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 .
Applicant's election without traverse of Group I, claims 74-82; and the species Paenibacillus, culture medium GB6-M3, and seed medium LB, in the reply filed on April 4, 2025 is acknowledged.
The species other than Paenibacillus in claim 74, the species other than GB6-M3 in claims 74-76; and the species other than LB in claim 77, have been withdrawn. Claims 74-77 and 79-82 are currently pending and under examination.
This application is a continuation application of U.S. Application No. 17/853570, filed June 29, 2022, which is a continuation application of U.S. Application No. 16/498937, which is a national phase application under 35 U.S.C. §371 of International Application No. PCT/US2018/024638, filed March 27, 2018, which claims priority to U.S. Provisional Application Nos. 62/477297, filed March 27, 2017, and 62/597796, filed December 12, 2017.
Claim Objections
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Here, the claims are not presented in numerical order, as claim number 78 has been omitted. Claims from 79 on should be renumbered in order starting with claim 78.
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 77 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.
With regard to claim 77, the seed medium “LB” is indefinite, because it is unclear what is included in this medium. It is indicated in the Specification (para. 16), that LB is a medium known in the art. However, it is noted that LB can have several different formulations (see Art of Record: Wikipedia). As such, it is unclear what components are intended to be included in or excluded from the LB medium as currently claimed.
Claim Rejections - 35 USC § 102/103
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.
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.
Claims 74-77 and 79-82 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious Kochi et al. (IDS; US 2007/0248583, Published 2007).
Claims 74-77 are directed to an agricultural composition comprising a bacterial isolate of Paenibacillus, which is produced by the claimed process. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Here, the composition for controlling plant diseases, which is an agricultural composition, of Kochi et al. includes a bacterial isolate of Paenibacillus, which is similarly fermented and/or cultured in a culture medium (see Abs.; Para. 50). The composition of Kochi et al. is used for the same purpose as claimed: as an agricultural composition. Thus, functionally, the agricultural composition of Kochi et al. is the same as the claimed agricultural composition. Therefore, the agricultural composition of Kochi et al. is the same as, or renders obvious, the agricultural composition made by the claimed process including fermenting and/or culturing in GB6-M3 culture/production medium, and LB seed medium.
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"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
With regard to claims 79 and 80, Kochi et al. teach that the concentration of the bacterial isolate is about 105 CFU/mL to about 109 CFU/ml (Para. 57), which is fully encompassed within at least 1.3 x 105 cfu/mL, 1.3 x 106 cfu/mL, 1.3 x 107 cfu/mL, 1.3 x 108 cfu/mL, and 1.3 x 109 cfu/mL; and encompassed with from 1 x 105 cfu/mL to 1 x 1010 cfu/mL, from 1 x 106 cfu/mL to 5 x 109 cfu/mL, from 1 x 107 cfu/mL to 1 x 109 cfu/mL, or from 5 x 107 cfu/mL to 5 x 108 cfu/mL.
With regard to claims 81 and 82, Kochi et al. teach that the agricultural composition further comprises an agriculturally acceptable carrier, a binding agent, a thickening agent, a wetting agent, or an adjuvant (Para. 52, 55).
Conclusion
No claims are allowable.
Art of Record:
Wikipedia, Lysogeny broth, Accessed 4/18/2025, Available online at: en.wikipedia.org/wiki/Lysogeny_broth (LB has several common formulations).
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/JENNIFER M.H. TICHY/Primary Examiner, Art Unit 1653