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 .
Status of Action/Claims
Receipt of Remarks/Amendments/Declaration filed on 6/8/2026 is acknowledged. Claims 9-13, 15-17, 19-21, 23-26 are currently pending and are presented for examination on the merits for patentability.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections presently being applied to the instant application.
Claim interpretation
The term “rapidly soluble” is interpreted as defined in paragraph 0041 of instant specification which refers to a compound that has been altered to increase solubility in a solvent.
New/Maintained Claim Objection(s) / Rejection(s)
New Matter
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 23-26 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
While the instant specification provide support for at least one other magnesium compound (e.g. magnesium carbonate in paragraph 0051 of instant specification), the specification do not provide support for wherein the at least one other magnesium compound is magnesium chloride, magnesium bromide, magnesium citrate, magnesium formate or magnesium acetate. Applicant point to paragraph 0065 of the published application for support. However, paragraph 0064-0065 disclose magnesium chloride (or bromide, citrate, formate, acetate) is used as a precursor to react with lactic acid to produce magnesium lactate. Paragraph 0005 of the published application discloses the mineral precursor is dissolved in the solution of lactic acid to produce mineral lactate (e.g. magnesium lactate) and the mineral lactate is optionally reduced to a select particle size. The instant specification disclose the composition comprises magnesium lactate. The magnesium chloride (or bromide, citrate, formate, acetate) is used as a precursor to react with lactic acid to obtain the magnesium lactate. Thus, there is no support in the instant specification wherein the composition comprises magnesium chloride (or bromide, citrate, formate, acetate) because these are used as a precursor to react with lactic acid to produce magnesium lactate. Further, paragraph 0054 and 0055 of instant specification disclose the composition further comprises mineral salt and the mineral may include one or more of cobalt, scandium, selenium, titanium, vanadium, manganese, iron, nickel, copper, zinc, aluminum, tin, and chromium. There is no mention of the mineral being magnesium. Therefore, the instant specification fail to provide support for wherein the at least one other magnesium compound is magnesium chloride, magnesium bromide, magnesium citrate, magnesium formate or magnesium acetate.
Claim Rejections - 35 USC § 103
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 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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 9-13 and 15-17, 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Knochenmus et al. (US 2014/0011675 A1) in view of Lamb et al. (US 2016/0000093 A1).
Knochenmus teaches seed, soil, and plant treatment compositions and particularly a method of treating seeds, soil or a plant with a composition comprising one or more of mineral chelated compounds and specifically a mineral lactate. The method comprises applying the treatment composition to one or more of a seed, soil and plant, wherein the treatment composition provides a mineral lactate product to promote seed and plant growth (see e.g., Abstract; para 0009; 0052; 0053; claim 23). Examples of mineral chelated compounds include but are not limited to cobalt, scandium, selenium, titanium, vanadium, chromium, manganese, iron, nickel, copper, zinc, or a combination thereof chelated to one or more ligands to form a chelate (a chelate complex or coordinate complex). Examples of suitable ligands include lactate. (see e.g., para 0052). Knochenmus also teaches calcium, magnesium and sulfur are measured and monitored as essential macronutrients required for healthy plant growth and can be included in the composition (e.g., para 0002; 0006; 0053). Cobalt lactate is one specific example of a mineral chelated compound expressly taught by Knochenmus (e.g., para 0077). The mineral chelated compound can be reduced in size sufficient to increase its solubility and provide a rapidly soluble mineral chelated product. The screening may include filtering with a mesh and the mesh size can be less than 50 (which equates to a particle size of less than 297 micron) (see e.g., para 0012; 0117). Applying the composition in an agricultural application includes applying to foliar, applying in furrow and applying to seed (e.g., para 0011; 0044). Knochenmus teaches incorporating a suitable fiber which is yucca plant extract and particularly Saponix 5000 or BioLiquid 5000 (yucca schidigera) (see e.g., para 0082; 0088). Knochenmus teaches the composition can comprise additional chelated or inorganic salt which include iron (e.g., para 0086). Knochenmus also teaches the composition and method taught provides micronutrients in a highly bioavailable form to plant and soil, and the absorption of chelated nutrients is significantly enhanced in plants/seeds compared to other application methods. (e.g., abstract; para 0044). Knochenmus teaches the composition comprising mineral chelated product being rapidly soluble (see e.g., para 0011; 0061; 0112; 0117-0119). Additionally, Knochenmus does not require component which are excluded with the use of consisting of language recited in claim 21. Knochenmus teaches the composition can optionally comprise a fungicide, herbicide or carriers (e.g., para 0008). The optional inclusion of a fungicide, herbicide or carriers still reads on claim 21 as these components are not required to be included in the composition. Knochenmus teaches the treatment composition can be in the form of solution and solution refers to a homogenous mixture (e.g., para 0062; 0089). Knochenmus does not require the use of a surfactant. Knochenmus teaches the composition also comprises inorganic fertilizer and an “inorganic fertilizer” refers to a composition intended to enhance the growth of plants by providing macronutrients such as one or more of nitrogen, potassium, phosphorus, calcium, magnesium, and sulfur. (e.g., para 0053; claims), which reads on at least one other magnesium compound. As mentioned above, Knochenmus teaches the examples of mineral chelated compounds include but are not limited to cobalt, scandium, selenium, titanium, vanadium, chromium, manganese, iron, nickel, copper and zinc. Thus, Knochenmus does not require cobalt or cobalt chelated compound. Knochenmus teaches carrier comprises water wherein the composition can be at least about 50% water by weight (e.g., claim 4, para 0080).
