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 Rejections - 35 USC § 112
Claims 5,19,20 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.
For claim 5, the limitation is unclear because applicant stated in claim 3 that the additive consisting of water-soluble polymeric molecules OR water-soluble polymeric molecules and a fertilizer; thus, if one selects the first scenario (i.e. water-soluble polymeric molecules) based on the “OR”, then claim 5 is irrelevant because fertilizer is not part of the selection.
For claim 19, similar to claim 5’s comment above, if one selects the first scenario (i.e. water-soluble polymeric molecules) based on the “OR”, then claim 19 is irrelevant because fertilizer is not part of the selection.
For claim 20, similar to claim 5’s comment above, if one selects the first scenario (i.e. water-soluble polymeric molecules) based on the “OR”, then claim 20 is irrelevant because fertilizer is not part of the selection.
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 (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 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 3-6,9,10,13,14,20-23 are rejected under 35 U.S.C. 103 as being unpatentable over Oka (JP 3-58722 as cited on form PTO-1449) in view of Kodama et al. (JP 06-093017 A as cited on form PTO-1449; also, attached on form PTO-892 is a machine translation of Kodama et al. which will be reference to as set forth below) and Yoshioka et al. (US 20160205880 A1).
For claim 3, Oka teaches an additive for a culture fluid for hydroponics, the additive consisting of:
(a) water-soluble polymeric molecules; or
(b) water-soluble polymeric molecules (translation states: “Specific examples of the high molecular weight nonionic surface active substance used in the present invention include cellulose ethers such as methyl cellulose and ethyl cellulose, polymers of acrylamide derivatives, polyvinyl alcohol, and polyoxyethylene alkyl ethers”) and a fertilizer (translation states: “The nutrient used in the present invention may be any fertilizer as long as it contains elements necessary for plant growth, but it is practical to use a commercially available fertilizer for general hydroponics”);
wherein 0.5% by mass or less (translation states: “The amount of the surface-active substance to be added may vary depending on the kind and molecular weight of the surface-active substance and the power for foaming, but is preferably in the range of 0. 1% to 5%.”) of the water-soluble polymeric molecules have a molecular weight of 1,000 or less (translation states: “The minimum molecular weight of the surface-active substance cannot be generally defined depending on the kind of the plant, but at least a molecular weight of 1,000 or more is require”, at least 1000 is within the range of 1000 or less, for example, 999 or 1000).
However, Oka is silent about the water-soluble polymeric molecules to fertilizer ratio in an amount from 1:99 to 99.9:0.1 of water-soluble polymeric molecules:fertilizer; and wherein the water-soluble polymeric molecules consist of polyvinyl alcohol (PVA) having a block character of 0.35 or more and less than 0.50 and a degree of saponification of 70 mol% or more and less than 88 mol%.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the fertilizer of Oka be in an amount from 1:99 to 99.9:0.1 of water-soluble polymeric molecules:fertilizer, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art (Oka stated in the translation that the ingredients depend on the type of plants being grown, thus, routine testing and general experimental conditions would lead one to select the ratio as desired for the specific plant being grown; also, there is no critical or unexpected result in comparison to the prior in applicant’s invention and it appears that applicant is merely preferring this range without any unexpected result). In re Aller, 105 USPQ 233. NOTE: Under some circumstances, however, changes such as these may impart patentability to a process if the particular ranges claimed produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. In re Dreyfus, 22 CCPA (Patents) 830, 73 F.2d 931, 24 USPQ 52; In re Waite et al., 35 CCPA (Patents) 1117, 168 F.2d 104, 77 USPQ 586. Such ranges are termed "critical" ranges, and the applicant has the burden of proving such criticality. In re Swenson et al., 30 CCPA (Patents) 809, 132 F.2d 1020, 56 USPQ 372; In re Scherl, 33 CCPA (Patents) 1193, 156 F.2d 72, 70 USPQ 204. However, even though applicant's modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. In re Sola, 22 CCPA (Patents) 1313, 77 F.2d 627, 25 USPQ 433; In re Normann et al., 32 CCPA (Patents) 1248, 150 F.2d 627, 66 USPQ 308; In re Irmscher, 32 CCPA (Patents) 1259, 150 F.2d 705, 66 USPQ 314. More particularly, 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 Swain et al., 33 CCPA (Patents) 1250, 156 F.2d 239, 70 USPQ 412; Minnesota Mining and Mfg. Co. v. Coe, 69 App. D.C. 217, 99 F.2d 986, 38 USPQ 213; Allen et al. v. Coe, 77 App. D.C. 324, 135 F.2d 11, 57 USPQ 136.
