DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Status of the Claims
Claims 1-16 are pending. Claims 3 and 13-16 are withdrawn. Claims 1, 2, and 4-12 are under consideration in this action.
Election/Restrictions
Applicant’s election without traverse of Group I (Claims 1-12) and the following species in the reply filed on March 5, 2026 is acknowledged:
First microbial species: combination of A. brasilense, R. irregularis, B. subtilis, and R. palustris
Second microbial species: A. chroococcum, S. paucimobilis, and V. paradoxus
Note: The search and consideration below has been expanded to also include not only the aforementioned combinations, but also compositions comprising at least one of the microbial species from each of the elected combinations.
Claims 3 and 13-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 5, 2026.
Claim Objections
Claim 1 is objected to because of the following informalities: in line 10, “Sphingomonaspaucimobilis” should be “Sphingomonas paucimobilis”.
Claim 5 is objected to because of the following informalities: line 2 recites “a composition of claim 1”. As the limitation is referring to an already introduced composition, the limitation should be amended to “the composition of claim 1.”
Appropriate corrections are required.
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, 2, and 5-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a natural phenomenon) without significantly more. Claims 1 and 2 recite mixtures of microbial species, which are all known to be naturally occurring. Claims 5-12 recite additional components which are all known to be naturally occurring (e.g. water, glucose, silica).
With regards to the specific mixtures of microbial species as claimed in claims 1 and 2, there is no indication in the Specification that the claimed mixtures result in any characteristics (structural, functional, or otherwise) that are different from each naturally occurring counterpart. Thus, the mixture does not have markedly different characteristics from what occurs in nature and is a “product of nature” exception. The claims do not include any additional features that could add significantly more to the exception. See Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 131 (1948):
Discovery of the fact that certain strains of each species of these bacteria can be mixed without harmful effect of the properties of either is a discovery of their qualities of non-inhibition. It is no more than the discovery of some of the handiwork of nature and hence is not patentable. The aggregation of select strains of the several species into one product is an application of that newly-discovered natural principle. But however ingenious the discovery of that natural principle may have been, the application of it is hardly more than an advance in the packaging of the inoculants. Each of the species of root-nodule bacteria contained in the package infects the same group of leguminous plants which it always infected. No species acquires a different use. The combination of species produces no new bacteria, no change in the six species of bacteria, and no enlargement of the range of their utility. Each species has the same effect it always had. The bacteria perform in their natural way. Their use in combination does not improve in any way their natural functioning. They serve the ends nature originally provided and act quite independently of any effort of the patentee.
With regards to the additional components recited in claims 5-12, the instant specification discloses that bacterial and fungal microorganisms are known to naturally be found in soil, acting as decomposers (P.G. Pub., Spec., para.0006). Water (claim 5) is known to naturally be found in soil (e.g., when it rains). Glucose (claims 6-9) is known to naturally be found in soil (Brodam, Glucose content in soil can be measured in a simple way, p.1, para.1). Silica (claims 10-12) is known to be naturally found in soil (FulCrop Sciences, Silica: The Unsung Hero of Soil Health). There is no indication in the Specification that the claimed compositions additionally including the aforementioned additional naturally occurring components result in any composition with characteristics (structural, functional, or otherwise) that are different from each naturally occurring counterpart.
Thus, the compositions as claimed do not have markedly different characteristics from what occurs in nature, and is a “product of nature” exception. The claims do not include any additional features that could add significantly more to the exception.
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.
Claims 1, 2, and 4-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Merritt (WO 2013/029112 A1; published Mar. 7, 2013).
With regards to Claims 1, 2, and 4, Merritt discloses a plant growth-enhancing concentrate comprising freeze dried (reading on lyophilized) Herbaspirillum seropedicae bacteria and at least one other bacterium, which is reconstituted to form a composition for administration to ap lant or to soil to enhance plant growth. Suitably, the bacteria in the concentrate have been cultured, fermented, and then freeze-dried to facilitate storage and subsequent rehydration (abstract; p.2, ln.24-28; p.5, ln.29-30; Merritt claims 1-2).
The at least one other bacterial species is selected from, inter alia, Azotobacter chroococcum and Bacillus subtilis (p.3, ln.10-18). As A. chroococcum and B. subtilis are listed among a narrowed list of eight bacterial species, one of ordinary skill in the art would have been able to clearly envisage a composition comprising both A. chroococcum and B. subtilis as the at least one other bacterial species in the composition.
With regards to Claim 5, Merritt discloses a plant growth-enhancing composition administrable to a plant and/or to soil comprising the aforementioned mixture of bacteria and a liquid medium that facilitates administration of the plant growth-enhancing composition to plant and/or to soil. Preferably, the liquid medium is water (p.2, ln.31-p.3, ln.3; Merritt claims 3-4).
With regards to Claims 6-8, preferably, the concentrate further comprises one or more agents that assist storage and/or rehydration. In an embodiment, the one or more agents comprise glucose (p.5, ln.30-34).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, and 4-12 are rejected under 35 U.S.C. 103 as being unpatentable over Merritt (WO 2013/029112 A1; published Mar. 7, 2013) and Rezaei et al. (Rezaei) (US 2023/0148607 A1; priority date: May 1, 2020).
