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 Status
Applicant’s response of September 16, 2025, has been entered. Claims 1, 2, and 11 have been amended, claims 4 and 13-15 have been cancelled, no claims have been newly added, and claim stands withdrawn. Accordingly, claims 1-3 and 5-12 are pending in the application
Claims 1-3 and 5-11 are under current examination.
Withdrawn Claim Objection
Claim 2 was objected to in the previous Office action mailed June 17, 2025, for not having a dash between “2” and “propenamide” and the misspelling of “propanoic acid”. Applicant has amended claim 2 to correct the aforementioned issues. Accordingly, the objections are hereby withdrawn. The claims are however subject to new rejections over the prior art of record, as set forth below.
Withdrawn 35 USC § 112(b) Claim Rejection
The rejected under 35 U.S.C. 112(b) is withdrawn in view of the new grounds of rejection necessitated by Applicant’s amendment of September 16, 2025.
New Claim Rejections - 35 USC § 112(b)
Applicant’s amendment necessitates the new grounds of rejection
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 1-3 and 5-11 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 1 and 11 have been amended to recite the broad recitation “wherein the bioactive agent is a sulfonylurea herbicide”, and the claim also recites specifically pyrazosulfuron-ethyl which is the narrower statement of the limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 1 and 11 recite the term “100 plus” when describing the mesh size of the granulated superabsorbent polymer. The specification does not define the term “100 plus,” so the broadest reasonable interpretation is taken. 100 plus mesh size is interpreted to mean any mesh size of 100 and above, and there is a lack of support in the instant specification as to how high above 100 the mesh size can be. Therefore, it is unclear how high the mesh size can go in order for the granule size to fit the claims.
Claims 2, 3, and 4-10 are included in the rejection as they depend directly or indirectly from independent claim 1.
Response to arguments:
To the extent that Applicants’ arguments are pertinent to the standing 112 rejection, they are addressed as follows:
Applicants traverse the rejection, arguing that the term “100 plus” is a common term of art meaning any mesh with more than 100 openings per square inch.
Applicants’ argument have been fully considered, but not found persuasive. Applicant has provided no evidence to support his response that the term “100 plus” is a common term of art, but rather makes a conclusionary statement. A conclusionary statement without evidence is not persuasive.
New Claim Rejections - 35 USC § 112(d)
Applicant’s amendment necessitates the new grounds of rejection
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 8 and 9 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. Claim 1 and been amended to include the limitation “wherein the bioactive agent is a sulfonylurea herbicide specifically pyrazosulfuron-ethyl”. Dependent claims 8 includes the limitation wherein the bioactive agent is a sulfonylurea herbicide and claim 9 which depends from claim 8 recites the specific sulfonylurea as pyrazosulfuron-ethyl. Accordingly, claims 8 and 9 no longer further limit claim 1.
Applicant may cancel the claim(s), amend the claim(s), or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Response and Maintained Claim Rejections - 35 USC § 103
Applicant’s claim amendments have necessitated the modification to the grounds of rejection.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3 and 5-11 remains rejected, in modified form, under 35 U.S.C. 103 as being unpatentable over WO 2016162783 (Shirsat et al.) published 10/13/2016 (cited in the PTO-892 with this action) in view of US 7,425,595 B2 (Savich et al.) published 09/16/2008 (cited in the PTO-892 with this action) and US 8,114,814 B2 (Ohno et al.) published 02/14/2012 (cited in the PTO-892 with this action) for reasons of record.
Shirsat teaches that superabsorbent polymers (SAPs) improve supply of water in the soil (p. 1 lines 7-8). Shirsat teaches a method of improving the quality of plants/soil comprising contacting the soil with a composition comprising at least one SAP and at least one water soluble phosphate, further comprising at least one plant advantageous additive (p. 13 lines 11-13; Claims 1 and 2). Shirsat teaches the SAP is starch-g-poly (2-propenamide-co-2-propenoic acid) potassium salt (Claim 7; p. 8 lines 6-8). This SAP is the Applicant’s elected species, and these teachings read on the superabsorbent polymers recited in instant claims 2 and 3. Shirsat teaches the plant advantageous additive is selected from a group including herbicides. Herbicides read on a bioactive agent, as recited in instant claim 6.
