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 .
Status of the Application
Claims 1-14 are pending.
Election/Restrictions
Applicant's election without traverse of Group III, claims 5-14, directed to a composition, in the reply filed on 12/22/2025 is acknowledged. The election was made without traverse.
The restriction requirement among Groups I and III, is hereby withdrawn. Please see the rejoinder as set forth below.
The requirement is therefore made FINAL.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Claims 5-14 are under current examination.
Rejoinder
The restriction requirement among Group I and Group III, as set forth in the Office action mailed on 10/23/2025, has been reconsidered. Claim 1, is no longer withdrawn from consideration. In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
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, 5-10, 12 and 14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a product of nature without significantly more. The claims recite a plant disease resistance inducer ---comprising:
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, which is naturally occurring composition comprising same heteropoly oligosaccharide along with other ingredients, such as water etc. present naturally and isolated from Agrobacterium radiobacter, as evidenced by Chouly (Int. J. Macromol. Vol 17, No. 6, 1995, pages 357-363; as provided by the applicant on IDS dated 04/01/2024), wherein R1= macromolecular pyruvate, R2=H or macromolecular succinyl (entire article, especially Table 1, page 358); and Yang (Carbohydrate Polymers; 255, 2021, 117370; as provided by the applicant on IDS dated 04/01/2024).The limitations “plant disease resistance inducer; plant is---tobacco---soyabean; disease resistance ---solanacearum infection; concentration 5-5000mg/L; 50-200mg/L” does not indicate any structural or manipulative difference.
Claim interpretation: Under the broadest reasonable interpretation, the terms of the claim are presumed to have their plain meaning consistent with the specification as it would be interpreted by one of ordinary skill in the art. See MPEP 2111. Based on the specification and the plain meaning of the other terms, the broadest reasonable interpretation of claims 1, 5-10, 12 and 14 is a product comprising an oligosaccharide, which is naturally occurring composition comprising same heteropoly oligosaccharide along with other ingredients, such as water etc. present naturally and isolated from Agrobacterium radiobacter, as evidenced by Chouly (Int. J. Macromol. Vol 17, No. 6, 1995, pages 357-363; as provided by the applicant on IDS dated 04/01/2024), wherein R1= macromolecular pyruvate, R2=H or macromolecular succinyl (entire article, especially Table 1, page 358); and Yang (Carbohydrate Polymers; 255, 2021, 117370; as provided by the applicant on IDS dated 04/01/2024). The limitations “plant disease resistance inducer; plant is---tobacco---soyabean; disease resistance ---solanacearum infection; concentration 5-5000mg/L; 50-200mg/L” does not indicate any structural or manipulative difference in the invention recited in the body of the claim, and instead merely conveys intended use and concentration of a naturally occurring compound.
Step 1: This part of the eligibility analysis evaluates whether the claim falls within any statutory category. MPEP 2106.03. Here, the claim recites a composition, which is a statutory category of invention. As explained in the MPEP, it is not necessary to identify a single category into which a claim falls, so long as it is clear that the claim falls into at least one category. MPEP 2106.03(I). Here, because the composition is a composition of matter, the claim is to at least one statutory category of invention (Step 1: YES).
Step 2A Prong One: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04(II) and the October 2019 Update, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim. Because claims 1, 5-10, 12 and 14 recites a nature-based product limitation, the markedly different characteristics analysis is used to determine if the nature-based product limitation is a product of nature exception. MPEP 2106.04(c)(I). Although claims 6-10 recites intended use for type of plants, infection and concentration limitations, the markedly different characteristics analysis should be applied only to the nature-based product limitation. MPEP 2106.04(c)(I)(A). The markedly different characteristics analysis is performed by comparing the nature-based product limitation in the claim to its naturally occurring counterpart to determine if it has markedly different characteristics from the counterpart. MPEP 2106.04(c)(II). As evidenced by Chouly (Int. J. Macromol. Vol 17, No. 6, 1995, pages 357-363; as provided by the applicant on IDS dated 04/01/2024), wherein R1=macromolecular pyruvate, R2=H or macromolecular succinyl (entire article, especially Table 1, page 358); and Yang (Carbohydrate Polymers; 255, 2021, 117370; as provided by the applicant on IDS dated 04/01/2024), heteropoly oligosaccharide along with other ingredients, such as water etc. naturally exists and isolated from Agrobacterium radiobacter.
With regard to the limitation of intended use for type of plants, infection -since composition of the instant claims is same as the naturally existing composition, the naturally existing composition must be capable of being useful for type of plants, infection. Further, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) (“where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”); Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81 (preamble is not a limitation where claim is directed to a product and the preamble merely recites a property inherent in an old product defined by the remainder of the claim); STX LLC. v. Brine, 211 F.3d 588, 591, 54 USPQ2d 1347, 1350 (Fed. Cir. 2000).
Here, the closest natural counterpart is naturally occurring composition from Agrobacterium radiobacter. When the claimed composition from Agrobacterium radiobacter. is compared to this counterpart, the comparison indicates that there are no differences in structure, function, or other characteristics. Therefore, the claimed composition from Agrobacterium radiobacter. is a product of nature exception. Association for Molecular Pathology v. Myriad Genetics Inc., 569 U.S. 576, 589-90 (2013) (naturally occurring things are “products of nature” which cannot be patented). Accordingly, the claim recites a judicial exception, and the analysis must therefore proceed to Step 2A Prong Two.
