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 Claims
A new claim set was filed on 2/18/26 with the following:
Amended claims
2-6, 10-14
Newly canceled claims
Newly added claims
Previously canceled claims
Previously withdrawn claims
7-8, 15-20
Claims under instant examination
1-6, 9-14
Withdrawn Claim Objections/Rejections
The objections to claims 2-6 and 10-14 for minor informalities are hereby withdrawn in view of the claim amendments filed on 2/18/26.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 17/175,893; 15/824,367 and 62/426,760, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Instant independent claim 1 requires “treating an agricultural product” by “positioning the agricultural product [(e.g., seed)] next to or on an exterior surface of an article” and “storing the agricultural product next to or on the exterior surface of the article for at least one day such that the antimicrobial material reduces pathogens in the agricultural product”. Therefore, since all remaining, elected claims are dependent on claim 1, the US effective date for claims 1-6 and 9-14 is 8/2/23.
Maintained 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.
Claims 1-5 remain rejected under 35 U.S.C. 102(a)(1) as being anticipated by Escobedo (US 2018/0192652; published: 7/12/18; of record).
Escobedo is directed to antimicrobial agricultural products, manufacturing methods and application thereof (Title).
With regards to instant claims 1 and 4-5, Escobedo teaches that its agricultural product can prevent or impair the growth of microbial and pathogenic organisms on plants raised in or otherwise in contact with the agriculture products (Abstract). The agricultural product is made with at least one antimicrobial agent such an antimicrobial metal ion and/or associated polymers or nanoparticles compounded into a substrate such as plastic material; i.e., the nanoparticle has antimicrobial properties is the claimed core and the substrate such as a plastic material is the claimed shielding material) (Abstract). Escobedo teaches method for maintaining a plant against microbial and pathogenic microorganism growth comprising maintaining a plant or a portion thereof in an agricultural container made with a substrate homogenously mixed with at least one antimicrobial agent (see claim 12). With regards to the seed limitation of instant claim 4, Escobedo teaches that “plant” refers to any plant or vegetable, fruit, produce, plant seed, plant stem, plant root and the like ([0010]).
With regards to the storing limitations of instant claims 1-3, Escobedo teaches that the slow and sustained release of antimicrobial agent into the growth medium and plant can thus prevent the growth of microorganisms, maintain their antimicrobial properties over time and support the cultivation of healthy plants; and the anti-microbial agent can be maintained throughout the lifespan of plant raised therein ([0011]).
With regards to the seed limitation of instant claim 4, Escobedo teaches that “plant” refers to any plant or vegetable, fruit, produce, plant seed, plant stem, plant root and the like ([0010]).
Therefore, by teaching all the limitations of claims 1-5, Escobedo anticipates the instant invention as claimed.
Claim Rejections - 35 USC § 103
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 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 1-5, 9-10 and 12-14 remain rejected under 35 U.S.C. 103 as being unpatentable over Escobedo (US 2018/0192652; published: 7/12/18; of record), in view of Barnett (Planting in Furrows: Are There Benefits to Furrow Gardening; published online: 12/30/22; of record).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
As noted in the anticipation rejection above Escobedo anticipates claims 1-5 and so in anticipating these claims, said claims are also considered obvious under 35 USC 103(a) over Escobedo for the reasons set forth below ("lack of novelty is the epitome of obviousness" May, 574 F.2d at 1089, 197 USPQ at 607 (citing In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974))).
Escobedo is directed to antimicrobial agricultural products, manufacturing methods and application thereof (Title).
With regards to instant claims 1, 4-5, 9 and 14, Escobedo teaches that its agricultural product can prevent or impair the growth of microbial and pathogenic organisms on plants raised in or otherwise in contact with the agriculture products (Abstract). The agricultural product is made with at least one antimicrobial agent such an antimicrobial metal ion and/or associated polymers or nanoparticles compounded into a substrate such as plastic material; i.e., the nanoparticle has antimicrobial properties is the claimed core and the substrate such as a plastic material is the claimed shielding material) (Abstract). Escobedo teaches method for maintaining a plant against microbial and pathogenic microorganism growth comprising maintaining a plant or a portion thereof in an agricultural container made with a substrate homogenously mixed with at least one antimicrobial agent (see claim 12). With regards to the seed limitation of instant claims 4 and 9, Escobedo teaches that “plant” refers to any plant or vegetable, fruit, produce, plant seed, plant stem, plant root and the like ([0010]).
