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 .
Applicants amendment filed 3/23/2026 has been entered. Claims 1 and 16 were amended. Claim 12 and 25 were cancelled. Claims 1-10, 13, 14, 16-23, 26 and 27 are pending.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 3/23/2026 has been entered.
Withdrawn rejections
Applicant's amendments and arguments filed 3/26/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn.
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 1-7, 14, 16-21 and 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 21-23 of U.S. Patent No. 12,595,394 (herein ‘394) in view of Krishnaswamy et al. (US 9,353,258; patented May 31, 2016) and Marin et al. (Microstructural Behaviors of Matrices Based on Polylactic acid and Polyhydroxyalkanoates, Journal of Agricultural and Food Chemistry, 2018, 66, pages 10033-10040). Although the claims at issue are not identical, they are not patentably distinct from each other because the present claim additionally require a second biodegradable coating layer comprising a first biodegradable polymer layer consisting essentially of PHA and PLA and a second biodegradable layer comprising at least one polymer selected from polybutylene succinate. It is for this reason that Krishnaswamy et al. and Marin et al. are joined.
Krishnaswamy et al. teaches polymer blends comprising polybutylene succinate and polyhydroxyalkanoates copolymers and methods of making articles, films and laminates with the polymers (abstract). In one embodiment the biodegradable copolymers include 3-hydroxybutyrate and one or more comonomers selected from 5-95 weight % 3-hydroxybutyrate, 3-hydroxyhexanoate and 3-hydroxyoctanoate in amounts ranging from 25-80 weight% of the copolymer (column 2, lines 44-53 and 62-67). The films produced by the compositions make biodegradable laminates where layers of the polymers are stacked to impart various properties in hardness, softness, flexibility, opaqueness and the like (column 8, lines 10-26). Two layers of laminates are taught (column 8, lines 27-30).
Marin et al. films of polyhydroxyalkanoates (PHA) and polylactic acid (PLA) and their blends interact to improve water vapor barrier properties (abstract). Marin et al. teach that PHA and PLA are both biobased and biodegradable polymers which can be used as alternatives to other conventional polymers in different industrial applications (Introduction). The films were tested in soil containers for biodegradability by moisture and microorganisms in soil (Biodegration Test, page 10034). PLA-only films were more homogeneous then blends of PLA/PHA in ratios of 20:80 to 80:20 which appear more fibrous in appearance except at the 80:20 ratio (Figure 4, page 10037-10038). The PLA/PHA blends have improved barrier properties (page 10038). Additionally, PHA films exhibited remarkable degradation after 30 days, whereas the blends of PLA/PHA showed changes around 50 days which showed delayed degradation during composting (page 10038)
Krishnaswamy et al. and Marin et al. both teach biodegradable films comprising PHA. Therefore, it would have been prima facie obvious to one of ordinary skill to combine the teachings of ‘394, Krishnaswamy et al. and Marin and include a first biodegradable layer consisting essentially of PHA and PLA with a second biodegradable layer comprising polybutylene succinate with a reasonable expectation of success. One of ordinary skill would have been motivated before the time of filing to combine the teachings of ‘394, Krishnaswamy et al. and Marin et al. to include a first biodegradable layer comprising PLA/PHA blends because Marin et al. teach PLA/PHA film blends have improved barrier properties and slower degradation times than when PHA is used alone and because Krishnaswamy et al. teaches layered polymer blends comprising polybutylene succinate and polyhydroxyalkanoates form biodegradable laminates with improved properties.
Claim Rejections - 35 USC § 112
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 13 and 26 recite the limitation "the first biodegradable coating layer comprises less than one weight percent polyurethane" in reference to the first biodegradable coating layer claims 1 and 16, respectively. There is insufficient antecedent basis for this limitation in the claim.
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 13 and 26 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. Claims 13 and 26 recite “the first biodegradable coating layer comprises less than one weight percent polyurethane” which fails to further limit the scope of claims 1 and 16 because the first biodegradable coating layer consists essentially of polyhydroxyalkanoates and polylactide acid and does not require polyurethane. 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.
New 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.
Claim(s) 1-9, 13, 14 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Krishnaswamy et al. (US 9,353,258; patented May 31, 2016) in view of Marin et al. (Microstructural Behaviors of Matrices Based on Polylactic acid and Polyhydroxyalkanoates, Journal of Agricultural and Food Chemistry, 2018, 66, pages 10033-10040) in further view of Jogikalmath et al. (US 2014/0106964; published April 17, 2014).
