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 .
DETAILED ACTION
Claims 66-82, 85, 86, 88-93 and 105-127 are under consideration.
Election/Restrictions
Applicant’s election without traverse of Group IV, claims 66-93 and 104, drawn to a biofertilizer composition comprising a nitrogen-fixing micro-organism having an accumulation of a MISC of greater than about 10% in the reply filed on July 7, 2026 is acknowledged.
Applicant’s election without traverse of the species Xanthobacter autotrophicus and polyhydroxybutyrate reading on claims 66-86, 88-93 and 104-127 is acknowledged.
Upon amendment by Applicant, claims 66-102 and 104-127 are pending.
Claims 68, 70, 80, 81, 83-85, 88, 91, 94 and 98 are currently amended.
Claims 105-127 are new. Claims 105-127 are grouped with Group IV.
Claims 83, 84, 87, 94-102 and 104 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claims 66-82, 85, 86, 88-93 and 105-127 as filed on July 7, 2026 are pending and under consideration to the extent of the elected species, e.g., the nitrogen-fixing microorganism is Xanthobacter autotrophicus and the MISC is polyhydroxybutyrate.
In the process of searching, the Examiner found art on the broader recitation of the claims. Said art has been applied in the interest of compact prosecution.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on September 19, 2024 was considered.
Claim Objections
Claims 66, 68, 80, 113, 114, 125 and 126 are objected to because of the following informalities:
Claim 66: acronyms should be written out at the first recitation thereof, e.g., “MISC” should presumably recite “microbial intracellular storage compound (MISC)” as disclosed in paragraph [0005].
Claim 66: a basis for the determination of a percentage should be provided at the first recitation thereof, e.g., by weight intracellular storage compounds over total cell weight as disclosed in paragraph [0101] or some variation thereof.
Claim 68: acronyms should be written out at the first recitation thereof, e.g., “PHA” should presumably recite “polyhydroxyalkanoate (PHA)” and “PolyP” should presumably recite “polyphosphate (PolyP)” as disclosed in paragraph [0005].
Claim 80: acronyms should be written out at the first recitation thereof, e.g., “OD600” should presumably recite “optical density (OD600)” as disclosed in paragraph [0006].
Claims 113, 114, 125, 126: “ranging” should presumably be deleted.
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.
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 89, 109, 115, 121 and 127 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 pre-AIA the applicant regards as the invention.
Claims 89, 109 and 121 recite inter alia a lettuce (Family: Asteraceae) and a berry (Family: Rosaceae). Because lettuce is necessarily classified as Asteracaeae, the parenthetical information is clear. However, berries for example do not all fall within a single phylogenetic classification. In these situations, it is unclear for example whether the berry as claimed is limited to those of the family Rosaceae (e.g., strawberries) or whether the parenthetical information is merely exemplary.
Claim 115 recites the growth medium. There is insufficient antecedent basis for this limitation in the claim.
Claim 127 recites the growth medium. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 72, 75, 76, 106, 117 and 118 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 72 recites the accumulation is greater than about 10%, however, claim 66 from which claim 72 depends recites the accumulation is greater than about 10%. The embodiment of claim 72 drawn to greater than about 10% does not further limit claim 66.
Claim 75 recites the accumulation is about 10% to about 12%, …, about 10% to 25%, however, claim 66 from which claim 75 depends recites the accumulation is greater than about 10%. Because greater than about 10% omits about 10%, the embodiments of claim 75 having a lower limit of about 10% fail to include all of the limitations of claim 66.
Claim 76 recites the accumulation is about 10%, however, claim 66 from which claim 76 depends recites the accumulation is greater than about 10%. Because greater than about 10% omits about 10%, the embodiment of claim 76 of about 10% fails to include all of the limitations of claim 66.
Claim 106 recites the accumulation is greater than about 10%, however, claim 105 from which claim 106 depends recites the accumulation is greater than about 10%. The embodiment of claim 106 drawn to greater than about 10% does not further limit claim 105.
Claim 117 recites the fertilizer is a liquid, solid, semisolid or combination thereof, however, claim 116 from which claim 117 depends recites the fertilizer is a liquid. The embodiment of claim 117 drawn to a liquid does not further limit claim 116 and the embodiments of claim 117 drawn to a solid, semisolid or combination thereof omit the liquid of claim 116.