Step 2A Prong Two: This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. 2019 PEG Section III(A)(2), 84 Fed. Reg. at 54-55. Claims 6-10 recites intended use for type of plants, infection and concentration limitations. Although these limitations indicates that the composition intended use and different concentrations, it does not provide any information as to how the composition from Agrobacterium radiobacter, makes it different from its naturally occurring form, thus fails to meaningfully limit the claim because it is at best the equivalent of merely adding the words “apply it” to the judicial exception.
Accordingly, the process by which the natural product is produced does not integrate the recited judicial exception into a practical application and the claim is therefore directed to the judicial exception (Step 2A: YES).
Step 2B: This part of the eligibility analysis evaluates whether the claim as a whole amount to significantly more than the recited exception, i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. MPEP 2106.05. As discussed with respect to Step 2A Prong Two, the claims 6-10 recites additional element of a intended use and concentration, which is at best the equivalent of merely adding the words “apply it” to the judicial exception. Mere instructions to apply an exception cannot provide an inventive concept (Step 2B: NO). The claim is not eligible.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 11 and 13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. The subject matter of instant claims 11 and 13, was not properly described in the application as filed. In particular, there was no indication in original specification as filed for specific species, wherein R1 and R2 are H or R1=H and R2=macromolecular succinyl group as species and therefore raise doubt as to possession of the claimed invention at the time of filing. Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 102
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 for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 5-9 and 12 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chouly (Int. J. Macromol. Vol 17, No. 6, 1995, pages 357-363; as provided by the applicant on IDS dated 04/01/2024).
Chouly discloses heteropolysaccharide of the instant claims wherein R1=macromolecular pyruvate, R2=H or macromolecular succinyl and in concentration 100mg/100ml in a composition (1000mg/L) (entire article, especially abstract, Table 1, page 358, and 362):
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With regard to the limitation of intended use for type of plants, infection -since composition of the instant claims is same as taught by the cited prior art, the composition of the cited prior art must be capable of being useful for type of plants, infection. Further, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) (“where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”); Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81 (preamble is not a limitation where claim is directed to a product and the preamble merely recites a property inherent in an old product defined by the remainder of the claim); STX LLC. v. Brine, 211 F.3d 588, 591, 54 USPQ2d 1347, 1350 (Fed. Cir. 2000).
Since the cited prior art reads on all the limitations of the instant claims 1, 5-9, 12 and 14, these claims are anticipated.
Claims 1, 5-10, 12 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cheng (J. of Applied Microbiology, 127, 1716-1726, No. 6, 2019; as provided by the applicant on IDS dated 04/01/2024) as evidenced by Yang (Carbohydrate Polymers; 255, 2021, 117370; as provided by the applicant on IDS dated 04/01/2024).
Cheng discloses heteropolysaccharide of the instant claims wherein R1=macromolecular pyruvate, R2=H or macromolecular succinyl, isolated from Argobacterium strain ZCC3656 (also as evidenced by Yang, separated from Argobacterium strain ZCC3656 (same strain used by Cheng for isolation of heteropolysaccharide). The cited prior art further discloses composition comprising the polysaccharide in concentration 1, 10, 20 and 100 microgram/ml (1, 10, 20 and 100mg/L (entire article, especially pages 1719 and 1721):
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With regard to the limitation of intended use for type of plants, infection -since composition of the instant claims is same as taught by the cited prior art, the composition of the cited prior art must be capable of being useful for type of plants, infection. Further, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) (“where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”); Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81 (preamble is not a limitation where claim is directed to a product and the preamble merely recites a property inherent in an old product defined by the remainder of the claim); STX LLC. v. Brine, 211 F.3d 588, 591, 54 USPQ2d 1347, 1350 (Fed. Cir. 2000).
Since the cited prior art reads on all the limitations of the instant claims 1, 5-10 and 12 and 14, these claims are anticipated.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 5-8 and 12 in the instant application are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11819514 B2, since the claims, if allowed, would improperly extend the “right to exclude" already granted in the patent.
Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
The claims of instant application are drawn to a composition with an intended use in plants and claims 1-8 of U.S. Patent No. 11819514 B2 are drawn to a process of using same composition as in the instant claims.
However, the process of the patent discloses composition of the instant claims and does not constitute a patentable distinction.
With regard to the limitation of intended use for type of plants, infection -since composition of the instant claims is same as taught by the patent, the composition of the patent must be capable of being useful for type of plants, infection. Further, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) (“where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”); Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81 (preamble is not a limitation where claim is directed to a product and the preamble merely recites a property inherent in an old product defined by the remainder of the claim); STX LLC. v. Brine, 211 F.3d 588, 591, 54 USPQ2d 1347, 1350 (Fed. Cir. 2000).
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See also MPEP § 804.
Conclusion
No Claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PANCHAM BAKSHI whose telephone number is (571)270-3463. The examiner can normally be reached M-Thu 7-4.30 EST.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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