Shirsat teaches the composition may be applied in a granular or powdered form (p. 10 lines 26-27). Shirsat teaches a process for preparing a granular composition including the SAP that comprises mixing the SAP with a fertilizer, binding agent, water soluble phosphate, and water, before granulating all of the components together to form granules that are subsequently dried (p. 12 lines 20-30). Shirsat exemplifies this method by mixing Applicant’s elected species of SAP, starch-g-poly (2-propenamide-co-2-propenoic acid) potassium salt, with the other ingredients and forming a dough by extrusion, drying the extruded granules, and measuring water absorbance of the dried composition (p. 17 Example 2, lines 12-19). Because Shirsat teaches granulation of a mixture of ingredients including the SAP in order to form a granulated composition as product, Shirsat inherently teaches that 100% of the SAP polymers within the granulated composition are granulated, and reads on the limitations of instant claims 5 and 10.
Shirsat differs from the instantly claimed invention in that it fails to teach the size of the granulated SAP is either 100 plus mesh or 1-20 mesh, as recited in instant claims 1 and 11. Furthermore, Shirsat fails to teach that the bioactive agent is in an amount of 0.1% to 20% of the composition, as recited in instant claim 7. Finally, Shirsat fails to teach the bioactive agent (herbicide) is a sulfonylurea herbicide, specifically a prazosulfuron-ethyl, as recited in instant claims 1, 8, 9 and 11, respectively.
Savich teaches a method for delivering a beneficial additive in agricultural applications which includes obtaining a beneficial additive combined with a superabsorbent starch graft copolymer and dispensing the combined SAP and additive in an agricultural environment (Abstract). Savich teaches the beneficial additives include herbicides (Col. 8 lines 33-42). Savich teaches that, in some applications where the starch graft copolymer is applied directly into the soil with the crop, the particle size is courser than about 50 mesh, such as between about 8 to about 25 mesh; this particle size range correlates for broadcasting or metering the starch-based SAP particles through existing agricultural application equipment (Col. 6 lines 52-64).
Ohno teaches the use of two or more herbicides together to achieve herbicidal effects which last longer and are sufficiently obtained at smaller total dosages compared with when each pesticide is used independently; the herbicidal combinations are safe and sufficient for rice, wheat, barley, and other crops (Col. 1-2 bridging para). Ohno teaches the herbicide compositions are made into formulations that include wettable powders, dustable powders, granules, and the like (Col. 16 lines 6-15). Ohno exemplifies formulation of one of these herbicidal compositions into a wettable powder by mixing and kneading the components together; the composition comprises 0.3 parts (0.3%) pyrazosulfuron-ethyl in combination with two other herbicides, and the total amount of herbicide in the wettable powder (pyrazosulfuron-ethyl + clomazone + compound 33) is 0.3 parts + 5 parts + 2 parts, which the examiner has calculated to be 7.3% of herbicidal agents in the total composition (Col. 20 Formulation example 5). Ohno teaches testing for herbicidal effect by paddy treatment on rice and other plants, wherein the paddy soil containing the growing seeds was sprayed with a wettable powder formulation comprising the pyrazosulfuron-ethyl by itself, as well as combinations of pyrazosulfuron-ethyl and one to two other herbicides (Col. 22 Test Example 2; Table 6). Ohno demonstrates the effectiveness of pyrazosulfuron-ethyl, either alone or in combination with one to two other herbicides, when applied in a wettable powder formulation to rice paddy soil in order to kill weeds while limiting effect on the seeding rice (Col. 23-24 Table 6; Col. 18 lines 10-26).
It would have been prima facie obvious before the effective filing date of the claimed invention for a person having ordinary skill in the art to (1) use SAP polymers that are granulated to a size of between 8-25 mesh in the granular SAP product taught by Shirsat, and (2) add the herbicide pyrazosulfuron-ethyl, either alone or in combination with the other herbicides taught by Ohno at the taught percentages, to the granulated SAP product of Shirsat in order to apply the product to paddy fields containing rice seeds to simultaneously improve the supply of water in the paddy soil and kill weeds. The ordinarily skilled artisan would have been motivated to use the mesh sizes taught by Savich and make modification (1) in order to have the ability to broadcast or meter the SAP granulated product directly to the soil using conventional agricultural application equipment. Because the prior art’s mesh size range overlaps the claimed range for mesh size in instant claims 1 and 11, the claimed range is rendered obvious, as per MPEP 2144.05 (I). The ordinarily skilled artisan would have been further motivated to add at least the herbicide pyrazosulfuron-ethyl at the taught concentration in modification (2) in order to subsequently apply the SAP product containing the herbicide to rice paddy soil, with the goal of simultaneously improving water content in the soil and killing weeds commonly known to afflict rice crop. Because Ohno exemplifies a concentration of herbicide agents to be 7.3%, the claimed range for the bioactive agent in instant claim 7 is rendered obvious. The ordinarily skilled artisan would have a reasonable expectation of success in making these modifications because the products of Shirsat and Savich are extremely similar in that they provide SAP products containing herbicides for direct application to soil, and one would expect Savich’s SAP mesh size to be appropriate for direct application of the SAP product to soil. Furthermore, Shirsat teaches the SAP product is compatible with herbicides, and one would reasonably expect success in adding the herbicide pyrazosulfuron-ethyl, either alone or in combination at the taught concentrations, during formulation of the granulated SAP product based on Ohno’s teachings that the simple formulation of powders or granulated herbicidal products containing pyrazosulfuron-ethyl are effective for killing weeds when applied to rice paddy soil.