Applicant’s Invention
Applicant claims a granular composition comprising a plurality of granulates selected from the group consisting of seeds, fertilizers and pesticides having a first biodegradable coating layer consisting essentially of polyhydroxyalkanoates (PHA) and polylactic acid (PLA) applied over the granulates, wherein PHA comprises 70-99 mole percent hydroxybutyrates and 1-30 mole percent a different hydroxyalkanoate having 5 to 22 carbon atoms and a second biodegradable coating layer comprising at least one polymer selected from polycaprolactone, polylactic acid, polybutylene succinate… etc. (Claim 1)
Determination of the scope and the content of the prior art
(MPEP 2141.01)
With respect to claims 1-3, 8, 9, 14 and 23 of the instant application, Krishnaswamy et al. teaches polymer blends comprising polybutylene succinate and polyhydroxyalkanoates copolymers and methods of making articles, films and laminates with the polymers (abstract). In one embodiment the biodegradable copolymers include 3-hydroxybutyrate and one or more comonomers selected from 5-95 weight % 3-hydroxybutyrate, 3-hydroxyhexanoate and 3-hydroxyoctanoate in amounts ranging from 25-80 weight% of the copolymer (column 2, lines 44-53 and 62-67). The films produced by the compositions make biodegradable laminates where layers of the polymers are stacked to impart various properties in hardness, softness, flexibility, opaqueness and the like (column 8, lines 10-26). Two layers of laminates are taught (column 8, lines 27-30).
With respect to claim 7 of the instant application, Krishnaswamy et al. teaches the polyhydroxyalkanoates have a molecular weight of about 600,000-2,000,000 Daltons (column 2, lines 54-61).
With respect to claims 4-6 of the instant application, Krishnaswamy et al. teaches the compositions are used as coatings for pelleted fertilizer, pesticides and seeds (column 22, lines 26-38).
With respect to claim 13, Krishnaswamy et al. do not require polyurethane. Therefore, optimizing the first biodegradable layer to less than 1% polyurethane would have been prima facie obvious.
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Krishnaswamy et al. do not teach that the first biodegradable layer also consists essentially of polylactic acid. It is for this reason that Marin et al. is joined.
Marin et al. films of polyhydroxyalkanoates (PHA) and polylactic acid (PLA) and their blends interact to improve water vapor barrier properties (abstract). Marin et al. teach that PHA and PLA are both biobased and biodegradable polymers which can be used as alternatives to other conventional polymers in different industrial applications (Introduction). The films were tested in soil containers for biodegradability by moisture and microorganisms in soil (Biodegration Test, page 10034). PLA-only films were more homogeneous then blends of PLA/PHA in ratios of 20:80 to 80:20 which appear more fibrous in appearance except at the 80:20 ratio (Figure 4, page 10037-10038). The PLA/PHA blends have improved barrier properties (page 10038). Additionally, PHA films exhibited remarkable degradation after 30 days, whereas the blends of PLA/PHA showed changes around 50 days which showed delayed degradation during composting (page 10038)
Krishnaswamy et al. do not teach a plurality of granulates are present. It is for this reason that Jogikalmath et al. is joined.
Jogikalmath et al. teach the seed coating systems comprising encapsulated active ingredients comprising active ingredients encapsulated in polymeric coatings (abstract). The need to protect seeds over a prolonged period of time during the seed lifecycle requires protection of the seed [0006]. The active ingredients are particles selected from pesticides and fertilizer bound to a seed by the polymeric coating [0017-18]. The coated seeds are made by coating granules with a binder on the surface of the seed and polymers include naturally derived polymers [0045-46]. A plurality of the granules are used to coat the seeds [0018].
