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/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-11, drawn to a method of producing a plant biostimulant, comprising: adding at least one stalk, stem, or seed of Spartina alterniflora to a growth media to form a fermentation medium, adding at least one cell of Lactobacillaceae to the fermentation medium to form a mixture for fermentation, fermenting the Lactobacillaceae in the mixture for fermentation to produce a fermentation product; and applying a filtration method to the fermentation product to extract a plant biostimulant from the fermentation product., classified in CPC C12P 21/00.
II. Claims 12-14, drawn to a method of increasing an overall plant mass by improving nutrient uptake, comprising: applying a plant biostimulant to a plant, wherein the plant biostimulant comprises an extract obtained from a fermentation product of a gram-positive bacteria from the family of Lactobacillaceae and a growth media comprising Spartina alterniflora., classified in CPC A01P 21/00.
III. Claims 15-17, drawn to a plant biostimulant, comprising: an extract obtained from a fermentation product of a gram-positive bacteria from the family of Lactobacillaceae and a growth media comprising Spartina alterniflora, classified in CPC A01N 63/22.
The inventions are independent or distinct, each from the other because:
Inventions I and III are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the process as claimed can be used to make another and materially different product, such as a fermentation product with different bacteria species; and the product as claimed can be made by another and materially different process, such as extracting the Lactobacillaceae bacteria species, fermenting the Spartina alterniflora bacteria and combining.
Inventions II and III are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, the process for using the product as claimed can be practiced with another materially different product such as a different bacteria species; and the product as claimed can be used in a materially different process of using that product such as for improving plant-disease resistance.
Inventions I and II are unrelated. Inventions are unrelated if it can be shown that they are not disclosed as capable of use together and they have different designs, modes of operation, and effects (MPEP § 802.01 and § 806.06). In the instant case, the different inventions have different modes of operation.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries); and
(d) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Lingyan Wang on 1/27/26 a provisional election was made without traverse to prosecute the invention of I, claims 1-11. Affirmation of this election must be made by applicant in replying to this Office action. Claims 12-17 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Specification
The disclosure is objected to because of the following informalities: on p. 7 of the instant specification, an illegible chemical formula and structure of Formula I is presented; the Examiner suggests replacing this portion with a more legible version.
Appropriate correction is required.
Claim Objections
Claims 10-11 are objected to because of the following informalities:
Claim 10 recites “The method of claim 1, where the Lactobacillaceae…”. The Examiner suggests amending “where” to “wherein” to be consistent with the claim language throughout the claim set.
Claim 11 is objected to because a portion of the claim is illegible (blurry) – see chemical formula and structure of Formula 1. The Examiner suggests replacing with a more legible version.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
Claim 11 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 11 recites the limitation "the lipopeptides" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 11 depends from claim 1, but this claim does not contain a “lipopeptides” limitation. Therefore, it is unclear what this limitation refers to and how to interpret the claim. The Examiner suggests amending the dependency of claim 11 to depend from claim 2 in order to obviate the instant rejection.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Jenkins (US 2014/0162877; published: 6/12/14), in view of Sun et al. (CN 106748094; published: 5/31/17) and Li (CN 107488220; published: 12/19/17) and as evidenced by Fisher Scientific, BD DIfcoTM Lactobacilli MRS Broth; obtained online on 6/3/26).
The English language machine translation of CN 106748094 and CN 107488220 are attached herein. The passages cited below which indicate the teachings of the ‘094 and ‘220 publications are based on its English translations (Google patents).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Jenkins is directed to bio-stimulant for improved plant growth and development [Title].
With regards to instant claims 1 and 10, Jenkins teaches a bio-stimulant composition for obtaining improved plant growth, either combined or uncombined with urea and/or other agricultural compounds, as well as methods of producing and using said composition [Abstract]. Jenkins teaches a fermentation broth formulated for foliar application, wherein the broth comprises a mixture of cellular components from Lactobaccillus strains which have been grown in a broth to a range of about 106 to about 1010 cfu/mL and then lysed in the broth [see claims 26-27]. Jenkins teaches wherein the fermentation broth comprises: DiffcoTM Lactobacilli MRS broth, urea, carrot juice and molasses powder from sugar case [See Table 1]. The fermentation broth was run for 12 days at 35 °C, by which state there were at least 108 cfu/ml of the dominant species Lactobacillus plantarum [0035].
With regards to instant claim 3, Jenkins teaches including DiffcoTM Lactobacilli MRS broth in the fermentation broth [See Table 1] and as evidenced by Fisher Scientific, DiffcoTM Lactobacilli MRS broth contains peptone, dextrose, ammonium citrate, sodium acetate, magnesium sulfate, manganese sulfate and dipotassium phosphate [See Specifications section].
