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 Invention I (claims 1-9 and 29) in the reply filed on 12/04/2025 is acknowledged.
Claims 10-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/01/2023 have been considered by the examiner.
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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6-7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In regard to claim 6, the term “a set time period” is a relative term which renders the claim indefinite. The term “a set time period” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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 1-2 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 composition comprising calcium carbonate. 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). 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].
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 1-8 and 29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Spender et al. (US Patent Publication No. 2019/0323177).
In regard to claim 1, Spender et al. teach a calcium carbonate agricultural product (e.g. the composition is made from renewable agricultural resources) [para. 0038], the calcium carbonate agricultural product comprising calcium carbonate (e.g. 70% precipitated calcium carbonate) [0213; Example 17].
In regard to claims 2 and 4-5, Spender et al. teach the calcium carbonate agricultural product of claim 1, further comprising a binder, wherein the binder comprises a polymer and the polymer comprises polyvinyl alcohol (PVOH) [0213].
In regard to claims 2-3 and 6, Spender et al. teach the calcium carbonate agricultural product of claim 1, further comprising an additive (e.g. kraft paper) [0213] where the additive accelerates decomposition of the calcium carbonate agricultural product (e.g. kraft paper is highly biodegradable). The calcium carbonate agricultural product is configured to release the calcium carbonate to soil during a set time period (e.g. kraft paper biodegrades quickly, typically breaking down in a few weeks to a few months under soil conditions).
In regard to claims 7-8, Spender et al. teach the calcium carbonate agricultural product of claim 6, wherein the calcium carbonate agricultural product 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, Spender et al. teach a calcium carbonate agricultural product (e.g. the composition is made from renewable agricultural resources) [para. 0038], the calcium carbonate agricultural product comprising: calcium carbonate (e.g. 70% precipitated calcium carbonate) [0213; Example 17], wherein the calcium carbonate agricultural product is a mulching film (e.g. weed-block/barrier fabric or film, mulching film) [0017].
Claims 1 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Simmons (decoist, 2015).
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In regard to claims 1 and 9, Simmons teaches a calcium carbonate agricultural product (e.g. gravel garden) [pg. 17], the calcium carbonate agricultural product comprising calcium carbonate (e.g. limestone is naturally composed of calcium carbonate), wherein the calcium carbonate agricultural product has a plurality of apertures for respective plants to grow through (e.g. plants growing within openings between a fine limestone gravel) [pg. 17].
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. 12,415,666.
Claim s 1-9 and 29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 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 1-29 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.
Conclusion
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 December 10, 2025