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 view of the appeal brief filed on 12/10/2025, PROSECUTION IS HEREBY REOPENED. A new ground of rejection is set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/MELENIE L GORDON/ Supervisory Patent Examiner, Art Unit 1651
Status of the Claims
Claim 1 has been canceled.
Claims 2-29 are currently pending.
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 2-26, and of species Escherichia coli and a nitrogen fertilizer, in the reply filed on 8/23/2024 and 10/1/2024 is acknowledged.
Claims 8-16, 18-19 (a nitrogen fertilizer such as urea has a burst release rate, which is the opposite of control release rate and steady release rate, and a nitrogen fertilizer is elected), 22-23 and 25-29 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions and species, there being no allowable generic or linking claims.
Claims 2-7, 17, 20-21 and 24 are being examined in this application, insofar as they read on the elected species of Escherichia coli and a nitrogen fertilizer.
Claim Rejections - 35 USC § 102
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 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 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.
Claims 2-7, 17, 20-21 and 24 are rejected under 35 U.S.C. 102(a)(1)/(2) as being anticipated by Sabbadini et al (US 2015/0218254 A1; 8/6/2015. Cited on IDS) as evidenced by Sachs et al (J. Membrane Biol. 2006;212:71-82.).
The instant claims recite a minicell composition, comprising: a minicell having encapsulated within said minicell a fertilizer.
Sabbadini teaches compositions and methods for the production and use of minicells (para 0014) comprising Escherichia coli (a prokaryotic cell, a gram-negative bacterium, para 0205) (para 0244), at least one carrier including lactose and mannose (an agriculturally acceptable carrier) (para 0968, 0970, 0977), and urea (a nitrogen fertilizer) (para 0977), wherein said compositions can be formulated as liquid, dry composition, or powder (para 0972, 0977), and said minicells can be used in agricultural studies (para 0672). Before the effective filing date of the claimed invention, it was well-known in the art that urea moves through bacterial membranes by passive diffusion, as evidenced by Sachs (p.72 col right – para 4). Since urea moves through biological membranes via passive diffusion, said minicells of Sabbadini can contain urea. Urea moves in and out of minicells, the minicells exhibit a burst release rate due to the rapid, initial discharge of urea outside of the minicells.
Therefore the reference anticipates the claimed subject matter.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 2-7, 17, 20-21 and 24 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-7, 33 and 49-56 of U.S. Patent No 11,649,265 (referred to as the ‘265 patent) in view of Sabbadini et al (US 2015/0218254 A1; 8/6/2015. Cited on IDS) as evidenced by Sachs et al (J. Membrane Biol. 2006;212:71-82.).
Claims 1-7, 33 and 49-56 of the ‘265 patent recite an anucleated cell composition comprising: an intact anucleated cell having encapsulated within said cell at least one non-expressed agricultural compound. The minicell composition further comprises at least one agriculturally acceptable carrier, wherein the minicell is derived from Escherichia coli, and the minicell exhibits a burst release rate of the agricultural compound. The minicell composition is formulated as a liquid, dry composition, powder, granule, seed coating, drench, in-furrow composition, or foliar spray.
‘265 patent does not teach the agricultural compound is a nitrogen fertilizer including urea, as recited in claims 21 and 24.
However, ‘265 patent does teach a minicell composition. Sabbadini teaches compositions and methods for the production and use of minicells (para 0014) comprising urea (a nitrogen fertilizer) (para 0977). Before the effective filing date of the claimed invention, it was well-known in the art that urea moves through bacterial membranes by passive diffusion, as evidenced by Sachs (p.72 col right – para 4). Since urea moves through biological membranes via passive diffusion, said minicells of Sabbadini can contain urea.
Thus, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to incorporate urea (a nitrogen fertilizer), since ‘265 patent and Sabbadini both disclose a minicell composition, Sabbadini and Sachs disclose the minicell composition can contain urea (a nitrogen fertilizer). Moreover, before the effective filing date of the claimed invention, one of ordinary skill in the art would have been motivated by the cited references and routine practice to incorporate urea (a nitrogen fertilizer) with a reasonable expectation for successfully obtaining a minicell composition.
Claims 2-7, 17, 20-21 and 24 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-6, 16-19 and 21 of U.S. Patent No 11,970,518 B2 (referred to as the ‘518 patent) in view of Sabbadini et al (US 2015/0218254 A1; 8/6/2015. Cited on IDS) as evidenced by Sachs et al (J. Membrane Biol. 2006;212:71-82.).
Claims 1-6, 16-19 and 21 of the ‘518 patent recite a minicell composition comprising a minicell having encapsulated within said minicell an agrochemical. The minicell composition further comprises at least one agriculturally acceptable carrier, wherein the minicell is derived from Escherichia coli, and the minicell exhibits a burst release rate of the agrochemical. The minicell composition is formulated as a liquid, dry composition, powder, granule, seed coating, drench, in-furrow composition, or foliar spray.
‘518 patent does not teach the agrochemical is a nitrogen fertilizer including urea, as recited in claims 21 and 24.
However, ‘518 patent does teach a minicell composition comprises a minicell having encapsulated within said minicell an agrochemical. Sabbadini teaches compositions and methods for the production and use of minicells (para 0014) comprising urea (a nitrogen fertilizer) (para 0977). Before the effective filing date of the claimed invention, it was well-known in the art that urea moves through bacterial membranes by passive diffusion, as evidenced by Sachs (p.72 col right – para 4). Since urea moves through biological membranes via passive diffusion, said minicells of Sabbadini can contain urea.
Thus, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to incorporate urea (a nitrogen fertilizer), since ‘518 patent and Sabbadini both disclose a minicell composition, Sabbadini and Sachs disclose the minicell composition can contain urea (a nitrogen fertilizer). Moreover, before the effective filing date of the claimed invention, one of ordinary skill in the art would have been motivated by the cited references and routine practice to incorporate urea (a nitrogen fertilizer) with a reasonable expectation for successfully obtaining a minicell composition.
Conclusion
No claims are allowed.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNN Y FAN whose telephone number is (571)270-3541. The examiner can normally be reached on M-F 7am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached on (571)272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Lynn Y Fan/
Primary Examiner, Art Unit 1759