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 .
Claims 1-17 have been presented for examination on the merits.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(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 the first paragraph of pre-AIA 35 U.S.C. 112:
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.
Biological Deposits
Claim 1 is rejected under 35 U.S.C 112, first paragraph, as containing subject matter which is not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The invention appears to employ novel biological materials, specifically the cap gene encoded in plasmid pWT99oen and/or the pWT99oen plasmid itself. Because the biological materials are essential to the claimed invention, they must be obtainable by a repeatable method set forth in the specification or otherwise readily available to the public. It is not apparent if the biological material or source materials are both known and readily available to the public. If the biological materials are not so obtainable or available, the requirements of 35 U.S.C. § 112 may be satisfied by a deposit of the biological materials.
If a deposit is made under the terms of the Budapest Treaty, then an affidavit or declaration by applicants, or a statement by an attorney of record over his or her signature and registration number, or someone empowered to make such a statement, stating that the instant invention will be irrevocably and without restriction released to the public upon the issuance of a patent, would satisfy the deposit requirement made herein.
If the deposit has not been made under the Budapest Treaty, then in order to certify that the deposit meets the criteria set forth in 37 C.F.R. §§ 1.801-1.809, Applicant may provide assurance of compliance by an affidavit or declaration, or by a statement by an attorney of record over his or her signature and registration number, showing that:
a.) during the pendency of this application, access to the invention will be afforded to the Commissioner upon request;
b.) all restrictions upon availability to the public will be irrevocably removed upon granting of the patent;
c.) the deposit will be maintained in a public depository for a period of 30 years or 5 years after the last requestor for the enforceable life of the patent, whichever is longer.
d.) a test of the viability of the biological material at the time of deposit will be made (see 37 C.F.R. § 1.807); and
e.) the deposit will be replaced if it should ever become inviable.
Applicant’s attention is directed to MPEP §2400 in general, and specifically to §2411.05, as well as to 37 C.F.R. § 1.809(d), wherein it is set forth that “the specification shall contain the accession number for the deposit, the date of the deposit, the name and address of the depository, and a description of the deposited material sufficient to specifically identify it and to permit examination.” The specification should be amended to include this information, however, applicant is cautioned to avoid the entry of new matter into the specification by adding any other information.
Claims 14-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for treating a plant disease, does not reasonably provide enablement for preventing all plant diseases. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
To be enabling, the specification of the patent must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993). Explaining what is meant by “undue experimentation,” the Federal Circuit has stated:
The test is not merely quantitative, since a considerable amount of experimentation is permissible, if it is merely routine, or if the specification in question provides a reasonable amount of guidance with respect to the direction in which the experimentation should proceed to enable the determination of how to practice a desired embodiment of the claimed invention. PPG v. Guardian, 75 F.3d 1558, 1564 (Fed. Cir. 1996).
The factors that may be considered in determining whether a disclosure would require undue experimentation are set forth by In re Wands, 8 USPQ2d 1400 (CAFC 1988) at 1404 where the court set forth the eight factors to consider when assessing if a disclosure would have required undue experimentation. Citing Ex parte Formal, 230 USPQ 546 (BdApls 1986) at 547 the court recited eight factors:
1) the quantity of experimentation necessary,
2) the amount of direction or guidance provided,
3) the presence or absence of working examples,
4) the nature of the invention,
5) the state of the prior art,
6) the relative skill of those in the art,
7) the predictability of the art, and
8) the breadth of the claims.
These factors are always applied against the background understanding that scope of enablement varies inversely with the degree of unpredictability involved. In re Fisher, 57 CCPA 1099, 1108, 427 F.2d 833, 839, 166 USPQ 18, 24 (1970). Keeping that in mind, the Wands factors are relevant to the instant fact situation for the following reasons:
The nature of the invention, relative skill level, and breadth of the claims
The instant invention is directed to methods of preventing plant disease comprising contacting viable bacteria of one or more of the bacterial strains of claim 1 to a plant and/or soil.
