF OBJECTION/REJECTION
Claim Objections
Claim 1 is objected to because “sulphur” in the second to last line should be amended to “sulfur” in order to be consistent with Applicant’s amendment of “sulphur” to “sulfur” in the third to last line of claim 1.
Claim 10 is objected to because “fertiliser” in line 2 should be amended to “fertilizer” in order to be consistent with all other of Applicant’s amendments of “fertiliser” to “fertilizer” throughout the claims.
Appropriate correction is required.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 6-7, 9-12, and 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al (Soil Biol. Biochem., 2020, 148, 107911, published 09/2020, cited in IDS dated 10/31/2024) as evidenced by Nakano et al (J. Bacteriol., 1998, 180, 5344-5350, published October 1998, cited in IDS dated 04/24/2024) and as evidenced by Schönert et al (J. Bacteriol., 1998, 180, 2574-2578, published 05/1998, cited in Notice of References Cited dated 04/29/2026).
Sun et al teach a biofertilizer containing Bacillus subtilis for the reduction of nitrogen loss in agricultural soil (See entire document, e.g., Title). By biofertilizer is meant a kind of fertilizer that has the effects of both microorganisms and organic fertilizer, which is composed of microorganisms with specific functions and organic materials (generally formed by the solid-state fermentation of agro-industrial waste, such as straw and livestock manure) (e.g., Page 2 Col. 1 Par. 2). The biofertilizer of Sun et al was prepared by straw and livestock manure through composting, and inoculating with the strain Bacillus subtilis HA2 after composting (e.g., Page 2 Col. 2 Par. 2). The biofertilizer contains 1% nitrogen and the number of viable Bacillus subtilis in the biofertilizer was determined to be over 2.0 × 108 CFU g−1 (e.g., Page 2 Col. 2 Par. 2).
Regarding the ranges required by the instant claims, a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)).
The limitations required by the instant claims that the microorganism comprises in its genome at least one nitrate reductase gene and at least one nitrite reductase gene, that the microorganism reduces nitrate to ammonium when cultured in a minimum growth medium with nitrate as the only source of nitrogen, that the microorganism does not comprise in its genome the gene nrfA, that the microorganism cannot produce N2 from nitrates, that the microorganism comprises at least one of genes nasB or nasC and at least one of genes nasD or nasE, and that the microorganism is gram + are met by the biofertilizer of Sun et al because the biofertilizer of Sun et al comprises the microorganism Bacillus subtilis. Specifically regarding the requirement that the microorganism comprises in its genome at least one nitrate reductase gene and at least one nitrite reductase gene and that the microorganism comprises at least one of genes nasB or nasC and at least one of genes nasD or nasE, as evidenced by Nakano et al, Bacillus subtilis comprises a nitrite reductase that is encoded by nasD and nasE, wherein nasD and nasE are part of an operon also containing the genes nasB and nasC that encode subunits of assimilatory nitrate reductase (See Page 5344 Col. 2 Par. 2 of Nakano et al). Specifically regarding the requirement that the microorganism reduces nitrate to ammonium when cultured in a minimum growth medium with nitrate as the only source of nitrogen, as evidenced by Nakano et al, Bacillus subtilis can utilize nitrate or nitrite as sole nitrogen source (See Page 5349 Col. 1 Par. 4).
Further, Bacillus subtilis produces trehalose from phosphorylated sugars in its cytoplasm as evidenced by Schönert et al (See Page 2574 Col. 1 Par. 1), and therefore the biofertilizer comprising Bacillus subtilis will also comprise trehalose which meets the requirement of instant claim 12.
Thus, the biofertilizer of Sun et al containing Bacillus subtilis for the reduction of nitrogen loss in agricultural soil, prepared by composting straw and livestock manure and then inoculating with the strain of Bacillus subtilis HA2, wherein the biofertilizer contains 1% nitrogen and the number of viable Bacillus subtilis in the biofertilizer was determined to be over 2.0 × 108 CFU g−1 renders obvious the fertilizer of instant claims 1-3, 6-7, 9-12, and 18-21.
Response to Applicant’s Arguments
Applicant’s arguments filed 07/20/2026 have been considered.
