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 of invention II, claims 1 and 3, in the reply filed on 04/08/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant asserts Restriction Requirement identified nine (9) species and requested that the Applicant elect a specific species for examination. Applicant has elected Species II and withdrawn the claims directed to the non-elected species (Response to Restriction Requirements, page 4, paragraph 1).
Since Examiner had required the 9 invention groups with claim 1 as linking claim, applicant’s election is assumed invention II (i.e. not species) with claims 1 and 3 (see Restriction election of 02/05/2026) and the claims 1 and 3 are examined in this office action.
Claims 2 and 4-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/08/2026.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Objections
Claim 3 is objected to because of the following informalities:
In claims 3 line 1, claim recite the term “Claim” with capital letter “C” in middle of the sentence, applicant is suggested to change to recite “claim” with small letter “c”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112 - Indefiniteness
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 1 and 3 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. All dependent claims are included in these rejections unless they include a limitation that overcomes the deficiencies of the parent claim.
Regarding claim 1, Applicants state “mixture” in part (e). However, it is not understood whether Applicants intend the mixture stated in part (c) or part (d). Applicants should specify in part (e) which mixture, either (c) or (d), is intended. For instance, the mixture of (d).
Furthermore, recitation of “mixture” in part (d) is also not clear Applicant is intending to heat mixtures of (a), or (b) or (c) although not stated in all of the subsections the subsections comprise mixtures of different types. Applicants should specify in part (d) which mixture, either (a), or (b) or (c) is intended. For instance, the mixture of (c).
Regarding claim 1, claim 1 step (c) recite “establishing a mixture by placing the callus formation into an accelerator media” wherein step (d) recites “heating the mixture of (c) to at least 120°C” (very high temperature), and the method is the method of cultivating agave cell that will reproduce the agave cell.
Applicant teaches media containing 3% sucrose and 1 % naphthalene acetic acid was autoclaved at approximately 1210C and it was placed in plant tissue culture dishes (page 4, paragraph 0020). Applicant teaches plates containing callus induction media was placed in temperature of 270C (page 5, paragraph 0022). For example, Daniell et al. (Published: 1969, Journal: Plant Physiol. 44: 1684-1689) teaches above 54oC, around 90% cell were dead (page 1687, left last and right first paragraph) and all cells of the plant were dead after four day of treatment (page 1984, Abstract). There the callus would have died in the recited temperature of 120°C.
Therefore, it is not clear that heating mixture with callus to 1200C would lead to subculture of the callus of agave plants leading to reproduction of the cells.
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 non-obviousness.
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.
Obvious over Whitton et al. and further in view of Whitney et al. and Mio et al.
Claims 1 and 3 1re rejected under 35 U.S.C. 103 as being unpatentable over Whitton et al. (US patent No.: US 9,562,244 B2, Pub. Date: Feb. 7 , 2019), and further in view of Whitney et al. (US patent application publication No.: US 2002/0119217 A1, Pub. Date: Aug. 29, 2002), and further in view of Mio et al. (Published: 2020, Journal: In Vitro Cellular & Developmental Biology – Plant 56:662–669 https://doi.org/10.1007/s11627-020-10109-5).
Claims are drawn to a method for cultivating agave cells, comprising preparing callus induction media including sugar, naphthalene acetic acid and water, establishing mixture, heading mixture, cultivating subculture of the culture and adding carbon dioxide, yeast, wherein the agave cell reproduce.
Regarding claims 1 and 3, Patent ‘244 teaches method of producing a photosynthetic product, the method preparing callus induction media by mixing 3% sucrose (sugar), 1% NAA and water (col. 27, lines 5-12). An autoclave the media at 1210C (col. 27, lines 24-26). Patent ‘244 teaches placing slice of plant piece in callus induction media and place it in 27oC (col.27, lines 35-41). The thumbnail size friable callus from the plant tissue and breakup into finely dispersed cells in a flask (col. 28, lines 5-10). Place the flask in a light room to 27oC until thick dispersed cell suspension culture observed (col. 28, lines 10-14).
