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 .
Claim Interpretation
The claims recite the intended use of the agricultural product in soil for growing plants (e.g. claims 6-9). The intended use of the claimed product is non-limiting because the limitations directed to intended use only describe the purpose of the product. The recitation of the product for use in soil or for growing plants describes the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations.
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, 3 and 6-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural product without significantly more. The claims recite a plant seed coated with protocatechuic acid. This judicial exception is not integrated into a practical application because there is no difference in substance from the claimed coated plant seed to a naturally-occurring almond or a grape. Furthermore, the claims /do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
The statutory categories of invention under 35 U.S.C. 101 are processes, machines, manufactures, and compositions of matter. However, certain members of these categories constitute judicial exceptions, i.e., the courts have determined that these entities are not patentable subject matter. These judicial exceptions include abstract ideas, laws of nature, and natural phenomena. The Office released a revised guidance on January 7, 2019 for the examination of claims reciting judicial exceptions. The revised Office guidance indicates that claims must pass an eligibility test to avoid rejection under 35 U.S.C. 101. An analysis with respect to the claims as a whole reveals that they do not include additional elements that are sufficient to amount to significantly more than the judicial exception. See Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116, 106 U.S.P.Q.2d 1972 (2013); Mayo Collaborative Svcs. v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 101 U.S.P.Q.2d 1961 (2012). See also 2019 Revised Patent Subject Matter Eligibility Guidance, available at https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf
Analysis of subject-matter eligibility under 35 U.S.C. § 101 requires consideration of four issues: (1) whether the claim is directed to one of the four categories recited in §101; (2A1) whether the claim recites or involves a judicial exception (i.e., a law of nature, natural phenomenon, abstract idea, or natural product); (2A2) if a judicial exception applies; whether the claim limitation is integrated into a practical application; and (2B) whether the claim as a whole recites an inventive concept, (i.e., something that amounts to significantly more than the judicial exception). (2019 Revised Patent Subject Matter Eligibility Guidance). The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the analysis is as follows:
1: Statutory Category- Yes; all of the claims are directed to a statutory category, e.g., a composition of matter. Because claims 1, 3, and 6-8 are nature-based products (e.g., calcium carbonate), the markedly different characteristics analysis is used to determine if the nature-based products are exceptions.
2A- Prong 1: Yes; the limitations recited in independent claim 1 and subsequent dependent claims may be naturally found and appear to be natural compositions and unmodified (e.g. limestone is a naturally occurring sedimentary rock that is composed almost entirely of calcium carbonate (CaCO3) that when exposed to natural rainwater (e.g. an additive) experiences accelerated decomposition.
2A- Prong 2: Integrated into a ‘Practical Application’- No, this judicial exception is not integrated into a practical application, because the claim does not include additional limitations that effect a transformation or reduction of a particular article to a different state or thing. See e.g., MPEP 2106.05(c). The composition (e.g., limestone exposed to water from rain), itself, is not effecting the application but rather is based on the structure and physical properties. However, a determination must be made as to whether the additional elements, or combination of additional elements, amount to significantly more than the judicial exception.
2B: Claim provides an Inventive Concept- No, because under the 2019 revised Guidance, a judicial exception, if not integrated into a practical application, must have additional elements that amount to significantly more than the judicial exception. See MPEP 2106.05(a)-(d). A claim may amount to significantly more by including specific limitations other than what is well-understood, routine, or conventional activity in the field, or adding unconventional steps that confine the claim to a particular useful application. See MPEP 2106.05(d)/(II).
Here, in reviewing the claim(s) as a whole, the claimed calcium carbonate agricultural product is no more than naturally occurring limestone rock in contact with rainwater. This composition describes merely a natural product (e.g. limestone). Limestone is a naturally occurring sedimentary rock that is composed almost entirely of calcium carbonate (CaCO3). When raining upon limestone rock, mildly acidic rainwater water triggers carbonation. The carbonic acid reacts with the calcium carbonate in the
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limestone to form calcium bicarbonate, which is highly soluble in water. Over time, the rock is chemically dissolved and washed away. The claimed agricultural product is not markedly different from its naturally occurring counterpart in its natural state (e.g. limestone) because it comprises the same product components as claimed. This judicial exception is not integrated into a practical application because the claims are not in a formulation that differs from the naturally occurring counterpart. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the natural product is capable of being used as an agricultural product (e.g. applied to soil, etc.) [See Limestone – PUB2902, 2020].
Accordingly, claims 1, 3 and 6-8 are rejected under 35 U.S.C. 101.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1, 3-5 and 29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Petrie (US 20180354691).