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
Krishnaswamy et al., Marin et al., and Jogikalmath et al. all teach polymeric coatings. Therefore, it would have been prima facie obvious to one of ordinary skill to combine the teachings of Krishnaswamy et al., Marin and Jogikalmath et al. before the time of filing to include a first biodegradable layer consisting essentially of PHA and PLA because with a reasonable expectation of success. One of ordinary skill in the art would have been motivated before the time of filing to combine the teachings of Krishnaswamy et al., Marin et al. and Jogikalmath et al. to include a first biodegradable layer comprising PLA/PHA blends because Marin et al. teach PLA/PHA film blends have improved barrier properties and slower degradation times than when PHA is used alone. Furthermore, it would have been prima facie obvious to one of ordinary skill to combine the teachings of Krishnaswamy et al., Marin and Jogikalmath et al. before the time of filing to include a plurality of granulates with a reasonable expectation of success. One of ordinary skill would have been motivated before the time of filing to combine the teachings of Krishnaswamy et al., Marin et al. and Jogikalmath et al. to further include coating seeds by coating granules and a binder on the surface of seed to protect seed for a prolonged period of time because Jogikalmath et al. teach seeds need protection over a prolonged period of time.
Response to Arguments
Applicant's arguments filed 3/23/2026 have been fully considered but they are not persuasive.
Applicant argues that Krishnaswamy et al. fails to teach a first biodegradable coating layer consisting essentially of polyhydroxyalkanoates and polylactic acid. It is for this reason that Marin et al. has been joined.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Krishnaswamy et al. (US 9,353,258; patented May 31, 2016) in view of Marin et al. (Microstructural Behaviors of Matrices Based on Polylactic acid and Polyhydroxyalkanoates, Journal of Agricultural and Food Chemistry, 2018, 66, pages 10033-10040) and Jogikalmath et al. (US 2014/0106964; published April 17, 2014) as applied to claims 1-9, 13, 14 and 23 in view of Watanabe (US 2010/0189799; published July 29, 2010).
Applicant’s Invention
Applicant claims a granular composition comprising a plurality of granulates selected from the group consisting of seeds, fertilizers and pesticides having a first biodegradable coating layer consisting essentially of polyhydroxyalkanoates (PHA) and polylactic acid (PLA) applied over the granulates, wherein PHA comprises 70-99 mole percent hydroxybutyrates and 1-30 mole percent a different hydroxyalkanoate having 5 to 22 carbon atoms and a second biodegradable coating layer comprising at least one polymer selected from polycaprolactone, polylactic acid, polybutylene succinate… etc. (Claim 1)
Determination of the scope and the content of the prior art
(MPEP 2141.01)
The teachings of Krishnaswamy et al., Marin et al. and Jogikalmath et al. are addressed in the above 103 rejection.
Ascertainment of the difference between the prior art and the claims MPEP 2141.02)
Krishnaswamy et al., Marin et al. and Jogikalmath et al. do not teach the granulates with a particle size before coating is 1-25 mm. It is for this reason that Watanabe is joined.
Watanabe teaches coated granules containing bioactive substances coated with urethane resin that are degradable in soil (abstract). The coated granules are obtained by reacting 5-45 parts aromatic polyisocyanate with an alcohol mixture comprising 10-90 part by weight polycaprolactone [0043]. The particle size of the coated granules are usually 0.1-15 mm [0057].
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
Krishnaswamy et al., Marin et al., Jogikalmath et al. and Watanabe all teach polymeric coatings. Therefore, it would have been prima facie obvious to one of ordinary skill to combine the teachings of Krishnaswamy et al., Marin et al., Jogikalmath et al. and Watanabe before the time of filing to include granulates with a particle size of 1-25 mm with a reasonable expectation of success. One of ordinary skill in the art would have been motivated at before the time of filing to combine the teachings of Krishnaswamy et al., Marin et al., Jogikalmath et al. and Watanabe because Watanabe teach granulates typically have a particle size of 0.1-15 mm.
Claim 16-22, 23, 26 and 27 are rejected under 35 U.S.C. 103(a) as being unpatentable over Krishnaswamy et al. (US 9,353,258; patented May 31, 2016) in view of Marin et al. (Microstructural Behaviors of Matrices Based on Polylactic acid and Polyhydroxyalkanoates, Journal of Agricultural and Food Chemistry, 2018, 66, pages 10033-10040) and Jogikalmath et al. (US 2014/0106964; published April 17, 2014).