The complex nature of the claims is greatly exacerbated by the breath of the claims. The claims encompass broad ways that the said bacterial strain can prevent plant diseases, and especially any and all diseases. The relative skill of those in the art is high, that of agricultural scientists.
The state and predictability of the art
The state of the art recognizes that certain bacterial strains can improve growth or treat diseases in plants or improve soil conditions. As illustrative of the state of the art, the examiner cites Sahu et al (Effect of bacterial endophytes Lysinibacillus sp. On plant growth and fruit yield of tomato).
The lack of significant guidance from the specification or the prior art with regard to preventing plant diseases makes practicing the scope of the invention unpredictable. Prevention as defined by medical dictionary means: “Action so as to avoid, forestall, or circumvent a happening, conclusion, or phenomenon (for example, disease prevention)” (see http://medical-dictionary.thefreedictionary.com/prevention). And ‘to prevent’ means: “To keep from happening” (see http://www.thefreedictionary.com/prevent).
The claim is thus very broad insofar as it recites prevention of plant diseases, i.e., avoiding its occurrence. While such “prevention” might theoretically be possible under strictly controlled laboratory conditions, as a practical matter it is nearly impossible to achieve in the “real world” in which plants live and are exposed to various pathogens or factors that may cause diseases and wherein the plants are always a risk.
The amount of direction or guidance provided and the presence or
absence of working examples
The specification provides no direction or guidance for preventing plant diseases. Due to the vastness of factors that can cause diseases in plants, one of ordinary skill would undergo undue experimentation in deducing which plants would require prevention and which disease can be treated or prevented.
The working examples of the specification are directed towards plant growth promoting and damping-off incidences. However, the examples do not enable one to contact the claimed strain to a plant and prevent any and all diseases.
The quantity of experimentation necessary
Because of the known unpredictability of the art, and in the absence of experimental evidence, no one skilled in the art would accept the assertion that the instantly claimed bacterial strain could be predictably used to prevent plant diseases as claimed and contemplated by the specification. Accordingly, the instant claims do not comply with the enablement requirement of §112, since to practice the invention claimed in the patent a person of ordinary skill in the art would have to engage in undue experimentation, with no assurance of success.
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.
Claims 7, 9, 14 and 16-17 are 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.
Claims 7, 9, 14 and 16-17 recite the limitation "or a culture containing the viable bacteria" in the bacterial strain of claim 1. There is insufficient antecedent basis for this limitation in the claim. Claim 1 lacks any support for a culture of the bacterial strain.
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.
Claims 2-13 are 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. Claims 2-13 are directed to the property or function of the claimed bacterial strain of claim 1 and fail to further limit the scope pf claim 1. The said limitations are features/descriptions of the said bacterial strain of claim 1 which do not materially affect the scope of the claimed bacterial strain. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) 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.
The claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1-17 are directed to a novel Lysinibacillus xylanilticus GIC41 bacterial strain and a method for regulating plant growth and/or preventing plant disease comprising contacting viable bacteria of the said strain to a plant and/or soil. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they don’t appear to be markedly different than a natural phenomenon.
The claimed invention is not directed to patent eligible subject matter. Based upon consideration of all of the relevant factors with respect to the claims as a whole, claims 1-17 are determined to be directed to a natural phenomenon. The rationale for this determination is explained below:
Effective January 7, 2019, subject matter eligibility determinations under 35 U.S.C. § 101 follow the procedure explained in the Federal Register notice titled 2019 Revised Patent Subject Matter Eligibility Guidance (Federal Register, Vol. 84, No.4, 50- 57), which is found at: https://www.govinfo.gov/content/pkg/F R-201 9-01-07/pdf/2018- 28282.pdf. Applicants are kindly asked to review this guidance as well as MPEP 2106.
