DETAILED ACTION
The Amendment filed November 24, 2025 has been entered.
Claims 1-68, 70, 73-75 and 79-227 are cancelled.
Claim 69 is currently amended.
Claims 71, 76-78 and 228-246 are withdrawn.
Claims 69, 71-72, 76-78 and 228-246 are pending.
Claims 69 and 72 are examined.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
All previous objections and rejections not set forth below have been withdrawn.
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 .
Withdrawn Claim Rejections
The rejection of claim 69 under pre-AIA 35 U.S.C. 102(a) and 102(b) as being anticipated by Humphrey U.S. Patent No. 5,017,374, issued May 21, 1991 is withdrawn in light of the amendment of claim 69.
The rejection of claims 69 and 72 under pre-AIA 35 U.S.C. 102(a) and 102(b) as being anticipated by Trias et al. U.S. Patent Application Publication No. 2014/0087942, published Mar. 27, 2014 is withdrawn in light of the amendment of claim 69.
The rejection of claims 69 and 72 on the ground of nonstatutory double patenting as being unpatentable over claims 34 and 35 of U.S. Patent No. 11,124,460 is withdrawn in light of Applicant’s arguments.
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.
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.
Claim(s) 69 and 72 is/are rejected under 35 U.S.C. 103 as being unpatentable over Humphrey U.S. Patent No. 5,017,374, issued May 21, 1991 and Trias et al. U.S. Patent Application Publication No. 2014/0087942, published Mar. 27, 2014 in view of Abbas et al. U.S. Patent No. 8,815,571, issued Aug. 26, 2014.
Claim 69 as currently amended is drawn to a plant seed coated with a free enzyme, wherein the enzyme is selected from a phospholipase, a lipase, a xylanase, a xylosidase, a mannanase, a pectinase, a lactonase, a chitosanase, a protease, a phytase, an acid phosphatase, a non- cellulolytic glucanase, an ACC deaminase, and combinations of any thereof, wherein the protease comprises an amino acid sequence having at least 95% sequence identity to any one of SEQ ID Nos: 46-48 and 127.
Claim 72 is drawn to the plant seed of claim 69, wherein the seed is further coated with an agriculturally acceptable carrier, a polymer, a preservative, a fungicide, an insecticide, or a nematicide.
Humphrey teaches a plant seed coated with a protease (paragraph spanning columns 5 and 6).
Trias et al. teach a plant seed coated with a protease, wherein the seed is further coated with an agriculturally acceptable carrier (gelatin) (claims 1, 2, 8).
Neither Humphrey nor Trias et al. teach a protease that comprises an amino acid sequence having at least 95% sequence identity to any one of SEQ ID Nos: 46-48 and 127.
Abbas et al. teach a protease (SEQ ID NO:1) obtained from Aspergillus saitoi that comprises the amino acid sequence of SEQ ID NO: 127 – see sequence alignment below.
Given the teachings of Humphrey and Trias et al. that a protease is a useful component of a seed coating, and given the teachings of Abbas et al. that a protease (SEQ ID NO:1) that comprises the amino acid sequence of SEQ ID NO: 127 can be obtained from Aspergillus saitoi, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to coat a plant seed coated with a protease that comprises the amino acid sequence of SEQ ID NO: 127. A known protease, such as the protease of Abbas et al. that comprises the amino acid sequence of SEQ ID NO: 127, would have been an obvious choice from among the finite number of known proteases available to add to a seed coating with a reasonable expectation of success, given that the protease had already been identified, isolated and characterized as active. Thus, the claimed invention would have been prima facie obvious as a whole to a person having ordinary skill in the art before the effective filing date of the claimed invention.
Sequence alignment between SEQ ID NO:1 of Abbas et al. and SEQ ID NO: 127:
RESULT 2
US-12-247-499-1
(NOTE: this sequence has 5 duplicates in the database searched.
See complete list at the end of this report)
Sequence 1, US/12247499
Patent No. 8815571
GENERAL INFORMATION
APPLICANT: Abbas, Charles A.
