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 3-6,9,10,20-22 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).
For claim 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.
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.).
For claim 4, Oka as modified by Kodama 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.).
For claim 5, Oka as modified by Kodama et al. teaches the additive according to claim 3, but is silent about wherein the additive consists of 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. 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. 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. 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. 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. 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. 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 20, Oka as modified by Kodama 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. is silent about the fertilizer is 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. 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. 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. 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).
Claims 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Oka as modified by Kodama et al. as applied to claim 3 above, and further in view of Yoshioka et al. (US 20160205880 A1).
For claim 11, Oka as modified by Kodama et al. teaches the additive according to claim 3, but is silent about wherein the PVA has a degree of saponification from 35 to 100 mol%.
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 from 35 to 100 mol% (for example, 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 35 to 100 mol% 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 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 12, Oka as modified by Kodama et al. teaches the additive according to claim 3, but is silent about wherein the PVA has a degree of saponification from 75 to 99 mol%.
In addition to the above, Yoshioka et al. also teach a PVA with a degree of saponification from 75 to 99 mol% (for example, 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 75 to 99 mol% 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 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 13, Oka as modified by Kodama 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. 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. 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. 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.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Oka as modified by Kodama 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. teaches the additive according to claim 3, but is silent about wherein 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.’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 with respect to claims 3-6,9-14,19-22 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
It is noted that on page 6 of the remarks filed 1/9/2026 that applicant commented regarding a double patenting to 12/964486. However, no such double patenting rejection were made; thus, it is unclear as to what applicant is referring to. In addition, 12/964486 is not in the same field of endeavor as the current application.
Conclusion
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/Son T Nguyen/Primary Examiner, Art Unit 3643
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