The statutory categories of invention under 35 U.S.C. 101 are processes, machines, manufactures, and compositions of matter. However, certain members of these categories constitute judicial exceptions, i.e., the courts have determined that these entities are not patentable subject matter. These judicial exceptions include abstract ideas, laws of nature, and natural phenomena. The Office released guidance on December 16, 2014 for the examination of claims reciting natural products under 35 U.S.C. 101 in light of the recent Supreme Court decisions in Association for Molecular Pathology v. Myriad Genetics, Inc. (569 U.S. , 133 S. Ct. 2107, 2116, 106 USPQ2d 1972 (2013)) and Mayo Collaborative Services v. Prometheus Laboratories (566 U.S. __,1382 S. Ct. 1289, 101 USPQ2d 1961 (2012)), Diamond v. Chakrabarty, 447 U.S. 303 (1980)) and Funk Brothers Seed Co. v. Kalo Inoculant Co. - 333 U.S. 127 (1948)). (inter alia). See e.g. MPEP 2106.04(b)
The Supreme Court has explained that the judicial exceptions reflect the Court's view that abstract ideas, laws of nature, and natural phenomena are "the basic tools of scientific and technological work”, and are thus excluded from patentability because "monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it" Alice Corp, 134 S. Ct. at 2354, 110 USPG2d at 1980 (quoting Myriad, 133 S. Ct. at 2116, 106 USPQ2d at 1878 and Mayo Collaborative Serve. v. Prometheus Labs. inc., 586 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012). The Supreme Court's concern that drives this "exclusionary principle” is pre-emption. Alice Corp, 134 S. Ct. at 2354, 110 USPG2d at 1980. The Court has held that a claim may not preempt abstract ideas, laws of nature, or natural phenomena; i.e., one may not patent every "substantial practical application” of an abstract idea, law of nature, or natural phenomenon, even if the judicial exception is narrow.
While preemption is the concern underlying the judicial exceptions, it is not a standalone test for determining eligibility. Rapid Litig. Mgmt. v. CellzDirect, Inc. 827 F.3d 1042, 1052, 119 USPQ2d 1370, 1376 (Fed. Cir. 2016). Instead, questions of preemption are inherent in and resolved by the two-part framework from Alice Corp. and Mayo (the Alice/Mayo test referred to by the Office as Steps 2A and 2B). It is necessary to evaluate eligibility using the Alice/Mayo test, because while a preemptive claim may be ineligible, the absence of complete preemption does not demonstrate that a claim is eligible.
Products of Nature: When a law of nature or natural phenomenon is claimed as a physical product, the courts have often referred to the exception as a "product of nature". Products of nature are considered to be an exception because they tie up the use of naturally occurring things, but they have been labeled as both laws of nature and natural phenomena. See Myriad 133 S. Ct. at 2116-17, 106 USPQ2d at 1979 (claims to isolated DNA held ineligible because they "claim naturally occurring phenomena’ and are "squarely within the law of nature exception"); Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 US. 127, 130, 76 USPQ 280, 281 (1948) (claims to bacteria mixtures held ineligible as "manifestations of laws of nature” and "phenomena of nature”). Step 2A of the Office’s eligibility analysis uses the terms "law of nature” and "natural phenomenon’ as inclusive of "products of nature”.
It is important to keep in mind that product of nature exceptions include both naturally occurring products and non-naturally occurring products that lack markedly different characteristics from any naturally occurring counterpart. Instead, the key to the eligibility of all non-naturally occurring products is whether they possess markedly different characteristics from its closest naturally occurring counterpart.
When a claim recites a nature-based product limitation, examiners 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. Nature-based products, as used herein, include both eligible and ineligible products and merely refer to the types of products subject to the markedly different characteristics analysis used to identify product of nature exceptions.
The Markedly Different Characteristics Analysis
The markedly different characteristics analysis is part of Step 2A, because the courts use this analysis to identify product of nature exceptions. If the claim includes a nature-based product that has markedly different characteristics, then the claim does not recite a product of nature exception and is eligible. If the claim includes a nature-based product that does not exhibit markedly different characteristics from its closest naturally occurring counterpart in its natural state, then the claim is directed to a "product of nature” exception (Step 2A: YES), and requires further analysis in Step 2B to determine whether any additional elements in the claim add significantly more to the exception.