APPLICANT: Bao, Wu Li
TITLE OF INVENTION: Increased Fiber Hydrolysis by Protease Addition
FILE REFERENCE: CP.0094.US01 (080686)
CURRENT APPLICATION NUMBER: US/12/247,499
CURRENT FILING DATE: 2008-10-08
NUMBER OF SEQ ID NOS: 12
SEQ ID NO 1
LENGTH: 394
TYPE: PRT
ORGANISM: Aspergillus saitoi
Query Match 100.0%; Score 1926; Length 394;
Best Local Similarity 100.0%;
Matches 374; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 APAPTRKGFTINQIARPANKTRTVNLPGLYARSLAKFGGTVPQSVKEAASKGSAVTTPQN 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 21 APAPTRKGFTINQIARPANKTRTVNLPGLYARSLAKFGGTVPQSVKEAASKGSAVTTPQN 80
Qy 61 NDEEYLTPVTVGKSTLHLDFDTGSADLWVFSDELPSSEQTGHDLYTPSSSATKLSGYSWD 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 81 NDEEYLTPVTVGKSTLHLDFDTGSADLWVFSDELPSSEQTGHDLYTPSSSATKLSGYSWD 140
Qy 121 ISYGDGSSASGDVYRDTVTVGGVTTNKQAVEAASKISSEFVQDTANDGLLGLAFSSINTV 180
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 141 ISYGDGSSASGDVYRDTVTVGGVTTNKQAVEAASKISSEFVQDTANDGLLGLAFSSINTV 200
Qy 181 QPKAQTTFFDTVKSQLDSPLFAVQLKHDAPGVYDFGYIDDSKYTGSITYTDADSSQGYWG 240
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 201 QPKAQTTFFDTVKSQLDSPLFAVQLKHDAPGVYDFGYIDDSKYTGSITYTDADSSQGYWG 260
Qy 241 FSTDGYSIGDGSSSSSGFSAIA DTGTTLILLDDEIVSAYYEQVSGAQESYEAGGYVFSCS 300
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 261 FSTDGYSIGDGSSSSSGFSAIA DTGTTLILLDDEIVSAYYEQVSGAQESYEAGGYVFSCS 320
Qy 301 TDLPDFTVVIGDYKAVVPGKYINYAPVSTGSSTCYGGIQSNSGLGLSILGDVFLKSQYVV 360
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 321 TDLPDFTVVIGDYKAVVPGKYINYAPVSTGSSTCYGGIQSNSGLGLSILGDVFLKSQYVV 380
Qy 361 FNSEGPKLGFAAQA 374
||||||||||||||
Db 381 FNSEGPKLGFAAQA 394
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.
Claims 69 and 72 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11 of U.S. Patent No. 12,351,532.
Claim 69 as currently amended is drawn to a plant seed coated with a free enzyme, wherein the enzyme is selected from a phospholipase, a lipase, a xylanase, a xylosidase, a mannanase, a pectinase, a lactonase, a chitosanase, a protease, a phytase, an acid phosphatase, a non- cellulolytic glucanase, an ACC deaminase, and combinations of any thereof, wherein the protease comprises an amino acid sequence having at least 95% sequence identity to any one of SEQ ID Nos: 46-48 and 127.
Claim 72 is drawn to the plant seed of claim 69, wherein the seed is further coated with an agriculturally acceptable carrier, a polymer, a preservative, a fungicide, an insecticide, or a nematicide.
Claim 1 of U.S. Patent No. 12,351,532 is drawn to a method for stimulating plant growth and/or promoting plant health comprising applying a free enzyme to a plant growth medium, a plant seed, or an area surrounding a plant or a plant seed, wherein the enzyme comprises a Triticum aestivum acid phosphatase; and wherein the plant or a plant produced from the plant seed exhibits an increase in plant height.
Claim 11 of U.S. Patent No. 12,351,532 is drawn to the method of claim 1, wherein the method further comprises applying a agrochemical.
Although the claims at issue are not identical, they are not patentably distinct from each other because the methods of claims 1 and 11 of U.S. Patent No. 12,351,532 result in the production of the seed of claims 69 and 72 of the instant application.
Claims 69 and 72 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18 and 19 of U.S. Patent No. 12,351,533.
Claim 69 as currently amended is drawn to a plant seed coated with a free enzyme, wherein the enzyme is selected from a phospholipase, a lipase, a xylanase, a xylosidase, a mannanase, a pectinase, a lactonase, a chitosanase, a protease, a phytase, an acid phosphatase, a non- cellulolytic glucanase, an ACC deaminase, and combinations of any thereof, wherein the protease comprises an amino acid sequence having at least 95% sequence identity to any one of SEQ ID Nos: 46-48 and 127.
