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 .
Final Rejection
Claims 1, 4, 7-10, 15, 18, 20, 23-24, 26-29, 31, 41-43 and 45 are pending.
Claim 1 and 31 are independent. Claim 45 is new.
Claims 2-3, 5-6, 11-14, 16-17, 19, 21-22, 25, 30, 32-40 are cancelled.
Support for the claim amendments can be found in Applicant's specification [0035] for claim 1 and [0042] for claim 31.
Response to Amendment
The rejection of claim 42 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in light of Applicant’s amendments to the claim.
The rejection of claims 1, 4, 7-10, 15, 18, 20, 23-24, 26, 28-29, 31, 41 under 35 U.S.C. 103 as being unpatentable over Yu et al. WO2018/148482A1 is withdrawn.
The rejection of claims 27, 42-44 under 35 U.S.C. 103 as being unpatentable over Yu et al. (WO2018/148482A1) in view of Lignier et al. (US 2013/0101354A1) is withdrawn.
The nonstatutory double patenting rejection of claims 1, 4, 7-10, 15, 18, 20, 23-24, 26-29, 31, 41-44 as being unpatentable over claims 1-18 of U.S. Patent No. 11,326,327 is maintained.
Response to Arguments
Applicant's arguments filed 10/13/2025 with respect to claims 1, 4, 7-10, 15, 18, 20, 23-24, 26-29, 31, 41-43 and 45 have been considered. Applicant’s urge on page 8, middle paragraph that one of skill reading Yu would not look to combine soil to a polymer for extracting potable water from atmospheric moisture, however, page 1, line 20 Yu explain that the many of the worlds water starved regions are far inland and thus guide one of ordinary skill to their hydrogel polymers to extract water from the air to benefit the most water starved land regions. See page 1,ln.20-30 copied herein:
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Finally, Applicants urge superior results in their Fig.2G-2I, 9, 10 and [0062] citing this experimental data showing that water harvesting polymer networks-soil compositions enable plant germination and survival under drought conditions, outperforming both unamended soil and super moisture absorbent gel (SMAG) alone (see Figs. 2G-2I, 9, 10; [0062]). In response, contrary to Applicant’s arguments, there is no data to “SMAG alone” in the Figs. 2G-2I, 9, 10; [0062]. Examiner has reviewed each of Figs. 2G-2I, 9, 10; [0062] in Applicants specification which show that the SMAG-soil outperforms Sandy-soil. Because Yu teach the same SMAG and guides one of ordinary skill to its inclusion inland,water starved regions thus, it is found pertinent to the claims. Accordingly, the claim amendments are addressed below.
New Grounds of 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.
Claim 31 is 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.
Claim 31 recites the limitation from 1 um to 1 cm, and the claim also recites “(page 10)”. For purposes of compact prosecution, claim 31 BRI is to the claimed range and the “(page 10}” is considered a typographical error. Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 4, 7-10, 15, 18, 20, 23-24, 26, 28-29, 31, 41 and 45 are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. (WO2018/148482A1) in view of Loick et al. (US 10,287,379 B2).
Yu et al. teach a) water harvesting material comprising an interpenetrating network comprising: i) a hygroscopic polymer; and ii) a thermoresponsive water storage polymer. See page 2,ln.30-34 and Figure 4 which discloses their i) hygroscopic polymer is a doped polypyrrole (reading upon the hygroscopic polymer of claim 1i and the teaching of ii) poly-N-isopropylacrylamide reads upon the thermoresponsive water storage polymer of claim 1ii.
Yu et al. is silent as to the particle size in their water harvesting super moisture absorbent gels (SMAGs) and do not specifically teach the claim 1 limitation to an average particle size from 0.1 µm to 500 µm. However, Loick et al. teach that the claimed particle size range is commonly known in superabsorbent polymers used in soil (col.20,ln.56) comprising acrylamide (col.7,ln.44) and pyrrole (col.6,ln.37-47) which are the same hydroscopic polymer and thermoresponsive polymer as claimed and as taught by Yu et al. See col.4,ln.57-59 and col.22,ln.61 of Loick et al. teaching grinding the claimed polymers to a powder having a particle size of 150 to 850 um is commonly known in superabsorbent polymer art.