The teachings of Knochenmus have been set forth above.
Knochenmus does not expressly teach the mineral chelated compounds include specifically magnesium lactate. However, Lamb et al. cures this deficiency.
Lamb discloses seed, soil, and plant treatment compositions, and their methods of preparation. Lamb particularly teaches a method of treating seed, soil, or plant wherein the method comprises applying a treatment composition to one or more of a seed, soil and plant. (Abstract; [0097]; Claims 1, 8 and 17). Lamb teaches an inorganic fertilizer that enhances the growth of plants by providing macronutrients such as one or more of nitrogen, calcium, magnesium, etc. [0039]. Lamb contemplates a composition wherein the metal is one or more of iron, cobalt, magnesium, etc., and wherein the chelant of the metal chelated compound is one of lactate, acetate, propionate, butyrate, ethylene diamine, or EDTA; Cobalt lactate is one specific example of a mineral chelated compound (Claims 8-10; [0110]).
It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to have modified Knochenmus to incorporate the teachings of Lamb and include the mineral chelated compound such as magnesium lactate in the composition of Knochenmus. As discussed supra, Knochenmus teaches the examples of mineral chelated compounds include but are not limited to cobalt, scandium, selenium, titanium, vanadium, chromium, manganese, iron, nickel, copper, zinc, or a combination thereof. Knochenmus also teaches calcium, magnesium and sulfur are measured and monitored as essential macronutrients required for healthy plant growth and can also be included in the composition (e.g., para 0002; 0006; 0053). As mentioned previously, Lamb contemplates a composition wherein the metal is one or more of iron, cobalt, magnesium, etc., and wherein the chelant of the metal chelated compound can be lactate. Magnesium is taught to be an essential nutrient for healthy plant growth by both Knochenmus and Lamb and both of these references teach incorporating mineral chelated compound for healthy plant growth. Knochenmus teaches the mineral chelated compounds are not limited to the ones disclosed in the reference and therefore, it would have been obvious to one skilled in the art to utilize the teachings of Lamb and substitute the specific mineral chelated compound taught in Knochenmus with magnesium lactate as the mineral chelated compound since magnesium is taught to be an essential nutrient for plant growth.
Regarding the recitation “thereby providing an increased concentration of magnesium to the seed, soil or plant as compared toa seed, soil, or plant that is not administered the treatment composition”, as discussed supra, the prior art teaches the composition comprises magnesium content and thus would provide an increased concentration of magnesium to plant as compared to a plant not treated with such composition.
From the combined teaching of the cited references, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Claims 23-26 are rejected under 35 U.S.C. 103 as being unpatentable over Knochenmus et al. (US 2014/0011675 A1) in view of Lamb et al. (US 2016/0000093 A1) as applied to claims 9-13, 15-17, 19-21 above and further in view of Innovative (https://web.archive.org/web/20180823010752/https://www.innovativecompany.com/agricultural-sol.php).
The teachings of above cited references have been set forth above.
As discussed supra, Knochenmus teaches the composition also comprises inorganic fertilizer and an “inorganic fertilizer” refers to a composition intended to enhance the growth of plants by providing macronutrients such as one or more of nitrogen, potassium, phosphorus, calcium, magnesium, and sulfur, which reads on at least one other magnesium compound. The reference does not teach the specific magnesium compounds recited in claims 23-26. However, Innovative cures this deficiency.