Kodama et al. teach in the same field of endeavor of an additive comprising a water-soluble polymeric molecules consist of polyvinyl alcohol (PVA) having a block character of 0.35 or more and less than 0.50 (para. 0001,0005,0006, etc.). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have a block character of 0.35 or more and less than 0.50 as taught by Kodama et al. for the water-soluble polymeric molecules consist of polyvinyl alcohol (PVA) of Oka because having a block character of 0.470 or more is desirable for use as a suspension agent or the like in aqueous suspension polymerization of vinyl chloride, but a partially saponified polyvinyl alcohol having a high block character of 0.470 or more cannot be stably obtained by a conventional production method (as stated by Kodama et al.).
Yoshioka et al. teach in the same field of endeavor of a culture fluid for hydroponics, comprising a water-soluble polymeric molecules comprise at least one selected from the group consisting of polyethylene glycol (para. 0042), polypropylene glycol, polyvinylpyrrolidone, polyvinyl ether, an isobutylene-maleic anhydride copolymer, polyallylamine, starch (para. 0042), sodium alginate, alginic acid propylene glycol ester, starch sodium glycolate, starch phosphoric acid ester sodium. In addition, Yoshioka et al. also teach a PVA with a degree of saponification “preferably 90 mol % or more (more preferably 95 mol % or more, and still more preferably 99 mol % or more). When the saponification degree of the PVA is less than 90 mol %, the water resistance of the PVA is possibly lowered, disadvantageously.” (para. 0038). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the PVA of Oka as modified by Kodama et al. with a degree of saponification from 70mol% or more and less than 88mol% based on the saponification concept taught by Yoshioka et al. (noting that, although not preferred and there is a possibility that water resistance may reduce, Yoshioka et al. still teach saponification can be lower than 90 mol%), since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art (Oka stated in the translation that the ingredients depend on the type of plants being grown, thus, routine testing and general experimental conditions would lead one to select the saponification as desired for the specific plant being grown; also, there is no critical or unexpected result in comparison to the prior in applicant’s invention and it appears that applicant is merely preferring this range without any unexpected result; furthermore, depending on how much nutritional value the plant needs because saponification enhances the nutritional value). In re Aller, 105 USPQ 233. NOTE: Under some circumstances, however, changes such as these may impart patentability to a process if the particular ranges claimed produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. In re Dreyfus, 22 CCPA (Patents) 830, 73 F.2d 931, 24 USPQ 52; In re Waite et al., 35 CCPA (Patents) 1117, 168 F.2d 104, 77 USPQ 586. Such ranges are termed "critical" ranges, and the applicant has the burden of proving such criticality. In re Swenson et al., 30 CCPA (Patents) 809, 132 F.2d 1020, 56 USPQ 372; In re Scherl, 33 CCPA (Patents) 1193, 156 F.2d 72, 70 USPQ 204. However, even though applicant's modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. In re Sola, 22 CCPA (Patents) 1313, 77 F.2d 627, 25 USPQ 433; In re Normann et al., 32 CCPA (Patents) 1248, 150 F.2d 627, 66 USPQ 308; In re Irmscher, 32 CCPA (Patents) 1259, 150 F.2d 705, 66 USPQ 314. More particularly, 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 Swain et al., 33 CCPA (Patents) 1250, 156 F.2d 239, 70 USPQ 412; Minnesota Mining and Mfg. Co. v. Coe, 69 App. D.C. 217, 99 F.2d 986, 38 USPQ 213; Allen et al. v. Coe, 77 App. D.C. 324, 135 F.2d 11, 57 USPQ 136.
For claim 4, Oka as modified by Kodama et al. and Yoshioka et al. teaches a cultivation method (Oka teaches cultivation of plants in hydroponics) comprising performing hydroponics using a culture fluid comprising the additive of claim 3 (as explained in the above with Oka as modified by Kodama et al. and Yoshioka et al.).