Claim 118 recites the accumulation is greater than about 10%, however, claim 116 from which claim 118 depends recites the accumulation is greater than about 10%. The embodiment of claim 118 drawn to greater than about 10% does not further limit claim 116.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 66-76, 79-82, 85 and 88-90 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Minagawa et al. (EP 643,138, published March 15, 1995) as evidenced by Sakimoto et al. (US 2020/0102254).
Minagawa is applied herewith on the broader recitation of the claims in an effort to expedite prosecution
Regarding claims 66, 68-76, 79, 81, 82, 85
Minagawa teaches a process for accumulating poly-3-hydroxybutyric acid (PHB) in bacterial cells inclusive of Paracoccus denitrificans and exemplifies an embodiment of Paracoccus denitrificans comprising 40.2% PHB (about 40%) (title; abstract; claims; Example 6; Table 2).
Regarding the recitation of a biofertilizer, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. See MPEP 2111.02. Additionally, Sakimoto evidences Paracoccus denitrificans comprising an accumulation of PHB is a biofertilizer (e.g., claims 1, 8-11, 23).
Regarding claim 67
Minagawa teaches a broth (paragraph bridging pages 3 and 4).
Regarding claim 80
Regarding measurement of the accumulation according to the circumscribed protocol as required by instant claim 80, because the measurement protocol does not limit the structure of the claimed biofertilizer, the measurement limitation has no patentable weight.
Regarding claims 88-90
Regarding the future intended uses of the claimed biofertilizer as required by instant claims 88-90, because the future intended uses do not limit the structure of the claimed biofertilizer, these uses have no patentable weight.
The above teachings therefore anticipate the claims.
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 of this title, 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 66-82, 85 and 88-93 are rejected under 35 U.S.C. 103 as being unpatentable over Minagawa et al. (EP 643,138, published March 15, 1995) as evidenced by Sakimoto et al. (US 2020/0102254).
Minagawa is applied herewith on the broader recitation of the claims in an effort to expedite prosecution
The teachings of Minagawa have been described supra with regard to the anticipation of claims 66-76, 79-82, 85 and 88-90. Claims 66-76, 79-82, 85 and 88-90 are therefore also obvious over Minagawa.
Minagawa further teaches for an alternative bacterial cell the PHB increases with time as exemplified in Example 1 (Table 1):
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Minagawa further teaches the results of the fermentation were stable (page 9, lines 10-12; page 11, lines 4-5).
Regarding claim 77 which recites about 25% and claim 78 which recites about 30%, Minagawa teaches the content of PHB is a function of fermentation time. Therefore, at some fermentation time Minagawa is in possession of Paracoccus denitrificans comprising less than 40.2% PHB (about 40%). Additionally, it would have been obvious to optimize the process in order to obtain any desired PHB content. See MPEP 2144.05.
Regarding claims 91-93 which recite various stability criteria, Minagawa teaches the results of the fermentation were stable (page 9, lines 10-12; page 11, lines 4-5). Regarding the measurement of the stability according to the circumscribed protocols, because the compositions of Minagawa are stable, it is presumed that the compositions are stable as measured according to any protocol.
Claims 66-82, 85, 86, 88-93 and 105-127 are rejected under 35 U.S.C. 103 as being unpatentable over Sakimoto et al. (US 2020/0102254, published April 2, 2020) in view of Minagawa et al. (EP 643,138, published March 15, 1995).
Sakimoto is applied herewith on the elected embodiment
Sakimoto teaches biofertilizers comprising Xanthobacter autotrophicus and comprising polyhydroxybutyric acid (PHB) as an accumulated carbon energy source (title; abstract; claims, in particular 1, 10, 11, 19, 23; paragraph [0082]), as required by instant claims 68-71, 81, 82, 85, 86. PHB is stored as inclusion bodies within X. autotrophicus, functioning as an onboard energy reserve (Figure 12; paragraphs [0077], [0255]). The biofertilizers improve the characteristics and performance of soils (abstract; paragraph [0008]).
The biofertilizers may be a liquid (claims 12, 41, 42), as required by instant claims 67, 117.
The PHB poly(3-hydroxytutyrate) scatters light, increasing OD600 (paragraph [0255]; Figure 2B), as required by instant claims 80, 107, 119. Regarding measurement of the accumulation according to the circumscribed protocol as required by instant claims 80, 107, 119, because the measurement does not limit the structure of the claimed biofertilizer, the measurement limitation has no patentable weight.
