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 .
Claim Interpretation
The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004). "The word ‘comprising’ transitioning from the preamble to the body signals that the entire claim is presumptively open-ended." Id. The transitional phrase "consisting of" excludes any element, step, or ingredient not specified in the claim. In re Gray, 53 F.2d 520, 11 USPQ 255 (CCPA 1931); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948). When the phrase "consisting of" appears in a clause of the body of a claim, rather than immediately following the preamble, there is an "exceptionally strong presumption that a claim term set off with ‘consisting of’ is closed to unrecited elements." Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1359, 119 USPQ2d 1773, 1781 (Fed. Cir. 2016). [T]he use of "consists" in the body of the claims did not limit the open-ended "comprising" language in the claims (emphases added). Id. at 1257, 73 USPQ2d at 1367.
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 26-27 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.
New claim 26 recites “applying the fertilising composition dissolved in water by fertigation or foliar application […] in a quantity of 0.5 to 20 kg/ha” (emphasis added). This Specification as originally filed provides support for applying the fertilizer in granular form in an amount of in the form of 75 to 1,500 kg/ha [pg. 7, lines 25-27]. The Specification as originally filed describes application in a quantity of 0.5 to 20 kg/ha and 0.06 to 1 kg/ha as a hydrosoluble powder by fertigation or foliar application prior dissolution in water, respectively” [original claim 20, original claim 23; Specification pg. 7, lines 20-30]
New claim 27 recites “applying the fertilising composition dissolved in water by fertigation or foliar application […] in a quantity of 0.06 to 1 kg/ha” (emphasis added) This Specification as originally filed provides support for applying the fertilizer in granular form in an amount of in the form of 75 to 1,500 kg/ha [pg. 7, lines 25-27]. However, the claims are directed to application of a liquid fertilizing composition (e.g. dissolved in water for application by fertigation or foliar application) with the Specification describing this type of application in amounts from 0.06 to 20 kg/ha [pg. 7, lines 22-24].
Regarding claims 26 and 27, here “respectively” means “in the order already mentioned.” It links two parallel lists so the reader knows which item corresponds to which. Thus the Specification as originally filed only provides support for the two separate limitations 1) application in a quantity of 0.5 to 20 kg/ha when applied via fertigation and 2) application in a quantity of 0.06 to 1 kg/ha when applied via foliar application and not vice versa.
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 21 and 26-27 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.
Claim 21 recites the limitation "the combination fertilising composition" in line 3. There is insufficient antecedent basis for this limitation in the claim. The term “combination fertilising composition” is in the first step but the claims refers to “the fertilising composition” in the 2nd and 3rd step. For the purposes of examination, these limitations are considered interchangeable.
In regard to claim 21, the first fertilising composition is limited to “consist[s] of 100% glyceric acid” and “in the form of a hydrosoluble powder or liquid”. The transitional phrase “consists of” excludes any element, step, or ingredient not specified in the claim and it is unclear how 100% glyceric acid can be in the form of a powder because the organic compound glyceric acid is a colorless syrup (i.e. a liquid). The term is indefinite because the specification does not clearly redefine the term beyond its inherent chemical characteristics at room temperature.
Claim 26 recites the limitation "the fertilising composition dissolved in water" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 27 recites the limitation "the fertilising for use" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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 21 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hayashi et al. (US Patent Publication No. 2008/0139391 A1).
In regard to claims 21, Hayashi teaches a method of applying a fertilising composition (e.g. application of a fertilizer together with a plant activating agent) [para. 0065] comprising the steps of:
forming a combination fertilizing composition in the form of a hydrosoluble powder, granulate or liquid (e.g. any one of liquid, flowable, wettable powder, granule, dust formulation and tablet) [0045] where the fertilizing composition includes
forming a first composition consisting of glyceric acid (e.g. a plant activating agent) [0026] wherein the plant activating agent is a glycerol derivative [0038] selected from glyceric acid [0039], where the derivative is described only as glyceric acid, one of skill in the art would interpret this to mean 100% glyceric acid free from additional fertilizers, absent teaching otherwise; and
forming a second composition selected from nitrogen fertilizer, phosphorus fertilizer, potassium fertilizer, calcium fertilizer, micronutrients, boron fertilizer and combinations thereof [0062];
combining the first fertilizing composition and the second composition to form a fertilizing composition (e.g. application of a fertilizer together with a plant activating agent) [para. 0065];
dissolution in water of the combination fertilizing composition for application by fertigation or foliar application (e.g. water and/or solvent may be used) [0066]; and
applying the fertilizing composition by fertigation or foliar application (e.g. providing the fertilizer component together with irrigation-water) [0062].
Response to Arguments
Applicant's arguments filed 08/12/2026 have been fully considered but they are not persuasive. Applicant argues (para. bridging pgs. 5-6) Hayashi does not teach wherein the first fertilising composition is consisting of 100 % by weight glyceric acid because glyceric acid is used combination with additional fertilizing components, surfactants and chelating agents. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., application of a composition consisting of only 100% glyceric acid, not combined with additional fertilizing components) are not recited in the claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). While the body of the claim employs the closed transitional phrase “consisting of” in reference to 100% glyceric acid, the preamble utilizes the open-ended term “comprising”. The use of “comprising” in the preamble allows for the presence of additional elements in the overall combination, even if one specific component is defined narrowly. See MPEP 2111.036. When viewed in this light, the term “consisting of” is exclusionary only to the extent that the prior art teaches a “first composition” as part of a combination.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Smith whose telephone number is (571)270-3599. The examiner can normally be reached Monday - Friday 9:30am-6pm EST.
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/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731 August 20, 2026
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