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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/12/2026 has been entered.
Claim Interpretation
The claim term “activated starch” is given its plain meaning as would be understood by one of skill in the art, to include, non-exhaustively, starch derivatives which may have been prepared by physically, enzymatically or chemically treating native starch to change its properties.
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.
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 1, 5 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over KS-AG (DE 102017010086-A1, cited in IDS 02/04/2025) in view of Farnworth (US Patent Publication No. 20170137333-A1).
In regard to claim 1, KS-AG discloses chloride-free (e.g. KS-AG’s composition is not described as comprising any chloride-containing components other than the natural chloride impurities present in polyhalite) fertilizer granules [para. 0042] comprising:
polyhalite (e.g. polyhalite, not described as calcined polyhalite);
Sulphate of Potash (e.g. salt B) [0044], having a particle size of less than 2 mm (e.g. the salt grains in the salt mixture have a particle size of not more than 2 mm) [0050]; and
starch as a binder [0039], present in a concentration of 2% w/w (e.g. the proportion of organic binders will typically not exceed 2% by weight) [0039],
wherein the ratio of the uncalcined polyhalite (e.g. polyhalite) to the sulphate of potash is from 1:4 to 4:1 (e.g. 20 to 80% by weight polyhalite, 20 to 80% by weight salt B) [0045], and
the granule has a crushing strength of at least 2 Kg/granule (e.g. granules crushing strength between 10 N and 400 N, which equates to 1-41 kgf) [0070]. Here, with regard to the concentration and strength, 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).
KS-AG does not disclose a specific embodiment in which the starch is “activated starch”. KS-AG references a similar method whereby polyhalite granules are mixed with a pre-swollen starch binder [0007] as described in the Farnworth reference. Farnworth is directed to forming a pelletised evaporate mineral product [abstract] where the evaporite mineral is polyhalite [0018]. Farnworth describes adding a binder to the polyhalite to help adhere to itself and increase the strength the pellets [0028]. Pre-gelled corn starch (e.g. activated starch) is particularly suitable [0028]. It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to choose a pre-gelled starch such as that described by Farnworth and referenced by KS-AG for use in polyhalite granulation. One of ordinary skill in the art would have been motivated to substitute the starch binder component which is disclosed generally with a pre-swollen/pre-gelled starch (e.g. activated starch) to yield predictable results due the pre-gelled starch’s ability to not increase the products tendency to absorb water [Farnworth; 0028] which affects the product storage stability
In regard to claims 5 and 11, KS-AG disclose the granule of claim 1, wherein the ratio of uncalcined polyhalite to the sulphate of potash is 55:45 (e.g. 20 to 80% by weight polyhalite, 20 to 80% by weight salt B) [0045]. 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). 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. "[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).
In regard to claim 12, KS-AG disclose the granule of claim 1,wherein the granule has a crushing strength of at least 2 Kg/granule (e.g. granules crushing strength between 10 N and 400 N, which equates to 1-41 kgf) [0070]. Additionally, Farnworth describes binder helps the polyhalite powder to adhere to itself and increases the strength of the eventual pellets and that, generally, the accepted lower limit for agricultural pellets is 2.2 kgf [0028].
Response to Arguments
Applicant argues (pgs. 5-6) KS-AG does not teach or suggest the presently claimed activated starch binder. This argument is not persuasive. However, in an effort to advance prosecution, reference to the Farnworth prior art cited by KS-AG is included in the rejection above. KS-AG does not disclose a specific embodiment in which the starch binder is described as “activated starch”. KS-AG references a similar method whereby polyhalite granules are mixed with a pre-swollen starch binder [0007] as described in the Farnworth reference. Pre-gelled corn starch (e.g. activated starch) is particularly suitable due to its ability to not increase the products tendency to absorb water [Farnworth; 0028]. Here Farnworth provides motivation that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention [MPEP 2143].
Applicant argues (para. bridging pgs. 5-6) KS-AG identifies disadvantages associated with the process of Farnworth. In response to applicant's argument that KS-AG describes Farnworth’s pelletizing process as more energy-intensive than the reference’s press agglomeration, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Here, the Examiner is not suggesting that, in looking to the teachings of Farnworth, one of skill would have incorporated the reference’s agglomeration process. Instead, Farnworth describes advantages to using pre-swollen (e.g. activated) starch as a binder within the fertilizer system, absent any requirement for a particular pelletization process.
Applicant argues (pg. 6, 1st full para.) KS-AG identifies starch as one member of a broad and undifferentiated class of optional organic binders. This argument is not persuasive. Here the list of binder material taught by KS-AG is only a modest size of about 7 different materials. It is well within the level of one of ordinary skill in the art to select a component explicitly recited by the reference (e.g. starch) as a binder.
Applicant argues (pg. 6, 1st full para.) KS-AG expresses a preference for binder contents below 1 wt.% and of skill in the art would not select the claimed concentration of 2% w/w. In response to this argument KS-AG is cited as teaching a starch binder present in a concentration of 2% w/w [0039] which is within the claimed range. While KS-AG describes binder concentrations less than 1%, “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).
Applicant argues (pgs. 6-7; pg. 9) the criticality of selecting the activated starch binder with reference to the results shown in Table 1. Here, Applicant’s results related to a starch binder (G-242) compared to other binders (e.g. meta kaolin, potassium silicate, etc.) are not considered a comparison of the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. [MPEP 716.02(e)]. The showing is not commensurate in scope with the claims. “Where the issue of criticality is involved, the applicant has the burden of establishing his position by a proper showing of the facts upon which he relies.” The evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319. Here Applicant’s showing does not demonstrate activated starch as a binder in a concentration of 2% w/w is critical to achieving unexpected results.
Applicant argues (pgs. 8-9) the claimed crushing strength limitation(s) defines a technically significant and non-obvious property of the claimed granules. This argument is not persuasive. Here, KS-AG disclose the granule of claim 1, wherein the granule has a crushing strength of at least 2 Kg/granule (e.g. granules crushing strength between 10 N and 400 N, which equates to 1-41 kgf) [0070]. Additionally, Farnworth describes the binder’s role to help the polyhalite powder to adhere to itself and increases the strength of the eventual pellets and that, generally, the accepted lower limit for agricultural pellets is 2.2 kgf [0028]. The formulation of a fertilizer granule having a crushing strength greater than the accepted lower limit for agricultural pellet strength is not considered non-obvious in view of the teachings of the prior art.
In response to applicant's argument (pgs. 10-11) that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
For these reasons Applicant's arguments filed 07/12/2026 have been fully considered but they are not persuasive.
Conclusion
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.
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, Amber R Orlando can be reached at (571) 270-3149. 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.
/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731 August 24, 2026