Sakimoto further teaches treatment of crops and plants inclusive of wheat, corn (Poacaea) or/and soybeans (claims 49, 56; paragraph [0044]), as required by instant claims 88-90, 108-110, 120-122. Regarding the future intended uses of the claimed biofertilizer as required by instant claims 88-90, 108-110, 120-122, because the future intended uses do not limit the structure of the claimed biofertilizer, these uses have no patentable weight. Sakimoto further teaches treatment with an effective number of microorganisms sufficient to result in an increase in plant growth or yield (paragraph [0145]).
Sakimoto further teaches treatment with a concentration of 4 x106 cells/mL as a lower threshold and treatment with a concentration of 4 x 109 cells/mL; the concentration is that which is sufficient to result in an increase in plant growth or yield (paragraphs [0145]-[0147]), as required by instant claims 113, 114, 125, 126. See MPEP 2144.05.
Sakimoto further teaches a microbial growth media (paragraph [0104]), as required by instant claims 115, 127.
Sakimoto does not specifically teach an accumulation greater than about 10% as required by claims 66, 72, 105, 106, 118, or an accumulation greater than about 25% as required by claim 73, or an accumulation greater than about 40% as required by claim 74.
Sakimoto does not specifically teach an accumulation of about 35 to 40% as alternately required by claim 75, or an accumulation of about 40% as required by claims 76, 79, or an accumulation of about 25% as required by claim 77, or an accumulation of about 30% as required by claim 78.
Sakimoto does not specifically teach the biofertilizer is stable for at least 1 month at room temperature as required by claim 91.
Sakimoto does not specifically teach the OD600 of the biofertilizer changes within ± 10% as required by claims 92, 111, 123.
Sakimoto does not specifically teach the amount of MISC changes within ± 10% as required by claims 93, 112, 124.
These deficiencies are made up for in the teachings of Minagawa.
Minagawa teaches a process for accumulating poly-3-hydroxybutyric acid (PHB) in bacterial cells inclusive of Xanthobacter (title; abstract; claims; page 3, lines 29-31). The content of PHB increases with time as exemplified in Example 1 (Table 1):
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, as required by instant claims 72-79. Minagawa further teaches the results of the fermentation were stable (room temperature is implicit) (page 9, lines 10-12; page 11, lines 4-5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the microbial biomass of the biofertilizers of Sakimoto inclusive of Xanthobacter autotrophicus to comprise a desired content of PHB such as between 14 and 65% as taught by Minagawa in order to tailor the onboard energy reserve.
Regarding claims 91-93, 111, 112, 123 and 124 which recite various stability criteria, because the biofertilizers of Sakimoto comprise at broadest nothing more than a microbial biomass inclusive of Xanthobacter autotrophicus comprising accumulated PHB, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the biomass is stable because Minagawa teaches such. Regarding the measurement of the stability according to the circumscribed protocols, because the compositions of Minagawa are stable, it is presumed that the compositions are stable as measured according to any protocol.
Claims 66-82, 85, 86, 88-93 and 105-127 are rejected under 35 U.S.C. 103 as being unpatentable over Sakimoto et al. (US 2020/0102254, published April 2, 2020) in view of Minagawa et al. (EP 643,138, published March 15, 1995) as applied to claims 66-82, 85, 86, 88-93 and 105-127 above, and further in view of Rezaei et al. (WO 2021/222643, published November 4, 2021).
Sakimoto is applied herewith under a different interpretation of the claimed stability in the interest of compact prosecution
The teachings of Sakimoto and Minagawa have been described supra.
They do not specifically teach the biofertilizer is stable for at least 1 month at room temperature as required by claims 91-93, 111, 112, 123 and 124.
This deficiency is made up for in the teachings of Rezaei.
Rezaei teaches stable liquid formulations for nitrogen-fixing microorganisms; the formulations are stable for a period of thirty days or longer at room temperature (title; abstract; claims, in particular 1, 3, 4; paragraphs [224]-[225]). The log loss of CFU/mL over the shelf life of the composition is less than 0.2 (claim 5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the biofertilizers of Sakimoto and Minagawa within the compositions of Rezaei because they are stable for a period of thirty days or longer at room temperature. There would be a reasonable expectation of success because the compositions of Rezaei are suitable for nitrogen-fixing microorganisms. Regarding the measurement of the stability according to the circumscribed protocols, because the compositions of Sakimoto, Minagawa and Rezaei are stable, it is presumed that the compositions are stable as measured according to any protocol.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALISSA PROSSER/
Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner, Art Unit 1600
Prosecution Insights