Nature-based Product Claim Analysis
Where the claim is to a nature-based product by itself, the markedly different characteristics analysis should be applied to the entire product. Where the claim is to a nature-based product produced by combining multiple components, the markedly different characteristics analysis should be applied to the resultant nature-based combination, rather than is component parts. Where the claim is to a nature-based product in combination with non-nature based elements, the markedly different characteristics analysis should be applied only to the nature- based product limitation. For a product-by-process claim, the analysis turns on whether the nature-based product in the claim has markedly different characteristics from is naturally occurring counterpart.
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, and are evaluated based on what is recited in the claim on a case-by-case basis. If the analysis indicates that a nature-based product limitation does not exhibit markedly different characteristics, then that limitation is a product of nature exception. If the analysis indicates that a nature- based product limitation does have markedly different characteristics, then that limitation is not a product of nature exception. Because the markedly different characteristics analysis compares the nature-based product limitation to its naturally occurring counterpart in its natural state, the first step in the analysis is to select the appropriate counterpart(s) to the nature-based product. When there are multiple counterparts to the nature-based product, the comparison should be made to the closest naturally occurring counterpart. When the nature-based product is a combination produced from multiple components, the closest counterpart may be the individual nature-based components of the combination. Because there is no counterpart mixture in nature, the closest counterparts to the claimed mixture are the individual components of the mixture, i.e., each naturally occurring species by itself. See, e.g. Funk Bros, 333 U.S. at 130, 76 USPQ at 281 (comparing claimed mixture of bacterial species to each species as it occurs in nature).
Markedly changed characteristics can include structural, functional, chemical changes. In order to show a marked difference, a characteristic must be changed as compared to nature, and cannot be an inherent or innate characteristic of the naturally occurring counterpart or an incidental changes in a characteristic of the naturally occurring counterpart, Myriad, 133 S. Ct. at 2111, 106 USPQ2d at 1974-75. Thus, in order to be markedly different, applicant must have caused the claimed product to possess at least one characteristic that is different from that of the counterpart. If there is no change in any characteristic, the claimed product lacks markedly different characteristics, and is a product of nature exception.
The claims are directed to a nature-based product (i.e. a bacterial strain), which is not markedly different from its closest naturally-occurring counterpart because there is no indication that their isolation or preparation has caused the nature-based product to have any characteristics that are markedly different from the closest naturally-occurring product and the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The rationale for this determination is explained below:
Step 1: Determine if the claims are directed to one of the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: a process, machine, manufacture or composition of matter. YES, the claims are directed to a composition of
matter (i.e., a bacterial strain), which is a statutory category within at least one of the four categories of patent eligible subject matter.
Step 2A: PRONG ONE: Evaluate whether the claims recite a Judicial Exception (e.g., law of nature, natural phenomenon, or an abstract idea). YES, the claims are product claims reciting something that appears to be a nature-based product (i.e., a bacterial strain present in soil) which is not markedly different from the closest naturally -occurring counterpart (i.e., the individual nature-based products). The claims are also drawn to a method of regulating growth or preventing plant disease by contacting the said strain to a plant and/or soil. The said bacteria is found in the nature, i.e the paddy soil in Mie Japan, as stated by Applicant, and is in contact with soil and plants.
----- Note: with respect to isolates of natural products such as plants, the closest naturally-occurring counterpart is always the same compounds found in the isolate, present in the non-isolated form in the source plant material. Isolates/ extracts that are made simply by separating the extracted components from the non-extracted components, is a partitioning process that absent any specific chemical modification, merely separates the compounds leaving their activities unchanged.
------ The ingredient recited in the claims is a natural product that would occur naturally; thus, the claims involve the use of judicial exceptions. There is no indication in the record of any markedly different characteristics of the composition as broadly claimed.
Nor is there any difference in functional characteristics. To show a marked difference, the characteristic(s) must be changed as compared to closest natural- occurring counterpart. For example, an assertion of changed functionality must be
accompanied with evidence of a comparison of the claimed product with its closest naturally-occurring counterpart and should apply to the full scope of the claim.
Thus, there is no evidence of record to indicate that the claimed product is markedly different, or functionally different than its closest naturally occurring counterpart.
