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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55 claiming priority to foreign application JP2020-063570. It is noted that an English translation of the certified copy of the foreign application has not been filed.
In the following situations, the Office may require that an English translation of a non-English language foreign application be filed (see 37 CFR 1.55(g)(3)):
(1) When the application is involved in an interference (see 37 CFR 41.202 ) or derivation (see 37 CFR part 42) proceeding;
(2) When necessary to overcome the date of a reference relied upon by the examiner; or
(3) When deemed necessary by the examiner
Here, an English translation is necessary to overcome the date of a reference relied upon by the examiner (see the rejection under 102(a)(1) over Tanoue, International Patent Pub. No. 2019/078209 A1, on Pages 5-6 of this Office Action). Note that if an English translation is required, it must be filed together with a statement that the translation of the certified copy is accurate. See MPEP 213.04.
Election/Restrictions
Applicant's election with traverse of Group III (claims 10-11 and 17-20) in the reply filed on 8/7/2025 is acknowledged.
The traversal is on the ground(s) that there is no serious search burden as described in MPEP 803. This is not found persuasive because establishment of a search burden is used to determine whether the Office may require restriction in national applications filed under 35 (U.S.C. 111(a). The analysis used to determine whether the Office may require restriction differs in national stage applications submitted under 35 U.S.C. 371 (unity of invention analysis) as compared to national applications filed under 35 U.S.C. 111(a) (independent and distinct analysis). See MPEP Chapter 1800, in particular MPEP § 1850, § 1875, and § 1893.03(d), for a detailed discussion of unity of invention under the Patent Cooperation Treaty (PCT).
The traversal is also on the ground(s) that Applicant has not had a chance to respond to any rejections, and as such denies Applicant due process. This is not found persuasive because a requirement for unity of invention may be made before any action on the meris. See MPEP 1893.03(d) and 37 C.F.R. 1.499.
The traversal is also on the ground(s) that the Examiner has not interpreted the contents of the claims in light of the description. This is not found persuasive because Applicant makes no specific asserted distinction between the cited prior art and the claimed invention, regardless of whether the claims have been interpreted in light of the specification. Further, limitations from the specification are not read into the claims.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-2, 4-9, and 12-16 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 8/7/2025.
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 10-11 and 17-20 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 10, the recitation “a lignin content of more than 60 mass% and 80 mass% or less” renders the claim indefinite. The recitation is indefinite because it is unclear whether it intends to set forth a permissible range of lignin content (i.e., between 60 mass% and 80 mass%) or two possible minimums of lignin content (i.e., “more than 60 mass% and 80 mass% . . .”). For purposes of examination, the recitation is regarded as setting forth a range of lignin content between 60 and 80 mass%.
Note that all other claims are being included as a result of their dependency upon a rejected claim as set forth above.
Claim Rejections - 35 USC § 102
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.
Claim(s) 10-11 and 17-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tanoue (International Patent Pub. No. 2019/078209 A1) with reference to the provided machine translation (hereinafter "Tanoue").
Regarding claim 10, Tanoue teaches a method for improving soil (e.g., a plant growth promoter and method for cultivating plants in soil) [Para. 0008-9], the method comprising:
Mixing (A) a lignocellulosic biomass with an average particle size of 1,000 microns or less with the soil (e.g., mixing palm kernel shell (PKS), which has a lignin content of between 40-60% by mass [Para. 0019] and a particle size of 1,000 microns or less [Para. 0021], with the soil [Para. 0052]).
Regarding claim 11, Tanoue teaches the method wherein the soil is soil of an agricultural field (e.g., soil in a farm field) [Para. 0052].
Regarding claim 17, Tanoue teaches the method wherein the component (A) is a hydrophilized lignocellulosic biomass (e.g., the palm kernel shells may be subjected to hydrophilization treatment) [Para. 0032].
Regarding claim 18, Tanoue teaches the method wherein a soil improving agent comprising the component (A) and (B) a cellulose derivative is mixed with the soil (e.g., the plant growth promoting agent, which is mixed with the soil as discussed in the rejection of claim 1 above, may also contain a polymer such as cellulose and derivatives thereof) [Para. 0044].
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) 10-11 and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kosugi (International Patent Pub. No. 2017/195732 A1) with reference to the provided machine translation (hereinafter “Kosugi”) in view of Berends (U.S. Patent Pub. No. 2019/0078031 A1, hereinafter “Berends.”
Regarding claim 10, Kosugi teaches a method for improving soil (e.g., a fertilizer or soil conditioner/soil improver and plant growing method) [Kosugi Title & Abstract & Page 3 Para. 2], the method comprising:
Mixing (A) a lignocellulosic biomass with an average particle size of 1,000 microns or less with the soil (e.g., the soil improver comprises a plant-derived extracellular matrix which includes a lignocellulose-based biomass such as palm trunk residue [Kosugi Page 14 Para. 2]; the palm material is ground into fine powder-like particles with a diameter of approximately 30 to 50 microns [Kosugi Page 23 Para. 2] and mixed with the soil (e.g., administered to the soil at the start of plant growth [Kosugi Page 25 Para. 1] or sprayed on the soil [Kosugi Page 21 Para. 2]).