The teachings of Merritt as they apply to Claims 1, 2, and 4-8 are set forth above and incorporated herein.
Merritt does not appear to explicitly disclose (i) the amount of the carbon source (Claim 9) or (ii) further comprising a thickening agent (Claims 10-12). Rezaei is relied upon for these disclosures. The teachings of Rezaei are set forth herein below.
Rezaei discloses agronomically stable liquid agricultural compositions comprising nitrogen-fixing microorganisms and one or more of a buffering agent, a microbial stabilizer, and a physical stabilizer. The disclosed liquid agricultural compositions have a longer shelf life and greater ease of application than other existing dry and liquid formulations. The disclosed liquid agricultural compositions are stable for a period of thirty days or longer with low toxin accumulation and high microbial stability. The compositions are used to increase crop yield and decrease yield variance (abstract; para.0003).
The composition is in liquid form, where bacterial populations can be mixed or suspended in suitable liquid carriers. Suitable liquid diluents or carriers include water (para.0347).
The agricultural composition comprises a microbial stabilizer. A microbial stabilizer is an agent that acts to stabilize the microorganism population within the agricultural composition. In some embodiments, the microbial stabilizer decreases or slows the decay rate of the microbial population. In some embodiments, the microbial stabilizer accomplishes this change in the decay rate by maintaining the microorganisms in a semi-dormant state. In a semi-dormant state, microorganisms do not respond to environmental conditions as rapidly as they would in an active state (par.0296-0298). Among the suitable microbial stabilizer is glucose (para.0303). The concentration of microbial stabilizer comprised by the agricultural composition ranges from about 0.1% w/v to about 20% w/v (para.0307).
The agricultural composition comprises a physical stabilizer, which improves the homogeneity of the agricultural composition, such that the microbial cells are at a similar density throughout the liquid composition. By increasing homogeneity, the physical stabilizer prevents high concentrations of cells and/or toxins from accumulating in any one sub-volume of the agricultural composition. In some embodiments, the physical stabilizer increases the viscosity of the liquid agricultural composition. In some embodiments, the physical stabilizer is a thickening agent (para.0308-0309). Among the suitable physical stabilizers include pectin and precipitated silica (para.0310-0311). The concentration of physical stabilizer comprised by the agricultural composition ranges from about 0.01% w/v to about 30% w/v (para.0312).
With regards to Claim 9, as discussed above, Merritt discloses the inclusion of glucose to assist storage and/or rehydration of the microbial concentrate. Rezaei similarly discloses the use of glucose as a microbial stabilizer to decrease or slow the decay rate of the microbial population, thus improving its shelf life during storage. One of ordinary skill in the art would have found it prima facie obvious before the effective filing date to combine the teachings of Merritt and Rezaei and include glucose in the concentration disclosed by Rezaei. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. One of ordinary skill in the art would have been motivated with a reasonable expectation of success in doing so in order to optimize the shelf life of the microorganisms and the formulation, and Rezaei discloses their range as known and suitable for glucose when used in stabilizing the microorganism within agricultural compositions.
With regards to Claims 10-12, one of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the teachings of Merritt with Rezaei and further include thickening agents, such as pectin or precipitated silica in amounts disclosed by Rezaei into Merritt’s compositions. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. One of ordinary skill in the art would have been motivated to do so in order to improve the homogeneity of the composition and prevent high concentrations of cells from accumulating in any one sub-volume of the agricultural composition, and to formulate the composition with the desired viscosity for optimal application. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Rezaei discloses that thickening agents such as pectin and precipitated silica are physical stabilizers known to be incorporated into microbial agricultural compositions. Rezaei also discloses known and suitable concentrations for such components in microbial agricultural compositions.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
Claims 1, 2, and 4-12 are rejected under 35 U.S.C. 103 as being unpatentable over Merritt (WO 2013/029112 A1; published Mar. 7, 2013), Rezaei et al. (Rezaei) (US 2023/0148607 A1; priority date: May 1, 2020), Red’kina (US 5,951,978; published Sept. 14, 1999), Sarah (US 10,118,869 B1; published Nov. 6, 2018), Higa (US 4,985,060; published Jan. 15, 1991), Trauger et al. (Trauger) (US 2006/0000767 A1; published Jan. 5, 2006), and Koga et al. (Koga) (US 2011/0136199 A1; published Jun. 9, 2011).
The teachings of Merritt and Rezaei, and the motivation for their combination as they apply to Claims 1, 2, and 4-12 are set forth above and incorporated herein.
The combined teachings of Merritt and Rezaei do not appear to explicitly disclose the elected species of the combination of the first microbial species and the combination of the second microbial species. In particular, the combined teachings of Merritt and Rezaei do not appear to explicitly disclose the inclusion of Azospirillum brasilense, Rhizophagus irregularis, Rhodopseudomonas palustris, Sphingomonas paucimobilis, and Variovorax paradoxus. Red’kina, Sarah, Higa, Trauger, and Koga are relied upon for these disclosures. Their teachings are set forth herein below.
