DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election with traverse of Group I in the reply filed on 02/06/2026 and supplemental response filed on 03/04/2026 is acknowledged.
The traversal is on the ground(s) that the search and examination of the entire application could be made without serious burden in the response filed on 02/06/2026; and on the ground that the technical feature using a terpene is not taught by Zhang reference in the response filed on 03/04/2026. This is not found persuasive because: 1) the current invention is a PCT and search burden does not apply under PCT Rule 13.1; 2) prior art Zhang (CN107466677, 12/15/2017, IDS of 01/05/2024) teaches growing mushrooms generally using hardwood sawdust but rarely use coniferous wood chips, because pine and fir conifer contain more lipids and terpene substances while these substances inhibit or poison mycelium growth, and Chinese fir after essential oil being extracted out can be used very well for growing mushrooms. Zhang does not exclude terpenes completely for growing mushrooms, because hardwood chips and the Chinese fir after essential oil extraction are not 100% free of terpenes. Moreover, prior art Xie et al. (CN109392584, 03/01/2019, machine ta copy attached, PTO-892), explicitly teaches using terpene-containing plant extract to grow mushrooms. therefore, this special technical feature of essential oil containing terpene(s) is taught by prior art, and the invention groups I, II, III and IV lack unity.
The requirement is still deemed proper and is therefore made FINAL.
Claims 5-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Groups II, III and IV, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 02/06/2026.
Status of Claims
Amendment filed on 02/06/2026 is acknowledged.
Claims 5-12 are withdrawn for being drawn to non-elected groups II, III and IV.
Claims 1-4 are amended.
Claims 1-4 are pending and being examined herein on the merits.
Priority
The instant application 18569467, is a 371 of PCT/EP2022/066214, filed on 06/14/2022, which claims foreign priority of France FR2106414, filed on 06/17/2021.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 01/05/2024, is in compliance with the
provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the
Examiner.
Claim Objections
Claims 1-2 and 4 are objected to because of the following informalities:
Claim 1 recites “A Method” wherein the uppercase “M” should be revised to lowercase “m”.
Claim 2 recites “a Method” wherein the uppercase “M” should be revised to lowercase “m” and the article “a” should be revised to “The” because this method is referred to the method according to claim 1.
Claim 4 recites “A method” wherein “A” should be revised to “The”. Claim 4 further recites “the portobello mushroom, oyster mushrooms and the shiitake”, plural or singular status should be consistent when mentioning mushroom or mushrooms. Further, because it is the first time mentioning portobello or shiitake, the word “the” in front of them should be removed, and the word “and” is recommended to change to “or”. The phrase is suggested to revise as “in particular portobello, oyster, or shiitake mushroom”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 1-4 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.
Claim 1 recites “at least one beta-pinene, delta-3-carene or beta-phellandrene chemotyped essential oil, or one of the mixtures thereof”. It is unclear whether the phrase “at least” is defining only “one beta-pinene”, or it is defining all three alternatives including one beta-pinene, delta-3-carene, beta-phellandrene, and it is unclear whether delta-3-carene or beta-phellandrene is one or the other as an equal alternative to beta-pinene, because there is no comma “,” in front of the word “or beta-phellandrene”. If the limitation is meant to be at least one chemotyped essential oil, then the phrase should read such as “at least one chemotyped essential oil selected from beta-pinene, delta-3-carene, or beta-phellandrene, or one of the mixtures thereof”. The claim language fails to express a definite meaning.
Claim 2 recites “the essential oil is selected from …”. The list for the essential oil to be selected from constitutes plant species, not essential oil species. It is unclear how the essential oil can be selected from plants. If it is meant to be sources of the essential oil, correction is required to express such as “the essential oil is extracted from …” or “sources of the essential oil including plants selected from the group of …” to overcome the rejection.
Claim 3 recites “beta-pinene, delta-3-carene or beta-phellandrene, or one of the mixtures thereof”. It is unclear whether “delta-3-carene or beta-phellandrene” is considered as one equal alternative to beta-pinene, either delta-3-carene or beta-phellandrene, but they do not coexist as an alternative. Similar to claim 1 addressed above, if it is meant to be delta-3-carene or beta-phellandrene as equal alternatives to beta-pinene, a comma in front of the “or” in phrase “delta-3-carene or beta-phellandrene“ is required.
Claim 4 recites “from the basidiomycetes, in particular …, more particularly …”. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation “the basidiomycetes”, and the claim also recites “in particular …” and “more particularly …” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language, “in particular” and “more particularly”, is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Interpretation
Claims 1-4 and terms are interpreted as following.
Claim 1 is interpreted as:
A method for stimulating the development and growth of a mycelium or of a mushroom, comprising contacting the mycelium or the mushroom with at least one chemotyped essential oil selected from beta-pinene, delta-3-carene, or beta-phellandrene, or one of the mixtures thereof.
Claim 2 is interpreted as “a method according to claim 1, wherein the essential oil comes from plants selected from the group including …”.
Claim 3 is interpreted as:
A method for stimulating the development and growth of a mycelium or of a mushroom, comprising contacting the mycelium or the mushroom with beta-pinene, delta-3-carene, or beta-phellandrene, or one of the mixtures thereof.