Applicant’s Invention
Applicant claims a method of controlled release of a granular composition comprising providing a granular composition comprising a plurality of granulates selected from the group consisting of seeds, fertilizers and pesticides having a first biodegradable coating layer consisting essentially of polyhydroxyalkanoates (PHA) and polylactic acid (PLA) applied over the granulates, wherein PHA comprises 70-99 mole percent hydroxybutyrates and 1-30 mole percent a different hydroxyalkanoate having 5 to 22 carbon atoms and a second biodegradable coating layer comprising at least one polymer selected from polycaprolactone, polylactic acid, polybutylene succinate… etc. (claim 16)
Determination of the scope and the content of the prior art
(MPEP 2141.01)
With respect to claims 16-22, 23, 26 and 27 Krishnaswamy et al. teach polymer blends comprising polybutylene succinate and polyhydroxyalkanoates copolymers and methods of making articles, films and laminates with the polymers (abstract). In one embodiment the biodegradable copolymers include 3-hydroxybutyrate and one or more comonomers selected from 5-95 weight % 3-hydroxybutyrate, 3-hydroxyhexanoate and 3-hydroxyoctanoate in amounts ranging from 25-80 weight% of the copolymer (column 2, lines 44-53 and 62-67).
With respect to claim 7 of the instant application, Krishnaswamy et al. teaches the polyhydroxyalkanoates have a molecular weight of about 600,000-2,000,000 Daltons (column 2, lines 54-61). Krishnaswamy et al. teaches the compositions are used as coatings for pelleted fertilizer, pesticides and seeds (column 22, lines 26-38).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Krishnaswamy et al. do not teach that the first biodegradable layer also consists essentially of polylactic acid. It is for this reason that Marin et al. is joined.
Marin et al. films of polyhydroxyalkanoates (PHA) and polylactic acid (PLA) and their blends interact to improve water vapor barrier properties (abstract). Marin et al. teach that PHA and PLA are both biobased and biodegradable polymers which can be used as alternatives to other conventional polymers in different industrial applications (Introduction). The films were tested in soil containers for biodegradability by moisture and microorganisms in soil (Biodegration Test, page 10034). PLA-only films were more homogeneous then blends of PLA/PHA in ratios of 20:80 to 80:20 which appear more fibrous in appearance except at the 80:20 ratio (Figure 4, page 10037-10038). The PLA/PHA blends have improved barrier properties (page 10038). Additionally, PHA films exhibited remarkable degradation after 30 days, whereas the blends of PLA/PHA showed changes around 50 days which showed delayed degradation during composting (page 10038)
Krishnaswamy et al. do not teach a plurality of granulates are present or applying the formulation to soil and releasing the active ingredients by moisture. It is for this reason that Jogikalmath et al. is joined.
Jogikalmath et al. teach the seed coating systems comprising encapsulated active ingredients comprising active ingredients encapsulated in polymeric coatings (abstract). The need to protect seeds over a prolonged period of time during the seed lifecycle requires protection of the seed [0006]. The active ingredients are particles selected from pesticides and fertilizer bound to a seed by the polymeric coating [0017-18]. The coated seeds are made by coating granules with a binder on the surface of the seed and polymers include naturally derived polymers [0045-46]. A plurality of the granules are used to coat the seeds [0018]. The formulations are applied to soil and the polymeric coating release the active ingredients by a trigger that is moisture [0043-45].
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
Krishnaswamy et al., Marin et al. and Jogikalmath et al. all teach polymeric coatings. Therefore, it would have been prima facie obvious to one of ordinary skill to combine the teachings of Krishnaswamy et al., Marin and Jogikalmath et al. before the time of filing to include a first biodegradable layer consisting essentially of PHA and PLA because with a reasonable expectation of success. One of ordinary skill in the art would have been motivated before the time of filing to combine the teachings of Krishnaswamy et al., Marin et al. and Jogikalmath et al. to include a first biodegradable layer comprising PLA/PHA blends because Marin et al. teach PLA/PHA film blends have improved barrier properties and slower degradation times than when PHA is used alone. Furthermore, it would have been prima facie obvious to one of ordinary skill to combine the teachings of Krishnaswamy et al., Marin and Jogikalmath et al. before the time of filing to include a plurality of granulates with a reasonable expectation of success. One of ordinary skill would have been motivated before the time of filing to combine the teachings of Krishnaswamy et al., Marin et al. and Jogikalmath et al. to further include coating seeds by coating granules and a binder on the surface of seed to protect seed for a prolonged period of time because Jogikalmath et al. teach seeds need protection over a prolonged period of time.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE D JOHNSON whose telephone number is (571)270-3285. The examiner can normally be reached Monday-Friday 9:00 am-5:30 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, Bethany Barham can be reached on 571-272-6175. 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.
/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
DANIELLE D. JOHNSON
Examiner
Art Unit 1617
Prosecution Insights