Response to arguments:
To the extent that Applicants’ arguments are pertinent to the standing rejection, they are addressed as follows:
Applicants traverse the rejection, arguing that claims 1 and 11 have been amended to include the limitation “wherein the bioactive agent is a sulfonylurea herbicide, specifically pyrazosulfuron-ethyl which was not of the prior art of record. Shirsat is directed to the use of superabsorbent polymers in agricultural applications, but does not teach or suggest pyrazosulfuron-ethyl. Savich dies not teach or suggest pyrazosulfuron-ethyl” or the specific mesh size in the claims. Ohno does not teach the use of pyrazosulfuron-ethyl in combination with a superabsorbent polymer
Applicant’s argument have been fully considered, but not found persuasive. Ohno teaches the herbicide compositions Col. 16 lines 6-15) with the herbicide pyrazosulfuron-ethyl (Col. 20 Formulation example 5). As for the superabsorbent polymer, Shirsat teaches a composition comprising at least one SAP and at least one water soluble phosphate, further comprising at least one plant advantageous additive (p. 13 lines 11-13; Claims 1 and 2) and Savich teaches beneficial additive combined with a superabsorbent starch graft copolymer (Abstract), wherein beneficial additives include herbicides (Col. 8 lines 33-42). The ordinarily skilled artisan would have been motivated to add the herbicide pyrazosulfuron-ethyl with the SAP in order to simultaneously improve water content in the soil and killing weeds. Accordingly, it is the combination of references that disclose the instantly claimed composition. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Thus, the rejection is maintained for reason of record and foregoing discussion.
Response and Maintained 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.
U.S. Patent
Claims 1-3 and 5-11 remain rejected in modified form on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6 and 8 of U.S. Patent No. US 10,781,372 B2 in view of US 7,425,595 B2 (Savich et al.) published 09/16/2008 (cited in the PTO-892 with this action) and US 8,114,814 B2 (Ohno et al.) published 02/14/2012 (cited in the PTO-892 with this action) for reasons of record.
US’372 claims a composition comprising (i) at least one superabsorbent polymer (SAP) and (ii) at least one water soluble phosphate (Claim 1). US’372 claims the composition further comprises at least one plant advantageous additive (Claim 2). US’372 claims the composition’s SAP is starch-g-poly (2-propenamide-co-2-propenoic acid) potassium salt (Claims 3-4). This reads on instant claims 2-3. US’372 claims the plant advantageous additive is selected from a group including herbicides (Claim 6). US’372 claims the composition comprises at least one pesticide (Claim 8). Plant advantageous additives including herbicides and pesticides read on bioactive agents, and read on instant claim 6.
US’372 differs from the instantly claimed invention in that it fails to claim the SAP is granulated with a size of either 100 plus mesh or 1-20 mesh, as recited in instant claims 1 and 11. US’372 fails to claim the composition is a granulated or free flowable powder formulation, as recited in instant claim 10. US’372 fails to claim 50-100% of the SAP is granulated or free flowable powder, as recited in instant claim 5. US’372 fails to claim that the herbicide/pesticide is in an amount of 0.1% to 20% of the composition, as recited in instant claim 7. US’372 fails to claim the bioactive agent (herbicide) is a sulfonylurea herbicide, specifically a prazosulfuron-ethyl, as recited in instant claims 1, 8, 9, and 11, respectively.
The teachings of Savich and Ohno are addressed supra.
