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 .
Application Status
Claims 25-30, 33-34, 41-46, 49-50, 53-54 and 57-59 are pending.
Claims 1-24, 31-32, 35-40, 47-48, 51-52 and 55-56 are canceled.
The nonstatutory double patenting rejections U.S. Patent No. 11,254,619 B2 and Application No. 17/667,880 are overcome by Applicant’s filing (10/22/2025) of the Terminal Disclaimers.
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 25-30, 33-34, 41-46, 49-50, 53-54 and 57-59 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.
The claimed ranges:
“potassium bicarbonate between 4% by mass to about 90% by mass” (claim 25, claim 28, claim 44);
“an amount of citric acid is between about 2% by mass to about 90% by mass” (claim 27);
“an amount of carbonate compound between about 4% by mass to about 90% by mass” (claim 28, claim 43);
“potassium bicarbonate between 25.1% by mass to about 90% by mass” (claim 29);
“potassium bicarbonate between 35.1% by mass to about 90% by mass” (claim 33);
“potassium bicarbonate between 15.1% by mass to about 90% by mass” (claim 41)
“potassium bicarbonate between 20.1% by mass to about 90% by mass” (claim 45, claim 59);
“potassium bicarbonate between 61.1% by mass to about 90% by mass” (claim 49)
“potassium bicarbonate between 30.1% by mass to about 90% by mass” (claim 53, claim 57)
are not supported by the Specification’s disclosure of
“a solid bicarbonate and a solid acid yield compound between about 20% by mass to about 90% by mass,” [para. 06, 20, original claim 8] “
“the solid acid yielding compound is between about 2% by mass to about 55% by mass” [para. 06, 20, original claim 8, original claim 11]
“the solid bicarbonate compound is between about 6% by mass to about 60% by mass” [para. 06, 20, original claim 13]
examples amounting to values between 15% and 35% potassium carbonate [paras. 22, 23, 25, 27, 28,, 29, 30, 31]
in part because one must select several components, add up the individual values, determine the aggregate percentages, and then couple those aggregate percentages with other examples to create an otherwise unstated range. That is not a written description of the claimed range.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 25-28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jie (CN 101328087-A).
In regard to claims 25-28, Jie teaches a dry composition (e.g. effervescent tablet) [pg. 3, 2nd to last para.], comprising:
potassium bicarbonate (e.g. carbon dioxide agent in the present invention can be […] potassium bicarbonate) [pg. 4, 2nd para.] , between 4% by mass to about 90% by mass (e.g. carbon dioxide agent accounts for 15-30%) [pg. 3, last para.], 2% by mass to about 90% by mass citric acid (e.g. 15-30% acid agent; acid agent can be citric acid) [pg. 3, last para; pg. 4, 2nd para], between about .1% by mass to about 70% by mass biosurfactant (e.g. 0.5-3% surfactant; the surfactant can be […] saponin) [pg. 3, last para.; pg. 4, 2nd para] and molybdenum (e.g. inorganic fertilizer; ammonium molybdate) [pg. 3, last para.; pg. 4, 1st para.], further comprising a binding agent (e.g. wet binder) [pg. 3, last para.], further comprising an amount of a plant nutrient between about 10% by mass to about 80% by mass (e.g. plant nutrient accounts for 35-60%) [pg. 3, last para.].
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 nonobviousness.
Claims 29-30 and 33-34 are rejected under 35 U.S.C. 103 as being unpatentable over Nurnberg et al. (US Patent No. 6,565,881 B1) as evidenced by Curtin et al. (US Patent Publication No. 2009/0191254 A1), regarding claim 34.
In regard to claims 29-30 and 33-34, Nurnberg et al. disclose a dry composition (e.g. tablet), the effervescent tablets containing 60-92% of the carbonate/acid mixture [col. 3, lines 4-9] wherein the carbonate/bicarbonate-acid mixture consists of 5-80% of carbonate/bicarbonate […] such as sodium or potassium (bi)carbonate […] as well as 10-80% […] of an acid, especially an organic acid, such as citric or tartaric acid or fumaric acid or adipic acid or mixtures thereof [col. 3, lines 27-33] which equates to potassium bicarbonate between 3% by mass to about 74% by mass (e.g. as 5-80% bicarbonate based on the bicarbonate mixture present at 60-92%), an active component which includes urea [col. 3, lines 37-46] and lipid components [pg. 3, lines 18] such as soya oil (e.g. soybean oil) [col. 4, line 53], further comprising 0.1-5% biosurfactant (e.g. phospholipids) [col. 3, line 20; clm. 8] (see Curtin et al., para. 0052 demonstrating phospholipids are known biosurfactants). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [MPEP 2144.05].