For claim 5, Oka as modified by Kodama et al. and Yoshioka et al. teaches the additive according to claim 3, but is silent about wherein the additive consists of (b) the water-soluble polymeric molecules and the fertilizer in an amount from 1:99 to 99.9:0.1 of water-soluble polymeric molecules:fertilizer. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the fertilizer of Oka as modified by Kodama et al. and Yoshioka et al. being in an amount of from 1:99 to 99.9:0.1 of water-soluble polymeric molecules:fertilizer, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art (Oka stated in the translation that the ingredients depend on the type of plants being grown, thus, routine testing and general experimental conditions would lead one to select the ratio as desired for the specific plant being grown; also, there is no critical or unexpected result in comparison to the prior in applicant’s invention and it appears that applicant is merely preferring this range without any unexpected result). In re Aller, 105 USPQ 233. NOTE: Under some circumstances, however, changes such as these may impart patentability to a process if the particular ranges claimed produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. In re Dreyfus, 22 CCPA (Patents) 830, 73 F.2d 931, 24 USPQ 52; In re Waite et al., 35 CCPA (Patents) 1117, 168 F.2d 104, 77 USPQ 586. Such ranges are termed "critical" ranges, and the applicant has the burden of proving such criticality. In re Swenson et al., 30 CCPA (Patents) 809, 132 F.2d 1020, 56 USPQ 372; In re Scherl, 33 CCPA (Patents) 1193, 156 F.2d 72, 70 USPQ 204. However, even though applicant's modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. In re Sola, 22 CCPA (Patents) 1313, 77 F.2d 627, 25 USPQ 433; In re Normann et al., 32 CCPA (Patents) 1248, 150 F.2d 627, 66 USPQ 308; In re Irmscher, 32 CCPA (Patents) 1259, 150 F.2d 705, 66 USPQ 314. More particularly, 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 Swain et al., 33 CCPA (Patents) 1250, 156 F.2d 239, 70 USPQ 412; Minnesota Mining and Mfg. Co. v. Coe, 69 App. D.C. 217, 99 F.2d 986, 38 USPQ 213; Allen et al. v. Coe, 77 App. D.C. 324, 135 F.2d 11, 57 USPQ 136.
For claim 6, Oka as modified by Kodama et al. and Yoshioka et al. teaches the additive according to claim 3, and further teaches wherein from 0.001% to 0.5% by mass of the water- soluble polymeric molecules have a molecular weight of 1,000 or less (as stated in Oka’s translation of 1000 or more which covers 1000, and 0.1% to 5% which covers 0.001% to 0.5%; translation states: “The minimum molecular weight of the surface-active substance cannot be generally defined depending on the kind of the plant, but at least a molecular weight of 1,000 or more is require.”).
For claim 9, Oka as modified by Kodama et al. and Yoshioka et al. teaches the additive according to claim 3, but is silent about wherein a proportion of a vinyl alcohol unit with respect to total monomer units in the PVA is from 50 to 99 mol%. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have a proportion of a vinyl alcohol unit of Oka as modified by Kodama et al. and Yoshioka et al. with respect to total monomer units in the PVA is from 50 to 99 mol%, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art (Oka stated in the translation that the ingredients depend on the type of plants being grown, thus, routine testing and general experimental conditions would lead one to select the proportion as desired for the specific plant being grown; also, there is no critical or unexpected result in comparison to the prior in applicant’s invention and it appears that applicant is merely preferring this range without any unexpected result). In re Aller, 105 USPQ 233. NOTE: Under some circumstances, however, changes such as these may impart patentability to a process if the particular ranges claimed produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. In re Dreyfus, 22 CCPA (Patents) 830, 73 F.2d 931, 24 USPQ 52; In re Waite et al., 35 CCPA (Patents) 1117, 168 F.2d 104, 77 USPQ 586. Such ranges are termed "critical" ranges, and the applicant has the burden of proving such criticality. In re Swenson et al., 30 CCPA (Patents) 809, 132 F.2d 1020, 56 USPQ 372; In re Scherl, 33 CCPA (Patents) 1193, 156 F.2d 72, 70 USPQ 204. However, even though applicant's modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. In re Sola, 22 CCPA (Patents) 1313, 77 F.2d 627, 25 USPQ 433; In re Normann et al., 32 CCPA (Patents) 1248, 150 F.2d 627, 66 USPQ 308; In re Irmscher, 32 CCPA (Patents) 1259, 150 F.2d 705, 66 USPQ 314. More particularly, 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 Swain et al., 33 CCPA (Patents) 1250, 156 F.2d 239, 70 USPQ 412; Minnesota Mining and Mfg. Co. v. Coe, 69 App. D.C. 217, 99 F.2d 986, 38 USPQ 213; Allen et al. v. Coe, 77 App. D.C. 324, 135 F.2d 11, 57 USPQ 136.