Yu et al. and Loick et al. are both considered to be analogous to the claimed invention because they are in the same field of trapping water.
Therefore it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the presence of the claimed particle size properties as claimed in the water harvesting system of Yu et al. because Loick et al. teach that the claimed particle size range is commonly known in superabsorbent polymers (SMAG) used in soil (col.20,ln.56) comprising acrylamide (col.7,ln.44) and pyrrole (col.6,ln.37-47) which are the same hydroscopic polymer and thermoresponsive polymer as claimed and as taught by Yu et al. The combination of teachings from Yu et al. and Loick et al. render obvious the instantly claimed ingredients as superabsorbent water harvesting materials and it is reasonable that one of ordinary skill in the art would expect the claimed particle sizes in the polymer of Yu et al. since Loick et al. teach it is especially preferable that the proportion of the SMAG polymer particles have a particle size within a range from 300 to 600 µm.
Yu et al. teach on page 2,ln.30-34 and Figure 4 their i) hygroscopic polymer is a doped polypyrrole reading upon the hygroscopic polymer of claims 4 and 8 with page 6,ln.15 teaching the claim 7 limitation to 0.010 holes per monomer.
Regarding claim 9 Yu et al. teach wherein their hygroscopic polymer has a Mw less than about 500,000 on page 5,ln.20.
Claim 10 limitation to wherein the thermoresponsive water storage polymer is characterized by a Lower Critical Solution Temperature between about 30-60° C is taught in the paragraph linking pages 6-7.
Yu et al. teach on page 2,ln.32 and Figure 4 which discloses the teaching of ii) poly-N-isopropylacrylamide reading upon the thermoresponsive water storage polymer in claims 15 and 18.
Limitation to the thermoresponsive water storage polymer being crosslinked as required by claims 20 and 23 wherein the crosslinking monomer comprises N,N-methylenebisacrylamide, N,N- ethylenebisacrylamide, N,N-propylenebisacrylamide, N-allylacrylamide or N,N- diallylacrylamide is taught on page 7, last paragraph.
Claim 24 limitation to the ratio of hygroscopic polymer to thermoresponsive water storage polymer is from about 1:0.05 is taught on page 8,ln.7-8.
Yu et al. reads upon the claim 28 limitation to wherein the water harvesting polymer network is present in an amount from 1-50% on page 5, 1st paragraph.
Regarding claim 29, Yu et al. read upon the assembly structure with an average particle size from 1 um to 1 cm since the art discloses tablets with area of 1cm2.
Claim 31 method to combine a water harvesting polymer network with soil, wherein the water harvesting polymer network comprises i) a hygroscopic polymer and ii) a thermoresponsive water storage polymer is met by Yu et al. teaching on page 1, ln.25-35, the very purpose of their atmospheric water harvesting system is to address the water starved regions far inward from the oceans which regions one of ordinary skill would reasonably understand to include soil as these regions will necessarily be land regions. It is also the Examiner’s position that the region of Yu et al. in page 1,ln.25 would read upon claim 26 to the soil prior to combination with the polymer and the agricultural field of claim 41.
Claim 31 amendment to adding water to the mixture is taught by Yu et al. claim 44 teaching the polymerization of the claimed polymers is conducted in an aqueous medium. And claim 31 amendment to drying the wet mixture to form a dried mixture is taught in example 3, page 11, ln.3.
Yu et al. do not explicitly teach the method of combining a water harvesting polymer network with a soil to yield the modified soil having an average particle size in a range from 1um to 1cm in the method of claim 31.
