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 .
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 20, 22, 25, 29, 30, 38, 40, 53, 56, 58-61, 64 and 67-71 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 6, 8, 10, 11, 15, 21-25 and 28-35 of copending Application No. 18/032658 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other becausethey are obvious variants of each other..
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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.
Claims 20, 22, 25, 29, 30, 53, 56, 59, 60, 64, 68, 69 and 71 are rejected under 35 U.S.C. 103 as being unpatentable over WERNER, for the reasons given in the last Office Action. In addition, WERNER discloses in the Abstract that the micronutrient can be present in the concentrate at 40 wt.% or more. WERNER also teaches in Paragraph [0049] that the micronutrients may be in the form of insoluble solids. Such insoluble solids would constitute fertilizer particles.
Regarding claims 68, 69 and 71, it would have been obvious to include colemanite as a micronutrients in the concentrate of WERNER, since colemanite is a source of boron. It would have been further within the level of skill of one of ordinary skill in the art to determine suitable amounts of the various micronutrients in the concentrate of WERNER.
Claim 58 is rejected under 35 U.S.C. 103 as being unpatentable over WERNER as applied to claim 20 above, and further in view of Ward et al (US 2015/0376076), for the reasons given in the last Office Action.
Claim 61 is rejected under 35 U.S.C. 103 as being unpatentable over WERNER as applied to claim 20 above, and further in view of ZAMORA REA et al (US 2021/0040004), for the reasons given in the last Office Action.
Applicant’s argument, that WERNER does not describe fertilizer particles having a fertilizer coating, is not convincing, since applicant’s claims do not require fertilizer particles having a coating. Applicant’s claims recite a fertilizer coating suspension in combination with fertilizer particles. The micronutrient particles present in the concentrate of WERNER would constitute fertilizer particles.
Claim(s) 20, 22, 25, 29 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over EP 0485225 A1, for the reasons given in the last Office Action. In addition, the insoluble source of iron and/or manganese disclosed by EP 0485225 A1 would constitute fertilizer particles.
Applicant’s argument, that EP 0485225 A1 does not describe fertilizer particles coated with the recited composition, is not convincing, since applicant’s claims do not require fertilizer particles having a coating. Applicant’s claims recite a fertilizer coating suspension in combination with fertilizer particles. The insoluble source of iron and/or manganese disclosed by EP 0485225 A1 would constitute fertilizer particles.
Allowable Subject Matter
This application apparently discloses allowable subject matter. (i.e., regarding claims 38, 40, 67 and 70).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WAYNE A LANGEL whose telephone number is (571) 272-1353. The examiner can normally be reached M-F 8:45 am to 5:15 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at 571-270-3591. 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.
/WAYNE A LANGEL/Primary Examiner, Art Unit 1736