For claim 10, Oka as modified by Kodama et al. and Yoshioka et al. teaches the additive according to claim 3, but is silent about wherein a proportion of a vinyl alcohol unit with respect to total monomer units in the PVA is from 70 to 99 mol%. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have a proportion of a vinyl alcohol unit of Oka as modified by Kodama et al. and Yoshioka et al. with respect to total monomer units in the PVA is from 70 to 99 mol%, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art (Oka stated in the translation that the ingredients depend on the type of plants being grown, thus, routine testing and general experimental conditions would lead one to select the proportion as desired for the specific plant being grown; also, there is no critical or unexpected result in comparison to the prior in applicant’s invention and it appears that applicant is merely preferring this range without any unexpected result). In re Aller, 105 USPQ 233. NOTE: Under some circumstances, however, changes such as these may impart patentability to a process if the particular ranges claimed produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. In re Dreyfus, 22 CCPA (Patents) 830, 73 F.2d 931, 24 USPQ 52; In re Waite et al., 35 CCPA (Patents) 1117, 168 F.2d 104, 77 USPQ 586. Such ranges are termed "critical" ranges, and the applicant has the burden of proving such criticality. In re Swenson et al., 30 CCPA (Patents) 809, 132 F.2d 1020, 56 USPQ 372; In re Scherl, 33 CCPA (Patents) 1193, 156 F.2d 72, 70 USPQ 204. However, even though applicant's modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. In re Sola, 22 CCPA (Patents) 1313, 77 F.2d 627, 25 USPQ 433; In re Normann et al., 32 CCPA (Patents) 1248, 150 F.2d 627, 66 USPQ 308; In re Irmscher, 32 CCPA (Patents) 1259, 150 F.2d 705, 66 USPQ 314. More particularly, 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 Swain et al., 33 CCPA (Patents) 1250, 156 F.2d 239, 70 USPQ 412; Minnesota Mining and Mfg. Co. v. Coe, 69 App. D.C. 217, 99 F.2d 986, 38 USPQ 213; Allen et al. v. Coe, 77 App. D.C. 324, 135 F.2d 11, 57 USPQ 136.
For claim 13, Oka as modified by Kodama et al. and Yoshioka et al. teaches the additive according to claim 3, but is silent about wherein the PVA has a degree of polymerization from 200 to 5,000. In addition to the above, Yoshioka et al. also teach wherein the PVA has a degree of polymerization from 200 to 5,000 (for example, para. 0039). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the PVA of Oka as modified by Kodama et al. and Yoshioka et al. with a degree of polymerization from 200 to 5,000 as taught by Yoshioka et al., since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art (Oka stated in the translation that the ingredients depend on the type of plants being grown, thus, routine testing and general experimental conditions would lead one to select the degree of polymerization as desired for the specific plant being grown; also, there is no critical or unexpected result in comparison to the prior in applicant’s invention and it appears that applicant is merely preferring this range without any unexpected result). In re Aller, 105 USPQ 233. NOTE: Under some circumstances, however, changes such as these may impart patentability to a process if the particular ranges claimed produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. In re Dreyfus, 22 CCPA (Patents) 830, 73 F.2d 931, 24 USPQ 52; In re Waite et al., 35 CCPA (Patents) 1117, 168 F.2d 104, 77 USPQ 586. Such ranges are termed "critical" ranges, and the applicant has the burden of proving such criticality. In re Swenson et al., 30 CCPA (Patents) 809, 132 F.2d 1020, 56 USPQ 372; In re Scherl, 33 CCPA (Patents) 1193, 156 F.2d 72, 70 USPQ 204. However, even though applicant's modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. In re Sola, 22 CCPA (Patents) 1313, 77 F.2d 627, 25 USPQ 433; In re Normann et al., 32 CCPA (Patents) 1248, 150 F.2d 627, 66 USPQ 308; In re Irmscher, 32 CCPA (Patents) 1259, 150 F.2d 705, 66 USPQ 314. More particularly, 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 Swain et al., 33 CCPA (Patents) 1250, 156 F.2d 239, 70 USPQ 412; Minnesota Mining and Mfg. Co. v. Coe, 69 App. D.C. 217, 99 F.2d 986, 38 USPQ 213; Allen et al. v. Coe, 77 App. D.C. 324, 135 F.2d 11, 57 USPQ 136.
