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 of Group I, claims 1, 2, 4, 6, 8-10, 12, 46-48 and 67, in the reply filed on 29 June 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
The Examiner notes that claim 68 was not addressed in the Restriction requirement. It appears that claims 68 and claim 71 which depends therefrom should be in Group I.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Specification
The disclosure is objected to because of the following informalities: At paragraph [0001], “priority of” should read -- benefit of -- when claiming priority to a provisional application.
Appropriate correction is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, 2, 4, 6, 8, 9, 10, 12, 67, 68 and 71 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 2, 4, 6, 8, 9, 10, 12, 67, 68 and 71 of copending Application No. 19/469,859. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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 8 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 8 is dependent upon a cancelled claim. Hence, the metes and bounds of the claim are unclear.
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, 2, 4, 6, 8, 9, 10, 12, 67, 68 and 71 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant has elected species SEQ ID NO: 127 (protease), SEQ ID NO: 182 (chitinase) and SEQ ID NO: 251 (lipase). The Examiner has searched the elected species in addition to SEQ ID Nos. 83-90 (esterase). The Examiner notes that some lipases are also esterases, hence the functions may overlap.
Applicant claims a composition comprising at least one of an esterase, a chitinase, a protease, a lipase and combinations of any thereof. Instant claim 1 is directed to a composition comprising any esterase, or a chitinase at least 85% identical to SEQ ID NO: 182, a protease at least 85% identical to SEQ ID NO: 127 and or a lipase at least 85% identical to SEQ ID NO: 251. Instant claim 2 is directed to the composition comprising an esterase at least 85% identical to SEQ ID Nos. 83-90 (searched sequences). In both cases the composition “exhibits insecticidal, nematocidal or pesticidal activity” or “the pest or pathogen is defined as an insect, a mollusk, an arachnid or a nematode”. Applicant claims methods of using said composition(s).
Applicant does not describe the genus of an esterase, a chitinase, a protease, a lipase and combinations of any thereof that “exhibits insecticidal, nematocidal or pesticidal activity”. Applicant does not describe any structure/function relationship that describes the claimed function of the claimed composition. The prior art does describe the structural variation of chitinases 85% identical to instant SEQ ID NO: 182, but it is unclear if the species all “exhibits insecticidal, nematocidal or pesticidal activity”. There is a single species of esterases in the genus of 85% identical to instant SEQ ID NO: 90, and only 100-88.7% identity to instant SEQ ID NO: 83. The prior art teaches the variation within the genus of proteases 100-93.7% identical to instant SEQ ID NO: 127, but it is unclear if the species all “exhibits insecticidal, nematocidal or pesticidal activity”. The prior art teaches the variation within the genus of lipases 100-88.7% identical to instant SEQ ID NO: 251, but it is unclear if the species all “exhibits insecticidal, nematocidal or pesticidal activity”. Applicant does not describe how to determine “synergistically effective amounts” to at least two enzymes at instant claim 48.
Hence it is unclear that Applicant was in possession of the invention as broadly claimed.
While a description of a representative number of species is adequate to represent an entire genus, wherein there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus (see MPEP 2163).
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, 4, 9 and 67 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thompson et al (WO 2017/161091).
Thompson et al disclose a composition comprising a phospholipase, in addition to a lipase, or protease at claim 41. Thompson et al disclose that the phospholipase includes esterases at paragraph [00219] on page 41. Thompson et al disclose that the composition can further comprise an agriculturally acceptable carrier, an additional agrochemical or a combination thereof at claim 47. Thompson et al disclose a plant seed treated with a free enzyme selected from a phospholipase, a lipase, a protease at claim 69, and a plant seed treated with two or more free enzymes at claim 71. Thompson et al disclose a method for stimulating plant growth and/or promoting plant health comprising applying a free enzyme to a plant growth medium, a plant, a plant seed or an area surrounding a plant or a plant seed at claim 1. Hence, Thompson et al had previously disclosed the claimed invention.
Claim(s) 1, 4, 9 and 67 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Xu et al (US 2023/0039941).
Xu et al disclose a method of protecting plant or plant propagation material from attack or infestation by insects, fungi, arachnids or nematodes by application of at least one enzyme selected from esterase, protease, chitinase and lipase directly and/or indirectly to the plant and/or to plant propagation material by drenching the soil or treatment of plant propagation material at claim 1. Said plant propagation material is seeds at claim 3. Hence, Xu et al had previously disclosed the claimed invention.
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.
Claim(s) 1, 2, 4, 6, 8, 9, 10, 12, 67, 68 and 71 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thompson et al (WO 2017/161091) or Xu et al (US 2023/0039941) in view of Hamill et al (US 10,463,711) and Yamamoto et al (1996 Gene 181:147-151).
Thompson et al teach a composition comprising a phospholipase, in addition to a lipase, or protease at claim 41. Thompson et al disclose that the phospholipase includes esterases at paragraph [00219] on page 41. Thompson et al teach that the composition can further comprise an agriculturally acceptable carrier, an additional agrochemical or a combination thereof at claim 47. Thompson et al teach a plant seed treated with a free enzyme selected from a phospholipase, a lipase, a protease at claims 19 and 69, and a plant seed treated with two or more free enzymes at claim 71. Thompson et al teach a method for stimulating plant growth and/or promoting plant health comprising applying a free enzyme to a plant growth medium, a plant, a plant seed or an area surrounding a plant or a plant seed at claim 1.
Xu et al teach a method of protecting plant or plant propagation material from attack or infestation by insects, fungi, arachnids or nematodes by application of at least one enzyme selected from esterase, protease, chitinase and lipase directly and/or indirectly to the plant and/or to plant propagation material by drenching the soil or treatment of plant propagation material at claim 1. Said plant propagation material is seeds at claim 3. Xu et al teach that the active compound can be the nematicide fluopyram at paragraph [0062], line 5. Xu et al teach that the composition can be used to control Aphelenchoides nematodes at paragraph [0189] on page 13. Xu et al teach that the composition can be soluble concentrates, emulsions, suspensions, water-dispersible granules, gel-formulations and dustable powders on page 16, paragraphs [0220]-[0227].
Neither Thompson et al or Xu et al teach a chitinase at least 85% identical to instant SEQ ID NO: 182, a protease at least 85% identical to instant SEQ ID NO: 127, or an esterase at least 85% identical to instant SEQ ID NO: 88, for example.
Hamill et al teach a protease that is 99.7% identical to instant SEQ ID NO: 127 at SEQ ID NO: 5,024. Hamill et al teach a chitinase that is 100% identical to instant SEQ ID NO: 182 at SEQ ID NO: 43,656.
Yamamoto et al teach an esterase that is 100% identical to instant SEQ ID NO: 88 at LipB (Table 2 on page 149).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant claims to modify the teachings of either Thompson et al or Xu et al to use an esterase, chitinase, protease or lipase known in the art such as the protease and chitinase taught by Hamill et al and/or the esterase taught by Yamamoto et al. Given the teachings of the prior art, and the general level of skill in the instant art before the effective filing date of the instant claims, one of ordinary skill in the art would have had a reasonable expectation of success. See Example 2 on pages 25-26 of Thompson et al. It is clear from the claims of both Thompson et al and Xu et al that it would have been obvious to use routine experimentation to test a known esterase, chitinase, protease or lipase in the practice of the claimed invention.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID H KRUSE whose telephone number is (571) 272-0799. The examiner can normally be reached Monday-Friday 7AM-3:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amjad Abraham can be reached on (571) 270-7058. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/David H Kruse/
Primary Examiner, Art Unit 1663
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