However, Loick et al. teach that the claimed particle size range is commonly known in superabsorbent polymers used in soil (col.20,ln.56) comprising acrylamide (col.7,ln.44) and pyrrole (col.6,ln.37-47) which are the same hydroscopic polymer and thermoresponsive polymer as claimed and as taught by Yu et al. See col.4,ln.57-59 and col.22,ln.61 teaching grinding the claimed polymers to a powder having a particle size of 150 to 850 um is commonly known in superabsorbent polymer art.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to arrive at the modified soil as claimed because Yu et al. teach the claimed water harvesting polymer network comprising the same hydroscopic polymer and thermoresponsive polymer and Loick et al. teach that the claim 31 particle size range is commonly known in superabsorbent polymers used in soil (col.20,ln.56) comprising acrylamide (col.7,ln.44) and pyrrole (col.6,ln.37-47) which are the same hydroscopic polymer and thermoresponsive polymer as claimed and as taught by Yu et al. Further Yu et al. motivate one of ordinary skill to apply their atmospheric water harvesting network to water-starved regions, far inland, away from the oceans, which regions as disclosed by Yu et al. would reasonably be interpreted as having soil because one of ordinary skill would reasonably understand that land regions have soil.
Claim 45 limitation to adding Mg2+ is taught by Yu et al. example 3 page 11.
Claim 27, 42-43 are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. (WO2018/148482A1) and Loick et al. (US 10,287,379B2) as applied to claims 1, 4, 7-10, 15, 18, 20, 23-24, 26, 28-29, 31, 41 and 45 above and further in view of Lignier et al. (US 2013/0101354A1).
The combination of Yu et al. and Loick et al. as set forth above teach the claimed water harvesting material having the claimed particle size and polymers.
Yu et al. do not teach the claim 27 limitation to further comprising mulch, topsoil, hydroponics, gravel, compost, wood fibers, peat, forest bark, straw, loam, clay aggregate, or particulate plastic. Also, Yu et al. do not teach the rate of claim 42, and the seed of claim 43.
In the analogous art, Lignier et al. teach stabilizing the air, water, soil, and plants with a polymeric stabilizer using a hydroseeder applied to bare soil at a thickness of 2-5 mm further comprising mulch to demonstrate the advantages of limiting the penetration of atmospheric water into the soils during storms. See [0081-0083, 0088, 0099-0101]. Regarding the material limitations of claim 43, to contacting a seed to the modified soil, it is the Examiner’s position that one of ordinary skill understands that seeds are put into contact with soil to germinate and grow and as such claim 43 does not provide a contribution over the norm. Furthermore, Lignier et al. teach one of ordinary skill that their modified stabilizer layer with mulch and wood fibers absorbed water and prevented unnecessary accumulation protecting plants on sloped banks. See [0081-0083, 0088, 0099-0101].
Regarding claim 42 limitation to wherein the modified soil composition is added to the field at a rate of 0.1-1,000 Ib/ft2, it is the Examiner’s position that one of ordinary skilled in soil understands to apply amendments to soil as directed which rate does not provide a contribution over the art. See for example the attached search notes guiding one of ordinary skill to optimize the soil with amendments per the amounts as directed. Furthermore, it is the Examiner’s position that the hydroseeder used in Lignier et al. would read upon the broadly claimed rate.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to arrive at the modified soil composition as claimed because Yu et al. teach the claimed water harvesting polymer network is applied to water-starved regions which one of ordinary skill will reasonably understand these regions have soil in general and Lignier et al. exemplify stabilizing sloped banks with polymeric stabilizer comprising wood and mulch applied by hydroseeder is commonly known. One of ordinary skill is motivated to combine Yu et al. and Loick et al with Lignier et al. since all are in the analogous art of polymers that absorb water to benefit the land.
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, 7-10, 15, 18, 20, 23-24, 26-29, 31, 41-43 and 45 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,326,327. Although the claims at issue are not identical, they are not patentably distinct from each other because a water harvesting material as claimed has already been patented with a difference in at least the instant claim 1 to require the limitation to the soil, which inclusion of soil would have been obvious as the very purpose is to address the water starved regions far inward from the oceans (see col.1,ln.36-37) which regions one of ordinary skill would reasonably understand to include soil as these are land regions. Also, while the inventor owned prior art h is silent to the particles size, one of ordinary skill would necessarily expect the hygroscopic polymer of the inventor owned prior art to have the claimed particles sizes as it is the same water harvesting material and the same modified soil composition as disclosed in the prior art would necessarily be expected to have the same properties of particle size.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/PREETI KUMAR/Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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