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 .
Claims 1-8, 10, 11, 13, 15-29 are pending.
Election/Restrictions
Claims 1-8, 10, 11, 13, 15-17 and 26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group I, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9/9/2025.
Applicant’s election without traverse of pre-harvest application in the reply filed is acknowledged.
Claims 18-25 and 27-29 are under examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1/6/2023, 2/3/2023, 11/20/2023, 1/08/2024, 3/06/2024, 5/31/2024, 2/26/2025 and 9/9/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
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 18-21, 23, 25 and 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,329,053 (herein ‘053). Although the claims at issue are not identical, they are not patentably distinct from each other because the present method is drawn to producing beneficial effects in an agricultural target evident post-harvest by applying pre-harvest a formulation comprising an oil phase and solid particulate matter suspended in a suspension whereas ‘053 specifics protecting an agricultural target from a pest by diluting the liquid suspension comprising a first oil selected from linseed oil and safflower oil and a second oil selected from corn oil, soybean oil and canola oil with suspended particulates of bentonite clay and surfactants, wherein the formulation forms a tacky coating that impedes the pests and protects the agricultural target.
Claims 18-21, 23, 25 and 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-28 of U.S. Patent No. 12,127, 556 (herein ‘556). Although the claims at issue are not identical, they are not patentably distinct from each other because the present method is drawn to producing beneficial effects in an agricultural target evident post-harvest by applying pre-harvest a formulation comprising an oil phase and solid particulate matter suspended in a suspension whereas ‘556 specifies a method of deterring pest damage to an agricultural target comprising coating the target with a formulation comprising oil and particulate material comprising bentonite clay, wherein the formulation forms a coating that deters pest damage.
Therefore, it one of ordinary skill would have been motivated by ‘556 to apply the formulations pre-harvest with a reasonable expectation of success because ‘556 teaches applying formulations to targets to deter the pest from causing damage which would inherently protect the target post-harvest.
Claims 18-21, 23, 25 and 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9-18 and 20-22 of U.S. Patent No. 10,492,356 (herein ‘356). Although the claims at issue are not identical, they are not patentably distinct from each other because the present method is drawn to producing beneficial effects in an agricultural target evident post-harvest by applying pre-harvest a formulation comprising an oil phase and solid particulate matter suspended in a suspension whereas ‘356 specifics reducing spore-transmission and treating a plant infection by applying to the plant surface a liquid suspension comprising oil with suspended particulates, wherein the formulations forms a coating that reduces spore transmission of fungal disease on the agricultural target.
Therefore, it one of ordinary skill would have been motivated by ‘356 to apply the formulations pre-harvest with a reasonable expectation of success because ‘356 teaches applying formulations to targets to impede the spore transmission and treat plant infection on the surface which would inherently protect the target post-harvest.
Claims 18-21, 23-25 and 27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 55, 57, 58, 60, 61, 64, 66, 67, 69-72 and 78-81 of copending Application No. 19/210,352 (herein ‘352). Although the claims at issue are not identical, they are not patentably distinct from each other because the present method is drawn to producing beneficial effects in an agricultural target evident post-harvest by applying pre-harvest a formulation comprising an oil phase and solid particulate matter suspended in a suspension whereas ‘352 specifies protecting an agricultural target from a pest by diluting the liquid suspension comprising linseed oil and bentonite clay particles suspended in the oil.
Therefore, it one of ordinary skill would have been motivated by ‘352 to apply the formulations pre-harvest with a reasonable expectation of success because ‘352 teaches applying formulations to alter the behavior of the pest which would protect the target which would inherently protect the target post-harvest.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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 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) 18 and 25 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Halsam et al. (US 4,192,095; patented March 11, 1980).
Applicant claims a method of producing a beneficial effect in an agricultural target comprising applying a formulation to a surface of the agricultural target pre-harvest, wherein the formulation comprises a nontoxic concentrated liquid suspension comprising an oil phase and a solid particulate material suspended in the suspension. (claim 18)
Halsam et al. disclose heavy coated seeds (agricultural target) which are produced by application a suspension of a solid inert water-insoluble inorganic particulate material, a continuous water phase and a discontinuous oil phase (abstract). The coatings are applied prior to planting to add weight to the seed which reduce the tendency of seeds to float which can cause variation is patterns of plant growth (column 1, lines 5-20). The suspension is designed as a stable suspension produced as a concentrate and later diluted by mixing with water prior to application to seeds (column 1, lines 22-31). The formulations additionally comprise urea, sugar or other weighting agents soluble in water including fertilizers such as potassium nitrate and ammonium phosphate and emulsifiers which condition the particle surfaces for reception of the suspension materials (column 1, lines 48-66). The oil component is selected from animal, vegetable or mineral oil (column 1, line 66 through column 2, line 5). The inorganic particulate material may include pyrite, silica sands and dusts from zinc or iron (column 2, lines 6-23). The formulation is applied to seeds to uniformly coat the surface of the seed (column 3, lines 11-21).
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.