Claim 4 is interpreted as:
A method according to one of claims 1 or 3, wherein the mycelium or mushroom is basidiomycetes selected from portobello mushroom Agaricus bisporus, oyster mushroom Pleurotus ostreatus, shiitake mushroom Lentinula edodes, or Pleurotus eryngii.
The phrase “for stimulating the development and growth of a mycelium or of a mushroom” is interpreted as intended use of the method, because it does not contribute to the structural steps of the method.
The phrase “chemotyped” is interpreted as the property of the compounds of essential oil.
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.
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 and 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Xie et al. (CN109392584, 03/01/2019, machine translation relied upon below; copy attached, PTO-892), in view of Sokovic et al. (European Journal of Plant Pathology; 09/14/2006, IDS of 01/05/2024).
Xie throughout the reference directs to interplanting anise with shiitake mushrooms which belongs to Lentinus edodes (e.g., Abstract; [0005]).
Regarding instant claims 1 and 3-4, Xie teaches a method for effectively improving quality of growing mushrooms, e.g., shiitake (corresponding to instant claim 4) or Ganoderma lucidum, comprising an insect repellent comprising ailanthus leaf extract is rich in terpenes and chrysanthemum leaf extract containing essential oil (e.g., [0027]) by spraying liquid fertilizer and insect repellent comprising the ailanthus leaf extract and chrysanthemum leaf extract once mushroom buds appear (thus providing direct contact to the mycelium or the mushroom) (e.g., [0036]) (corresponding to instant claims 1 and 3).
Xie does not teach the chemotyped essential oil species as recited in instant claim 1.
Sokovic throughout the reference teaches essential oils having antimicrobial activity against three major pathogens of the button mushroom, Agaricus bisporus (e.g., Abstract).
Sokovic teaches that essential oils including beta-pinene, delta-3-carene and many others have antimicrobial activity against button mushroom Agaricus bisporus pathogens, Verticillium fungicola, Trichoderma harzianum and Pseudomonas tolaasii (e.g., Abstract; Pg. 215, Table 1), and teaches that Pseudomonas tolaasii causes bacterial blotch in button mushroom, as well as shiitake and oyster mushroom (Pg. 212, left top). Sokovic teaches that solutions and emulsions used in the form of sprays with or without a carrier therefore represent the preferred form in which those compounds should be applied to large areas of casing soil surface with minimal effort. Also evaporation by heating could be considered. Further, Oregano oil seems suited to prevent bacterial growth during cultivation and after harvesting (Pg. 223, left Col., 3rd paragraph), implying the compounds being in contact with the mushrooms via spray.
It would be prima facie obvious for a person with ordinary skills in the art to combine the teaching of Xie and Sokovic to arrive at current invention. Because Xie teaches terpenes and essential oils from the plant extracts can be insect repellents for improving mushroom quality during the mushroom growth, while Sokovic demonstrates that beta-pinene or delta-3-carene, as specific terpenes, and other essential oils can help control common mushroom pathogens, it would have motivated artisans in the field to select these specific chemotyped essential oils for mushroom growth and would have provided reasonable expectation of success. MPEP 2144.06.I states, "[i]t 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.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Regarding “for stimulating the development and growth of a mycelium or of a mushroom” in instant claims 1 and 3, in light of claim interpretation, it is interpreted as intended use of the method. Because Xie and Sokovic teaches the same method comprising contacting the mycelium or mushroom with at least beta-pinene, the intended use would necessarily capable of being achieved. Further, regarding the chemotyped essential oil in instant claim 1, because beta-pinene or delta-3-carene is the same compound as recited in instant claim, the “chemotyped” is inherent property of the essential oil compound, which is already taught by prior art. MPEP 2112.01.II states "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable, as indicated in MPEP 2112.01.II. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Xie et al. (CN109392584, 03/01/2019, machine translation relied upon below; copy attached, PTO-892), in view of Sokovic et al. (European Journal of Plant Pathology; 09/14/2006, IDS of 01/05/2024), as applied to claims 1 and 3-4 above, further in view of Hajdari et al. (SpringerPlus, 2015, PTO-892).
Xie and Sokovic teaches a method for growing mushroom with improved quality comprising contacting, e.g., spraying, the mushroom or the mycelium with terpene, e.g., beta-pinene, delta-3-carene, chemotyped essential oil, as applied to claims 1 and 3-4 above in detail, and incorporated herein.
The combination of Xie and Sokovic does not teach the essential oil comes from the plants recited in instant claim 2.
Hajdari teaches that Pinus mugo Turra, a native pine species in central and southern Europe, yields beta-pinene, delta-3-carene, beta-phellandrene, and other essential oils with great details of essential oil amount information (e.g., Abstract )(corresponding to Pinus mugo in instant claim 2).
It would be prima facie obvious for a person with ordinary skills in the art prior to filing date to incorporate Hajdari’s teaching of Pinus mugo as the source of the specific chemotyped essential oils into the method taught by Xie and Sokovic to arrive at current invention. It is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (MPEP §2144.07). See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DONGXIU ZHANG SPIERING whose telephone number is (703)756-4796. The examiner can normally be reached 7:30am-5:00pm (Except for Fridays).
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/DX.Z./ Examiner, Art Unit 1616
/SUE X LIU/ Supervisory Patent Examiner, Art Unit 1616