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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-4) in the reply filed on 11/4/2025 is acknowledged.
Claims 5-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/4/2025.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Japan on 7/8/2020. It is noted, however, that applicant has not filed a certified copy of the JP2020-117949 application as required by 37 CFR 1.55.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-4 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a nature-based product without significantly more.
These claimed are analyzed for eligibility in accordance with their broadest reasonable interpretation. All of the claims are directed to a statutory category (e.g., a composition of matter). The claims are focused on naphthoquinone derivatives (many of which are nature-based products; for example, juglone, also known as 5-hydroxy-1,4-naphthoquinone, or zeanone, also known as 2,7-dimethoxy-l,4-naphthoquinone) implemented in a soil conditioner and fertilizer, and must be analyzed for markedly different characteristics to determine whether the claimed soil conditioner is a “product of nature” exception.
Applicant states that it is possible to inhibit soil nitrification solely by cultivating maize which secretes the active compound (see the Specification at Para. 0046), confirming that the claims are not markedly different from the natural product. Naturally-occurring maize secretes the compound of formula (I) when planted. As such, the claimed naphthoquinone derivatives in their natural state can act as soil conditioners and fertilizers which have the effect of nitrification inhibition.
As such, the limitations of claims 1-4 do not comprise markedly different characteristics from a naturally occurring naphthoquinone derivative which meets the claimed structure. Thus, the claimed soil conditioner is a “product of nature” exception.
Accordingly, the claim is directed to an exception. Because the claim does not include any additional features that could add significantly more to the exception, the claim does not qualify as eligible subject matter, and should be rejected under 35 U.S.C. 101.
Claim Rejections - 35 USC § 102
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) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Subbarao (U.S. Patent Pub. No. 2008/0307843 A1, hereinafter “Subbarao”).
Regarding claim 1, Subbarao teaches a soil conditioner (e.g., a soil improver and fertilizer) [Abstract] comprising, as an active ingredient, a compound represented by Formula (1) or a salt or solvate thereof (e.g., comprising 5-hydroxy-1,4-naphthoquinone, also referred to as juglone, to inhibit nitrification of soil) [Para. 0008-9].
Regarding claim 2, Subbarao teaches the soil conditioner wherein the compound is selected from the provided group (e.g., juglone, also referred to as 5-hydroxy-1,4-naphthoquinone) [Para. 0008-9].
Regarding claim 3, Subbarao teaches the soil conditioner wherein the soil conditioner has an effect of inhibiting nitrification (e.g., the juglone, also referred to as 5-hydroxy-1,4-naphthoquinone, inhibits soil nitrification [Para. 0009-0010]; see also Fig. 1-3 demonstrating nitrification inhibition).
Regarding claim 4, Subbarao teaches a fertilizer comprising the soil conditioner of claim 1 (e.g., a fertilizer such as urea may be included with the juglone) [Para. 0013-14].
Conclusion
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/H.E.R./Examiner, Art Unit 1731
/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731
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