Patent ‘244 teaches subculturing cells by adding to the fresh media (col. 28, lines 15-17).
Patent ‘244 teaches adding compressed CO2 in suspension culture (col. 28, lines 32-33).
Patent ‘244 teaches taking suspension culture in exponential phase of growth and thoroughly agitate and place it in light conditions pass through CO2 at concentration of 10% CO2 and allowing it to grow for 14 weeks before increasing concentration of CO2 to 40% (col. 28, lines 47-62).
Patent ‘244 claim 1 teaches method of non-algal plant cell suspension culture using water, light and carbonic acid to maintain non-algal plant cell for sugar comprising photosynthetic product. Patent ‘244 claim 9 teaches the sugar are mono-saccharide, a di-saccharide, glucose, sucrose, fructose or combination thereof.
Patent ‘244 claims 14, 18-19 and 35-36 teaches the method further comprise production of an alcohol (i.e. ethanol, claim 46) of a second culture of yeast cells which is maintained in the presence of the photosynthetic product (i.e. sugar, glucose, sucrose, fructose or combination thereof) generated by the first cell suspension culture to allow growth of the second culture and production of alcohol by the second culture.
Patent ‘244 teaches gaseous carbon dioxide dissolved in photosynthetic cell suspension culture, and assists in the production of an enriched level of carbonic acid that can be used in the photosynthetic process (col. 8, lines 4-9).
Patent ‘244 claim 30 teaches the culture medium is maintained at pH of 4.5.
Patent ‘244 teaches pH of the photosynthetic plant is maintained by a citric acid buffer (col. 13, lines 38-45, col.22, 1-15).
Patent ‘244 teaches in second cell culture yeast convert sugar to ethanol (page 16, lines 19-27).
Patent ‘244 specifically does not teach the plant is Agave plant.
Whitney et al. teaches obtaining fermentable sugar from Agave plant leaves wherein by adding commercial dry yeast and fermentation produced the ethanol of 4.4% v/v on average as determined by laboratory distillation (Pages 2 and 3, paragraphs 0032-0040).
Furthermore, Mio et al. teaches Agave tequilana important for production of tequila faces difficulty in growing due to long life cycle which is 8-12 year therefore in vitro micropropagation is best available option (page662, left paragraph 1).
Therefore it would have been obvious to a skilled in the art before the effective date of filling of the invention from teaching, suggestion and motivation from Patent ‘244 to utilize their method of ethanol production by cultivating the cell of a plant and cultivate the cell of Agave plant so that it would produce ethanol from the sugar as taught by Whitney et al. and someone skilled in the art would use the method of cell culture that would lower the life cycle of the Agave plant for more controllable and quicker ethanol production in the Agave plant as taught by Mio et al.
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 3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 9 of U.S. Patent No. 11895962 (Hereafter referenced as Patent ‘962).
Regarding claim 1, Patent‘962 claim 1 recites a method for cultivating agave cells or sugar cells that includes preparing a callus introduction media including sugar, NAA and water, vitamin stock solution, heating the mixture, using mixture to cultivate subcultures supplemented by a citric acid and adding carbon dioxide and yeast.
Patent‘962 claim 9 recites introducing light to the accelerator media.
Regarding claim 3, Patent‘962 claim 3 recites the media has sugar:NAA of 3:1.
Claims 1 and 3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US 12618029 B2 (Hereafter referenced as Patent‘029) in view of Whitney et al. (US patent application publication No.: US 2002/0119217 A1, Pub. Date: Aug. 29, 2002), and further in view of Mio et al. (Published: 2020, Journal: In Vitro Cellular & Developmental Biology – Plant 56:662–669 https://doi.org/10.1007/s11627-020-10109-5), and Further in view of Whitton et al. (US Patent No .: US 10,465,215 B2, Date of Patent : Nov. 5 , 2019).
