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 .
Election/Restrictions
Applicant's election with traverse of Group II (claims 12-18) in the reply filed on 9/21/2025 is acknowledged. The traversal is on the ground(s) that the claim amendments received 9/21/2025 render inventions I and II connected in design, operation, . This is not found persuasive because prong (1) of the related processes test says that the Examiner can show that the inventions as claimed “can have a materially different design, mode of operation, or effect”; i.e., the Examiner does not need to prove that the inventions are unconnected in design, operation, and effect as argued by Applicant. See MPEP 806.05(j). Applicant also argues that there is no undue burden by citing one CPC classification not cited by the Examiner where multiple groups may be found. This is not found persuasive because the inventions have acquired a separate status in the art in view of their different classifications (provided by the Examiner in the Restriction Requirement mailed 6/10/2025), the inventions have acquired a separate status in the art due to their recognized divergent subject matter, and the inventions require a different field of search (e.g., different classes/subclasses and resources and employing different search strategies and queries).
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-11 and 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9/21/2025.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application VN1-2021-06017 filed in Vietnam on 9/28/2021. It is noted, however, that applicant has not filed a certified copy of the VN1-2021-06017 application as required by 37 CFR 1.55.
Claim Objections
Claim 12 is objected to due to the apparent typographical error “(%w/)” in line 11 of the claim. This would appear to be a typo in light of other recitations of percentages in the same claim which are appropriately labeled “(%w”).
Claim 18 is objected to due to the typographical error “Ca-Alg alginate.” This would appear to be a typo because Ca-Alg already necessarily refers to calcium alginate, and the phrasing Ca-Alg alginate is therefore redundant.
Claim 18 is further objected to due to the typographical error or mistranslation “changes its structure is responsive to a low pH level.” For purposes of examination, this is regarded as stating that the hydrogel “changes its structure in response to a low pH level.”
Claim Rejections - 35 USC § 112
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 12-18 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.
Regarding claim 12, the recitation “smart fertilizers” renders the claim indefinite because Applicant does not provide a clear definition of what constitutes a “smart” fertilizer. As such, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is noted that Applicant further describes the fertilizer containing a hydrogel which changes its structure in response to a pH level (see, e.g., claim 18) but the specification also includes smart fertilizers characterized by “having biosensors for detecting various endogenous stimuli such as electrical conductance (EC) or salinity, soil pH degree caused by the release of ATPase . . . and in bioactuators for chemically reacting with the surrounding hydrogen ions to release the nutrients when the biosensors detect the stimuli conditions” (specification para. 00011). It is unclear from Applicant’s disclosure whether only fertilizers which have these specific recited qualities would read on this limitation, or other responses to other stimuli such as water level/moisture level would qualify. It is further unclear whether a response to stimuli is a required part of being a “smart” fertilizer. For purposes of examination, any fertilizer which appears to respond to its outward environment when applied to soil or plants is regarded as reading on this limitation.
Further regarding claim 12, the recitations “a fourth percentage weight” and “a fifth percentage weight (lines 10 and 13 respectively) render the claim indefinite. Because a first, second, or third percentage weight have not been previously set forth, it is unclear what the fourth and fifth numeral designations are referring to, or if they are arbitrary descriptions relating to the percentage weight. For purposes of examination, these recitations are regarded as being arbitrary descriptions not imparting any additional limitation on the claim.
Further regarding claim 12, the recitation “mixing said mixture with a nanocomposite hydrogel having a fourth percentage weight . . . and water” in lines 10-11 of the claim renders the claim indefinite because it is unclear whether the water is counted as part of the several other percentage weights. Specifically, in calculating the percentages set forth of the vegetable oil, solvent, nanocarbon material, etc., it is unclear whether the water should be included or excluded, as no percentage is recited for the water, while a percentage weight is recited for every other ingredient. For purposes of examination, the water will be excluded from percentage weight calculations.
Regarding claim 13, the recitation “wherein said vegetable oil is selected from a linseed oil, a soybean oil, and a sunflower oil” renders the claim indefinite. The recitation would appear to set forth a Markush grouping of alternatives. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. Here, it is unclear from the language of the claim whether the group as drafted is open or closed because there is no connecting language such as “consisting of.”
