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 .
This Office Action is in response to the paper filed 29 October 2025. Claims 57-66 and 68-72 have been amended. Claim 73 is newly added. The non-elected species in claims 61 and 62, and claim 63, remain withdrawn. Claims 57-62 and 64-73 are currently pending and under examination.
This Application is a continuation of U.S. Patent Application No. 17/686783, now issued Patent No. 11,930,822, filed March 4, 2022, which is a continuation of U.S. Patent Application No. 16/467384, now issued Patent No. 11,284,622, filed June 6, 2019, which is the 371 National Phase of International Patent Application PCT/US2017/065081, filed December 7, 2017, which claims benefit of priority to U.S. Provisional Patent Application No. 62/431927, filed December 9, 2016.
Withdrawal of Rejections:
The rejection of claims 57-62 and 64-72 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite, is withdrawn.
The rejection of Claims 57-62 and 64-73 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural product without significantly more, is withdrawn.
New Rejections Necessitated by Amendment:
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.
Claims 58-64 and 73 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 73 recites that the composition further comprises “one or more biological, biopesticidal, or additional beneficial microorganism.” This claim is indefinite, because it is unclear what a “biological” microorganism is, and how it is intended to differ from an “additional beneficial microorganism.”
Claims 58-64 are included in this rejection, as these claims depend from above rejected claim 73, and fail to remedy the noted deficiencies.
Maintenance/Modification of Rejections Necessitated by Amendment:
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 57-62 and 64-73 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Didonato-Tinsley et al. (IDS; WO 2015/085063; Published June 11, 2015).
With regard to claims 57 and 68, Didonato-Tinsley et al. teach a composition for application to a plant or plant part, including to a seed, the composition comprising a Methylobacterium strain (Abs.; Para. 56, 70), the Methylobacterium strain present at a concentration of at least about 5x108, 1x109, 3x1010, or 6x1010 CFU per milliliter (Para. 74), which are fully encompassed within at least 5x107 CFU per milliliter. The Methylobacterium strain present in the composition includes Methylobacterium NLS0109, wherein the composition further includes water as a carrier (Ex. 7, Table 6; Para. 119). As evidenced by Applicant’s specification, Methylobacterium NLS0109 includes the sequence encompassed by SEQ ID NO: 9 (see Specification, Para. 8). As such, Didonato-Tinsley et al. teach Methylobacterium NLS0109, and/or a derivative of Methylobacterium NLS0109 which has a sequence of SEQ ID NO: 9.
Didonato-Tinsley et al. teach the composition as claimed, including all components as claimed. As the composition cannot be separated from its function, application of the composition of Didonato-Tinsley et al. to a plant or plant part would necessarily provide the result of increasing plant yield.
With regard to claim 73, Didonato-Tinsley et al. teach that the composition can further comprise a beneficial or biopesticidal microorganism other than the Methylobacterium strain (Para. 49).
With regard to claim 58, Didonato-Tinsley et al. teach that the composition can further comprise a beneficial or biopesticidal microorganism including a bacterium, fungus, virus, or protozoan (Para. 49).
With regard to claim 59, Didonato-Tinsley et al. teach that the composition can further comprise a beneficial or biopesticidal microorganism including Bacillus sp., Pseudomonas sp., Coniothyrium sp., Pantoea sp., Streptomyces sp., and Trichoderma sp. (Para. 49).
With regard to claim 60, Didonato-Tinsley et al. teach that the composition can further comprise a beneficial or biopesticidal microorganism including Bacillus subtilis, Bacillus thuringiensis, Bacillus pumilis, Pseudomonas syringae, Trichoderma harzianum, Trichoderma virens, and Streptomyces lydicus strains (Para. 49).
With regard to claims 61 and 62, Didonato-Tinsley et al. teach that the composition can further comprise a beneficial or biopesticidal microorganism including a second Methylobacterium strain, including Methylobacterium NLS0017 (Para. 74). As evidenced by Applicant’s specification, Methylobacterium NLS0017 includes the sequence encompassed by SEQ ID NO: 21 (see Specification, Para. 8). As such, Didonato-Tinsley et al. teach Methylobacterium NLS0017 and/or a derivative or relation of Methylobacterium NLS0017 which has a sequence of SEQ ID NO: 21.
