*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 .
Applicant’s response dated June 22, 2026 is acknowledged.
Priority
This application is a 371 of PCT/JP2022/043068 filed on November 21, 2022, and claims foreign priority in Japanese application JP2021-190595 filed on November 24, 2021.
Claim Status
Claims 1-12 are pending. Claims 3, 4, and 6-10 are withdrawn. Claims 1, 2, 5, 11, and 12 are examined.
Election/Restriction
Applicant’s election of Group I (Claims 1, 2, 5, 11, and 12), drawn to a culture soil for plants in the reply filed on June 22, 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 requirement is still deemed proper and is therefore made FINAL.
Accordingly, claims 3, 4, and 6-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being withdrawn to a non-elected invention, and non-elected species of the invention, there being no allowable generic or linking claims.
Response to the restriction requirement of April 22, 2026 was timely filed.
Claims 1, 2, 5, 11, and 12 are examined on the merits.
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 1, 2, 5, 11, and 12 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.
The term “strongly acidic” in claim 1 is a relative term which renders the claim indefinite. The term “strongly acidic” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “weakly acidic” in claim 1 is a relative term which renders the claim indefinite. The term “weakly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 5 recites the limitation "the plant" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation "the strong acidity" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation "the weak acidity" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claims 2 and 11 are indefinite because they depend from an indefinite base claim and do not resolve the indefiniteness issues present in claim 1.
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 1, 5, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Prenafeta-Boldu (Biodegradation 15: 59-65, 2004).
The claims encompass a culture soil for plants, comprising a fungus of genus Cladophialophora, and any one kind of soil of strongly acidic to weakly acidic organic cultivation soil, or strongly acidic conventional cultivation soil, excluding organic cultivation soil having a pH of 6.0 or more.
The teachings of Prenafeta-Boldu are related to the effects of soil inoculation with the toluene-growing fungus Cladophialophora sp. strain T1. At neutral conditions the presence of the fungus had little effect on the intrinsic soil biodegradation capacity. At an acidic pH, the activity of the indigenous degrades was inhibited and the presence of Cladophialophora sp. increased significantly the biodegradation rates of toluene and ethylbenzene (Abstract). The soil for the experiments was collected from the Agricultural Test Station Kelekamp, air dried and stored in the dark at 4°C prior to use (top of right column on page 60). The physicochemical properties of the soil are shown in Table 1, it is described as sandy soil containing sand, silt, and clay (top of page 61). Table 2 describes degradation rates for three types of soil, each at two different pH values. One soil sample contains the fungus Cladophialophora sp. strain T1 and the native microflora at a pH of 3.7 and another soil sample contains the fungus Cladophialophora sp. strain T1 only, at a pH of 3.2.
Instant claim 1 is anticipated by the two samples because each sample contains a soil comprised of sand, silt, and clay, and each sample contains Cladophialophora sp. where the pH of both samples falls in the “strongly acidic” range, as evidenced by instant claim 12. The soil comprising sand, silt, and clay reads on conventional cultivation soil.
Instant claim 5 is anticipated because the soil in the prior art could have been used for a fruit plant or a vegetable plant, absent evidence to the contrary.
Claim 12 is anticipated because “strong acidity” range encompasses both pH values 3.2 and 3.7.
Double Patenting Rejections
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 5, 11, and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-9, 11, 13-16 of copending Application No. 19/128,575 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending claims are drawn to a culture soil for a plant comprising Cladophialophora chaetospira SK 51 where the soil has a pH from 4 to less than 6.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
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/ALMA PIPIC/Primary Examiner, Art Unit 1617
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