Innovative teaches Envir-O-Mag is a premium single source high purity magnesium chloride material that occurs naturally and requires no processing making it an excellent product for the agricultural market. Magnesium is the key element in chlorophyll and plays a vital role in photosynthesis. It also aids in the utilization and mobility of phosphorus and iron and activates many plant enzymes that stimulate plant growth at the cellular level, allowing the plant to express its full genetic potential. The chloride helps move the magnesium into the plant membranes and improve the utilization of water. Chlorides are also proven to suppress the incidence of many types of fungus. (see entire document).
It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to have modified Knochenmus to incorporate the teachings of Innovative and specifically include magnesium in the form of magnesium chloride as taught by Innovative. As discussed supra, Knochenmus teaches the composition also comprises inorganic fertilizer and an “inorganic fertilizer” refers to a composition intended to enhance the growth of plants by providing macronutrients such as one or more of nitrogen, potassium, phosphorus, calcium, magnesium, and sulfur, which reads on at least one other magnesium compound. Knochenmus does not teach the specific form of magnesium in this case. Innovative teaches magnesium is the key element in chlorophyll and plays a vital role in photosynthesis. It also aids in the utilization and mobility of phosphorus and iron and activates many plant enzymes that stimulate plant growth at the cellular level, allowing the plant to express its full genetic potential. The chloride helps move the magnesium into the plant membranes and improve the utilization of water. Chlorides are also proven to suppress the incidence of many types of fungus. Thus, it would have been obvious to include a magnesium in the form of magnesium chloride because of the benefits it provides in plants as taught by Innovative.
From the combined teaching of the cited references, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Response to Arguments
Applicant in the remarks argued that Knochenmus is directed primarily to micronutrient treatments and the examples of Knochenmus focus on cobalt containing treatments. Applicant argued that Knochenmus neither evaluates magnesium lactate nor evaluates magnesium lactate in combination with an additional magnesium compound.
In response, the examiner argues that Knochenmus teaches calcium, magnesium and sulfur are measured and monitored as essential macronutrients required for healthy plant growth and can be included in the composition (e.g., para 0002; 0006; 0053). Knochenmus also teaches the composition also comprises inorganic fertilizer and an “inorganic fertilizer” refers to a composition intended to enhance the growth of plants by providing macronutrients such as one or more of nitrogen, potassium, phosphorus, calcium, magnesium, and sulfur (e.g., para 0053; claims). Therefore, Knochenmus does suggest providing macronutrient such as magnesium to plants.
Regarding the examples of Knochenmus focusing on cobalt, the examiner respectfully draws applicant’s attention to the MPEP which states “Disclosed examples and preferred embodiments do not constitute a teaching away from the broader disclosure or non-preferred embodiment.” In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). MPEP 2123. Knochenmus teaches the mineral chelated compound can be, for example, cobalt, scandium, selenium, titanium, vanadium, chromium, manganese, iron, nickel, copper, zinc, or a combination thereof (para 0009), which suggests that the chelated compounds does not have to be cobalt. Thus, applicant argument that Knochenmus focuses on cobalt compound is not found persuasive.
Regarding magnesium lactate and additional magnesium compound, as discussed supra, Knochenmus teaches the composition also comprises inorganic fertilizer and an “inorganic fertilizer” refers to a composition intended to enhance the growth of plants by providing macronutrients such as one or more of nitrogen, potassium, phosphorus, calcium, magnesium, and sulfur. (e.g., para 0053; claims), which reads on at least one other magnesium compound. Further, as discussed supra, the combination of Knochenmus and Lamb renders obvious the inclusion of specifically magnesium lactate because Knochenmus teaches the examples of mineral chelated compounds include but are not limited to cobalt, scandium, selenium, titanium, vanadium, chromium, manganese, iron, nickel, copper, zinc, or a combination thereof. Knochenmus also teaches calcium, magnesium and sulfur are measured and monitored as essential macronutrients required for healthy plant growth. Lamb contemplates a composition wherein the metal is one or more of iron, cobalt, magnesium, etc., and wherein the chelant of the metal chelated compound can be lactate. Magnesium is taught to be an essential nutrient for healthy plant growth by both Knochenmus and Lamb and both of these references teach incorporating mineral chelated compound for healthy plant growth. Knochenmus teaches the mineral chelated compounds are not limited to the ones disclosed in the reference and therefore, it would have been obvious to one skilled in the art to utilize the teachings of Lamb and substitute the specific mineral chelated compound taught in Knochenmus with magnesium lactate as the mineral chelated compound since magnesium is taught to be an essential nutrient for plant growth.
Applicant argued that Lamb describes compositions that include metal containing compounds in combination with emulsified essential oils. Thus, the teachings of Lamb are directed to a different type of treatment composition than that of Knochenmus.