It would have been prima facie obvious before the effective filing date of the claimed invention for a person having ordinary skill in the art to (1) use SAP polymers that are all (100%) granulated to a size of between 8-25 mesh in a granular version of US’372’s SAP composition, and (2) add the herbicide pyrazosulfuron-ethyl, either alone or in combination with the other herbicides taught by Ohno at the taught percentages, to the SAP product of US’372 in order to apply the product to paddy fields containing rice seeds to simultaneously improve the supply of water in the paddy soil and kill weeds. The ordinarily skilled artisan would have been motivated to use the mesh sizes and generate a granular composition, as taught by Savich, when making modification (1) in order to have the ability to broadcast or meter the SAP granulated product directly to the soil using conventional agricultural application equipment. Because the prior art’s mesh size range overlaps the claimed range for mesh size in instant claims 1 and 11, the claimed range is rendered obvious, as per MPEP 2144.05 (I). The ordinarily skilled artisan would have been further motivated to add at least the herbicide pyrazosulfuron-ethyl at the taught concentration in modification (2) in order to subsequently apply the SAP product containing the herbicide to rice paddy soil, with the goal of simultaneously improving water content in the soil and killing weeds commonly known to afflict rice crop. Because Ohno exemplifies a concentration of herbicide agents to be 7.3%, the claimed range for the bioactive agent in instant claim 7 is rendered obvious. The ordinarily skilled artisan would have a reasonable expectation of success in making these modifications because the products of US’372 and Savich are extremely similar in that they provide SAP products containing herbicides, and one would expect Savich’s SAP mesh size to be appropriate an appropriate size for the granulated SAP and composition. Furthermore, US’372 claims the SAP composition includes herbicides, and one would reasonably expect success in adding the herbicide pyrazosulfuron-ethyl, either alone or in combination at the taught concentrations, during formulation of the SAP product based on Ohno’s teachings that the simple formulation of powders or granulated herbicidal products containing pyrazosulfuron-ethyl are effective for killing weeds.
Co-pending Patent Applications
Claims 1-3 and 5-11 remain provisionally rejected, in modified form, on the ground of nonstatutory double patenting as being unpatentable over claims 2-6 of copending Application No. 18/559,935 in view of US 7,425,595 B2 (Savich et al.) published 09/16/2008 (cited in the PTO-892 with this action) and US 8,114,814 B2 (Ohno et al.) published 02/14/2012 (cited in the PTO-892 with this action), as evidenced by Micronaag.com “Micron vs. Mesh Rating” https://micronaag.com/wp-content/uploads/2017/07/8-Micron-and-Mesh-Rating.pdf (cited in the PTO-892 with this action) for reasons of record.
App’935 claims a polymeric material composition comprising (a) at least one superabsorbent polymer (SAP) and (b) microporous silicon dioxide (Claim 2). App’935 claims the SAP is a starch-based SAP, specifically selected from the group including starch-g-poly (2-propenamide-co-2-propenoic acid) potassium salt (Claims 3-4). This reads on instant claims 2-3. App’935 claims the SAP has a particle size between 2380 and 149 µm (Claim 5). In order to roughly approximate a conversion between micron and mesh size, divide 15,000 by the micron value, as evidenced by Micronaag.com. The examiner roughly approximates the claimed range of microns to be 15,000/2380 = 6 mesh to 15,000/149 = 100 mesh. App’935 claims the SAP in the composition is in the form of granules or powder (Claim 6). This reads on instant claim 5.
App’935 differs from the instantly claimed invention in that it fails to claim the SAP is granulated with a size of either 100 plus mesh or 1-20 mesh, as recited in instant claims 1 and 11. US’372 fails to claim the composition is a granulated or free flowable powder formulation, as recited in instant claim 10. US’372 fails to claim that the further inclusion of a bioactive agent, particularly an herbicide as recited in instant claim 6; said bioactive agent is therefore not claimed in an amount of 0.1% to 20% of the composition, as recited in instant claim 7. US’372 fails to claim the bioactive agent (herbicide) is a sulfonylurea herbicide, specifically a prazosulfuron-ethyl, as recited in instant claims 1, 8, 9, and 11, respectively.
The teachings of Savich and Ohno are addressed supra. Furthermore, Savich teaches that applying SAPs to soil or other plant-growing media in agricultural settings have resulted in earlier seed germination and/or blooming, decreased irrigation requirements, increased propagation, increased crop growth and production, decreased soil crusting, increased yield and decreased time of emergence (Col. 1 lines 42-47).
