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 .
Detailed Action
Filing Receipt and Priority
The filing receipt mailed 08/05/2024 states the instant application is a 371 of PCT/CL2022/050038, filed 04/22/2022. The filing receipt also states that the instant application may claim benefit to foreign application CHILE 1035-2021, filed 04/22/2021.
The instant application finds support in the foreign application. Therefore, the instant effective filing date is 04/22/2021.
Information Disclosure Statement
The information disclosure statement received 10/20/2023 has been considered.
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Nucleotide and/or Amino Acid Sequence Disclosures
REQUIREMENTS FOR PATENT APPLICATIONS CONTAINING NUCLEOTIDE AND/OR AMINO ACID SEQUENCE DISCLOSURES
Items 1) and 2) provide general guidance related to requirements for sequence disclosures.
37 CFR 1.821(c) requires that patent applications which contain disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.821(a) must contain a "Sequence Listing," as a separate part of the disclosure, which presents the nucleotide and/or amino acid sequences and associated information using the symbols and format in accordance with the requirements of 37 CFR 1.821 - 1.825. This "Sequence Listing" part of the disclosure may be submitted:
In accordance with 37 CFR 1.821(c)(1) via the USPTO patent electronic filing system (see Section I.1 of the Legal Framework for Patent Electronic System (https://www.uspto.gov/PatentLegalFramework), hereinafter "Legal Framework") as an ASCII text file, together with an incorporation-by-reference of the material in the ASCII text file in a separate paragraph of the specification as required by 37 CFR 1.823(b)(1) identifying:
the name of the ASCII text file;
ii) the date of creation; and
iii) the size of the ASCII text file in bytes;
In accordance with 37 CFR 1.821(c)(1) on read-only optical disc(s) as permitted by 37 CFR 1.52(e)(1)(ii), labeled according to 37 CFR 1.52(e)(5), with an incorporation-by-reference of the material in the ASCII text file according to 37 CFR 1.52(e)(8) and 37 CFR 1.823(b)(1) in a separate paragraph of the specification identifying:
the name of the ASCII text file;
the date of creation; and
the size of the ASCII text file in bytes;
In accordance with 37 CFR 1.821(c)(2) via the USPTO patent electronic filing system as a PDF file (not recommended); or
In accordance with 37 CFR 1.821(c)(3) on physical sheets of paper (not recommended).
When a “Sequence Listing” has been submitted as a PDF file as in 1(c) above (37 CFR 1.821(c)(2)) or on physical sheets of paper as in 1(d) above (37 CFR 1.821(c)(3)), 37 CFR 1.821(e)(1) requires a computer readable form (CRF) of the “Sequence Listing” in accordance with the requirements of 37 CFR 1.824.
If the "Sequence Listing" required by 37 CFR 1.821(c) is filed via the USPTO patent electronic filing system as a PDF, then 37 CFR 1.821(e)(1)(ii) or 1.821(e)(2)(ii) requires submission of a statement that the "Sequence Listing" content of the PDF copy and the CRF copy (the ASCII text file copy) are identical.
If the "Sequence Listing" required by 37 CFR 1.821(c) is filed on paper or read-only optical disc, then 37 CFR 1.821(e)(1)(ii) or 1.821(e)(2)(ii) requires submission of a statement that the "Sequence Listing" content of the paper or read-only optical disc copy and the CRF are identical.
Specific deficiencies and the required response to this Office Action are as follows:
Specific deficiency - This application fails to comply with the requirements of 37 CFR 1.821 - 1.825 because it does not contain a "Sequence Listing" as a separate part of the disclosure or a CRF of the “Sequence Listing.”.
Required response - Applicant must provide:
A "Sequence Listing" part of the disclosure; together with
An amendment specifically directing its entry into the application in accordance with 37 CFR 1.825(a)(2);
A statement that the "Sequence Listing" includes no new matter as required by 37 CFR 1.821(a)(4); and
A statement that indicates support for the amendment in the application, as filed, as required by 37 CFR 1.825(a)(3).