For claim 14, Oka as modified by Kodama et al. and Yoshioka et al. teaches the additive according to claim 3, but is silent about wherein the PVA has a degree of polymerization from 400 to 3,000. In addition to the above, Yoshioka et al. also teach wherein the PVA has a degree of polymerization from 400 to 3,000 (for example, para. 0039). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the PVA of Oka as modified by Kodama et al. and Yoshioka et al. with a degree of polymerization from 400 to 3,000 as taught by Yoshioka et al., since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art (Oka stated in the translation that the ingredients depend on the type of plants being grown, thus, routine testing and general experimental conditions would lead one to select the degree of polymerization as desired for the specific plant being grown; also, there is no critical or unexpected result in comparison to the prior in applicant’s invention and it appears that applicant is merely preferring this range without any unexpected result). In re Aller, 105 USPQ 233. NOTE: Under some circumstances, however, changes such as these may impart patentability to a process if the particular ranges claimed produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. In re Dreyfus, 22 CCPA (Patents) 830, 73 F.2d 931, 24 USPQ 52; In re Waite et al., 35 CCPA (Patents) 1117, 168 F.2d 104, 77 USPQ 586. Such ranges are termed "critical" ranges, and the applicant has the burden of proving such criticality. In re Swenson et al., 30 CCPA (Patents) 809, 132 F.2d 1020, 56 USPQ 372; In re Scherl, 33 CCPA (Patents) 1193, 156 F.2d 72, 70 USPQ 204. However, even though applicant's modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. In re Sola, 22 CCPA (Patents) 1313, 77 F.2d 627, 25 USPQ 433; In re Normann et al., 32 CCPA (Patents) 1248, 150 F.2d 627, 66 USPQ 308; In re Irmscher, 32 CCPA (Patents) 1259, 150 F.2d 705, 66 USPQ 314. More particularly, 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 Swain et al., 33 CCPA (Patents) 1250, 156 F.2d 239, 70 USPQ 412; Minnesota Mining and Mfg. Co. v. Coe, 69 App. D.C. 217, 99 F.2d 986, 38 USPQ 213; Allen et al. v. Coe, 77 App. D.C. 324, 135 F.2d 11, 57 USPQ 136.
For claim 20, Oka as modified by Kodama et al. and Yoshioka et al. teaches the additive according to claim 3, and further teaches wherein the additive consists of the water-soluble polymeric molecules and the fertilizer (please see Oka translation and as stated in the above). However, Oka as modified by Kodama et al. and Yoshioka et al. is silent about the fertilizer in an amount from 10:90 to 90:10 of water-soluble polymeric molecules:fertilizer. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the fertilizer of Oka as modified by Kodama et al. and Yoshioka et al. being in an amount of 10:90 to 90:10 of water-soluble polymeric molecules:fertilizer, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art (Oka stated in the translation that the ingredients depend on the type of plants being grown, thus, routine testing and general experimental conditions would lead one to select the amount as desired for the specific plant being grown; also, there is no critical or unexpected result in comparison to the prior in applicant’s invention and it appears that applicant is merely preferring this range without any unexpected result). In re Aller, 105 USPQ 233. NOTE: Under some circumstances, however, changes such as these may impart patentability to a process if the particular ranges claimed produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. In re Dreyfus, 22 CCPA (Patents) 830, 73 F.2d 931, 24 USPQ 52; In re Waite et al., 35 CCPA (Patents) 1117, 168 F.2d 104, 77 USPQ 586. Such ranges are termed "critical" ranges, and the applicant has the burden of proving such criticality. In re Swenson et al., 30 CCPA (Patents) 809, 132 F.2d 1020, 56 USPQ 372; In re Scherl, 33 CCPA (Patents) 1193, 156 F.2d 72, 70 USPQ 204. However, even though applicant's modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. In re Sola, 22 CCPA (Patents) 1313, 77 F.2d 627, 25 USPQ 433; In re Normann et al., 32 CCPA (Patents) 1248, 150 F.2d 627, 66 USPQ 308; In re Irmscher, 32 CCPA (Patents) 1259, 150 F.2d 705, 66 USPQ 314. More particularly, 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 Swain et al., 33 CCPA (Patents) 1250, 156 F.2d 239, 70 USPQ 412; Minnesota Mining and Mfg. Co. v. Coe, 69 App. D.C. 217, 99 F.2d 986, 38 USPQ 213; Allen et al. v. Coe, 77 App. D.C. 324, 135 F.2d 11, 57 USPQ 136.