Red’kina discloses a crop inoculant that includes Azospirillum brasilense. The inoculant is effective for consistently improving soil quality and increasing plant productivity over a wide range of soil types and climate conditions, and wide range of plant types (abstract; col.2, ln.1-10). The strain may be used in combination with other agronomically beneficial microorganisms. Application of the microbial inoculant to the plant or the soil provides an increased level of soil nitrogen, improves mineral uptake into plants, stimulates plant growth through the production of plant growth regulators, and inhibits phytopathogenic microflora (col.2, ln.13-20).
Sarah discloses a fertilizer comprising mycorrhizal inoculum (col.1, ln.35-39 and 50-55). Mycorrhizae colonize the plant root with fungus to help plants capture nutrients such as phosphorus, sulfur, nitrogen, and micronutrients from the soil. In a preferred embodiment, Rhizophagus irregularis is used (col.2, ln.55-61).
Higa discloses a soil conditioner comprising microorganism having the function of competing with the harmful microorganisms present in the soil or utilizing them as nutrient sources to eliminate the detrimental effects thereof, by inducing the propagation of useful microorganisms in the rhizosphere of the desired crop and promoting the growth of the crop (abstract). Higa discloses that the microorganisms contained in the soil conditioner can be any microorganism that performs the above-described functions. It would be more efficient to use microorganisms which themselves serve as useful microorganisms (col.4, ln.50-54).
Higa discloses that the microorganisms preferably comprise a photosynthetic bacterium, such as Rhodopseudomonas palustris (col.4, ln.60 to col.5, ln.16). Higa discloses that photosynthetic bacteria produce cytokinin and vitamin C precursors promoting cell division, fix atmospheric nitrogen, and further symbiose with azotobacters, which are nitrogen-fixing bacteria found in the soil, and contribute to the fixation of more nitrogen (for example, 3 to 4 times as much nitrogen as usual). Moreover, they play a role in converting volatile hydrocarbons, hydrogen sulfide, and similar compounds, which are injurious to the roots of crops, to substances useful for the crops, such as carbohydrates, amino acids ,and the like. Furthermore, photosynthetic bacteria not only secrete various amino acids useful for the growth of plants, but also accumulate such useful amino acids within the cells. Thus, their dead cells serve as a highly effective fertilizer (col.5, ln.42-57).
Trauger discloses bioremediation geocomposite articles for treating (digesting) contaminants in soil and controlling or preventing the further spread of contaminants in soil or water (abstract; para.0001). Trauger discloses that bioremediation is the process of using microorganisms to degrade contaminants, such as chemicals or heavy metals, to either harmless or less-toxic end products (para.0008). Trauger discloses that Sphingomonas paucimobilis is known to degrade chlorinated pesticide hexachlorocyclohexane (para.0016).
Koga discloses bacteria having a function of reducing the content of heavy metals such as cadmium in plants (abstract; para.0001, 0031). The bacteria are considered to have high versatility in terms of colonization to plants and applicability to a variety of plants (para.0032). Among the bacteria known to have a function of reducing the content of heavy metals in plants include Variovorax paradoxus (para.0034).
With regards to the elected species of the combination of the first microbial species and combination of the second microbial species, as discussed above, the combined teachings of Merritt and Rezaei are directed to agronomically stable liquid agricultural compositions comprising nitrogen-fixing microorganisms, and their use in enhancing plant growth. In light of Red’kina’s, Sarah’s, Higa’s, Trauger’s, and Koga’s disclosure that Azospirillum brasilense, Rhizophagus irregularis, Rhodopseudomonas palustris, Sphingomonas paucimobilis, and Variovorax paradoxus are each known to provide a beneficial function for plant growth, such as improving soil quality, increasing plant productivity, improving efficiency of nutrient capture, and/or reducing content of heavy metals in plants, one of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to further combine the teachings of Merritt and Rezaei with the teachings of Red’kina, Sarah, Higa, Trauger, and Koga, and further include Azospirillum brasilense, Rhizophagus irregularis, Rhodopseudomonas palustris, Sphingomonas paucimobilis, and Variovorax paradoxus into the agricultural composition of the combined teachings of Merritt and Rezaei discussed above. One of ordinary skill in the art would have been motivated to do so in order to obtain the advantage of improving plant growth through multiple mechanisms of action. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as each are known to be used in agricultural compositions with other microorganisms and applied to plants and their loci such as soil.
Furthermore, as a general principle it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06. In the present case, each of the cited prior art references are directed to agricultural compositions comprising microorganisms or agriculturally important microorganisms useful for improving plant growth, and being combined for the very same purpose.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
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 1, 2, and 4-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/559,249 (Copending 249).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims claim substantially similar and overlapping compositions comprising a mixture of at least one first microbial species (e.g., Rhizophagus irregularis) and at least one second microbial species (e.g., Azotobacter chroococcum). Both sets of claims also claim overlapping additional components in overlapping amounts.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1, 2, and 4-12 are rejected. No claims are allowed.
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/MONICA A SHIN/Primary Examiner, Art Unit 1616