Claim 72 is drawn to the plant seed of claim 69, wherein the seed is further coated with an agriculturally acceptable carrier, a polymer, a preservative, a fungicide, an insecticide, or a nematicide.
Claim 18 of U.S. Patent No. 12,351,533 is drawn to a plant seed treated with the composition of claim 1.
Claim 19 of U.S. Patent No. 12,351,533 is drawn to the plant seed of claim 18, wherein the plant seed is coated with the composition.
Claim 1 of U.S. Patent No. 12,351,533 is drawn to a composition comprising a fertilizer and a free enzyme, wherein the enzyme is a mannanase, and wherein the enzyme is active.
Although the claims at issue are not identical, they are not patentably distinct from each other because the seed of claims 18-19 of U.S. Patent No. 12,351,533 are obvious species encompassed by the genus of seed set forth in claims 69 and 72 of the instant application.
Claims 69 and 72 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21, 67, 68, 74, 77-78, 234 of copending Application No. 17/459,019 (reference application).
Claim 69 as currently amended is drawn to a plant seed coated with a free enzyme, wherein the enzyme is selected from a phospholipase, a lipase, a xylanase, a xylosidase, a mannanase, a pectinase, a lactonase, a chitosanase, a protease, a phytase, an acid phosphatase, a non- cellulolytic glucanase, an ACC deaminase, and combinations of any thereof, wherein the protease comprises an amino acid sequence having at least 95% sequence identity to any one of SEQ ID Nos: 46-48 and 127.
Claim 72 is drawn to the plant seed of claim 69, wherein the seed is further coated with an agriculturally acceptable carrier, a polymer, a preservative, a fungicide, an insecticide, or a nematicide.
Claim 21 of the reference application is drawn to a method for stimulating plant growth and/or promoting plant health comprising applying a free enzyme to a plant seed, wherein the enzyme is selected from: a phospholipase comprising an amino acid sequence having at least 95% identity to any one of SEQ ID NOs: 18, 19, 115, 116 or 117; a lipase comprising an amino acid sequence having at least 95% identity to any one of SEQ ID NOs: 118, 119 or 120; a xylanase comprising an amino acid sequence having at least 95% identity to any one of SEQ ID NOs: 25, 121, or 122; a xylosidase comprising an amino acid sequence having at least 95% identity to SEQ ID NO: 123; a chitosanase comprising an amino acid sequence having at least 95% identity to SEQ ID NO: 124; and wherein a plant grown from the plant seed exhibits increased height or yield as compared to a plant grown from a control seed under the same conditions.
Claim 67 of the reference application is drawn to the method of claim 21, wherein applying the enzyme to the plant seed comprises: (a) applying the enzyme to the plant seed at the time of planting; or (b) coating the plant seed with the enzyme.
Claim 68 of the reference application is drawn to the method of claim 67, wherein the method comprises coating the plant seed with a seed coating formulation comprising: the enzyme; and an agriculturally acceptable carrier.
Claim 74 of the reference application is drawn to the method of claim 67, wherein the method comprises coating the plant seed with the enzyme.
Claims 77-78 of the reference application is drawn to the method of claim 21, wherein the enzyme comprises the phospholipase, wherein the phospholipase comprises an amino acid sequence having at least 98% identity to any of SEQ ID Nos: 18, 19, 115, 166 or 117.
Claim 234 of the reference application is drawn to the method of claim 21, wherein the xylosidase comprises an amino acid sequence having at least 98% identity to SEQ ID NO: 123.
Although the claims at issue are not identical, they are not patentably distinct from each other because the methods of claims 21, 67, 68, 74, 77-78, 234 of the reference application result in the production of the seed of claims 69 and 72 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 69 and 72 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 253-254 of copending Application No. 18/476,259 (reference application).
Claim 69 as currently amended is drawn to a plant seed coated with a free enzyme, wherein the enzyme is selected from a phospholipase, a lipase, a xylanase, a xylosidase, a mannanase, a pectinase, a lactonase, a chitosanase, a protease, a phytase, an acid phosphatase, a non- cellulolytic glucanase, an ACC deaminase, and combinations of any thereof, wherein the protease comprises an amino acid sequence having at least 95% sequence identity to any one of SEQ ID Nos: 46-48 and 127.