For claim 21, Oka as modified by Kodama et al. and Yoshioka et al. teaches the cultivation method according to claim 4, further comprising dissolving the additive in water to form the culture fluid (as stated in the translation of Oka).
For claim 22, Oka as modified by Kodama et al. and Yoshioka et al. teaches the cultivation method according to claim 4, and further teaches wherein the hydroponics comprises a deep flow technique or a circulating system (as stated in the translation of Oka: “For this reason, various contrivances have been made to supply oxygen in the conventional hydroponic cultivation system. For example, a method of intermittently washing and draining the culture solution, a method of forcibly introducing air into the circulating culture solution to increase the amount of dissolved oxygen in the culture solution, or a method of spraying the culture solution in the form of a shower or mist onto the roots of the plant is employed.”, which any one of these can be considered as either deep flow or circulating system).
For claim 23, Oka as modified by Kodama et al. and Yoshioka et al. teaches the additive according to claim 3, but is silent about wherein the block character is from 0.35 to 0.457. As stated in the above, Kodama et al. teach in the same field of endeavor of an additive comprising a water-soluble polymeric molecules consist of polyvinyl alcohol (PVA) having a block character of 0.470-0.600 (para. 0001,0005,0006, etc.). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have a block character of 0.35 to 0.457 based on the concept block character as taught in Kodama et al. for the water-soluble polymeric molecules consist of polyvinyl alcohol (PVA) of Oka as modified by Kodama et al. and Yoshioka et al., depending on the desired use as a suspension agent or the like in aqueous suspension polymerization of vinyl chloride. NOTE: Under some circumstances, however, changes such as these may impart patentability to a process if the particular ranges claimed produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. In re Dreyfus, 22 CCPA (Patents) 830, 73 F.2d 931, 24 USPQ 52; In re Waite et al., 35 CCPA (Patents) 1117, 168 F.2d 104, 77 USPQ 586. Such ranges are termed "critical" ranges, and the applicant has the burden of proving such criticality. In re Swenson et al., 30 CCPA (Patents) 809, 132 F.2d 1020, 56 USPQ 372; In re Scherl, 33 CCPA (Patents) 1193, 156 F.2d 72, 70 USPQ 204. However, even though applicant's modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. In re Sola, 22 CCPA (Patents) 1313, 77 F.2d 627, 25 USPQ 433; In re Normann et al., 32 CCPA (Patents) 1248, 150 F.2d 627, 66 USPQ 308; In re Irmscher, 32 CCPA (Patents) 1259, 150 F.2d 705, 66 USPQ 314. More particularly, 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 Swain et al., 33 CCPA (Patents) 1250, 156 F.2d 239, 70 USPQ 412; Minnesota Mining and Mfg. Co. v. Coe, 69 App. D.C. 217, 99 F.2d 986, 38 USPQ 213; Allen et al. v. Coe, 77 App. D.C. 324, 135 F.2d 11, 57 USPQ 136. Applicant disclosure has NO criticality of claiming this range because para. 0027 stated that one can have more than 0.50 depending on the catalyst being used and the desired surface tension.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Oka as modified by Kodama et al. and Yoshioka et al. as applied to claim 3 above, and further in view of Obonai et al. (US 6286254 B1).
For claim 19, Oka as modified by Kodama et al. and Yoshioka et al. teaches the additive according to claim 3, but is silent about wherein the additive consists of (b) the water-soluble polymeric molecules and the fertilizer, and the fertilizer comprises at least one selected from the group consisting of Ca(NO3)2.4H20, KNO3, N H4H2PO4, MgSO4-7H20, N H4NO3, Fe- EDTA, H3B03, and MnC12-4H20.
Obonai et al. teach in the same field of endeavor of plant growth comprising a fertilizer such as potassium nitrate (KNO3) (stated in the patent: “As the method of incorporating such a nutrient into the hydrogel or hydrogel-forming polymer, it is possible to use a method wherein the above hydrogel or hydrogel-forming polymer itself is immersed in an aqueous solution containing a substance such as urea, calcium nitrate, potassium nitrate, potassium hydrogen phosphate, magnesium sulfate, and ferrous sulfate to be swollen, thereby to cause the resultant hydrogel or hydrogel-forming polymer to absorb thereinto the desired nutrient.” It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use potassium nitrate (KNO3) as taught by Obonai et al. as the preferred fertilizer in Oka as modified by Kodama et al. and Yoshioka et al.’s invention, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious choice (potassium nitrate (KNO3) is notoriously well-known fertilizer in the art, thus, depending on the plant type being grown, the user can select any known fertilizer as desired by the plant). In re Leshin, 125 USPQ 416.