If the "Sequence Listing" part of the disclosure is submitted according to item 1) a) or b) above, Applicant must also provide:
A substitute specification in compliance with 37 CFR 1.52, 1.121(b)(3) and 1.125 inserting the required incorporation-by-reference paragraph, consisting of:
A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
A copy of the amended specification without markings (clean version); and
A statement that the substitute specification contains no new matter.
If the "Sequence Listing" part of the disclosure is submitted according to item 1) c) or d) above, applicant must also provide:
A CRF in accordance with 37 CFR 1.821(e)(1) or 1.821(e)(2) as required by 1.825(a)(5); and
A statement according to item 2) a) or b) above.
Applicant is required to submit a Sequence ID listing for the sequences disclosed on p. 17 of the instant disclosure.
Drawings
The drawings are objected to because the following issues:
Figures 1 A and D, 2 A, 3 A, 4 A, 5 A, 6 A, 7 A, 8 A, 9 A are objected to because of the fidelity of the image. Currently, the numbers are illegible.
Figure 10 A is objected to for faded lines and illegible numbers.
Claim Objections
Claims 1-3 are objected to. Claim 1 states “A composition to control bacterial infections in plants, wherein comprises as active ingredient a compound selected from:”. The term “the composition” is missing from between “wherein” and “comprises”. Claim 1 should further state “as an active ingredient”. Claims 2-3 also state “wherein comprises” where it is clear that the claim at least needs “the composition comprises”.
Claim 6 states “Use of a compound…wherein it is used to prepare an agrochemical composition…”. “It” refers to a compound listed. However, it is improper to refer to said compound as “it”. The claim should instead state “wherein the compound is used”.
Rejections
Claim Rejections - 35 USC § 101
Claims 1-2 and 6-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to natural phenomena without significantly more. The claim(s) recite(s) “a composition to control bacterial infections in plants, wherein [the composition] comprises as an active ingredient a compound selected from:
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This judicial exception is not integrated into a practical application because as discussed in the 102 rejection below, the claimed composition is a plant extract made from the naturally occurring plants Adesmia resinosa and Adesmia balsamica. Additionally, the instant specification on p. 10, table 2 discloses amounts of the compounds above which fall within the concentration range of claim 2.
Table 2
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Claims 6-8 are currently drawn to a the non-statutory “use” of a compound (claim 6) or composition (claims 7-8) comprising a composition of claim 1. The scope of claims 6-8 are not clear. As the claims require the composition of claim 1, they are also rejected.
Use Claim
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 6-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claims are drawn to a “use” without also claiming a step.
Claim Rejections - 35 USC § 112(b)
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 6-9 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.
The MPEP section 2173.05(q) states “Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.”
Claim 6 is drawn to “Use of a compound…wherein it is used to prepare an agrochemical composition to control infections in plant crops” without an actionable step. Dependent claims 7 and 8 also claim “The use of claim 6” without an actionable step.
In view of MPEP section 2173.05(q), the claims are drawn to non-statutory subject matter and are also indefinite.
Claim Rejections - 35 USC § 112(a)
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.
Claims 1-4, and 6-9 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 bacterial infections caused by Pseudomonas syringae pvactinidiae (Psa), does not reasonably provide enablement for all bacterial infections. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
The following Wands Factors have been considered: (A) The breadth of the claims, (B) The nature of the invention, (C) The state of the prior art, (D) The level of one of ordinary skill, (E) The level of predictability in the art, (F) The amount of direction provided by the inventor, (G) The existence of working examples; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Breadth of the claims
Claim 1 is drawn to a composition to “control bacterial infections in plants.
Claim 3 is drawn to a method to control bacterial infections comprising applying an effective amount
Claims 6-9 re drawn to uses of the composition or method above.
Claim 9 also states “and other agronomically relevant bacteria.”