In response, the examiner argues that the rejection is over Knochenmus in view of Lamb, wherein Knochenmus is the primary reference which does not require essential oils and Lamb is utilized as secondary reference because Lamb also teaches a method of treating seed, soil, or plant wherein the method comprises applying a treatment composition to one or more of a seed, soil and plant. Lamb is utilized specifically for its teachings of mineral chelates which include cobalt, magnesium and other micronutrients and macronutrients. Knochenmus teaches the examples of mineral chelated compounds include but are not limited to cobalt, scandium, selenium, titanium, vanadium, chromium, manganese, iron, nickel, copper, zinc, or a combination thereof. Lamb also teaches several mineral chelated compounds which include, for example, cobalt, iron and magnesium. Use of magnesium chelate was known in the art, as taught in Lamb, and thus the inclusion of magnesium lactate would have been prima facie obvious to one skilled in the art.
Applicant in the remarks and declaration argued that a treatment composition comprising multiple magnesium sources outperformed magnesium lactate alone and magnesium chloride alone. The declarant argued that he would not have expected a treatment composition comprising multiple magnesium sources to outperform each of the individual magnesium sources. Applicant argued that the result in declaration indicate that magnesium sources are not necessarily interchangeable in agricultural applications and may perform differently depending on how they are formulation and applied. Applicant pointed to Table 1 and 2 in the declaration for unexpected results. It is argued that compositions falling within the scope of claim 9 was evaluated against magnesium lactate alone and magnesium chloride alone. The results demonstrate that treatment composition provided faster emergence, greater root mass, and greater shoot biomass than either magnesium source individually. It was argued that positive response was observed across multiple crop species.
In response, firstly the examiner argues that the experimental data provided in the declaration is not commensurate in scope with the claims because treatment composition 1 comprises ferric ammonium citrate whereas claim 9 recites iron salt, which is broader in scope. It is unclear if the same results would be achieved by utilizing an iron salt other than ferric ammonium citrate. Also claim 9 recites at least one other magnesium compound and treatment composition 1 uses magnesium chloride, which is narrower than what is recited in claim 9 because claim 9 encompasses any magnesium compound. Further, the experimental results in the declaration do not provide a comparison to the closest prior art because the prior art reference Knochenmus already teaches seed, plant or soil treatment composition comprising yucca schidigera, iron salt/chelate and at least one other magnesium compound. As discussed supra, the difference between Knochenmus and present claims is that Knochenmus does not disclose the use of magnesium lactate. However, Applicant compare treatment composition 1 with magnesium lactate and magnesium chloride, which is not a comparison to the closest prior art. A Declaration is due full consideration and weight for all that it discloses. Declarations are reviewed for the following considerations: 1) whether the Declaration presents a nexus such as a side-by-side or single-variable comparison (In re Huang, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996)), 2) whether the Declaration presents a comparison to the closest art, 3) whether the Declaration is commensurate in scope with the scope of the claims (In re Kulling, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)), 4) whether the Declaration shows a difference in kind rather than merely a difference in degree (In re Waymouth, 182 USPQ 290, 293 (C.C.P.A. 1974)), and 5)whether the prima facie case is sufficiently strong that allegedly superior results are insufficient to overcome the case for obviousness (Pfizer Inc. v. Apotex, Inc., 82 USPQ2d 1321, 1339 (Fed. Cir. 2007)). See MPEP 716.02.
Further, applicant have not established that the difference in time of emergence, root biomass and shoot biomass among the treatment composition, magnesium lactate and magnesium chloride is of statistical and/or practical significance. For example, treatment composition has 17% change in shoot biomass versus 15% in magnesium lactate and chloride. It is unclear if this difference of 2% is of practical and statistical significance. Moreover, Table 2 does not even provide comparative data but only show results for treatment composition 1. Also, the declarant argued that he would not have expected a treatment composition comprising multiple magnesium sources to outperform each of the individual magnesium sources, however, there is no evidence provided for why this would be the expectation. In particular, one skilled in the art would have expected that multiple magnesium source would provide enhanced plant/seed growth versus single magnesium source because there would be more access to magnesium if multiple magnesium source were available versus only one. “The arguments of counsel cannot take the place of evidence in the record.” In re Schulze, 346 F.2d 600, 145 USPQ 716, 718 (CCPA 1965), In re Huang, 40 USPQ 2d 1685 (Fed. Cir. 1996), In re De Blauwe et al., 222 USPQ 191, (Fed. Cir. 1984).
Applicant’s arguments regarding the PDA reference are rendered moot as the rejections above do not utilize PDA reference as necessitated by claim amendments.
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.
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/ALI S SAEED/Examiner, Art Unit 1616
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