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 .
Summary
Claims 1-11 and 15-22 are pending. Claims 12-14 and 23 are canceled. All pending claims are under examination in this application.
Priority
The current application filed on December 27, 2024 is a 371 of PCT/IB2023/056724 filed June 29, 2023, which in turn claims priority to a provisional patent application 63/356,679 filed on June 29, 2022.
Information Disclosure Statement
Receipt of the Information Disclosure Statement filed on December 27, 2024 is acknowledged. A signed copy of the form PTO/SB/08 is attached to this office action.
Claim Objections
Claims 3, 8, 21 and 22 are objected to because of the following informalities: In claims 3 and 21 bacterium should probably be bacteria since it is virtually impossible to include a single bacterium; also, low molecular weight biopolymers are not distinguished from the biopolymer molecules referenced in claim 1
In claims 8 and 22 "silk, fibroin" should probably be silk fibroin. Silk is a fabric where silk fibroin is a protein.
Appropriate correction is required.
Claim Interpretation
For claim 1, naming the composition a “seed coating composition” imparts nothing to the makeup of the composition and is given no patentable weight. Similarly, for claims 17-22 the language “for use in agriculture” is given no patentable weight since it is merely a statement of intended utility.
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.
(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, 2 and 4-8 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Davison et al. US 6638918, published 2003-10-28.
Davison et al. teach suspensions of chitosan that are homogenized by subjecting to high shear, see column 6, lines 3-4. The chitosan may be in the form of a suspension, dispersion or paste and can be diluted, see column 5, lines 54-62. They teach addition of anti-microbials (bioactive agents) at column 24, lines 9-26. They teach several uses for the composition including seed protection, see column 8, line 20.
These teachings anticipate the above claims, see claim interpretation section above as well.
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.
Claims 3 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Davison et al. US 6638918, published 2003-10-28 in view of Johnson et al. WO 0215702 A1, published 2002-02-28.
The teachings of Davison et al. are outlined above.
Johnson et al. teach a thermostable biodegradable medium for storage of biological materials comprising a biopolymer selected from xanthan gum (as in instant claim 9), acacia gum, gellan, starch or a combination; and where the biological material is selected from a bio-inoculant, a microorganism (which covers bacterium of claim 3) . . . at least one pharmaceutical compound, see page 5, line 18 - page 6, line 6. The biopolymer can be in suspension; the biological material is agitated to form a homogeneous suspension. The medium is said to be useful for coating seeds, see page 8, lines 15-23.
It would have been obvious to one of ordinary skill in the art, prior to the instant effective filing date, to substitute the bacterium of Johnson et al. for the bioactive agent of Davison et al. and the xanthan gum of Johnson et al. as the biopolymer of Davison et al. with the expectation of creating a useful seed coating composition.
Claims 10, 15-20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Davison et al. US 6638918, published 2003-10-28 in view of Johnson et al. WO 0215702 A1, published 2002-02-28, as evidenced by Johnson Seed Company.
The teachings of Davison et al. and Johnson et al. are outlined above.
It would have been obvious to one of ordinary skill in the art, prior to the instant effective filing date, to coat a seed with the composition of Davison et al. since they teach to do so, thus rendering claim 10 obvious. With regard to claims 15-20 and 22, the reasons for coating seeds are well-established in the art, as evidenced by Johnson Seed Company. It would have been obvious to one of ordinary skill in the art, prior to the instant effective filing date, to coat the seeds to obtain the benefits taught by Johnson Seed Company.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Davison et al. US 6638918, published 2003-10-28 in view of Bullis et al. WO 2013090628 A1, published 2013-06-20. No copy of Bullis et al. is being furnished because the document is too big for the PTO system to handle.
The teachings of Davison et al. are outlined above.
Bullis et al. WO 2013090628 A1, published 2013-06-20 teach seed coating compositions comprising biopolymer such as gum Arabic in suspension with bacteria, see paragraph [00158]. they teach, in paragraph [00105] that, in principle, any plant seed capable of germinating to form a plant can be treated in accordance with the invention. Suitable seeds include, among others, cereals, vegetables, bean, corn, sorghum and soybean.
It would have been obvious to one of ordinary skill in the art, prior to the instant effective filing date, to select the seeds of Bullis et al. as the items to be coated by the seed coating composition of Davison et al. with the expectation of beneficial results.
Claims 1-3, 5-10 and 15-22 are rejected under 35 U.S.C. 103 as being unpatentable over Muschiolik et al. US 20120135125 A1, published 2012-05-31.
Muschiolik et al. US 20120135125 A1, published 2012-05-31 teach emulsions that can be used as a seed coating (paragraph [0008]). The compositions comprise polysaccharides such as xanthane, carboxymethylpullulan, carrageenan, chitosan, gellan, sodium carboxymethylcellulose, sodium alginate and pectin, see paragraph [0028]. The compositions also comprise proteins such as whey protein isolate, milk protein concentrate, sodium caseinate or skimmed milk powder and non-milk whey proteins such as vegetable proteins, in particular proteins derived from soy, pea and lupine, see paragraph [0033]. The emulsions are prepared by mixing the ingredients by stirring at 1500 rpm followed by emulsification at 20,500 to 24,000 rpm, se paragraph [0043]. Paragraph [0141] teaches that in the field of seed coating techniques, said compositions are similarly useful as carriers for fungicides, herbicides, nematicides, growth regulating agents, hormones, fertilizers, germination stimulators and other active ingredients, as is known in the prior art.
It would have been obvious to one of ordinary skill in the art, prior to the instant effective filing date, to follow the teachings of Muschiolik et al. to create a seed coating made of biopolymer with the expectation of success. The emulsion of Muschiolik et al. is not exactly the same as the claimed stable suspension but the particles of biopolymer being incorporated into the emulsion would have the same effect.
Double Patenting
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 and 4-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18/878991 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to compositions of biopolymers that share many ingredients mechanically processed into stable homogeneous aqueous suspensions. Therefore, they are claiming obvious variations of the same invention. The instant name of the composition, seed coating composition, has no patentable weight, nor does the conflicting claims’ statement of intended utility.
Claims 1 and 4-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4 and 6 of copending Application No. 18/258914 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to compositions of biopolymers that share many ingredients mechanically processed into stable homogeneous aqueous suspensions. Therefore, they are claiming obvious variations of the same invention. The instant name of the composition, seed coating composition, has no patentable weight.
.This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claim is allowed.
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/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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