Applicant argues that Sun describes a field study on the application of a biofertilizer prepared from composted straw and livestock manure inoculated with Bacillus subtilis HA2 with the objective of reducing nitrogen loss from agricultural soil and does not provide any genetic or functional characterization of the inoculated Bacillus subtilis strain itself with respect to nitrate or nitrite reduction pathways. Applicant argues that instant claim 1 requires that the microorganism comprises in its genome at least one nitrate reductase gene and at least one nitrite reductase gene involved in assimilatory nitrate reduction to ammonium (ANRA), that it reduces nitrate to ammonium when cultured in a minimum growth medium with nitrate as the sole source of nitrogen, that it comprises at least one of nasB or nasC and at least one of nasD or nasE, and that the microorganism cannot produce N2 from nitrates, and that instant claim 3 requires that it does not comprise the gene nrfA in its genome, whereas Sun does not disclose or suggest any of these characteristics or restrictions. Applicant argues that the features of instant claim 1 that the microorganism 1) comprises at least one of genes nasB or nasC and at
least one of genes nasD or nasE and 2) it cannot produce N₂ from nitrates together establishes a metabolic boundary ensuring that all nitrate reduction leads to ammonium formation and none leads to gaseous nitrogen, and give the results of 1) the nas genes establish the positive ability to transform nitrate into ammonium and 2) the absence of N₂ production excludes any competing denitrification route, together they define a microorganism that channels nitrate exclusively toward ammonium formation and nitrogen retention providing the technical foundation for the fertilizer's improved efficiency and environmental benefits claimed in the patent, and these feature retain nitrogen in the soil-plant system and reduce leaching and gaseous losses. Applicant argues that a person skilled in the art would not be prompted to arrive at the presently claimed fertilizer based on the teachings of Sun in particular not in order to prevent nitrogen leaching, and that Sun directs the skilled person towards manipulating soil nitrogen cycling processes not towards selecting or defining a microorganism that assimilates nitrate intracellularly as a nitrogen source. Applicant argues that claim 1 would not have been obvious based on Sun in view of Nakano because Nakano discourages a belief that specifying nas genes alone would suffice, and even if the person skilled in the art looked at this reference they would not be motivated to adopt the dual constraint of instant claim 1 (ANRA genes and “cannot produce N2”) as a way to solve leaching.
The above arguments have been fully considered by the Examiner but are not found persuasive because the instant claims are being examined to the extent that the at least one aerobic rhizopheric microorganism is Bacillus subtilis, and it is not a requirement that Sun et al teach/disclose/suggest the properties/characteristics of Bacillus subtilis in order for the properties/characteristics of Bacillus subtilis to be rendered obvious by Sun et al, i.e., because the biofertilizer of Sun et al comprises the microorganism Bacillus subtilis, the claimed properties that the microorganism comprises in its genome at least one nitrate reductase gene and at least one nitrite reductase gene, that the microorganism reduces nitrate to ammonium when cultured in a minimum growth medium with nitrate as the only source of nitrogen, that the microorganism does not comprise in its genome the gene nrfA, that the microorganism cannot produce N2 from nitrates, that the microorganism comprises at least one of genes nasB or nasC and at least one of genes nasD or nasE, and that the microorganism is gram + are met by the biofertilizer of Sun et al. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). Similarly, the above arguments regarding the result of the features that the microorganism comprises at least one of genes nasB or nasC and at least one of genes nasD or nasE and it cannot produce N₂ from nitrates together, which are properties/characteristics of Bacillus subtilis, are not found persuasive because "the fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Further, the above arguments alleging that Sun et al would have prompted a skilled person with a different motivation is not found persuasive because the art needs to provide “a motivation” and not the same motivation as Applicant or necessarily recognize the same problem/solution as Applicant. "In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls." KSR Int'l Co. v. Teleflex lnc., 550 U.S. 398,419 (2007). Instead, "any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." Id. at 420. Lastly, the instant rejection under 35 USC 103 is not made over the teaching of Sun et al in view of Nakano et al, and therefore Applicant’s arguments regarding what would or would not have been obvious “based on Sun in view of Nakano” is not applicable. As can be seen in the rejection under 35 USC 103 above, the rejection is made over the teaching of Sun et al, wherein each of Nakano et al and Schönert et al are relied upon as evidence for properties/characteristics of Bacillus subtilis.
Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 16 would be allowable if the objection contained herein is overcome.
Conclusion
No claims are allowable.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/K.E.O./Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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