Claim 72 is drawn to the plant seed of claim 69, wherein the seed is further coated with an agriculturally acceptable carrier, a polymer, a preservative, a fungicide, an insecticide, or a nematicide.
Claim 253 of the reference application is drawn to a plant seed treated with the composition of claim 228.
Claim 228 of the reference application is drawn to a composition comprising a free phospholipase and a plant growth medium.
Claim 254 of the reference application is drawn to the plant seed of claim 253, wherein the plant seed is coated with the composition.
Although the claims at issue are not identical, they are not patentably distinct from each other because the seed of claims 69 and 72 of the instant application are obvious species encompassed by the genus of seed set forth in claims 253-254 of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 69 and 72 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 246-247 of copending Application No. 18/944,720 (reference application).
Claim 69 as currently amended is drawn to a plant seed coated with a free enzyme, wherein the enzyme is selected from a phospholipase, a lipase, a xylanase, a xylosidase, a mannanase, a pectinase, a lactonase, a chitosanase, a protease, a phytase, an acid phosphatase, a non- cellulolytic glucanase, an ACC deaminase, and combinations of any thereof, wherein the protease comprises an amino acid sequence having at least 95% sequence identity to any one of SEQ ID Nos: 46-48 and 127.
Claim 72 is drawn to the plant seed of claim 69, wherein the seed is further coated with an agriculturally acceptable carrier, a polymer, a preservative, a fungicide, an insecticide, or a nematicide.
Claim 246 of the reference application is drawn to a plant seed treated with the composition of claim 41.
Claim 41 of the reference application is drawn to a composition comprising a free enzyme and an agriculturally acceptable carrier, wherein the enzyme is mannanase, and wherein the mannanase is active.
Claim 247 of the reference application is drawn to the plant seed of claim 246, wherein the plant seed is coated with the composition.
Although the claims at issue are not identical, they are not patentably distinct from each other because the seed of claims 246-247 of the reference application are obvious species encompassed by the genus of seed set forth in claims 69 and 72 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 69 and 72 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 69, 72, 74 and 76 of copending Application No. 19/091,458 (reference application).
Claim 69 as currently amended is drawn to a plant seed coated with a free enzyme, wherein the enzyme is selected from a phospholipase, a lipase, a xylanase, a xylosidase, a mannanase, a pectinase, a lactonase, a chitosanase, a protease, a phytase, an acid phosphatase, a non- cellulolytic glucanase, an ACC deaminase, and combinations of any thereof, wherein the protease comprises an amino acid sequence having at least 95% sequence identity to any one of SEQ ID Nos: 46-48 and 127.
Claim 72 is drawn to the plant seed of claim 69, wherein the seed is further coated with an agriculturally acceptable carrier, a polymer, a preservative, a fungicide, an insecticide, or a nematicide.
Claim 69 of the reference application is drawn to a plant seed treated with a free enzyme, wherein the enzyme is a phytase.
Claim 72 of the reference application is drawn to the plant seed of claim 69, wherein the seed is coated with a free enzyme, and wherein the two or more free enzymes comprise a glucanase.
Claim 74 of the reference application is drawn to the plant seed of-claim 69, wherein the plant seed is coated with the enzyme.
Claim 76 of the reference application is drawn to the plant seed of-claim 74, wherein the plant seed is coated with a seed coating formulation comprising the enzyme and an agriculturally acceptable carrier.
Although the claims at issue are not identical, they are not patentably distinct from each other because the seed set forth in claims 69, 72, 74 and 76 of the reference application are obvious species encompassed by the genus of seed set forth in claims 69 and 72 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s assertion that upon indication of otherwise allowable subject matter a Terminal Disclaimer may be filed if needed to address the outstanding double patenting rejections is acknowledged. As there is currently no indication of allowable subject matter, the rejections are maintained.
Conclusion
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.
Remarks
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CYNTHIA E COLLINS whose telephone number is (571)272-0794. The examiner can normally be reached M-F 8:30 am - 5:00 pm.
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/CYNTHIA E COLLINS/Primary Examiner, Art Unit 1662