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 .
Applicant’s election without traverse of Group I, claims 1-12, in the reply filed on 02/09/2026 is acknowledged.
Claims 13-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 02/09/2026.
Claim Status
Claims 1-22 are pending.
Claims 13-22 are withdrawn.
Claim Interpretation
The examiner best understands the limitation as recited in claim 1 of a core comprising a “first germination rate,” as being the germination rate of an uncoated seed, and wherein the coated seed has a “second germination rate,” as being the germination rate of the coated seed. Likewise, the germination rates as recited in claims 7-12 are interpreted as the coated seed (second germination rate) compared to an uncoated seed (first germination rate) (i.e., a control uncoated seed).
The examiner best understands the limitation of wherein the “second germination rate is… better than the first germination rate,” as used in claim 7, to mean wherein the second germination rate has an increased percentage of germinated seeds as compared to the first germination rate.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because the abstract comprises 35 words, which is less than 50 words in length. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claim 1 is objected to because of the following informalities: in ln 3, “rupture rate of at about…” should read “rupture rate of about”. Appropriate correction is required.
Claim Rejections - 35 USC § 112(a) or pre-AIA 1st ¶
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 1-12 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.
As recited in the instant claims, Applicants appear to be attempting to define the polyurethane coated seeds by what the coating does upon the intended use of being planted in soil, rather than the components, amounts, etc. that make up the coating itself. As evidenced by Langan et al (US 4493162 A, hereinafter “Langan”), the period of delay from implantation to the rupture of the coating from the germination of the seed can largely depend on factors outside of the coating itself, such as soil temperature, soil type, moisture, time of year, oxygen conditions, light exposure, timing of implantation, etc. (col 1 ln 16-36). Therefore, it is difficult, if not impossible, to determine what polyurethane seed coatings in the prior art would meet the limitations of the instant claims, where the conditions upon which the rupture rate are determined are not claimed. For example, if the coated seeds are implanted when conditions are already suitable for seed germination, less delay would be expected. Likewise, if planted well in advance from optimal seed germination conditions, the time between implanting the coated seed and the subsequent rupture of the coating due to seed germination would be expected to be longer. Without specified conditions, the specific polyurethanes, etc., it is difficult to determine what coatings in the prior art meet the instant claims without undue experimentation.
In addition, the first and second germination rates would also be expected to vary significantly depending on the conditions above. For example, under extremely cold conditions, if a coated seed is implanted and survives due to the protective coating, and nearly all uncoated seeds were to die, the differences in germination rates would be much different than if both were planted under conditions that were ideal for germination. Accordingly, it is difficult to determine what uncoated and coated seeds in the prior art would meet the claimed limitations, without undue experimentation, where the specified conditions, components, etc., are not disclosed.
The instant specification, claims, nor the drawing, provide any indication for the conditions from which the rupture rates and germination rates, as instantly claimed, are to be determined. For purposes of examination, the examiner is interpreting any polyurethane coated seed having a delayed germination, wherein the coating can be ruptured, and is capable of being planted, to read on the instant claims.
Claim Rejections - 35 USC § 112(b) or pre-AIA 2nd ¶
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 2-6 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.
Claims 2-4 recite wherein the “coating has a weight of about… by weight based on the total weight of the coating.” It is unclear how the coating can have a weight based on the total weight of the coating that is anything other than 100%. For purposes of examination, the claim will be interpreted as “based on the total coated seed weight”, which is recited in claims 5 and 6.
Claims 5 and 6 are also rejected for the same reasons for depending upon rejected claim 4.
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, 2, 4, 5, 7-12, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sakamoto et al (JP 2017035043 A, hereinafter “Sakamoto”), as evidenced by Langan et al (US 4493162 A, hereinafter “Langan”).
Sakamoto discloses coated seeds that maintain seed viability while suppressing germination until the appropriate time when the sowing time is optimal (¶ 1). In one embodiment, a seed is coated with a polyurethane coating at 10 wt% based on the weight of the seeds (table 2, example 16). The seeds were sown on October 1, 2013, where a 10% germination rate was achieved on October 11, 2013 (i.e., 10 days after sowing), and 50% germination rate was achieved on May 3, 2014 (i.e., 214 days) (table 3, example 16, ¶ 54). The sprouts and roots that germinate from the seeds break through the coating (¶ 28). The coatings are effective in improving the survival rate from sowing to germination by protecting the seeds from environmental factors that reduce survival (such as sub-freezing temperatures), thereby reducing the number of seeds that die during the germination period, and subsequently improving the degree of germination (¶¶ 12-14). The higher survival rates are indicated by a higher germination rate compared to control (i.e., uncoated seed) (¶ 14).