Claims 41-44 are rejected under 35 U.S.C. 103 as being unpatentable over Hurst et al. (US Patent No. 2018/0084776 A1).
In regard to claims 41-44, Hurst et al. teach a dry composition (e.g. granular composition) [para 0167], comprising:
effervescent agents [pg. 7, table 1] comprising potassium bicarbonate and a solid acid yielding compound [0208] and a microorganism [pg. 7, table 1], wherein the microorganism includes Paenibacillus spp. [0175], further comprising a lubricant [pg. 8, table 1], wherein an amount of effervescent agent is between 1-20% by weight, an amount of CO2-generating agent is between 0.01-5% by weight and an amount of microorganism is present in an amount from 1 × 106 - 1 × 1010 cfu/g. “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.” [MPEP 2144.05 IIA]. In this case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine the optimal amounts of effervescent agent and microorganism to achieve the prior art’s desired amount of bacteria as required in cfu/gram. Hurst describes motivation to optimize the amount of CO2-generating agents (e.g. potassium bicarbonate) because he CO2-generating agent acts to enhance the attraction of the target insect pest to the granular composition by generating CO2, an insect attractant [0208].
Claims 45-46 are rejected under 35 U.S.C. 103 as being unpatentable over Gan et al. (CN 102648715 A – IDS 01/29/2024) as evidenced by Feedinamics (soybean oil nutritional values, 2020).
In regard to claims 45-46, Gan et al. is directed to a dry composition (e.g. granule) [clm. 9], comprising:
potassium bicarbonate [clm. 6] in an amount of 20.1% by mass to about 90% (e.g. 12.6 – 21.7 % when calculated at the endpoints) [clm. 3], an amount of solid acid yielding compound (e.g. citric acid) between 15-20% [clm. 3], a microorganism wherein the microorganism includes Trichoderma spp. [clm. 3], copper, zinc and manganese (e.g. edible oil is soybean oil) [clm. 8] (soybean oil contains copper, zinc and manganese nutrient) [Feedinamics, pg. 2, mineral elements], further comprising a lubricant (e.g. Tween 80) [clm. 3]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [MPEP 2144.05].
Claims 49-50 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (CN 103585184 A).
In regard to claims 49-50, Wang et al. disclose a dry composition (e.g. effervescent tablet) [para. 0001], comprising:
potassium bicarbonate (e.g. alkali source, wherein the alkali source is selected from potassium bicarbonate) [0028] between 10/415 – 40/149 = 2.4% - 27% by mass [0012], a solid acid yielding compound (e.g. an acid source) [0025], a microorganism (e.g. probiotic), wherein the microorganism includes Bacillus spp. and/or Saccharomyces spp. [0016], and a medium for carrying a microorganism, wherein the medium for carrying a microorganism includes dextrose (e.g. glucose) [0018], further comprising a binding agent [0029]. “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.” [MPEP 2144.05 IIA]. In this case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine the optimal amounts of effervescent agent to achieve the prior art’s desired amount of effervescent as the use of effervescent excipients (e.g. acid source and alkali source) is relatively simple [0009].
Claims 53-54 and 59 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (CN 103585184 A – PTO-892 11/21/2024) in view of Hurst et al. (US Patent Publication No. 2018/0084776 A1).
In regard to claims 53-54 and 59, Wang et al. disclose a dry composition (e.g. effervescent tablet) [para. 0001], comprising:
potassium bicarbonate (e.g. alkali source, wherein the alkali source is selected from potassium bicarbonate) [0028] between 30.1% by mass to about 90% by mass (e.g. 10-40 parts by weight) [0012], a solid acid yielding compound (e.g. an acid source) [0025], a microorganism (e.g. probiotic), wherein the microorganism includes Bacillus spp. and/or Saccharomyces spp. [0016], further comprising a binding agent [0029]. With regard to the claimed weight percentages: In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [MPEP 2144.05].
Wang discloses and a medium for carrying a microorganism, wherein the medium for carrying a microorganism includes a diluent selected from microcrystalline cellulose, dextrin, maltodextrin, soluble starch or lactose [0018]. The reference does not explicitly disclose wherein the medium for carrying the microorganism includes clay.