It would have been prima facie obvious before the effective filing date of the claimed invention for a person having ordinary skill in the art to (1) use SAP polymers that are granulated to a size of between 8-25 mesh in a granular version of App’935’s SAP composition, and (2) add the herbicide pyrazosulfuron-ethyl, either alone or in combination with the other herbicides taught by Ohno at the taught percentages, to the composition of App’935 in order to apply the composition to paddy fields containing rice seeds to simultaneously decrease irrigation requirements in the paddy soil and kill weeds. The ordinarily skilled artisan would have been motivated to use the mesh sizes and generate a granular composition, as taught by Savich, when making modification (1) in order to have the ability to broadcast or meter the SAP granulated product directly to the soil using conventional agricultural application equipment. Because the prior art’s mesh size range overlaps the claimed range for mesh size in instant claims 1 and 11, the claimed range is rendered obvious, as per MPEP 2144.05 (I). The ordinarily skilled artisan would have been further motivated to add at least the herbicide pyrazosulfuron-ethyl at the taught concentration in modification (2) in order to subsequently apply the SAP product containing the herbicide to rice paddy soil, with the goal of simultaneously improving water content in the soil and killing weeds commonly known to afflict rice crop. Because Ohno exemplifies a concentration of herbicide agents to be 7.3%, the claimed range for the bioactive agent in instant claim 7 is rendered obvious. The ordinarily skilled artisan would have a reasonable expectation of success in making these modifications because the products of App’935 and Savich are extremely similar in that they provide SAP-based compositions, and one would expect Savich’s SAP mesh size to be appropriate an appropriate size for the granulated SAP and composition of App’935 in order to use it in agricultural applications. Furthermore, one would reasonably expect success in adding the herbicide pyrazosulfuron-ethyl, either alone or in combination at the taught concentrations, during formulation of the SAP product based on Savich’s teaching that granulated SAP compositions are compatible with herbicides, and Ohno’s teachings that the simple formulation of powders or granulated herbicidal products containing pyrazosulfuron-ethyl are effective for killing weeds.
This is a provisional non-statutory double patenting rejection.
Claims 1-3 and 5-11 remain provisionally rejected, in modified form, on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 8, and 10-11 of copending Application No. 17/441,736 in view of US 7,425,595 B2 (Savich et al.) published 09/16/2008 (cited in the PTO-892 with this action) and US 8,114,814 B2 (Ohno et al.) published 02/14/2012 (cited in the PTO-892 with this action) for reasons of record.
App’736 claims a composition for increasing sugar content in plants comprising a superabsorbent polymer (SAP); said SAP is selected from a group including starch-g-poly (2-propenamide-co-2-propenoic acid) potassium salt (Claims 1-3). This reads on limitations of instant claims 2-3. App’736 claims the composition in the form of granules or powder (Claim 4); this reads on limitations of instant claim 10. App’736 claims the composition further comprises a plant advantageous additive or agrochemical, selected from a group including herbicides (Claims 8, 10-11). This reads on a bioactive agent, and reads on instant claim 6.
App’736 differs from the instantly claimed invention in that it fails to claim the SAP is granulated with a size of either 100 plus mesh or 1-20 mesh, as recited in instant claims 1 and 11. App’736 fails to claim 50-100% of the SAP is granulated or free flowable powder, as recited in instant claim 5. App’736 fails to claim that the herbicide is in an amount of 0.1% to 20% of the composition, as recited in instant claim 7. App’736 fails to claim the bioactive agent (herbicide) is a sulfonylurea herbicide, specifically a prazosulfuron-ethyl, as recited in instant claims 1, 8, 9, and 11, respectively.
The teachings of Savich and Ohno are addressed supra.