Regarding the coated seed claim 1, Sakamoto discloses a coated seed comprising a seed and a polyurethane coating, thereby reading on a coated seed comprising a seed core comprising a polyurethane coating, as instantly claimed.
Regarding the first and second germination rates of claim 1, where the core comprises a seed that has an uncoated germination rate (i.e., a first germination rate), and wherein the coated seed has a higher germination rate compared to the control (i.e., a second germination rate), the functional limitations are met.
Regarding the rupture rate of the coating of claim 1, where the germination of the coated seeds comprise the sprouts and roots of the seed breaking through the coating, it appears the limitation of the coating being ruptured is met.
Further, regarding the rate itself, as discussed above, Applicants are attempting to claim the coating by what it does, rather than what it is. It appears that the rupture rate of the coating largely depends on several factors outside of the composition and structure of the coating itself, such as soil temperature, soil type, moisture content of the soil, time of year, oxygen conditions, light exposure, implantation timing, etc., as discussed above. Without controlled conditions, it is difficult, if not impossible, to determine what coatings in the prior art meet the instant claims. Nevertheless, where 10% of the polyurethane coated seeds of Sakamoto were germinated at 10 days and 50% were germinated at 214 days, 40% of the seeds were germinated between 10-240 days, and therefore comprised seeds with a coating that ruptured within the claimed range.
Regarding claims 2, 4, and 5, the polyurethane coating of example 16 is 10 wt% of the total weight of the seed, thereby anticipating the claimed ranges.
Purely arguendo, if the total weight of the seed as disclosed by Sakamoto does not include the coating, then 10 wt% of the total coated seed weight would be 9.09 wt% (10 wt% coating / (seed weight + coating weight) = 9.09 wt%), anticipating the claimed ranges.
Regarding claims 7 and 12, where Sakamoto discloses the coated seeds have improved survival rates and a higher germination rate compared to uncoated seeds, the limitation of having a second germination rate that is better than the first germination rate is met, were the first germination rate appears to be the germination rate of the uncoated seed, as discussed above.
Regarding claims 8-11, where the polyurethane coating on the seeds of Sakamoto improve the survival and germination rate of seeds exposed to environmental factors that reduce survival, depending on the conditions the seeds are planted in, it would be reasonably expected that the germination rate of the uncoated seed and the germination rate of the coated seed would be substantially the same when both are planted under optimal germination conditions. For example, if 100% of the uncoated seeds were germinated under optimal conditions, the germination rates would be the same where the coating is taught to improve germination, not hinder it. Therefore, it appears that the first and second germination rates are an inherent property of the seed and the coated seed, depending upon the conditions upon which they are planted, thereby meeting the claimed limitations. See MPEP 2112(II) and (III).
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 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.
Claims 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over by Sakamoto et al (JP 2017035043 A, hereinafter “Sakamoto”).
Sakamoto is discussed above and further teaches the coatings are in the range of 2-20 wt% relative to the seeds (¶ 13).
Sakamoto does not disclose a specific embodiment comprising the coating amounts of instant claims 3 and 6.
Regarding claims 3 and 6, it would have been obvious to adjust the amount of coating on the seeds of Sakamoto, such as from 2-20 wt%, as taught by the reference. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Purely arguendo, if the total weight of the seed as disclosed by Sakamoto does not include the coating, then 2-20 wt% of the total coated seed weight would be about 1.96-16.67 wt% (2-20 wt% coating / (seed weight + coating weight) = about 1.96-16.67 wt%), overlapping the claimed ranges. See MPEP 2144.05(I).
Claims 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over by Sakamoto et al (JP 2017035043 A, hereinafter “Sakamoto”), as applied to claims 1, 2, 4, 5, 7, and 12 above, and further in view of Zhang (CN 106612751 A).
Sakamoto is discussed above and purely arguendo, if somehow the germination rates are not an inherent property, the following applies.
Zhang teaches polyurethane seed coatings for delaying germination were known to be formulated with 99-100% germination rates compared to uncoated seeds (¶¶ 2, 9, table 3).
Regarding claims 8-11, it would have been obvious to formulate the polyurethane coated seeds of Sakamoto with known germination rates suitable for polyurethane coated seeds, such as 99-100% compared to uncoated seeds (i.e., the first germination rate), as taught by Zhang. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA A ATKINSON whose telephone number is (571)270-0877. The examiner can normally be reached M-F: 9:00 AM - 5:00 PM + Flex.
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/JOSHUA A ATKINSON/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612