Hurst et al. teach a dry composition (e.g. granular composition) [para 0167] comprising effervescent agents [pg. 7, table 1] comprising potassium bicarbonate and a solid acid yielding compound [0208] and a microorganism [pg. 7, table 1]. The Hurst composition further comprises an inert bulking agent such talc or clay [0059]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform simple substation of one know element (e.g. diluent) for another (e.g. inert clay) to act as an inert filler. One of ordinary skill in the art would have been motivated to do so to obtain predictable results.
Claims 57-58 are rejected under 35 U.S.C. 103 as being unpatentable over Gan et al. (CN 102648715 A) in view of Millard et al. (US Patent No. 2,985,562) and Anzai et al. (US Patent Publication No. 2013/0023017 A1).
In regard to claims 57-58, Gan et al. is directed to a dry composition (e.g. granule) [clm. 9], comprising:
potassium bicarbonate [clm. 6] in an amount of 12.6 – 21.7 % when calculated at the endpoints [clm. 3], an amount of solid acid yielding compound (e.g. citric acid) between 15-20% [clm. 3], an amount of microorganism between 35-45% [clm. 7], wherein the microorganism includes Trichoderma spp. [clm. 3], and a medium for carrying a microorganism (e.g. dextrin) [clm. 3], further comprising a lubricant (e.g. Tween 80) [clm. 3].
With regard to the claimed weight percentage(s) of potassium bicarbonate, Gan does not explicitly disclose potassium bicarbonate between 30.1% to about 90%. Millard et al. is directed to effervescent compositions. Where the effervescent composition is formed of a mixture of an alkali metal bicarbonate and citric acid, the precise stoichiometric ratio of citric acid to bicarbonate in the basic effervescent formulation is three mols of bicarbonate being necessary to neutralize each mol of citric acid [col. 3, lines 28-35]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to increase the amount of bicarbonate component in Gan’s composition through routine experimentation within prior art conditions to meet or exceed to the stoichiometric ratio of bicarbonate and acid described by Millard and to be within the claimed range. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. Millard demonstrates the weight percentage of bicarbonate and acid components to be recognized as a result-effective variable, i.e., a variable which achieves a recognized result (e.g. as a reaction component for the neutralization of the acid). One of ordinary skill in the art would have been motivated to do so because the use of an excess of acid is not necessary and entirely satisfactory formulations are obtained where the exact stoichiometric ratio is employed [Millard, col. 3, lines 40-45]. Alternatively, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that there the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See Inre Boesch, 205 USPQ 215 (CCPA 1980).
Gan discloses a medium for carrying a microorganism (e.g. dextrin) [clm. 3] but does not explicitly disclose wherein the medium includes dextrose. However, Anzai describes culturizing a microorganism [abstract]. “Culturing microorganisms can be carried out, for example, by solid culturing under aerobic conditions […]. As a medium for culturing microorganisms, commonly used components, for example, as carbon sources, glucose, sucrose, starch syrup, dextrin, starch, glycerol, molasses, animal and vegetable oils or the like, can be used. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform simple substation of one know element (e.g. dextrin) for another (e.g. glucose). One of ordinary skill in the art would have been motivated to do so to obtain predictable results.
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 25-28 and 49-50 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-24 of copending Application No. 18/102,003 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are not patentably distinct from each other because the claim(s) being examined are overlap with the sub-genus claimed in a conflicting patent (i.e., the scope of the reference claim falls within the scope of the examined claim). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant argues (pgs. 9-10) the specification complies with the written description requirement as noted in paragraph [011] which includes boilerplate language attempting to broaden the original description. The general statement that all values including every possible intermediate value are disclosed is, by itself, not a substitute for a clear, specific, and unambiguous description of the actual invention and all its potential variations and sub-combinations. In this case, the original description does not adequately describe the claimed ranges and thus the generic boilerplate is not sufficient to support the amended claim range limitations. In particular, the claimed ranges:
“potassium bicarbonate between 4% by mass to about 90% by mass” (claim 25, claim 28, claim 44);
“an amount of citric acid is between about 2% by mass to about 90% by mass” (claim 27);
“an amount of carbonate compound between about 4% by mass to about 90% by mass” (claim 28, claim 43);
“potassium bicarbonate between 25.1% by mass to about 90% by mass” (claim 29);
“potassium bicarbonate between 35.1% by mass to about 90% by mass” (claim 33);
“potassium bicarbonate between 15.1% by mass to about 90% by mass” (claim 41)
“potassium bicarbonate between 20.1% by mass to about 90% by mass” (claim 45, claim 59);
“potassium bicarbonate between 61.1% by mass to about 90% by mass” (claim 49)
“potassium bicarbonate between 30.1% by mass to about 90% by mass” (claim 53, claim 57)
are not supported by the Specification’s disclosure of
“a solid bicarbonate and a solid acid yield compound between about 20% by mass to about 90% by mass,” [para. 06, 20, original claim 8] “
“the solid acid yielding compound is between about 2% by mass to about 55% by mass” [para. 06, 20, original claim 8, original claim 11]
“the solid bicarbonate compound is between about 6% by mass to about 60% by mass” [para. 06, 20, original claim 13]
examples amounting to values between 15% and 35% potassium carbonate [paras. 22, 23, 25, 27, 28,, 29, 30, 31]
Here, Applicant seeks to expand the coverage of the specification by employing vague, general terms, without providing explicit or implicit written support for the ranges and components presently claimed.