With regards to the storing limitations of instant claims 1-3 and 9, Escobedo teaches that the slow and sustained release of antimicrobial agent into the growth medium and plant can thus prevent the growth of microorganisms, maintain their antimicrobial properties over time and support the cultivation of healthy plants; and the anti-microbial agent can be maintained throughout the lifespan of plant raised therein ([0011]).
With regards to instant claim 12, the method of Escobedo indicates that the agricultural product can prevent the growth of microbial and pathogenic organisms on plants.
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Escobedo does not teach planting the seed in soil by depositing the seed into a furrow in a field using a planter after the abovementioned seed storage next to or on the exterior surface of the article for at least one day, as required by instant claims 9 and 13-14. Escobedo does not teach further comprising growing the seed into a plant by watering the seed in the soil and wherein the plant is grown without the use of pesticide, as required by instant claim 10. However, these deficiencies are cured by Barnett.
Barnett is directed to the method of planting in furrows and the benefits thereof (Title). Barnett teaches that furrow gardening is a method that produces a beautiful garden, as well as high yields (p. 2). Barnett teaches that the furrow method of planting is beneficial to growers in that it can make routine garden care and maintenance much easier; and allows for more uniform rows, which are able to be weeded and irrigated simply and without the concern of disturbing growing plants (p. 3). Barnett teach how to furrow a garden: (1) select a well amended growing site; (2) use garden stakes and twine to mark long straight lines; (3) dig a trench along the length of the string that is roughly 2 inches deep; (4) sow the seeds and space them according to the package instructions (i.e., seeds are originally in a container before planting); (5) gently cover the seeds with soil; (6) carefully water the new planting until the seeds have germinated (p. 4-5). It is noted that Barnett does not add a pesticide in her method of planting the seed.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Escobedo and Barnett are both directed to agricultural products; e.g., those started from seeds. Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, before the invention was effectively filed, to modify the method of Escobedo by further comprising the furrow planting method taught by Barnett to achieve the predictable result of obtaining a full-grown plant. One of ordinary skill in the art would have been motivated to do so because Barnett teaches that this method is advantageous for the following reasons: produces a beautiful garden, as well as high yields (p. 2); the furrow method of planting is beneficial to growers in that it can make routine garden care and maintenance much easier (p. 3); and allows for more uniform rows, which are able to be weeded and irrigated simply and without the concern of disturbing growing plants (p. 3).
From the teachings of the references, it is apparent that 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 before the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Claims 11 remains rejected under 35 U.S.C. 103 as being unpatentable over Escobedo (US 2018/0192652; published: 7/12/18; of record) and Barnett (Planting in Furrows: Are There Benefits to Furrow Gardening; published online: 12/30/22; of record) as applied to claim1-5, 9-10 and 12-14 above, and further in view of Morkunas et al. Acta Physiologiae Plantarum, 2014, 36, 1607-0619; published: 5-18-14; of record).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Escobedo and Barnett teach and/or make obvious the limitations of instant claims 1-5, 9-10 and 12-14 (See above rejection for details).
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Escobedo and Barnett do not teach wherein the plant has a sugar level measured by a Brix refractor of at least 12, as required by instant claim 11. However, such deficiency is cured by Morkunas et al.
