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 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.
Claim(s) 1-4, 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/229757 A1, for the reasons given in the last Office Action. Applicant’s argument, that the only detailed example of WO 2018/229757 A1 employs potash (KCl) - -not potassium sulfate – and does so without binder, is not convincing, since WO 2018/229757 A1 discloses in the sentence bridging pages 8 and 9, as well as claims 2 and 3, that potassium sulfate can be employed as the potassium source and with the addition of binder.
Response to Arguments
Applicant’s argument, that WO 2018/229757 A1 provides no teaching or expectations that polyhalite and potassium sulfate could be successively compacted together, let alone at the claimed ratio, is not convincing, since is only necessary that the reference fairly teach or suggestsdoing what applicant has done. Applicant’s argument, that the specific ratio of 1.1:0.9 between polyhalite and potassium sulfate was found to be critical for achieving mechanical stability, and that ratios outside this narrow range produce weak, friable granules, is not convincing, since there is no evidence on record to support such contention. Applicant’s argument, that WO 2018/229757 A1 provides no teaching or guidance as to selecting potassium silicate for compacting two specific materials – potassium sulfate and polyhalite – nor any indication of a critical narrow range of 1-2 % w/w, is not convincing, since WO 2018/229757 A1 discloses potassium silicate as a binder in the paragraph bridging pages 5 and 6, and further teaches on page 7, lines 16-18 that the binder is preferably present in a concentration between 1-5% w/w. Applicant’s argument, that WO 2018/229757 A1 discloses granule strength exceeding 2kgF per granule only after drying or curing, whereas applicant’s granules reach at least 2 kgF per granules immediately after production, is not convincing, since there is no evidence on record to support such contention.
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 1-4, 8 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 10,934,225. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims would be obvious variants of the claims of US 10,934,225.
Claims 1-4, 8 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-8 of copending Application No. 17/785098. Although the claims at issue are not identical, they are not patentably distinct from each other because it would be obvious to determine suitable amounts of the potassium sulfate and polyhalite in the composition and method recited in the claims of 17/785098.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
THIS ACTION IS MADE FINAL. 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 WAYNE A LANGEL whose telephone number is (571) 272-1353. The examiner can normally be reached Monday through Friday from 8:15 am to 4:15 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WAYNE A LANGEL/Primary Examiner, Art Unit 1736 /WAYNE A LANGEL/Primary Examiner, Art Unit 1736
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