Response to Arguments
Applicant's arguments filed 7/22/2026 have been fully considered but they are not persuasive. Applicant argued the following:
Claims 5, 19, 20 are rejected as allegedly being indefinite as set forth on page 2 of the office action. Without acquiescing to the merits of the rejection, and solely to advance prosecution, Applicant has amended claims 5, 19, and 20, thereby rendering the rejection moot.
The examiner respectfully disagreed because applicant did not amend claims 5, 19, 20 to overcome the 112 rejection above. The examiner explained that, because applicant uses “or”, the user can select (a) water-soluble polymeric molecules and claims 5,19,20 pertain to part (b) selection only; thus, the scope of claims 5,19,20 would be unclear because it was not selected based on the “or”. The examiner is maintaining the 112 rejection as stated in the above.
In response, Applicant respectfully submits that the combination of Oka and Kodama does not teach or suggest a degree of saponification of 70 mol% or more and less than 88 mol% as set forth in claim 3. Oka does not teach or suggest any degree of saponification, let alone a degree of saponification of 70 mol% or more and less than 88 mol%. Kodama relates to a method for producing partially saponified polyvinyl alcohol having a degree of saponification of 40 to 60 mol%, which falls outside of the range as set forth in present claim 3. See Kodama at claim 1. Therefore, the combination of Oka and Kodama fail to teach or suggest each and every element of the claims.
The examiner respectfully disagreed because, while applicant claimed the range, applicant has NO support in the specification for critical or unexpected result in comparison to the prior in applicant’s invention and it appears that applicant is merely preferring this range without any unexpected result. As a matter of fact, applicant listed a wide range, which covered the ranges as taught in Kodama et al. and Yoshioka et al. Under some circumstances, however, changes such as these may impart patentability to a process if the particular ranges claimed produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. In re Dreyfus, 22 CCPA (Patents) 830, 73 F.2d 931, 24 USPQ 52; In re Waite et al., 35 CCPA (Patents) 1117, 168 F.2d 104, 77 USPQ 586. Such ranges are termed "critical" ranges, and the applicant has the burden of proving such criticality. In re Swenson et al., 30 CCPA (Patents) 809, 132 F.2d 1020, 56 USPQ 372; In re Scherl, 33 CCPA (Patents) 1193, 156 F.2d 72, 70 USPQ 204. However, even though applicant's modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. In re Sola, 22 CCPA (Patents) 1313, 77 F.2d 627, 25 USPQ 433; In re Normann et al., 32 CCPA (Patents) 1248, 150 F.2d 627, 66 USPQ 308; In re Irmscher, 32 CCPA (Patents) 1259, 150 F.2d 705, 66 USPQ 314. More particularly, 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 Swain et al., 33 CCPA (Patents) 1250, 156 F.2d 239, 70 USPQ 412; Minnesota Mining and Mfg. Co. v. Coe, 69 App. D.C. 217, 99 F.2d 986, 38 USPQ 213; Allen et al. v. Coe, 77 App. D.C. 324, 135 F.2d 11, 57 USPQ 136.
Moreover, Applicant respectfully submits that one of ordinary skill in the art would have had no motivation to combine or modify Oka's PVA with Kodama's block character. Oka discloses the use of a surface-active substance for sufficiently foaming a culture fluid (Oka at page 2, right column, lines 1 to 3). In contrast, the PVA disclosed in Kodama is for use as a suspending agent in aqueous suspension polymerization of vinyl chloride (Kodama at [0002]), which is different in both application and function from the surface-active substance of Oka. Therefore, one of ordinary skill in the art would have had no reason to adopt the block character of Kodama to foam the culture fluid disclosed in Oka, because neither Oka nor Kodama provide any teaching or suggestion that a block character of 0.470-0.600 would be useful for foaming a culture fluid.