Morkunas et al. is directed to the role of sugar signaling in plant defense responses against fungal pathogens (Title). Morkunas et al. teach that high levels of sugars in plant tissues enhances plant resistance (Abstract). In conclusion of the vast studies discussed throughout the publication, sugar enhances resistance and sugars could be an effective substitute to toxic pesticides (Conclusions and future directions sections).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine two compositions, each of which is taught by the prior art to be useful for the same purpose (seeds treated by the antimicrobial container of Escobedo + increasing the sugar in the plants grown from said seeds for the purpose of forming a plant against microbial and pathogenic microorganism growth), in order to form a third composition to be used for the very same purpose (See MPEP 2144.06-I).
Although Morkunas et al. do not indicate the sugar level desired for such effect, the sugar level is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal amount of sugar in the plant in order to best achieve the desired results as such would provide advantageous biological effect. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). The Examiner considers it prima facie obvious to optimize the amounts of any biologically active agent to achieve their known biological effect, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amounts of sugar in the plant grown would impact the plants defense response against fungal pathogens based on the teachings of Morkunas et al. and therefore be an optimizable variable.
From the teachings of the references, it is apparent that 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 before the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Response to Arguments
Applicants’ arguments have been fully considered, but are not found persuasive.
With regards to the priority, Applicants argue that prior-filed application provides clear written description and enabling support for these limitations and directs attention to: [0024] and Fig. 1 of US 15/824,367 and [0032-0033] of 62/426,760 (duplicated below):
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The Examiner does not find this to be proper written description support.
Specifically, with regards to Fig. 1 and [0024] of US 15/824,367, such disclosure provides support for an article and that such article can be used in, for example, agricultural, but does not indicate that the claimed antimicrobial material in the core of the article can treat an agricultural product (i.e., reduce pathogens on the exterior surface without contacting the pathogens) by positioning and storing the agricultural product next to or on the exterior surface of the article for at least one day.
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With regards to [0032-0033] of 62/426,760, such disclosure provides support for placing a food into a container that comprises antimicrobial article 100 [0032]. Furthermore, [0033] describes a “spectrum of efficacy” which neutralizes a majority of pathogens and slow the rate of food decay. However, this fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) for how one can treat an agricultural product with the antimicrobial article 100; what steps are required for “treating an agricultural product…configured to reduce pathogens on the exterior surface without contacting the pathogens….storing…for at least one day such that the antimicrobial material reduces pathogens in the agricultural product”, as instantly claimed.
With regards to the instant 102 and 103 rejections, Applicants argue Escobedo does not disclose or suggest a segregated structure in which an antimicrobial material is confined within a core that is completely encased by a shielding material such that the core is not exposed to ambient surroundings (Remarks: p. 8-9 for the 102 rejection and 10-11 for the 103 rejections, respectively).
This is not found persuasive. In response, and as indicated in the rejection, Escobedo teaches incorporating an antimicrobial agent (e.g., a silver nanoparticle) into a substrate [0016]. More specifically, Escobedo teaches wherein such is done by mixing the antimicrobial agent with zeolite particles and embedding the zeolite particle-antimicrobial agent mixture into the substrate. As one of ordinary skill in the art knows, “embed” means “to fix into a surrounding mass” or “to surround tightly or firmly; envelop or enclose” (Dictionary.com; https://www.dictionary.com/browse/embed, obtained on 4/24/26). Therefore, prior to the molding step, Escobedo teaches wherein the antimicrobial agent (e.g., silver nanoparticles) is embedded into the substrate; in other words, wherein the antimicrobial agent (e.g., silver nanoparticles) is enveloped or enclosed into the substrate. When the antimicrobial agent is enveloped or enclosed by the substrate, it is not exposed to ambient surroundings, as instantly claimed. Furthermore, as indicated in the instant rejection, Escobedo teaches that its agricultural product can prevent or impair the growth of microbial and pathogenic organisms on plants raised in or otherwise in contact with the agriculture products (Abstract).
Conclusion
THIS ACTION IS MADE FINAL. 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 GENEVIEVE S ALLEY whose telephone number is (571)270-1111. The examiner can normally be reached Monday-Friday 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached at 571-272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GENEVIEVE S ALLEY/ Primary Examiner, Art Unit 1617
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