Applicant argues (pgs. 10-11) Jie does not disclose a biosurfactant. This argument is not persuasive. Jie discloses. 0.5-3% surfactant; the surfactant can be […] saponin [pg. 3, last para.; pg. 4, 2nd para]. Saponins are plant-derived biosurfactants. Applicant argues a narrower definition in which the claimed term “biosurfactant” is limited to a material synthesized by bacteria, fungi or yeast. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “biosurfactant” is given its plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the relevant time. A biosurfactant is a substance produced by a living organism (like a plant or microorganism) that has the ability to reduce the surface tension between different liquids, solids, and gases. Saponins are a specific type of biosurfactant primarily found in plants. Thus, Jie’s teaching of a saponin (e.g. the surfactant can be […] saponin) [pg. 3, last para.; pg. 4, 2nd para] is considered to meet the claimed limitation absent any disclose in the Specification redefining the ordinary meaning of the term “biosurfactant”.
Applicant’s arguments (pgs. 11-13) with respect to the rejection of claims 29-30 based on the Gong reference have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Nurnberg et al. (US Patent No. 6,565,881 B1) which discloses a composition containing urea [col. 3, lines 37-46].
Applicant argues (pgs. 13-14) Nurnberg fails to teach or suggest copper, zinc or boron because the Nurnberg reference describes hydrogenated soya oil and a hydrogenation process would be expected to eliminate any trace elements such as copper, zinc, and manganese which are not present in any kind of meaningful amount in raw soya oil anyways. This argument is not persuasive. Nurnberg is cited as teaching an active component which includes urea [col. 3, lines 37-46] as required by the alternative grouping recited in claim 33. The claim does not require the presence of copper, zinc, boron, etc. in addition to urea.
Applicant argues (pgs. 14-15) Nurnberg’s teaching of a bath tablet is not relevant to fertilize formulations or plant nutrition. 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., a composition for use as a fertilizer) are not recited in the rejected claim(s). 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).
Applicant argues (pgs. 15-16 and 24) the Hurst reference only describes 1-20% effervescent agents which is equivalent to a maximum of 7.8% citric acid and 12.2% potassium bicarbonate. “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.” [MPEP 2144.05 IIA]. In this case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine the optimal amounts of effervescent agents and CO2-generating agents such as potassium bicarbonate because Hurst describes motivation to optimize the amount of CO2-generating agents (e.g. potassium bicarbonate) because the CO2-generating agent acts to enhance the attraction of the target insect pest to the granular composition by generating CO2, an insect attractant [0208]. Furthermore, there is no showing of criticality of the claimed range with respect the amount of potassium bicarbonate present.
Applicant argues (pgs. 16-17) Hurt’s teaching of an insect bait composition is not relevant to fertilize formulations or plant nutrition. 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., a composition for use as a fertilizer) are not recited in the rejected claim(s). 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).
Applicant argues (pg. 16) Hurst teaches away from amounts of effervescent agent above 20%. In response to this argument, it is noted that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Additionally, an amount of effervescent agent between 1-20% overlaps with the claimed range(s).
Applicant argues (pgs. 17-18) Gan’s teaching of soybean oil does not provide copper, zinc, or manganese as required by the claims. This argument is not persuasive. Gan discloses an edible oil in the form of soybean oil [clm. 8]. Soybean oil contains copper, zinc and manganese nutrient) [Feedinamics, pg. 2, mineral elements]. Arguments directed to the amount of copper, zinc, and/or manganese provided by Gan are not persuasive because the present claims are not limited to any specific amount of these components, only that they are present. Gan’s teaching of soybean oil inherently discloses measurable amounts of copper, zinc and manganese as demonstrated by Feedinamics which are not considered trace impurities and instead are recited as mineral elements. 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., the amount of copper, zinc and manganese within the composition of claims 45-46) are not recited in the rejected claim(s). 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). Gan discloses copper, zinc and manganese (e.g. edible oil is soybean oil) [clm. 8] (soybean oil contains copper, zinc and manganese nutrient) [Feedinamics, pg. 2, mineral elements]. Furthermore, copper, zinc and manganese are traditionally used as micronutrients and supplied in small amounts, regardless.