PRONG TWO: Evaluate whether the judicial exception is integrated into a practical application. The claims are directed to a bacterial strain and a method of regulating plant growth. The method is achieved by contacting the plant, seed or soil with the said bacterial strain. Thus, the cited claims are directed to a judicial exception to patentable subject matter.
Step 2b: Determine whether the claim directed to a judicial exception provides an inventive concept. For example, the claims may recite additional elements that amount to significantly more than the judicial exception. In the instant case, NO, the claims are directed to an isolated bacterial strain without any other components that could add significantly more to the exception. No other specific limitations other than what is well-understood, routine and conventional in the field at a high level of generality have been added to the claimed nature-based product (e.g., addition of well-known ingredients).
Thus, the claimed product and method are not eligible subject matter under current 35 USC 101 standards.
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 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Sahu et al (Effect of bacterial Endophytes Lysinibacillus sp. on Plant Growth and Fruit Yield of Tomato (Solanum lycopersicum) in combination with Lee et al (Lysinibacilus xylanilyticus sp. nov. a xylan-degrading bacterium isolated from forest humus).
Sahu et al teaches that endophytes are known for their novel metabolites and benefits for host. Diversified role of endophytes is being studied in order to enhance their use in agriculture production system. Endophytes are being used for plant growth promotion, alleviation of biotic and abiotic stresses, enhancing agronomic traits, etc. In this study, bacterial endophytes isolated from earlier studies were tested for its plant growth promoting traits in tomato. Results indicated that the endophyte 1TH16a had performed well in pot trial and significantly enhanced fruit yield as compare to control. Significantly higher root and shoot biomass were recorded from strain 1TH16a and 1016. Molecular identification using 16s rRNA shows its identity to Lysinibacillus sp. This strain is having potential plant growth promoting traits (See abstract) (rendering claims 1-17 obvious).
Sahu et al disclose that exploration for better microbial isolates is a continuous process. Screening could bring potential strains for field application. In this study, most potent endophyte was Lysinibacillus sp. strain 1TH16a. Lysinibacillus sp. is reported as potent plant growth promoter by several workers in other crops (See page 3401, 2nd col. Results and discussion).
Regarding claim 14, it is disclosed that different bacteria were tested for their effect on plant biomass (See page 3402, 2nd col. and Table 2 on page 3403). Sahu et al further disclose that Lysinibacillus sp. also has the ability to protect plants from pathogens (See page 3405, 1st col., last para).
Regarding claim 15, Sahu et al disclose that the tomato seedlings were tested in a pot trial (See page 3401, 1st col).
Regarding claim 17, Sahu et al teach that the said bacteria was studied on rhizospheres (See page 3400, 2nd col).
Sahu et al’s bacterial strain is a Lysinibacillus sp. but not a xylanilyticus sp. This would have been obvious over the teachings of Lee et al.
Lee et al teach Lysinibacilus xylanilyticus sp. nov. a xylan-degrading bacterium isolated from forest humus. It is a novel xylan-degrading bacterium, designated XDB9T, isolated from forest humus collected from Gyeryong Mountain in Korea. Cells were Gram-positive, aerobic, motile and endospore-forming rods. A neighbor-joining phylogenetic tree based on 16S rRNA gene sequences showed that strain XDB9T was most closely related to members of the genus Lysinibacillus. 16S rRNA gene sequence similarities between strain XDB9T and the type strains of species of the genus Lysinibacillus ranged from 98.0 to 98.5 % (See abstract).
During the course of a study on the diversity of xylan-degrading bacteria from natural environments, a novel bacterial strain, XDB9T, was isolated from forest humus (See page 281, 1st col).
It would have been prima facie obvious to a person of ordinary skilled in the art at the time the invention was made to have followed the teachings of Sahu et al in view of the teachings of Lee et al to arrive at the instant invention. One of ordinary skill in the art would have been motivated to follow Sahu et al’s teachings and method of regulating plant growth by contacting the said plant or soil with an effective isolate of a Lysinibacillus sp. with a reasonable expectation is success. It would have been obvious to do so because Sahu et al teach that many, if not all strains of Lysinibacillus sp. are effective bacterial strains in promoting /regulating plant growth. While Sahu et al do not teach the claimed bacteria strain, one of ordinary skill in the art having possession of their disclosure would be motivated to isolate various strains and test them for their benefit in promoting plant growth and treating plant diseases including those caused by pathogens. Additionally, Lee et al teach that the bacterial strain Lysinibacilus xylanilyticus sp. has been isolated and well known.