Regarding claim 14, the recitation “wherein said solvent is selected from methanol, ethanol, and acetone” renders the claim indefinite. The recitation would appear to set forth a Markush grouping of alternatives. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. Here, it is unclear from the language of the claim whether the group as drafted is open or closed because there is no connecting language such as “consisting of.”
Regarding claim 15, the recitation “said third percentage weight” lacks antecedent basis because no third percentage weight has been previously set forth. For purposes of examination, this is regarded as being a restatement of the same nanocarbon material percentage already set forth in claim 12.
Regarding claim 16, the recitation “at least 3 to 20 layers” in line 3 of the claim renders the claim indefinite because it is unclear whether this is setting forth a minimum amount of layers (i.e., the graphene sheet has to have at least 3 to at least 20 layers) or setting forth a range of acceptable layers (i.e., the graphene sheet has between 3 and 20 layers). If the prior interpretation is correct, the claim is further indefinite for reciting a broader range or limitation followed by a narrower range or limitation. See MPEP 2173.05(c). For purposes of examination, the recitation is regarded as setting forth a range of acceptable layers being 3 to 20.
Regarding claims 15 and 16, the recitations “a carbon content of at least 95%” (lines 3-4 of claim 15 and line 2 of claim 16) render the claim indefinite because it sets forth a percentage without a standard of measurement such as weight, volume, or mol percent. For purposes of examination, the percentage is regarded as referring to weight percent.
Regarding claim 17, the recitation “having a particle size ranged from 300nm to 600nm, preferably 400nm to 550nm” renders the claim indefinite. 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, claim 17 recites the broad recitation “300nm to 600nm” and the claim also recites “400nm to 550nm” which is the narrower statement of the range/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. Additionally, the phrase “preferably” renders the claim indefinite because it is unclear whether the limitations following the phrase “preferably” are part of the claimed invention. See MPEP 2173.05(d).
Note that all other claims are being included as a result of their dependency upon a rejected claim as set forth above.
Allowable Subject Matter
Claims 12-18 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art does not teach or render obvious the cumulative limitations of independent claim 12, with particular attention to the recited percentage weights of the oil, solvent, and nanocarbon material, as well as the implementation of the specific ultrasonic probe, as well as the step of mixing the mixture with water to afford a nanocomposite hydrogel in liquid form.
Dehn (Chinese Patent No. CN 111491991 A) with reference to the provided machine translation (hereinafter “Dehn”), the closest prior art of record, teaches a method of manufacturing smart fertilizers (e.g., a method for preparing a polymer matrix composite material) [Dehn Para. 0250] which can include particles of fertilizers [Dehn Para. 0194]; the particles may be insoluble but become soluble with changes in temperature or pH [Dehn Para. 0191] which appears to meet Applicant’s definition of a smart fertilizer in the Specification at Paragraph 00010 describing the nutrients being release in response to stimuli such as salinity, pH, etc) comprising:
Heating an oil and/or a solvent (e.g., combining a solvent to provide a slurry, which is heated [Dehn Para. 0251-0253]; the solvent is a blend of at least two individual solvents including vegetable oil, castor oil, palm kernel oil, isopropanol, etc. [Dehn Para. 0053]);
Dispersing nanocarbon material (e.g., adding particles such as thermally conductive particles [Dehn Para. 0251] or acoustically active particles [Dehn Para. 0267] such as carbon nanotubes [Dehn Para. 0071]);
Mixing said mixture with a nanocomposite hydrogel (e.g., particles are added which form a hydrogel, and as such during the mixing process will necessarily mix with a hydrogel and form a nanocomposite hydrogel comprising the nano particles [Dehn Para. 0190 & 0194]); and
Mixing said nanocomposite hydrogel and functionalized nanocarbon solution with a fertilizer (e.g., soluble particles such as fertilizers may be added) [Dehn Para. 0194].
Dehn does not teach the recited percentage weights of the oil, solvent, or nanocarbon materials, or teach the implementation of the specific ultrasonic probe at the indicated settings, or the step of mixing the mixture with water to afford a liquid form.
Conclusion
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/H.E.R./Examiner, Art Unit 1731
/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731