Claim(s) 19-21, 23, 24 and 27-29 are rejected under 35 U.S.C. 103 as being unpatentable over Halsam et al. (US 4,192,095; patented March 11, 1980) in view of Goertz et al. (US 6,039,781; patented March 21, 2000).
Applicant claims a method of producing a beneficial effect in an agricultural target comprising applying a formulation to a surface of the agricultural target pre-harvest, wherein the formulation comprises a nontoxic concentrated liquid suspension comprising an oil phase and a solid particulate material suspended in the suspension. (claim 18)
The teachings of Halsam et al. are addressed in the above 102 rejection.
With respect to claims 19, 20 and 23, Halsam does not specify the oil is a selected from raw linseed oil and an optional second oil. With respect to claim 21, Halsam does not specify the particulate material is bentonite. With respect to claim 24, Halsam does not specify adding and additional ingredient that is a hydrophilic sorbent. With respect to claims 27-29, Halsam does not specify that the beneficial effects obtained by following the method include the post-harvest modification of the metabolism of the agricultural target including respiration, ripening, decay and loss of phytochemical compounds. It is for this reason that Goertz et al. is joined.
Goertz et al. teach a controlled release fertilizer comprising layers of organic oil comprising raw linseed oil and bentonite as a binding agent and applying the precoat to a surface (abstract). The coatings a cured to provide controlled release properties that aid in nutrient release (column 2, lines 40-65). Using raw linseed oil in combination with a clay mixture provide an encapsulating coating onto fertilizer granules which improve surface defects and release of the fertilizer (column 3, lines 4-30). The oils can include other oils such as soybean oil and the clays additionally include absorbent silicas (column 5, lines 42-53).
Both Halsam et al. and Goertz et al. are drawn to agricultural fertilizer coatings. Therefore, it would have been prima facie obvious to combine the teachings of Halsam et al. and Goertz et al. to apply the formulations comprising a mixture of raw linseed oil, bentonite, absorbent silica and additional oil such as soybean oil with a reasonable expectation of success. One of ordinary skill would have been motivated before the time of filing to combine the teachings of Halsam et al. and Goertz et al. to apply the formulations comprising bentonite, absorbent silica with raw linseed oil and soybean oil because Halsam et al. teach mixtures of particulates with vegetable oils and Goertz et al. teach mixing bentonite and absorbent silica with raw linseed oil and soybean oil aids in forming a release surface layer that can be used to release fertilizers.
Furthermore, it would have been prima facie obvious to combine the teachings of Halsam et al. and Goertz et al. to apply the formulations comprising to improve post-harvest modification of the metabolism of the agricultural target with a reasonable expectation of success. One of ordinary skill would have been motivated before the time of filing to combine the teachings of Halsam et al. and Goertz et al. to apply the formulations comprising to modify the metabolism of the agricultural target because Goertz et al. teach including fertilizer in the formulations which aid in plant health and which would inherently delay the loss of phytochemical compounds post-harvest.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Halsam et al. (US 4,192,095; patented March 11, 1980) in view of Goertz et al. (US 6,039,781; patented March 21, 2000) as applied to claims 19-21, 23, 24 and 27-29 in further view of Fefer et al. (ES 2664411; published April 19, 2018).
Applicant claims a method of producing a beneficial effect in an agricultural target comprising applying a formulation to a surface of the agricultural target pre-harvest, wherein the formulation comprises a nontoxic concentrated liquid suspension comprising an oil phase and a solid particulate material suspended in the suspension. (claim 18)
Halsam et al. teach the formulations include emulsifiers which condition the particle surfaces for reception of the suspension materials. The teachings of Halsam et al. and Goertz et al. are addressed in the above 103 rejection.
Halsam et al. and Goertz et al. do not teach the formulations further comprise polyethylene glycol dodecyl ether and a low molecular weight nonionic silicone polyether surfactant. It is for this reason that Fefer et al. is joined.
Fefer et al. teach herbicidal compositions which comprise adjuvants selected from the low molecular weight silicone surfactant Sylgard 309 and Brij L4 (polyethylene glycol dodecyl ether) (page 14-15).
Halsam et al., Goertz et al. and Fefer et al. are all drawn to agricultural formulations. Therefore, it would have been prima facie obvious to combine the teachings of Halsam et al., Goertz et al. and Fefer et al. to apply the formulations comprising polyethylene glycol dodecyl ether and low molecular weight nonionic silicone polyether surfactants with a reasonable expectation of success. One of ordinary skill would have been motivated before the time of filing to combine the teachings of Halsam et al., Goertz et al. and Fefer et al. to apply the formulations comprising polyethylene glycol dodecyl ether and low molecular weight nonionic silicone polyether surfactants because Halsam et al. teach mixtures of surfactants and Fefer et al. teach adding emulsifiers selected from the low molecular weight silicone surfactant Sylgard 309 and Brij L4 polyethylene glycol dodecyl ether in agricultural formulations.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE D JOHNSON whose telephone number is (571)270-3285. The examiner can normally be reached Monday-Friday 9:00 am-5:30 pm.
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DANIELLE D. JOHNSON
Examiner
Art Unit 1617
/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611