Applicant argues (pgs. 18-19) Gan’s teaching of an pesticidal composition is not relevant to fertilize formulations or plant nutrition. 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., a composition for use as a fertilizer) are not recited in the rejected claim(s). 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).
Applicant argues (pg. 20) Wang does not disclose potassium bicarbonate values within the claimed range. In response to this argument, it is considered obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine the optimal amounts of effervescent agent to achieve the prior art’s desired amount of effervescent as the use of effervescent excipients (e.g. acid source and alkali source) is relatively simple [0009]. There is no showing by Applicant of the criticality of the claimed range. Further, there is no disclose of the claimed range in the Specification as originally filed (see rejection under 35 U.S.C. 112(a)). Applicants arguments that Wang teaches away from increasing the amount of potassium bicarbonate (pg. 21) are not persuasive because there is no disclosure by Wang indicating “high alkali loading would be inappropriate for a medicinal dosage” as recited by Applicants.
Applicant’s arguments (pg. 21) that the use of potassium bicarbonate at 61.1%-90% is critical to achieving beneficial results is not based on evidence. Applicant’s Specification does not disclose potassium bicarbonate at these values and any beneficial results achieved by Applicants are not based on evidence and thus there is no showing that the objective evidence of nonobviousness is commensurate in scope with the claims. See MPEP § 716.
Applicant argues (pgs. 21-24) Wang’s teaching of an pharmaceutical composition is not relevant to fertilize formulations or plant nutrition. 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., a composition for use as a fertilizer) are not recited in the rejected claim(s). 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).
Applicant argues (pgs. 22 and 26), with regard to claims 53-54 and 57-58 Wang and Anzai does not disclose a medium for carrying a microorganism. This argument is not persuasive. Wang and Anzai discloses wherein the microorganism is cultured on a medium including dextrose (e.g. glucose) [0018]. Dextrose is defined by Applicants as a medium for suitable for carrying microorganisms [para. 15].
Applicant argues (pg. 25) a skilled artisan would not alter Gan’s composition below the ranges disclosed in the reference. This argument is not persuasive. Miller demonstrates the weight percentage of bicarbonate and acid components to be recognized as a result-effective variable, i.e., a variable which achieves a recognized result (e.g. as a reaction component for the neutralization of the acid). One of ordinary skill in the art would have been motivated to do so because the use of an excess of acid is not necessary and entirely satisfactory formulations are obtained where the exact stoichiometric ratio is employed [Millard, col. 3, lines 40-45]. The presence of a known result-effective variable would be motivation for a person of ordinary skill in the art to experiment to reach another workable product or process. [MPEP 2144.05].
Applicant’s arguments (pg. 26) that the use of potassium bicarbonate at 30.1% or greater is critical to achieving beneficial results is not based on evidence. Applicant’s Specification does not disclose potassium bicarbonate at these values and any beneficial results achieved by Applicants are not based on evidence and thus there is no showing that the objective evidence of nonobviousness is commensurate in scope with the claims. See MPEP § 716.
Applicant argues (pgs. 27-28) claims 25-28 and 49-50 are patentably indistinct from claims 14-24 of copending Application No. 18/102,003 (reference application). However, applicant’s reply does not present arguments pointing out the specific distinctions believed to render the claims, including any amended or newly presented claims, patentable over the applied reference. The claims are not patentably distinct from each other because the claim(s) being examined overlap with the sub-genus claimed in a conflicting patent (i.e., the scope of the reference claim falls within the scope of the examined claim). For illustrative purposes, the reference claim 20 directed to a composition comprising potassium bicarbonate between 50.1% by mass to about 98.99% by mass, an acid, and […] Bacillus Subtilis falls within the scope of claim 49 to composition, comprising potassium bicarbonate between 61.1% by mass to about 90% by mass, a solid acid yielding compound, and a microorganism, wherein the microorganism includes Bacillus spp.
For these reasons Applicant's arguments filed 10/22/2025 have been fully considered but they are not persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Hellweg, Thomas, Thomas Sottmann, and Julian Oberdisse. "Recent advances in biosurfactant-based association colloids—self-assembly in water." Frontiers in Soft Matter 2 (2023): 1081877. (Year: 2023).
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.
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/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731 November 4, 2025