With regard to claim 64, Didonato-Tinsley et al. teach that the composition can further comprise a microbial biopesticide, which includes a fungicide (Para. 49, 65).
With regard to claims 65-67, Didonato-Tinsley et al. teach that the composition further comprises one or more agriculturally acceptable carriers, adjuvants, and/or excipients, including:
woodflours, clays, activated carbon, diatomaceous earth, fine-grain inorganic solids, calcium carbonate, calcium bentonite, kaolin, china clay, talc, perlite, mica, vermiculite, silicas, quartz powder, montmorillonite and mixtures thereof; and
polyvinyl acetates, polyvinyl acetate copolymers, hydrolyzed polyvinyl acetates,
polyvinylpyrrolidone-vinyl acetate copolymer, polyvinyl alcohols, polyvinyl alcohol
copolymers, polyvinyl methyl ether, polyvinyl methyl ether-maleic anhydride copolymer,
waxes, latex polymers, celluloses including ethylcelluloses and methylcelluloses, hydroxy
methylcelluloses, hydroxypropylcellulose, hydroxymethylpropylcelluloses, polyvinyl
pyrrolidones, alginates, dextrins, malto-dextrins, polysaccharides, fats, oils, proteins, karaya
gum, jaguar gum, tragacanth gum, polysaccharide gums, mucilage, gum arabics, shellacs,
vinylidene chloride polymers and copolymers, soybean-based protein polymers and
copolymers, lignosulfonates, acrylic copolymers, starches, polyvinylacrylates, zeins, gelatin,
carboxymethylcellulose, chitosan, polyethylene oxide, acrylamide polymers and copolymers,
polyhydroxyethyl acrylate, methylacrylamide monomers, alginate, ethylcellulose,
polychloroprene and syrups or mixtures thereof (Para. 16, 42, 69).
With regard to claims 69-72, Didonato-Tinsley et al. teach that the composition is applied to plant parts including a seed, a leaf, a fruit, a stem, a root, a tuber, and a coleoptile, and to plant parts of lettuce (Para. 45, 58, 67). It is noted that the composition as taught by Didonato-Tinsley et al. includes all components as claimed. As the composition of Didonato-Tinsley et al. cannot be separated from its functions, the composition would necessarily be capable of coating plant parts to provide a coated plant part including:
corn, a Brassica sp., alfalfa, rice, rye, sorghum, millet, sunflower, safflower, soybean, tobacco, potato, peanuts, cotton, sweet potato, cassava, coffee, coconut, pineapple, citrus trees, cocoa, tea, banana, avocado, fig, guava, mango, olive, papaya, cashew, macadamia, almond, sugar beets, sugarcane, oats, barley, tomatoes, green beans, lima beans, peas, cucurbits, ornamentals, and conifers;
rice, wheat, corn, barley, millet, sorghum, oat, and rye;
a turfgrass plant including annual bluegrass, annual ryegrass, Canada bluegrass, fescue, bentgrass, wheatgrass, Kentucky bluegrass, orchard grass, ryegrass, redtop, Bermuda grass, St. Augustine grass, and zoysia grass; and
a cucurbit plant including cucumber, cantaloupe, and musk melon.
Response to Arguments
With regard to Didonato-Tinsley et al., Applicant urges that this reference does not appear to teach NLS109 as increasing yield in any plant.
Applicant’s arguments have been fully considered, but have not been found persuasive.