In regard to claim 1, Petrie teaches a calcium carbonate agricultural product (e.g. a non-food container) [para. 0020] [see Applicant’s specification para. 0003 describing the calcium carbonate agricultural product as a container], the calcium carbonate agricultural product comprising:
calcium carbonate [0005]; and
a binder (e.g. a polymer) [0005], wherein the binder/polymer comprises polyvinyl alcohol [0006]; and
an additive (e.g. oxo-degradable additive) [0005], wherein the additive accelerates decomposition of the calcium carbonate agricultural product (e.g. the oxo-degradable additive increases the rate at which the polymer oxo-degrades when exposed to oxygen) [0032];
wherein Petrie’s composition does not recite any required cellulose component and is therefore considered to meet the limitation wherein the calcium carbonate agricultural “does not include cellulose”.
In regard to claim 3, Petrie teaches the calcium carbonate agricultural product of claim 1, further comprising an additive (e.g. oxo-degradable additive) [0005].
In regard to claims 4-5, Petrie teaches the calcium carbonate agricultural product of claim 1, further comprising a binder, wherein the binder comprises a polymer [0005] and the polymer comprises polyvinyl alcohol [0006]
In regard to claim 29, Petrie a calcium carbonate agricultural product (e.g. a non-food container) [para. 0020], the calcium carbonate agricultural product comprising:
calcium carbonate [0005];
wherein the calcium carbonate agricultural product is a non-food container [para. 0020] which is structural equivalent to “a pesticide container” or “a fertilizer container” as claimed because the intended use of the container does not impart any structural differences to the claimed product; and
wherein Petrie’s composition does not recite any required cellulose component and is therefore considered to meet the limitation wherein the calcium carbonate agricultural “does not include cellulose”.
Claims 1, 4, 6-9 and 29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tambay et al. (US 20180213730).
In regard to claims 1 and 4, Tambay et al. teaches a calcium carbonate agricultural product (e.g. mulch for use in agriculture) [para. 0002] (e.g. bio-polymer mulch film) [0019], the calcium carbonate agricultural product comprising:
functional material [0023 (2)] wherein the functional material comprises calcium carbonate [0023 (8)]; and
a binder comprising a polymer (e.g. a bio-polymer) [0023 (2)];
wherein Tambay’s composition does not recite any required cellulose component and is therefore considered to meet the limitation wherein the calcium carbonate agricultural “does not include cellulose”.
In regard to claims 6-9, the calcium carbonate agricultural product of claim 1 taught by Tambay et al. is physically mixed with soil including having a plurality of apertures for respective plants to grow through (e.g. covering the soil around the plant with the bio-polymer mulch film) [0023 (39)]. The product taught by Tambay is inherently configured to control a pH of the soil by releasing the calcium carbonate to the soil by being physically mixed with soil (e.g. calcium carbonate is an alkaline material and it will necessarily effect the pH of soil if applied to soil).
In regard to claim 29, Tambay et al. teaches a calcium carbonate agricultural product (e.g. mulch for use in agriculture) [para. 0002]], the calcium carbonate agricultural product comprising:
functional material [0023 (2)] wherein the functional material comprises calcium carbonate [0023 (8)]; and
wherein the calcium carbonate agricultural product is a mulching film (e.g. bio-polymer mulch film) [0019]
wherein Tambay’s composition does not recite any required cellulose component and is therefore considered to meet the limitation wherein the calcium carbonate agricultural “does not include cellulose”.
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 1-9 and 29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-11 and 16-20 of U.S. Patent No. 12,415,666.
Claims 1-9 and 29 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10,843,856.
Claim s 1-9 and 29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-11, and 11-24 of copending Application No. 18/157,666 (reference application). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9 and 29 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-18, and 20-29 of copending Application No. 18/314,724 (reference application). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the application under examination are different, but not patentably distinct, from the subject matter claimed in a prior patent or a copending application. The claim under examination is not patentably distinct from the reference claims because the claims under examination are anticipated by the reference claims. See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 1052, 29 USPQ2d 2010, 2015-16 (Fed. Cir. 1993). The claims being examined are generic to a species or sub-genus claimed in a conflicting patent or application, i.e., the entire scope of the reference claim falls within the scope of the examined claim.
Response to Arguments
The rejection of claims 6-7 under 35 U.S.C. 112(b) presented in the prior Office Action (12/17/2025) is withdrawn in view of Applicant’s amendments (05/18/2026) to the claim(s).
Applicants amendments to the claims necessitated the new ground(s) of rejection presented above. Applicant’s arguments, filed 05/18/2026 with respect to the rejection(s) of the claim(s) based on the teachings of the Spender and Simmons references have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Smith whose telephone number is (571)270-3599. The examiner can normally be reached Monday - Friday 9:30am-6pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731 June 3, 2026
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