Regarding claim 1, Patent‘029 claims 1 recites a method for cultivating agave cells or sugar cells that includes preparing a callus introduction media including sugar, NAA and water, heating the mixture, using mixture to cultivate subcultures supplemented by an acid and adding carbon dioxide and yeast.
Patent ‘029 specifically does not teach the plant is Agave plant.
Whitney et al. teaches obtaining fermentable sugar from Agave plant leaves wherein by adding commercial dry yeast and fermentation produced the ethanol of 4.4% v/v on average as determined by laboratory distillation (Pages 2 and 3, paragraphs 0032-0040).
Furthermore, Mio et al. teaches Agave tequilana important for production of tequila faces difficulty in growing due to long life cycle which is 8-12 year therefore in vitro micropropagation is best available option (page662, left paragraph 1).
Therefore it would have been obvious to a skilled in the art from teaching and suggestion and motivation from Patent ‘244 to utilize their method of ethanol production by cultivating the cell of a plant and cultivate the cell of the plant of Agave plant so that it would produce ethanol from the sugar as taught by Whitney et al. and someone skilled in the art would use the method that would lower the life cycle of the Agave plant for more controllable and quicker ethanol production in the Agave plant as taught by Mio et al.
Regarding claim 3, Furthermore, Whitton et al. teaches method wherein the ratio of culture media comprising 3% sucrose and 1% NAA and vitamin solution for culture of wheat plant cell (col. 23, lines 17-30).
Therefore, ratio of sucrose to NAA that would increase the somatic embryo would have been empirically determined in species of Agaves and is an optimization of process parameters. According to section 2144.05 of the MPEP, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”).
A particular parameter must first be recognized as a result-effective variable, i.e., a variable, which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). Prior arts teach the use of sucrose and NAA in particular ration (Tejavathi et al., page 424, Table 1) for cultivating agave cells, therefore, determining the specific sucrose: NAA ratio is a routine experimentation.
Claims 1 and 3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, 14, 18-19, 30, 35-36 and 46 of US patent No.: US 9,562,244 B2, (Hereafter referenced as Patent‘244), and further in view of Mio et al., and Further in view of Whitton et al..
Regarding claim 1, Patent ‘244 claim 1 recites method of non-algal plant cell suspension culture using water, light and carbonic acid to maintain non-algal plant cell for sugar comprising photosynthetic product. Patent ‘244 claim 9 recites the sugar are mono-saccharide, a di-saccharide, glucose, sucrose, fructose or combination thereof.
Patent ‘244 claims 14, 18-19 and 35-36 recites the method further comprise production of an alcohol (i.e. ethanol, claim 46) of a second culture of yeast cells which is maintained in the presence of the photosynthetic product (i.e. sugar, glucose, sucrose, fructose or combination thereof) generated by the first cell suspension culture to allow growth of the second culture and production of alcohol by the second culture. Therefore yeast would have been added in the method.
Patent ‘244 teaches gaseous carbon dioxide dissolved in photosynthetic cell suspension culture, and assists in the production of an enriched level of carbonic acid that can be used in the photosynthetic process (col. 8, lines 4-9). Therefore CO2 would have been added to produce carbonic acid.
Patent ‘244 claim 30 teaches the culture medium is maintained at pH of 4.5.
Patent ‘244 teaches pH of the photosynthetic plant is maintained by a citric acid buffer (col. 13, lines 38-45, col.22, 1-15). Therefore, someone skilled in the art would add citric acid in their method to maintain the pH of the culture media 4.5.
Patent ‘244 teaches in second cell culture yeast convert sugar to ethanol (page 16, lines 19-27).
Patent ‘244 specifically does not teach the plant is Agave plant.
Whitney et al. (US patent application publication No.: US 2002/01192.17 A1, Pub. Date: Aug. 29, 2002) teaches obtaining fermentable sugar from Agave plant leaves wherein by adding commercial dry yeast and fermentation produced the ethanol of 4.4% v/v on average as determined by laboratory distillation (Pages 2 and 3, paragraphs 0032-0040).
