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 .
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim Objections
Claims 1-3 are objected to because of the following informalities: the microbe Bacillus thuringiensis should have the first letter of its genus capitalized and the entire species name should be italicized. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-3 and 5 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 cited claims are drawn to a composition comprising humic acid, Bacillus thuringiensis, and a polymer that is defined by its log P-value. Although not defined in the specification, log P is used to determine a partition coefficient in a solution of 1-octanol and water. It should be noted that the prior art suggests that this coefficient has significant limitations for determining the hydrophobicity of polymeric compounds. See Moody, et al (Industrial & Engineering Chemistry Research, 44, 3749-3760, 2005), page 3749, “Introduction” section. As such, prior to analyzing the claims, per se, it seems clear from the prior art that using “log P” as an identifier for the monomers of polymers can present a serious burden upon the skilled artisan to identify an appropriate monomer for the polymer claimed in the instant invention.
As discussed above, the claims are drawn to B. thuringiensis and humic acid, which are both discussed in the applied examples as being commercially available. As such, neither of these presents for written description issues. However, classifying a polymer, in terms of specific physical properties of its monomer present with significant written description issues, since it requires the skilled artisan to test thousands of monomers to determine if they qualify to be used as polymers, wherein it is clear that the Applicant was not in possession of a reasonable number of monomers to suggest possession across the entirety of the claimed genus. For example, the instant specification provides for a very limited listing of exemplary monomers that only account for a small number of acrylates and one butylene, but there are numerous monomers that fulfill the claim limitation but do not appear to be envisioned by the instant invention.
When looking at the prior art, Arumugam, et al (WO 2021/158420 [IDS Reference]) describes a composition with the same microbe, and humic acid, but utilizes polyethylene glycol and does not explicitly teach any log P-values. However, the prior art suggests that the log P of polyethylene glycol should fit within the claimed ranges. See Yousefi, et al (Chemical and Pharmaceutical Bulletin, 58, 147-153, 2010), page 151, left column, 1st [incomplete] paragraph. This would suggest that the instant inventors never envisioned this embodiment, even though it fulfills the claim limitations; furthermore, the fact that polyethylene glycol is a ubiquitously used polymer, but was never clearly tested nor envisioned would suggest that other monomers that are widely used, and all of those that are less commonly used would require immense experimentation for the skilled artisan to generate the claimed invention. Based upon the limited applied examples, and the minimal listing of monomers that are consistent with the claimed log P-value would suggest that the Applicant was not in possession of a reasonable number of embodiments to show possession of the whole genus of monomers with a log P-value within the claimed range. Based upon what is written in the specification, it would appear that the Applicant was only reasonably in possession of acrylates and monomers with a butylene backbone.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Arumugam, et al (WO 2021/158420 [IDS Reference]) and evidenced by Yousefi, et al (Chemical and Pharmaceutical Bulletin, 58, 147-153, 2010). Arumugam describes a composition with the same microbe, and humic acid, but utilizes polyethylene glycol with a molecule mass of 12,000 g/mol (Daltons) and does not explicitly teach any log P-values. See page 2, lines 23-25; page 3, line 14; page 5, lines 30-34; page 7, lines 14-22. However, the prior art suggests that the log P of polyethylene glycol should fit within the claimed ranges. See Yousefi page 151, left column, 1st [incomplete] paragraph.
With respect to claim 1, Arumugam teaches the claimed invention, but is silent with respect to the log P-value of the polymer. Yousefi indicates that the polymer of Arumugam should fall within the claimed range.
With respect to claim 2, Arumugam teaches the claimed concentration of humic acid. See page 6, lines 6-15.
With respect to claim 3, Arumugam teaches the same amount of polymer. See page 5, lines 5-15.
With respect to claim 5, although Arumugam does not teach the phenolic group concentration, Arumugam teaches the same commercially available humic acid, sold by the same corporation. As such, it would be reasonable to assume that the humic acid of the prior art has the same number of phenolic groups as that claimed.
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 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.
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Arumugam, et al (WO 2021/158420 [IDS Reference]) Becher (PGPub 2015/0208653) and evidenced by Yousefi, et al (Chemical and Pharmaceutical Bulletin, 58, 147-153, 2010). See the discussion of Arumugam and Yousefi above. Although Arumugam teaches a polymer that is consistent with the independent claim, Arumugam does not specifically teach the claimed copolymer. However, it is clear from the cited prior art that composition comprising one or more of B. thuringiensis, and humic acid are both useful for herbicidal/pesticidal applications, and the stabilization of B. thuringiensis activity. See Arumugam, page 1, line 17 and 25-40. Arumugam explicitly notes that the combination of polyethylene glycol, humic acid, and B. thuringiensis is particularly useful for pesticide applications. See page 3, lines 10 and 11. This would suggest to the ordinary artisan that the addition of other pesticidal compounds would predictably augment the efficacy of the initial composition.
Becher provides for a composition comprising B. thuringiensis that can be used with a [polyethylene] glycol, as a means of adjusting the density of the composition for improved flowabilty. See paragraph [0059]. Becher also provides for protective colloids that improve B. thuringiensis activity. See paragraph [0041]. Based upon Becher, there would be reasoanble motivation to add the claimed polymer to the composition of Arumugam, because there is evidence to suggest that a copolymer of maleic anhydride and diisobutylene would improve the activity and survivability of the B. thuringiensis.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID W BERKE-SCHLESSEL whose telephone number is (571)270-3643. The examiner can normally be reached M-F 8AM-5:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melenie Gordon can be reached at 571-272-8037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID W BERKE-SCHLESSEL/Primary Examiner, Art Unit 1651
Prosecution Insights