Nature of the invention
The claims are drawn to pesticidal compositions.
State of the prior art
The instant specification states that extracts from plants within the same genus have antimicrobial activity, but it was shown that these extracts do not have activity against Psa. (p. 2, para. 1 instant spec).
Similarly, extracts from the plants Adesmia boronoides show antimicrobial and antifungal activity, but activity against plant pathogens was not shown. The instant specification states “The essential oil of Adesmia boronoides showed antimicrobial activity, especially against Staphylococcus aureus. However, this publication is silent regarding the potential use of these compositions in the control of plant pathogens, nor is a use concentration established.” The instant disclosure does not state the components of the compositions tested in the prior art. That is the instant disclosure does not state whether the antibacterial activity of the art’s compositions
The closest art, found in PONTIFICIA (cited below), details antimicrobial activity of similar, if not identical extracts, against Pseudomonas syringae strains.
Working Examples and Guidance Provided
The instant specification discusses in vivo (Examples, p. 15, Table 5) and in vitro (Examples, p. 12, Table 3) conditions. The instant specification on p. 14 states details an experiment where the composition was administered to Kiwi plants in aseptic chamber in a controlled environment. The instant specification on p. 11 details an assay using bacterial strains Psa 770, Psa 8.43, Pss., E.c., and B.s. (acronym meaning shown below).
There is no other evidence within the specification that would indicate antimicrobial activity against other strains of bacteria.
Level of Predictability
Considering the above, the instant claims are enabled for bacterial infections of the Psa strains. However, there is a significant level of unpredictability should one of ordinary skill in the art attempt to use the instant composition or practice the claimed methods against bacteria and bacterial strains outside of Psa.
Claim Rejections - 35 USC § 112(b)
Indefiniteness
Claim 9 is 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.
Claim 9 states “…and other agronomically relevant bacteria.” The instant specification does not explicitly discuss this term. A number of bacteria strains are discussed in the instant specification. However, a limiting definition of the term “agronomically relevant bacteria” is not discussed. Considering the lack of definition, one of ordinary skill in the art would not immediately know the metes and bounds of the claim from simply “agronomically relevant bacteria.”
Additionally, claim 9 is dependent on claim 5 and states “The use of claim 5…”. Claim 5 states “The method according to claim 3…”. Claim 9 improperly switches the method of claim 5 to a use. Therefore, there is insufficient antecedent basis in claim 5 for a “use” as claimed in claim 9. Further, as claim 9 improperly switches the method of claim 5 to a use, one of ordinary skill in the art would not immediately know the metes and bounds of claim 9.
Claims 4 and 8 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 4 and 8 state “under in vitro and in vivo conditions”. The instant specification discusses in vivo (Examples, p. 15, Table 5) and in vitro (Examples, p. 12, Table 3) conditions. The instant specification on p. 14 states details an experiment where the composition was administered to plants in aseptic chamber in a controlled environment. The instant specification on p. 11 details an assay using bacterial strains Psa 770, Psa 8.43, Pss., E.c., and B.s. (acronym meaning shown below).
Shortened nomenclature for bacterial strains
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However, the term “under in vitro and in vivo conditions” is not explicitly limited to the conditions discussed above. Both in vitro and in vivo may refer to conditions not applicable to plants, such as antibacterial activity on hospital surfaces. Therefore, one of ordinary skill in the art would not immediately know the metes and bounds of the claim.
Claim Rejections - 35 USC § 112(d)
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.
Claim 9 is 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.
Claim 9 is dependent on claim 5 and states “The use of claim 5…”. Claim 5 states “The method according to claim 3…”. Claim 9 improperly switches the method of claim 5 to a use. Not only is this issue indefinite but claim 9 fails to further limit the method of claim 5.
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.
Art Rejections
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 and 6-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Montenegro (Natural Product Research, 2019, Vol. 33, No. 8, 1214-1217).