The examiner respectfully disagreed because the examiner has provided a motivation to combine Kodama et al. and Yoshioka et al. In addition, the examiner did not rely on the use of PVA disclosed in Kodama, for PVA because Oka already teaches using PVA. The only missing limitation is merely the range of block character, which is why Kodama et al. are relied on. In another word, the range as claimed by applicant exists and taught by Kodama et al., thus, it is nothing new in the art and there is no criticality or unexpected result provided by applicant, especially when applicant has a wide range and the range disclosed in Kodama et al. is in this wide range as listed by applicant. Furthermore, it is irrelevant as for the use of the PVA in Kodama et al. because the examiner did not rely on Kodama et al. for the intended use of PVA.
Further, in making the rejection, the examiner admits that Oka as modified by Kodama is silent about wherein the PVA has a degree of saponification from 35 to 100 mol%. Nevertheless, the examiner cites to Yoshioka to cure the deficiencies of Oka and Kodama. See Page 13 of the office action. In response, Applicant respectfully submits that Yoshioka does not teach or suggest a degree of saponification of 70 mol% or more and less than 88 mol% as set forth in claim 3. Specifically, Yoshioka only appears to suggest a degree of saponification of "90 mol% or more".
The examiner respectfully disagreed because, again, applicant has no criticality or unexpected result for these ranges as claimed. While Yoshioka et al. may teach a degree of saponification “preferably 90 mol % or more (more preferably 95 mol % or more, and still more preferably 99 mol % or more”, Yoshioka et al. also stated that it can be less if the user wishes but Yoshioka et al. do not prefer less due to it possibly lower water resistance; however, this does not mean that it cannot be less. Also, applicant’s specification discloses a wide range that includes the range as taught by Yoshioka et al., thus, applicant has not provided any criticality or unexpected result in narrowing the range to overcome Yoshioka et al.’s range.
Moreover, one of ordinary skill in the art would not have been motivated to combine or modify Oka/Kodama based on Yoshioka to reach a degree of saponification of 70 mol% or more and less than 88 mol% as set forth in claim 3 with any reasonable expectation of success. In particular, Yoshioka discloses that "[w]hen the saponification degree of the PVA is less than 90 mol%, the water resistance of the PVA is possibly lowered, disadvantageously." See Yoshioka at paragraph [0038], reproduced above. Therefore, one of ordinary skill in the art would not be motivated to reduce the degree of saponification to less than 90 mol% based on the disclosure in Yoshioka, nor have any reasonable expectation of success in doing so.
The examiner respectfully disagreed because application has not provided any evidence of criticality or unexpected result for the claimed range, and the fact that applicant does teach more than 88mol% like Yoshioka et al. without any proof of unexpected result. As stated in the above comment, while Yoshioka et al. may teach a degree of saponification “preferably 90 mol % or more (more preferably 95 mol % or more, and still more preferably 99 mol % or more”, Yoshioka et al. also stated that it can be less if the user wishes but Yoshioka et al. do not prefer less due to it possibly lower water resistance; however, this does not mean that it cannot be less. If a user wishes to have lower water resistance, then he/she can select a lower mol%, as long as the ranges are taught and based on routine testing and general experiment to discover the optimum range to use for the additive based on the plants being grown.
As discussed above, without acquiescing to the merits of the rejection, and solely to advance prosecution, Applicant has amended the claims to better capture commercial embodiments. For similar reasons as set forth above, Applicant respectfully submits that the combination of Oka and Kodama does not teach or suggest the additive for a culture fluid for hydroponics as set forth in claim 3, and one of ordinary skill in the art would have had no motivation to modify or combine Oka and Kodama to arrive at the present claims. Obonai does not cure the deficiencies of Oka and Kodama.
The examiner respectfully disagreed because the amendment to claim 3 did not overcome the rejection as explained in the above, thus, please see above.
Applicant respectfully submits that new claim 23 is not obvious over the combination of the cited references for at least the reasons set forth above. Moreover, the combination of the cited references fails to teach or suggest the block character is from 0.35 to 0.457 as set forth in new claim 23. Therefore, Applicant respectfully submits that claim 23 is allowable.
The examiner respectfully disagreed because claim 23 is not allowable, for the prior arts teach the claimed limitation as stated in the above. Also, discussed above is the range being claimed without any criticality or unexpected result, especially when applicant listed a wide range in the specification, which also cover the range as taught by the prior arts.
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 SON T NGUYEN whose telephone number is (571)272-6889. The examiner can normally be reached 9:00 to 4:00.
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/Son T Nguyen/ Primary Examiner, Art Unit 3643
