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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 67-68, in the reply filed on July 2, 2026, is acknowledged. Claim 21 links Groups I and V-VII. Claims 69, 71-71, 74, 76, 173, 228-234 are withdrawn.
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.
Claim(s) 21 and 67 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hao Weixing, CN101434498A, published May 20, 2009.
Claim 21 is drawn to a method for stimulating plant growth and/or promoting plant health comprising applying a free enzyme to a plant seed, wherein the enzyme is a phytase.
Claim 67 is drawn to the method of claim 21, wherein applying the enzyme to the plant seed comprises: (a) applying the enzyme to the plant seed at the time of planting; or (b) coating the plant seed with the enzyme.
Hao Weixing teaches a method comprising coating a plant seed with a phytase. Hao Weixing also teaches that the appropriate amount of phytase can provide nutrients such as phosphorous for the balanced growth of crops, so that crops can be robust and have sufficient nutrient absorption, thus improving disease resistance, as well as growth and maturity, thereby increasing crop yield. Accordingly, Hao Weixing anticipates claims 21 and 67.
Claim Rejections - 35 USC § 103
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 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.
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) 21 and 67-68 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lamb et al. U.S. Patent No. 10,570,066, issued Feb. 25, 2020 in view of Lim et al. U.S. Patent Application Publication No. 20070277257, published Nov. 29, 2007.
Claim 21 is drawn to a method for stimulating plant growth and/or promoting plant health comprising applying a free enzyme to a plant seed, wherein the enzyme is a phytase.
Claim 67 is drawn to the method of claim 21, wherein applying the enzyme to the plant seed comprises: (a) applying the enzyme to the plant seed at the time of planting; or (b) coating the plant seed with the enzyme.
Claim 68 is drawn to the method of claim 67, wherein the method comprises coating the plant seed with a seed coating formulation comprising: the enzyme, and an agriculturally acceptable carrier.
Lamb et al. teach compositions that can be applied directly to seeds, soil, or plants, and that have been shown to improve plant health, plant emergence, crop yield, plant health consistency, consistent or time-released bio-availability of nutrients in and around a plant, seed, or soil, plant resistance to disease and drought, and microbial catalysis. Lamb et al. also teach that these compositions may also be combined with other commercial products to enhance the efficacy thereof, including enzymes, and including agriculturally acceptable carriers (abstract; column 2; column 4 line 52 to column 5 line 5; column 7 line 42 to column 8 line 10; column 11 lines 33 to column 12 line 17; Examples 2, 2 and 5; claims 1 and 9).
Lamb et al. do not teach the combination of their compositions with an enzyme that is a phytase.
Lim et al. teach that phosphorus in soil is a limiting factor for plant growth, and that the phosphorus locked up as phytate in the soil is not available for plant utilization. Lim et al. also teach that phytase is an enzyme that increases the availability of utilizable phosphorus by catalyzing the conversion of phytate into inorganic phosphate and myo-inositol phosphate, releasing phosphate that can be utilized by plants (paragraphs [0004], [0012]).
Given the teachings of Lamb et al. that compositions comprising enzymes and agriculturally acceptable carriers can be applied directly to seeds, soil, or plants to improve plant health, plant emergence, crop yield, plant health consistency, consistent or time-released bio-availability of nutrients in and around a plant, seed, or soil, plant resistance to disease and drought, and microbial catalysis, and given the teachings of Lim et al. that phytase can increase the availability of phosphorus to plants by catalyzing the conversion of phytate into inorganic phosphate and myo-inositol phosphate, thus facilitating plant growth, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to apply a composition comprising a phytase enzyme and an agriculturally acceptable carrier to a plant seed. One skilled in the art would have been motivated to do so in order to increase the availability of phosphorus to the plant seed to facilitate the growth of a plant therefrom. One skilled in the art would have had a reasonable expectation of success, given the success of Lamb et al. in utilizing compositions comprising other enzymes, and given the known activity of phytase, as evidenced by Lim et al. Thus the claimed invention would have been prima facie obvious as a whole to a person having ordinary skill in the art before the effective filing date of the claimed invention.
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 21 and 67-68 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 69 and 72 of copending Application No. 18/476,270 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 21 is drawn to a method for stimulating plant growth and/or promoting plant health comprising applying a free enzyme to a plant seed, wherein the enzyme is a phytase.
Claim 67 is drawn to the method of claim 21, wherein applying the enzyme to the plant seed comprises: (a) applying the enzyme to the plant seed at the time of planting; or (b) coating the plant seed with the enzyme.
Claim 68 is drawn to the method of claim 67, wherein the method comprises coating the plant seed with a seed coating formulation comprising: the enzyme, and an agriculturally acceptable carrier.
Claim 69 of the reference application is drawn to a plant seed coated with a free enzyme, wherein the enzyme is selected from a phospholipase, a lipase, a xylanase, a xylosidase, a mannanase, a pectinase, a lactonase, a chitosanase, a protease, a phytase, an acid phosphatase, a non- cellulolytic glucanase, an ACC deaminase, and combinations of any thereof, wherein the protease comprises an amino acid sequence having at least 95% sequence identity to any one of SEQ ID Nos: 46-48.
Claim 72 of the reference application is drawn to the plant seed of claim 69, wherein the seed is further coated with an agriculturally acceptable carrier, a polymer, a preservative, a fungicide, an insecticide, or a nematicide.
Although the claims at issue are not identical, they are not patentably distinct from each other because the seed produced by the method set forth in claims 21 and 67-68 of the instant application are obvious species encompassed by the genus of seed set forth in claims 69 and 72 of the reference application
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Remarks
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CYNTHIA E COLLINS whose telephone number is (571)272-0794. The examiner can normally be reached M-F 8:30 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bratislav Stankovic can be reached at 571-270-0305. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CYNTHIA E COLLINS/Primary Examiner, Art Unit 1662
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