Claim 1 states “A composition to control bacterial infections in plants, wherein [the composition] comprises [as an] active ingredient a compound selected from:”
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The instant specification on p. 3 states “The secondary metabolites identified in the present invention obtained from the resinous exudate of A. balsamica and A. resinosa have antibacterial effects in vitro, and are not toxic.” The instant specification on p. 7 and 10 discloses the following secondary metabolites which are claimed as compounds in claim 1:
Secondary Metabolite Compounds
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Montenegro in its abstract states “A series of novel dihydrochalcone derivatives 2-7 were synthesized from dihydroisorcordoin 1 which was isolated from the aerial parts of Adesmia balsamica”. Emphasis added.
While Montenegro does not explicitly disclose the secondary metabolites above, Montenegro in sec. 2.1 discloses a resinous exudate of Adesmia balsamica. The instant specification indicates that the secondary metabolites above are found within extracts of the A. balsamica plant. Any extract of the A. balsamica plant would also have the same secondary metabolites. Therefore, Montenegro anticipates the composition claimed in claim 1.
Claims 6-9 are included in this 102 rejection. Claims 6-9 are currently drawn to a the non-statutory “use” of a compound (claim 6), composition (claims 7-8), or use of a method (claim 9) comprising a composition of claim 1. The scope of claims 6-9 are not clear. As the claims require the composition of claim 1, they are also rejected.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over PONTIFICIA UNVERSIDAD CATOLICA DE VALPARASIO (CL201800881, herein after PONTIFICIA, machine translation provided, citations made to foreign document submitted with IDS).
PONTIFICIA on p. 3 states “The present invention describes a procedure to prepare a composition to control infections in vitro and in vivo in plant cultures which comprises: obtaining and selecting aerial parts of plants of the genus Adesmia; cut the aerial parts of the selected plants; immerse the plant material in a solution containing 1,3-dioxane or dichloromethane; Filter the solution from the previous step and extract all of the liquid solvent; separate the bagasse obtained from the used filter, and concentrate the plant exudate…”.
PONTIFICIA on p. 4 continues “The method employed to obtain the exudate of the invention allows the obtaining of green exudates from the plants Adesmia balsamica and Adesmia resinosa used for the treatment of growth inhibition mainly of Psa [Pseudomonas syringae pv actinidiae], other pathogens and clinical bacterial pathogens giving it an antimicrobial property.”
PONTIFICIA in the following paragraph continues “The active exudates used in the present invention are of a varied surgical nature, come from nature and have not been chemically modified. [It] provides a new composition prepared from exudates of Adesmia balsamica, Adesmia resinosa or other species, which are obtained from immersion with 1,3-dioxane as a solvent.”
PONTIFICIA on p. 6-10 discloses Examples of extracts obtained from the resinous plants in in vitro antibacterial tests. PONTIFICIA on p. 7 discloses composition concentrations ranging from 1 to 1600 mg/L.
PONTIFICIA on p. 8-9, Table No1 discloses the minimum inhibitory concentration of an extract from the Adesmia balsamica plant against bacteria Psa 309, Psa 817, Psa 8.43.
PONTIFICIA on p. 9-12, specifically table No4 discloses applying the exudates from the plants A balsamica and A. resinosa to kiwi plants inoculated with Psa bacteria.
As stated in the 102 rejection above, the instant specification discloses that the secondary metabolites are found within exudates of the plants A. balsemica and A. resinosa. PONTIFICIA discloses application of exudates prepared via the procedure described above to kiwi plants inoculated with Psa. PONTIFICIA also discloses the antibacterial efficacy of these exudates.
Therefore, PONTIFICIA reads on the instant claims.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUISALBERTO GONZALEZ whose telephone number is (571)272-1154. The examiner can normally be reached M-F 8:30-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at (571) 272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/L.G./Examiner, Art Unit 1624
/SUSANNA MOORE/Primary Examiner, Art Unit 1624