Furthermore, Mio et al. teaches Agave tequilana important for production of tequila faces difficulty in growing due to long life cycle which is 8-12 year therefore in vitro micropropagation is best available option (page662, left paragraph 1).
Therefore it would have been obvious to a skilled in the art from teaching and suggestion and motivation from Patent ‘244 to utilize their method of ethanol production by cultivating the cell of a plant and cultivate the cell of the plant of Agave plant so that it would produce ethanol from the sugar as taught by Whitney et al. and someone skilled in the art would use the method that would lower the life cycle of the Agave plant for more controllable and quicker ethanol production in the Agave plant as taught by Mio et al.
Regarding claim 3, Furthermore, Whitton et al. teaches ratio culture media comprising 3% sucrose and 1% NAA and vitamin solution for culture of wheat plant cell (col. 23, lines 17-30).
Therefore, ratio of sucrose to NAA that would increase the somatic embryo would have been empirically determined in species of Agaves and is an optimization of process parameters. According to section 2144.05 of the MPEP, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”).
A particular parameter must first be recognized as a result-effective variable, i.e., a variable, which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). Prior arts teach the use of sucrose and NAA in particular ration (Tejavathi et al., page 424, Table 1) for cultivating agave cells, therefore, determining the specific sucrose: NAA ratio is a routine experimentation.
Claims 1 and 3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17982444 (Hereafter referenced as Application‘444).
Regarding claims 1, Application ‘444 claims 1 recites a method for cultivating agave cells that includes preparing a callus introduction media including sugar, NAA and water, then heating the mixture, using mixture to cultivate subcultures supplemented by a citric acid and adding carbon dioxide and yeast.
Regarding claim 3, Application ‘444 claim 3 step (a) recites the media has sugar:NAA of 3:1.
Claims 1 and 3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 13-14 of copending Application No. 19182592 (Hereafter referenced as Application‘592) and further in view of Whitney et al., and further in view of Mio et al.
Regarding claim 1 , Application‘549 claims 1 and 13-14 recites a method for cultivating cells of grains of barley or rye plant that includes preparing a callus introduction media including sugar, NAA and water, then heating the mixture, using mixture to cultivate subcultures supplemented by a citric acid and adding carbon dioxide and yeast.
Regarding claim 3, Application‘444 claim 3 step (a) recites the media has sugar: NAA of 3:1.
Application‘444 specifically does not teach the plant cell is cell of Agave plant.
Whitney et al. (US patent application publication No.: US 2002/01192.17 A1, Pub. Date: Aug. 29, 2002) teaches obtaining fermentable sugar from Agave plant leaves wherein by adding commercial dry yeast and fermentation produced the ethanol of 4.4% v/v on average as determined by laboratory distillation (Pages 2 and 3, paragraphs 0032-0040).
Furthermore, Mio et al. teaches Agave tequilana important for production of tequila faces difficulty in growing due to long life cycle which is 8-12 year therefore in vitro micropropagation is best available option (page662, left paragraph 1).
Therefore it would have been obvious to a skilled in the art from teaching and suggestion and motivation from Application‘444 to utilize their method of cell culture by cultivating the grain cell of a barley or rye and cultivate the cell of the plant of Agave plant so that it would produce ethanol from the sugar as taught by Whitney et al. and someone skilled in the art would use the method that would lower the life cycle of the Agave plant for more controllable and quicker ethanol production in the Agave plant as taught by Mio et al.
This is a provisional nonstatutory double patenting rejection.
Summary
No claim is allowed.
Examiner’s Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANTOSH SHARMA whose telephone number is (571)272-8440. The examiner can normally be reached Mon-Fri 8:00 AM - 5:00 PM.
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, AMJAD A. ABRAHAM can be reached at (571)270-7058. 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.
/SANTOSH SHARMA/Examiner, Art Unit 1663
/DAVID H KRUSE/Primary Examiner, Art Unit 1663
Prosecution Insights