With regards to instant claims 2 and 11, since the method taught by Jenkins comprises the same fermented bacteria which is produced in the same concentration, the product of the method taught by Jenkins must necessarily contain the same claimed lipopeptides. It is noted that the instant specification states: “These lipopeptides may be produced naturally as a product of fermentation such as in the way described above, or synthetically derived using a synthesis method and the addition of any alkyl modification step known in the art to produce synthetic analogues of the naturally occurring lipopeptides.”
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Jenkins does not teach further incorporating at least one stalk, stem or seed of Spartina alternifora into the growth media that forms the fermentation mixture, as required by instant claim 1. However, this deficiency is cured by Sun.
Sun is directed to biological fertilizer additive [Title]. Sun teaches a biological fertilizer additive comprising microbial fermentation solution and Spartina alterniflora’s extract solution [Abstract]. Sun teaches that such promotes plant growth, improves plant-disease resistance, increases supply of plant nutrients, stimulates crop growth, suppresses harmful microbe activity [Abstract]. It is noted that the Spartina alterniflora’s extract solution is prepared by crushing Spartina alterniflora in 30-60 mesh sieves, adding supercritical CO2 and 30-100% ethanol, adjust pressure to 15-35 MPa and temperature to 40-80 °C and extract over the course of 30-150 min [p. 2]. And the additive is formed by combining the fermented zymotic fluids and the Spartina alterniflora’s extract solution in a weight ratio of 2:1 [Embodiment 1].
Jenkins and Sun do not specifically teach a filtration step after fermentation, as required by instant claim 1. However, filtration was a known purification step and routinely used in the prior art (see Li, see claims and method step (2) in Description).
Jenkins and Sun do not teach the exact temperature (15-25, about 20 °C), time period of fermentation (12-18 hours) and pH (4.0-6.7) range, as required by instant claims 4-7. Jenkins and Sun do not teach the exact concentration of Spartina alterniflora and Lactobacillaceae in the fermentation mixture, as required by instant claims 8-9.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Jenkins and Sun are both directed to plant growth compositions and methods of making them. Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, before the invention was effectively filed, to modify the method of Jenkins by further incorporating Spartina alterniflora to the fermentation medium of Jenkins (Sun teaches similar temperature conditions) to achieve the predictable result of obtaining a composition suitable for plant growth. One of ordinary skill in the art would have been motivated to do so because Sun teaches that it is advantageous for promoting plant growth, improving plant-disease resistance, increasing supply of plant nutrients, stimulating crop growth and suppressing harmful microbe activity [Abstract].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of Jenkins by further incorporating the step of filtering after the fermentation process to achieve the predictable result of obtaining a more purified fermented product.
Regarding the fermentation temperature as specified in claims 4-5 and 8-9, MPEP 2144.05 states:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, Jenkins teaches that microorganisms can be killed and lysed by various means, for example, by freezing or heating [0024]. The Applicants' specification provides no evidence that the selected temperature range in claims 4-5 was not due to routine optimization and/or that the results should be considered unexpected compared to the prior art. Due to numerous physical/chemical/biological properties of various chemicals (e.g., temperature that could affect the killing and/or lysing of the selected microorganism), it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine these teachings and alter the temperature. One of ordinary skill in the art would have been motivated to change the temperature as this could be expected to be advantageous for eliminating killing and/or lysing of bacteria prior to the fermentation process.
The bacteria (Spartina alterniflora and Lactobacillaceae) concentration in the fermentation broth/mixture and the fermentation pH and time period are clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal concentration and reaction conditions (e.g., pH and time) in order to best achieve the desired results as such would provide advantageous fermentation yield/product. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, with regards to the pH, Jenkins teaches that microorganisms can be killed or lysed by various means, for example, by low pH treatment and/or high pH treatment [0024], suggesting that the pH range is important if you do not want to kill and/or lyse the selected bacteria. With regards to the concentration of Lactobacillaceae, Jenkins teaches that the composition can be used to stimulate plant growth and the plant immune system; it can be used to overcome periods of plant stress; the bio-stimulant composition described herein can be used to assist the plant to achieve more efficient nutrient utilization [0028]. Jenkins teaches that the bacteria useful for the embodiments described herein include Lactobacillus plantarum [0020]. With regards to the concentration of Spartina alterniflora, Sun teaches that the present invention provides a kind of new biological fertilizer additive that is pollution-free and has good disease resisting effect for the plant and in order to achieve those goals, a biological fertilizer additive should comprise Spartina alterniflora. The Examiner considers it prima facie obvious to optimize the amounts of any biologically active agent to achieve their known biological effect, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the bacteria (Spartina alterniflora and Lactobacillaceae) concentration in the fermentation broth/mixture and the fermentation pH and time period would impact the efficacy in the fermentation treatment of bacteria and therefore be an optimizable variable.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Conclusion
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/GENEVIEVE S ALLEY/ Primary Examiner, Art Unit 1617
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