Kosugi does not explicitly disclose that the lignocellulosic biomass from the palm trunk residue has a lignin content of between 60-80 mass %. However, Berends teaches that lignocellulosic biomass from agricultural waste can come from any part of the palm including empty fruit bunches, fruit fibers, kernel shells, and oil [Berends Para. 0019]. As such, in performing the method of Kosugi implementing lignocellulosic biomass from palm trunk residue, one of ordinary skill in the art would look to Berends and readily appreciate that palm kernel shells are also a standard option for a palm biomass source. It would be obvious to try palm kernel shells in lieu of palm trunk residue because this amounts to no more than choosing from a finite number of identified, predictable solutions, with reasonable expectation of success (i.e., providing a suitable palm-sourced lignocellulosic biomass). Applicant’s specification discloses that the lignin content of palm kernel shells (PKS), whether treated or untreated, is 65.0% by mass [Spec Para. 0124 & Table 1]. As such, the lignin content of palm kernel shells inherently falls within the claimed range. Thus, despite no specific mention of a lignin content, the palm kernel shells of Berends are regarded as reading on this limitation. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention in performing the method of Kosugi to implement a lignocellulosic biomass having a lignin content within the range as claimed.
Regarding claim 11, Kosugi as modified by Berends teaches the method wherein the soil is soil of an agricultural field (e.g., the growth method/soil improver can be applied without limitation to various plants such as roses, pumpkins, squash, etc. [Kosugi Page 20 Para. 2] and is administered to the soil at the start of plant growth [Kosugi Page 25 Para. 1] or sprayed on the soil [Kosugi Page 21 Para. 2]; these are regarded as describing the soil of an agricultural field).
Regarding claim 17, Kosugi as modified by Berends teaches the method wherein the component (A) is a hydrophilized lignocellulosic biomass (e.g., the soil improver is mixed in a solvent such as water or ethanol and heated for 5 to 30 minutes between 100 °C and 150 °C [Kosugi Paragraph Bridging Pages 17-18]; Applicant’s specification states that the hydrophilization treatment is preferably an alkali treatment, hot water treatment, acid treatment or combination thereof [Specification Para. 0055]; the hot water treatment disclosed by Applicant comprises 30 minutes to 36 hours of contact time with water between 80 °C and 200 °C [Specification Para. 0060]; as such, the water treatment of Kosugi is regarded as reading on a hydrophilization treatment as claimed).
Regarding claim 18, Kosugi as modified by Berends teaches the method wherein a soil improving agent comprising the component (A) and (B) a cellulose derivative is mixed with the soil (e.g., the soil improver discussed in the rejection of claim 10 above further comprises an organic degradable polymer compound such as cellulose diacetate, cellulose triacetate, methyl cellulose, propyl cellulose, benzyl cellulose, carboxymethyl cellulose) [Kosugi Paragraph bridging Pages 6-7].
Regarding claim 19, Kosugi as modified by Berends teaches the method wherein a soil improving agent comprising the component (A) and (C) a hydroxy acid or a salt thereof is mixed with the soil (e.g., the soil improver discussed in the rejection of claim 10 above further comprises a pH adjuster such as citric acid, a hydroxy acid) [Kosugi Page 16 Para. 2].
Regarding claim 20, Kosugi as modified by Berends teaches the method wherein a soil improving agent comprising the component (A), (B) a cellulose derivative and (C) a hydroxy acid or a salt thereof is mixed with the soil (e.g., the soil improver discussed in the rejection of claim 10 above further comprises an organic degradable polymer compound such as cellulose diacetate, cellulose triacetate, methyl cellulose, propyl cellulose, benzyl cellulose, carboxymethyl cellulose [Kosugi Paragraph bridging Pages 6-7] and a pH adjuster such as citric acid, a hydroxy acid) [Kosugi Page 16 Para. 2].
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 10 and 17 are rejected on the grounds of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,286,384. Although the claims at issue are not identical, they are not patentably distinct from each other because present claims 10 and 17 are fully anticipated by reference claim 11 of the ‘384 patent. The species or sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the species or sub-genus should the genus issue as a patent after the species or sub-genus. The claim under examination is not patentably distinct from the reference claim(s) if the claim under examination is anticipated by 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, 1052, 29 USPQ2d 2010, 2015-16 (Fed. Cir. 1993).
Claim 10 is rejected on the grounds of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 11,547,119. Although the claims at issue are not identical, they are not patentably distinct from each other because present claim 10 is fully anticipated by reference claim 10 of the ‘119 patent. Reference claim 10 fully anticipates present claim 10 because it is directed to a method of improving soil (e.g., a method for growing a plant, comprising mixing a soil aggregating agent with the soil) comprising mixing a lignocellulosic biomass with a particle size of less than 1,000 microns and a lignin content of between 60-80 mass% with the soil (e.g., mixing the seed shell component from palms, which necessarily is a lignocellulosic biomass and has the claimed lignin content of between 60-80 mass%, and also has a particle size of 150 microns or less, with the soil).
Claim 10 is rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 5 and 6 of U.S. Patent No. 12,121,032. Although the claims at issue are not identical, they are not patentably distinct from each other because present claim 10 is fully anticipated by reference claims 5 and 6 of the ‘032 patent. Reference claims 5 and 6 fully anticipate present claim 10 because they are directed to a method of improving soil (e.g., a soil aggregative method) comprising mixing a lignocellulosic biomass with a particle size of less than 1,000 microns and a lignin content of between 60-80 mass% with the soil (e.g., mixing the seed shell component from palms, which necessarily is a lignocellulosic biomass and has the claimed lignin content of between 60-80 mass%, and also has a particle size of 1000 microns or less or between 80 microns and 1000 microns, with the soil).
Conclusion
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/H.E.R./Examiner, Art Unit 1731
/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731