That is, the known work in the field of bacterial isolation and their use in treating plants and soil, would have prompted variations of it for use in the same field based on design incentives or other market forces where the variations are predictable to one of ordinary skill in the art. See MPEP 2144.09.II.
Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Naureen et al (Exploring the Potentials of Lysinibacillus sphaericus ZA9 for Plant Growth Promotion and Biocontrol Activities against Phytopathogenic Fungi).
Naureen et al teach that there is an ongoing hunt for biologically active compounds that can combat phytopathogenic fungi and improve plant growth without causing any hazards to the environment. Consequently, the present study aims at deciphering the plant growth promotion and antifungal capability of Lysinibacillus sphaericus ZA9. The bacterium was previously isolated and identified in our laboratory from maize rhizosphere using 16S rRNA gene sequencing. The bacterium enhanced the seedling vigor and germination of seeds pretreated with it and promoted the shoot length of both cucumber and tomato seeds in greenhouse experiment. L. sphaericus ZA9 and its cell free culture supernatant showed varied antagonistic behavior against Alternaria alternata, Aspergillus sp., Bipolaris spicifera, Aspergillus sp., Trichophyton sp., etc. Fermentation broth culture of L. sphaericus ZA9 was then used to isolate antifungal metabolites by silica column chromatography (See Abstract).
Regarding claims 1-14 and 16-17, Naureen et al teach that phytopathogens are a continuous challenge for the farming population of the world besides scarcity of water and deteriorating soil fertility levels. Presence or absence of phytopathogens directly affects plant health and the resulting productivity. Almost all the crops are affected by one or more pathogens. For this reason, there is an ongoing hunt of natural compounds produced by biological organisms which may alleviate the need of chemical fungicide and pesticides for controlling plant pathogens and improving crop productivity. Several bacterial and fungal species have been reported by many research groups which cannot only improve plant growth and productivity but are excellent in combating plant pathogens in laboratory and greenhouse conditions. Lysinibacillus sphaericus ZA9 is one of the important bacterial species which has been known to produce antimalarial and larvicidal compounds and the S-layer protein which kill the mosquito larvae. Consequently, the present study aims to evaluate maize root associated L. sphaericus strain for production of secondary metabolites that can promote plant growth and antagonize selected phytopathogenic fungi such as Alternaria alternata, Curvularia lunata, Aspergillus sp., Sclerotinia sp., Bipolaris spicifera, Trichophyton sp. (See page 2, Introduction).
Regarding claim 15, Naureen et al teach a seed treatment (See page 3).
It would have been prima facie obvious to a person of ordinary skilled in the art at the time the invention was made to have followed the teachings of Naureen et al to arrive at the instant invention. One of ordinary skill in the art would have been motivated to follow Naureen et al’s teachings and method of regulating plant growth by contacting the said plant or soil with an effective isolate of a Lysinibacillus sp. with a reasonable expectation is success. It would have been obvious to do so because Naureen et al teach that many, if not all strains of Lysinibacillus sp. are effective bacterial strains in promoting / regulating plant growth. While Naureen et al do not teach the claimed bacteria strain, one of ordinary skill in the art having possession of their disclosure would be motivated to isolate various strains and test them for their benefit in promoting plant growth and treating plant diseases including those caused by pathogens.
That is, the known work in the field of bacterial isolation and their use in treating plants and soil, would have prompted variations of it for use in the same field based on design incentives or other market forces where the variations are predictable to one of ordinary skill in the art. See MPEP 2144.09.II.
Claims 1-17 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mina Haghighatian whose telephone number is (571)272-0615. The examiner can normally be reached M-F, 7-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X. Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Mina Haghighatian/
Mina Haghighatian
Primary Examiner
Art Unit 1616