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 1,3,6,8,10,11,13,15,18 and 21-31 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20,22,25, 29-31, 38, 40, 53 56-66 of copending Application No. 18/032658 ] in view of ZAMORA REA et al (US 2021/0040004). It would have been f obvious from ZAMORA REA et al to include a biostimulant in the composition recited in the claims of SN 18/032658. One of ordinary skill in the art would have been motivated to do so, since ZAMORA REA et al disclose the importance of biostimulants for crops in Paragraph [0018].
This is a provisional nonstatutory double patenting rejection.
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.
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
Claims 1,3,6,8,10,11,13, 25-28, 30 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over WERNER (US 2017/0008813) in view of ZAMORA REA et al (US 2021/0040004). WERNER discloses a micronutrient composition in a liquid carrier such as propylene glycol in an amount of at least 10%. (See the Abstract amd Paragraph [0079].) . WERNER teaches in Paragraph [0054] that the formulation may be in the form of a concentrate suspension, and in Paragraph [0054] that the average particle size of the solid micronutrients is from 50 microns to 100 Microns. WERNER further teaches in Paragraph [0052] that the amount of micronutrients in the concentrate is at least 40 wt.%. The difference between the composition disclosed by WEERNER, and that recited in claims 1,3,6,8,10,11,13, 25-28,30 and 31, is that WERNER does not disclose that the composition should include a biiostimulant .It would have been obvious from ZAMORA REA et al to include a biostimulant in the composition of WERNER. One of ordinary skill in the art would have been motivated do so, since ZAMORA REA et al disclose the importance of biostimulants for crops in Paragraph [0011].
Claims 15 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over WERNER in view of ZAMORA REA et al, as applied to claim 1 above, and further in view of MCLAUGHLIN et al (US 2023/0295057). It would have been even further obvious from MCLAUGHLIN et al to coat fertilizer granules with the composition 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 compositions of MCLAUGHLIN et al and WERNER are analogous in that both entail suspensions of micronutrients in media which include organic solvents.
Claims 21 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over WERNER in view of ZAMORA REA et al, as applied to claim 1 above, and further in view of Martinez-Barbreau (US 2017/0273312) (newly cited). It would have been even further obvious to Martinez-Barbreau to provide protein hydrolysate as the biostimulant in the composition of WERNER. One of ordinary skill in the art would have been motivated to do so, since Martinez-Barbreau discloses protein hydrolysates as biostimulants in Paragraph [0017], and ZAMORA REA et al suggest the benefits of biostiumulants on crops in Paragraph [0011].
Claims 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over WERNER in view of ZAMORA REA er al, as applied to claim 1 above, and further in view of Hartmann (US 9,359,263). It would have been even further obvious from Hartmann to include a urease inhibitor or dicyandiamide in the composition of WEERNER. One of ordinary skill in the art would have been motivated to do so, since Hartmann discloses the importance of urease inhibitors and dicyandiamide for making urea-derived nitrogen available to plants for longer periods and reducing nitrate contamination at col. 19, line 50 to col. 20, line 20.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over WERNER in view of ZAMORA REA er al, as applied to claim 1 above, and further in view of Ward et al (Us 2015/0375076) (newly cited). It would have been even further obvious from Ward et al to include a pigment in the composition of WERNER. 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 coating formulations for fertilizer granules in Paragraph [0027].
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 th3e 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 WEERNER would be suitable for a suspension, since Paragraph [0079] is broadly directed to the “agrochemical formulation”.
Claim Rejections - 35 USC § 103
Claims 1, 3, 6, 8, 10, 11, 13 and 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over EP 0485225 A1 in view of ZAMORA REA et al (US 2021/0040004) . EP 0485225 A1 discloses a dispersion of micronutrients in ethylene glycol in EXAMPLES 1-3 on page 3. The difference between the dispersion disclosed by EP 0485225 A1, and that recited in claims 1, 3, 6, 8, 10, 11, 13 and 25-27 , is that EP 0485225 A1 does not disclose that the dispersion includes a biostiumulant. It would be obvious from ZAMORA REA et al to include a biostimulant in the dispersion of EP 0485225 A1. 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].
Claims 15 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over EP 0485225 A1 in view of ZAMORA REA et al, as applied to claim 1 above, and further in view of MCLAUGHLIN et al (US 2023/0295057). It would have been even 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 teaches in Paragraph [0008] that suspensions of micronutrients have been used to coat fertilizers, and the compositions of MCLAUGHLIN et al and EP 0485225 A1 are analogous in that both entail suspensions of micronutrients in media which include organic solvents.
Claims 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over EP 0485225 A1 in view of ZAMORA REA et al, as applied to claim 1 above, and further in view of Hartmann (US 9,359,263). It would have been further obvious from Hartmann to ].Include a urease inhibitor or dicyandiamide in the dispersion of EP 0485225 A1. One of ordinary skill in the art would have been motivated to do so, since Hartmann discloses the importance of urease inhibitors and dicyandiamide for making urea-derived nitrogen available to plants for longer periods and reducing nitrate contamination at col. 19, line 50 to col. 20, line 20.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over EP 0485225 A1 in view of ZAMORA REA et al, as applied to claim 1 above, and further in view of Ward et al. It would have been even further obvious from Ward et al to include a pigment in the composition of EP 0485225 A1. 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 coating formulations for fertilizer granules in Paragraph [0027].
Response to Arguments
Applicant’s argument, that the average particle size in EP 0485225 A1 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 preferr3ed particle size of from 1 to 10 microns, with at least 80 or 90 percent of the particles having a size in that range, is not convincing, since non-preferred embodiments constitute teachings upon which a case of prima facie obviousness can be based, and EP 0485225 A1 clearly discloses particle sizes as high as 50 microns.
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.
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/WAYNE A LANGEL/Primary Examiner, Art Unit 1736
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