As noted in the above rejection, Didonato-Tinsley et al. teach the composition as claimed, including all components as claimed. As the composition cannot be separated from its function, application of the composition of Didonato-Tinsley et al. to a plant or plant part would necessarily provide the result of increasing plant yield.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 57, 58, 61, 62, and 64-73 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,284,622. Although the claims at issue are not identical, they are not patentably distinct from each other because both encompass a composition for treating a plant or plant part to increase plant yield, including a seed, by applying a composition comprising Methylobacterium NLS0109, or a derivative of Methylobacterium NLS0109 having SEQ ID NO: 9; another beneficial microorganism including a second Methylobacterium strain including NLS0017 (NRRL B-50931), or a Methylobacterium strain derived therefrom having the sequence of SEQ ID NO: 21; the composition further comprising an agriculturally acceptable carrier, excipient, and/or adjuvant as recited in the claims, and the Methylobacterium NLS0109 present in the composition at a concentration of at least 5x107 CFU per gram or 5 x 107 CFU per milliliter; the composition capable of treating a plant including: corn, a Brassica sp., alfalfa, rice, rye, sorghum, millet, sunflower, safflower, soybean, tobacco, potato, peanuts, cotton, sweet potato, cassava, coffee, coconut, pineapple, citrus trees, cocoa, tea, banana, avocado, fig, guava, mango, olive, papaya, cashew, macadamia, almond, sugar beets, sugarcane, oats, barley, tomatoes, lettuce, green beans, lima beans, peas, cucurbits, ornamentals, and conifers; rice, wheat, corn, barley, millet, sorghum, oat, and rye; and a turfgrass plant including annual bluegrass, annual ryegrass, Canada bluegrass, fescue, bentgrass, wheatgrass, Kentucky bluegrass, orchard grass, ryegrass, redtop, Bermuda grass, St. Augustine grass, and zoysia grass; and a cucurbit plant including cucumber, cantaloupe, and musk melon (Present claim: 57, 58, 61, 62, and 64-73; Cited Patent claim: 1-20).
Claims 57, 58, 61, 62, and 64-73 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,930,822. Although the claims at issue are not identical, they are not patentably distinct from each other because both encompass a composition for treating a plant or plant part to increase plant yield, including a seed, by applying a composition comprising Methylobacterium NLS0109, or a derivative of Methylobacterium NLS0109 having SEQ ID NO: 9; another beneficial microorganism including
Bacillus sp., Pseudomonas sp., Coniothyrium sp., Pantoea sp., Streptomyces sp., and Trichoderma sp., including Bacillus subtilis, Bacillus thuringiensis, Bacillus pumilis, Pseudomonas syringae, Trichoderma harzianum, Trichoderma virens, and Streptomyces lydicus strains; a second Methylobacterium strain NLS0017 (NRRL B-50931) or a Methylobacterium strain derived therefrom having the sequence of SEQ ID NO: 21; the composition further comprising an agriculturally acceptable carrier, excipient, and/or adjuvant as recited in the claims; the Methylobacterium NLS0109 present in the composition at a concentration of at least 5x107 CFU per gram or 5 x 107 CFU per milliliter; the composition capable of treating a plant including: corn, a Brassica sp., alfalfa, rice, rye, sorghum, millet, sunflower, safflower, soybean, tobacco, potato, peanuts, cotton, sweet potato, cassava, coffee, coconut, pineapple, citrus trees, cocoa, tea, banana, avocado, fig, guava, mango, olive, papaya, cashew, macadamia, almond, sugar beets, sugarcane, oats, barley, tomatoes, lettuce, green beans, lima beans, peas, cucurbits, ornamentals, and conifers; rice, wheat, corn, barley, millet, sorghum, oat, and rye; and a turfgrass plant including annual bluegrass, annual ryegrass, Canada bluegrass, fescue, bentgrass, wheatgrass, Kentucky bluegrass, orchard grass, ryegrass, redtop, Bermuda grass, St. Augustine grass, and zoysia grass; and a cucurbit plant including cucumber, cantaloupe, and musk melon. (Present claim: 57, 58, 61, 62, and 64-73; Cited Patent claim: 1-15).
Response to Arguments
Applicant indicates that a terminal disclaimer may be filed after a finding of allowable claims.
The non-statutory double patenting rejections are maintained.
Conclusion
No claims are allowable.
Previously Presented Art or Record:
Bogosian, IDS, US 2013/0324407; Published 2013 (composition for treating a plant or plant part with a composition comprising a Methylobacterium strain and an additional beneficial microorganism).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER M.H. TICHY whose telephone number is (571)272-3274. The examiner can normally be reached Monday-Thursday, 9:00am-7:00pm ET.
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/JENNIFER M.H. TICHY/Primary Examiner, Art Unit 1653