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 .
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, 29-31, 53, 56, 57, 59, 60 and 64-66 are and 63-65 are rejected under 35 U.S.C. 103 as being unpatentable over WERNER (US 2017/0008813). WERNER discloses a micronutrient composition in a liquid carrier such as propylene glycol in an amount of at least 10%. (See the Abstract and Paragraph [0079].) WERNER teaches in Paragraph [0054] that the formulation may be in the form of a concentrate suspension. WERNER teaches in Paragraph [0054] that the average particle size of the solid micronutrients is from 50 microns to 100 microns, and in Paragraph [0052] that the amount of micronutrients in the concentrate is at least 40 wt.%.. The difference between the composition disclosed by WERNER, and that recited in claims 20, 22, 25, 29-31, 53, 56, 57, 59, 60 and 64-66, is that WERNER does not disclose an average particle size of greater than 30 microns. It would be obvious to provide micronutrient particles having an average particle size of from 50 to 100 microns in the formulation, since WERNER discloses such average particle size before the wet milling step.
Regarding claim 22, WERNER discloses in Paragraph [0062] that the concentrate can include 10-70 wt.% water.
Regarding claim 30, WERNER discloses in Paragraph [0079] that the solvent is typically included in an amount of from 5 wt.% to 500 wt.%.
Regarding claims 31 and 34, WERNER discloses in Paragraph [0050] that the micronutrient may be zinc, calcium, manganese or magnesium
Claims 22, 29 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over WERNER. WERNER is relied upon as discussed hereinbefore.
Regarding claim 22, it would have been obvious to provide a formulation comprising up to 20 weight percent water in the formulation of WERNER, since WERNER teaches in Paragraph [0079] that the solvent is typically included in an amount of from 5 wt.% to 500 wt.%.
Regarding claims 29 and 30, it would have been within the level of skill of one of ordinary skill in the art to determine a suitable amount of the micronutrient particles and propylene glycol in the formulation of WERNER
Claims 38 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over WERNER as applied to claim 20 above, and further in view of MCLAUGHLIN et al (US 2023/0295057). It would have been further obvious from MCLAUGHLIN et al to coat fertilizer granules with the formulation of WERNER. One of ordinary skill in the art would have been motivated to do so, since MCLAUGHLIN et al teach in Paragraph [0008] that suspensions of micronutrients have been used to coat fertilizers, and the composition of MCLAUGHLIN et al is identical to that of WERNER in that both entail suspension of micronutrients in media which includes organic solvents.
Claim 58 is rejected under 35 U.S.C. 103 as being unpatentable over WEERNER as applied to claim 20 above, and further in view of Ward et al (US 2015/0376076 (newly cited)). It would have been further obvious from Ward et al to include a pigment in the composition of Ward et al. One of ordinary skill in the art would have been motivated to do so, since Ward et al establish the conventionality of including pigments in agricultural formulations in Paragraph [0027]..
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) (newly cited). It would have been even further obvious from ZAMORA REA et al to include a biostimulant in the composition of WEERNER. One of ordinary skill in the art would have been motivated to do so, since ZAMORA REA et al disclose the benefits of biostimulants on crops in Paragraph [0011].
Claim 62 is rejected under 35 U.S.C. 103 as being unpatentable over WERNER in view of ZAMORA REA et al, as applied to claim 61 above, and further in view of Martinez US 2017/0273312) (newly cited). It would have been even further obvious from Martinez to include a protein hydrolysate as the biostimulant in the composition of WEERNER. One of ordinary skill in the art would have been motivated to do so, since Martinez discloses protein hydrolysates as biostimulants in Paragraph [0017], and ZAMORA REA et al suggest the benefits of biostimulants on crops in Paragraph [0011].
Claim 63 is rejected under 35 U.S.C. 103 as being unpatentable over WERNER in view of ZAMORA REA et al, as applied to claim 20 above, and further in view of Hartmann (US 9,359,263 (newly cited). It would have been further obvious from Hartmann to include dicyandiamide in the composition of WERNER. One of ordinary skill in the art would have been motivated to do so, since Hartmann discloses the benefits of dicyandiamide for reducing nitrogen leaching in col. 20, lines 12-20
Response to Arguments
Applicant’s argument, that WERNER, viewed as a whole, fails to teach or suggest a suspension that contains at least 10 weight percent water-miscible solvent, is not convincing. WERNER teaches in Paragraph [0064] that the concentrate may be formulated as a suspension concentrate. One of ordinary skill in the art would have appreciated from such teaching that the solvent concentrations disclosed in Paragraph [0079] of WERNER would be suitable for a suspension, since Paragraph [0079] is directed broadly to the “agrochemical formulation.
Claim Rejections - 35 USC § 103
Clams 20, 22, 25 and 29-31 /are rejected under 35 U.S.C. 103 as being unpatentable over EP 0485225 A1. EP 0485225 A1 discloses a dispersion of micronutrients in ethylene glycol in EXAMPLES 1-3 on page 5. The difference between the composition disclosed by EP 0485225 A1, and that recited in claims 20,22,25 and 29-31, is that EP 0485225 A1 does not disclose that that the micronutrient particles have an average particle size of greater than 30 microns. It would have been obvious to provide the micronutrient particles of EP 0485225 A1 with an average particle size of greater than 30 microns. One of ordinary skill in the art would have been motivated to do, since EP 0485225 A1 discloses a particles size in the range of 0.5 to 50 microns in the Abstract and col. 1, lines 38-43. One would have appreciated that the average particle size of 31 microns, for example, would be suitable, so long as the particles are in the range of o.5 to 50 microns.
Claims 38, 40, 53 and 56 are rejected under 35 U.S.C. 103 as being unpatentable over EP 0485225 A1 as applied to claims 20,22,25 above, and further in view of MCLAUGHLIN ethe t al (US 2023/0295057). It would have been further obvious from MCLAUGHLIN et al to coat fertilizer granules with the composition of EP 0485225 A1. One of ordinary skill in the art would have been motivated to do so, since MCLAUGHLIN et al teach in Paragraph [0008] that suspensions of micronutrients have been used to coat fertilizers, and the composition of MCLAUGHLIN et al is analogous to that of EP 0485225 A1 in that both entail suspensions of micronutrients in media which includes organic solvents.
Response to Arguments
Applicant’s argument, that the average particle size in EP 0485225 A1 is not defined and is not necessarily greater than 30 microns, is not convincing, since there is no evidence on record of unexpected results which would emanate from the use of particles having an average particle size greater than 30 microns, but which are also of a size in the range of 0.5 to 50 microns. Applicant’s argument, that EP 0485225 A1 discloses a preferred particle size of from 1 to 10 microns, with at least 80 or 90 percent of the particles having a size in that range, since non-preferred embodiments constitute teachings upon which a case of prima facie obviousness. can be based, and EP 0485225 A1 clearly discloses particles sizes as high as 50 microns
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, 29-31, 38, 40, 53 and 56-66 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1,3,6,8,10,11,13,15,18 and 21-31 of copending Application No.18/140405. Although the claims at issue are not identical, they are not patentably distinct from each other because they 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.
Claim Objections
Claim 58 is objected to as being ungrammatical. The word - - of - - should be inserted before “claim” to avoid this objection.
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.
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 Monday through Friday from 8:15 am to 4:15 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
Prosecution Insights