It would have been prima facie obvious before the effective filing date of the claimed invention for a person having ordinary skill in the art to (1) use SAP polymers that are all (100%) granulated to a size of between 8-25 mesh in the granular SAP composition of App’736, and (2) add the herbicide pyrazosulfuron-ethyl, either alone or in combination with the other herbicides taught by Ohno at the taught percentages, to the SAP composition of App’736 in order to apply the product to paddy fields containing rice seeds to simultaneously improve the supply of water in the paddy soil, increase sugar content in the plants, and kill weeds. The ordinarily skilled artisan would have been motivated to use the mesh sizes for the SAP, as taught by Savich, when making modification (1) in order to have the ability to broadcast or meter the SAP granulated composition directly to the soil using conventional agricultural application equipment. Because the prior art’s mesh size range overlaps the claimed range for mesh size in instant claims 1 and 11, the claimed range is rendered obvious, as per MPEP 2144.05 (I). The ordinarily skilled artisan would have been further motivated to add at least the herbicide pyrazosulfuron-ethyl at the taught concentration in modification (2) in order to subsequently apply the SAP composition containing the herbicide to rice paddy soil, with the goal of simultaneously improving water content in the soil, increasing sugar content in the plants, and killing weeds commonly known to afflict rice crop. Because Ohno exemplifies a concentration of herbicide agents to be 7.3%, the claimed range for the bioactive agent in instant claim 7 is rendered obvious. The ordinarily skilled artisan would have a reasonable expectation of success in making these modifications because the products of App’736 and Savich are extremely similar in that they provide SAP products containing herbicides, and one would expect Savich’s SAP mesh size to be appropriate an appropriate size for the granulated SAP and composition. Furthermore, App’736 claims the SAP composition includes herbicides, and one would reasonably expect success in adding the herbicide pyrazosulfuron-ethyl, either alone or in combination at the taught concentrations, during formulation of the SAP product based on Ohno’s teachings that the simple formulation of powders or granulated herbicidal products containing pyrazosulfuron-ethyl are effective for killing weeds.
This is a provisional non-statutory double patenting rejection.
Claims 1-3, 5-9 and 11 remain provisionally rejected, in modified form, on the ground of nonstatutory double patenting as being unpatentable over 1-5, 10 and 13 of copending Application No. 18/293,033 in view of US 8,114,814 B2 (Ohno et al.) published 02/14/2012 (cited in the PTO-892 with this action) for reasons of record.
App’033 claims a composition, particularly an agricultural one, comprising a superabsorbent polymer (SAP) and a solvent system (Claims 1 and 10). The SAP is selected from a group including starch-g-poly (2-propenamide-co-2-propenoic acid) potassium salt (Claims 2-3). This reads in the limitations of instant claims 2-3. App’033 teaches the SAP is in the form of powder or granules (Claim 5), which reads on the granular limitations of the SAP in instant claim 5 and throughout the claims. The SAP has a particle size ranging from about 80 mesh to about 300 mesh, which overlaps the limitation of 100 plus mesh recited in instant claims 1 and 11. App’033 claims the SAP-based agricultural composition also comprises an agrochemically active ingredient selected from one or more of a group including herbicides (Claim 13). This reads on the bioactive agent of the instant claims, particularly instant claim 6.
App’033 differs from the instant invention in that it fails to claim the bioactive agent is in an amount of 0.1% to 20% of the composition, as recited in instant claim 7. App’033 fails to claim the bioactive agent (herbicide) is a sulfonylurea herbicide, specifically a prazosulfuron-ethyl, as recited in instant claims 1, 8, 9, and 11), respectively.
The teachings of Ohno are addressed supra.
It would have been prima facie obvious before the effective filing date of the claimed invention for a person having ordinary skill in the art to add the herbicide pyrazosulfuron-ethyl, either alone or in combination with the other herbicides taught by Ohno at the taught percentages, to the composition of App’033 in order to apply the agricultural composition to paddy fields containing rice seeds to kill weeds. The ordinarily skilled artisan would have been motivated to add at least the herbicide pyrazosulfuron-ethyl at the taught concentration in order to apply the subsequent agricultural product containing the herbicide to rice paddy soil, with the goal of simultaneously improving water content in the soil and killing weeds commonly known to afflict rice crop. Because Ohno exemplifies a concentration of herbicide agents to be 7.3%, the claimed range for the bioactive agent in instant claim 7 is rendered obvious. The ordinarily skilled artisan would have a reasonable expectation of success in making this modification to the composition of App’033 based on Ohno’s teachings that the simple formulation of powders or granulated herbicidal products containing pyrazosulfuron-ethyl are effective for killing weeds.
This is a provisional non-statutory double patenting rejection.
Response to arguments:
To the extent that Applicants’ arguments are pertinent to the standing rejection, they are addressed as follows:
The Examiner could not find any argument made by Applicant addressing the non-statutory double patenting rejections. Applicant should submit an argument under the heading “Remarks” pointing out disagreements with the examiner’s contentions. Applicant must also discuss the references applied against the claims, explaining how the claims avoid the references or distinguish from them.
Conclusion
No claims are allowed.
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 ANNA R FALKOWITZ whose telephone number is (571)270-3386. The examiner can normally be reached Monday - Friday 9am-5pm.
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, Zachariah Lucas can be reached at (571) 272-0905. 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.
/ANNA R FALKOWITZ/ Primary Examiner, Art Unit 1600