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 .
The amendment and response filed on July 06, 20206 are received.
Claims 24 and 25 are canceled
New claims 26-29 are added.
Claims 1-10, 12-20, 22 and 26-29 are pending in this application and are being examined.
Terminal Disclaimer:
The terminal disclaimer filed on 07/06/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 12,458,029, and co-pending patent application No. 18/000,590, has been reviewed and is accepted. The terminal disclaimer has been recorded (See terminal disclaimer review decision mailed on 07/06/2026).
Answer to Arguments:
Withdrawn Rejections:
Claims 24 and 25 are canceled, therefore the rejection of claims 24 and 25 under 35 U.S.C. 101 is not reinstated.
The rejection of claims 1-4, 9 and 12-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,471,598, is withdrawn due to the amendments to the claims filed on 07/06/2026.
The rejection of claims 16-20 and 24-25 on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,458,029 in view of Jones et al. (US 2016/0302423 which is cited in IDS filed on 1/9/2026), is withdrawn due to the terminal disclaimed filed on 07/06/2026.
The rejection of claims 1-4, 9, 10 and 12-15 on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,471,598 view of Berger (U.S. 8,181,388 B2), is withdrawn due to the amendments to the claims filed on 07/06/2026.
The rejection of claims 1, 3-7 and 9-10 on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-5, 8, 10, 22 and 35-40 of copending U.S. Application No. 18/000,590, is withdrawn due to the terminal disclaimed filed on 07/06/2026.
Applicant's amendment to the claims (i.e. added new claims 26-29) necessitated the new ground(s) of rejection presented in this Office action.
Objection(s):
The amendment filed on 07/06/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
In claim 26: “26. The method of claim 1, wherein the method further comprises applying one or more additional Methylobacterium selected from the group consisting of: NLS0017 (NRRL B- 50931), NLS0020 (NRRL B-50930), NLS0042 (NRRL B-50932), NLS0064 (NRRL B-50939), NLS0089 (NRRL B-50933), NLSO109 (NRRL B-67340), NLS0648 (NRRL B-67741), and NLS0807 (NRRL B-67743).“.
In claim 27: “27. The composition of claim 12, which further comprises one or more additional Methylobacterium selected from the group consisting of: NLS0017 (NRRL B-50931), NLS0020 (NRRL B-50930), NLS0042 (NRRL B-50932), NLS0064 (NRRL B-50939), NLS0089 (NRRL B-50933), NLSO109 (NRRL B-67340), NLS0648 (NRRL B-67741), and NLS0807 (NRRL B- 67743).”.
In claim 28: “28. The plant of claim 15, which further comprises one or more additional Methylobacterium selected from the group consisting of: NLS0017 (NRRL B-50931), NLS0020 (NRRL B-50930), NLS0042 (NRRL B-50932), NLS0064 (NRRL B-50939), NLS0089 (NRRL B-50933), NLSO109 (NRRL B-67340), NLS0648 (NRRL B-67741), and NLS0807 (NRRL B- 67743).”.
In claim 29: ‘29. The method of claim 16, wherein the method further comprises applying one or more additional Methylobacterium selected from the group consisting of: NLS0017 (NRRL B- 50931), NLS0020 (NRRL B-50930), NLS0042 (NRRL B-50932), NLS0064 (NRRL B-50939), NLS0089 (NRRL B-50933), NLSO109 (NRRL B-67340), NLS0648 (NRRL B-67741), and NLS0807 (NRRL B-67743).”.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
New Matter Rejection:
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 26-29 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.
The added material which is not supported by the original disclosure is as follows:
“26. (New) The method of claim 1, wherein the method further comprises applying one or more additional Methylobacterium selected from the group consisting of: NLS0017 (NRRL B- 50931), NLS0020 (NRRL B-50930), NLS0042 (NRRL B-50932), NLS0064 (NRRL B-50939), NLS0089 (NRRL B-50933), NLSO109 (NRRL B-67340), NLS0648 (NRRL B-67741), and NLS0807 (NRRL B-67743). “.
“27. (New) The composition of claim 12, which further comprises one or more additional Methylobacterium selected from the group consisting of: NLS0017 (NRRL B-50931), NLS0020 (NRRL B-50930), NLS0042 (NRRL B-50932), NLS0064 (NRRL B-50939), NLS0089 (NRRL B-50933), NLSO109 (NRRL B-67340), NLS0648 (NRRL B-67741), and NLS0807 (NRRL B- 67743).”.
“28. (New) The plant of claim 15, which further comprises one or more additional Methylobacterium selected from the group consisting of: NLS0017 (NRRL B-50931), NLS0020 (NRRL B-50930), NLS0042 (NRRL B-50932), NLS0064 (NRRL B-50939), NLS0089 (NRRL B-50933), NLSO109 (NRRL B-67340), NLS0648 (NRRL B-67741), and NLS0807 (NRRL B- 67743). “.
“29. (New) The method of claim 16, wherein the method further comprises applying one or more additional Methylobacterium selected from the group consisting of: NLS0017 (NRRL B- 50931), NLS0020 (NRRL B-50930), NLS0042 (NRRL B-50932), NLS0064 (NRRL B-50939), NLS0089 (NRRL B-50933), NLSO109 (NRRL B-67340), NLS0648 (NRRL B-67741), and NLS0807 (NRRL B-67743).”.
Because, the specification (e.g. Table 1) while provides support for LGP2002 (NRRL B- 50931), LGP2001 (NRRL B-50930), LGP2003 (NRRL B-50932), LGP2010 (NRRL B-50939, LGP2004 (NRRL B-50933), LGP2015 (NRRL B-67340), LGP2016 (NRRL B-67741), and LGP2019 (NRRL B-67743), it does not provide support for “NLS0017 (NRRL B- 50931), NLS0020 (NRRL B-50930), NLS0042 (NRRL B-50932), NLS0064 (NRRL B-50939), NLS0089 (NRRL B-50933), NLSO109 (NRRL B-67340), NLS0648 (NRRL B-67741), and NLS0807 (NRRL B-67743)”, as recited in added new claims 26-29.
Applicant should specifically point out the support for any amendments made to the disclosure. See MPEP § 2163.06.
Conclusion(s):
Claims 1-10, 12-20 and 22-are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/KADE ARIANI/Primary Examiner, Art Unit 1651
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