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 .
Claims 1-9 are pending in this application.
Examined claims
Applicant is advised that the record of this application has two claim sets filed on the same date, 7/6/2023. The problem is that the two claim sets are different starting at claim 5, and there is no indication of preliminary amendment markings in one of them. For example, copied below are two claim 5’s:
Claim set version #1
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Claim set version #2:
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This examination will proceed with the claim set containing version #1 of claim 5. As both claim set versions, taken as a whole, are substantively identical in scope1, the choice of claim set does not affect the subject matter under examination.
IDS
In the IDS filed on 7/6/2023, U.S. Patent application publication no. 4, US 2015/0245438, incorrectly cites Lipscomb as the Patentee or Applicant. The entire citation of this document appears to be in error, because the invention of this document is directed to a totally different field, an LED light dimming circuit, and the inventor is Tyrrell. This citation has been crossed out in the IDS.
35 U.S.C. 112
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 1-9 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.
Claim 1 is ambiguous because it is not clear whether the granulated hard shell crumbs are from coconut or any other hard shell source. The structure of the claim and source of the ambiguity is shown below:
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As can be seen here, it is not clear whether coconut modifies “granulated hard shell crumbs.” Claim 1 and all dependent claims are deemed indefinite for this reason because the exact metes and bounds of the claimed invention cannot be determined.
Claim interpretation for prior art-based ground of rejection
In the absence of a specialized definition in the instant specification, “granulated hard shell crumbs” will be interpreted to encompass particulates of hard shell, including from coconut hard shell.
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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Limbaugh (US 2017/0245438) in view of Bertin et al. (US 2009/0113791; hereinafter, Bertin), CN 107382513, and Vernay et al. (US 2019/0150354; hereinafter, Vernay).
Limbaugh (US 2017/0245438) discloses coconut coir pith particles with “horticulturally acceptable non-coir materials,” which include natural or synthetic fertilizers, carbon based materials, binding materials, and mixtures thereof (paragraphs 17, 32, 36-37), which can be made into a product in the form of “granules, balls, or prills for ease of handling and applications for a variety of end uses, such as, for example, farming, commercial and residential landscaping, and golf courses” (paragraph 17; see also paragraph 37). Discrete prill form, granules, or balls typically ranging in size from 1 mm to 3 mm in diameter is disclosed (paragraph 37). Granulated product imparts fertilization and moisture retention into the soil with a single application (paragraph 4).
Bertin (US 2009/0113791) discloses compressed granular coconut coir pith products, which may be composed of coconut coir pith, horticulturally acceptable media such as fertilizers, micronutrients, pH adjusting agetns, wetting agents, biostimulants, other bioactive materials (paragraph 14), bark fines, rice hulls, “other materials familiar to those skilled in the art” (paragraph 18), and grass seeds (paragraphs 30-31). The compressed granules can be in the form of pellets or particles (paragraph 18). The pH adjusting agent can be lime, such as dolomite lime (paragraphs 19, 42). Size of granules can be adjusted based on application, for example less than about 4 mesh to greater than about 18 mesh for granules as mulch in a combination of grass seed, fertilizers, and mulch product (paragraph 31). Bertin discloses that coconut coir pith is known to be compressed at a compression ratio typically of about 5:1 to enable economical overseas shipping costs (paragraph 8).
CN 1073825132 is cited to establish that 5-25 parts of coconut shell powder is known to be used as a component in vegetable seedling matrix that can contain up to 188 parts of other matrix ingredients (abstract; claim 1). Improved growth of seedling and good soil permeability features are disclosed (abstract).
Vernay (US 2019/0150354) discloses seed coating compositions comprising seed, at least one layer comprising a crosslinked biopolymer and a binder, wherein the binder includes, inter alia, starch, molasses, and combination thereof (paragraph 43, 84; claims 1-2). A seed coating can increase the raw weight of seed or seed agglomerates 1-5%, or up to 10-50% (paragraph 97). The seed coating can comprise an agglomerate of multiple seeds (paragraph 102). The coated seed cab be rounder than the original seed (paragraph 280. The seed can be the seed of turf grass (paragraph 54), and application can be on golf courses and sport and park turf (paragraph 40).
Limbaugh does not explicitly exemplify the claimed coir pellet with “granulated hard shell crumbs.” This and other features not explicitly disclosed by Limbaugh are discussed in detail below:
Granulated hard shell crumbs, concentration of 2-5 percent
The instant specification does not provide a definition of “granulated hard shell crumbs.” In the absence of a specialized definition provided by Applicant, this term is given the broadest reasonable interpretation: particulates of hard shell, including from coconut hard shell.
Limbaugh teaches coir pellet with coconut pith mixed with myriad horticulturally acceptable non-coir materials, including natural fertilizers, carbon based materials, binding materials, and mixtures thereof. CN 107382513 discloses the use of coconut shell powder in vegetable seedling matrix for improved growth of seedling and good soil permeability. Therefore, it would have been obvious to mix coconut pith with coconut shell powder to obtain a coir pellet, wherein coconut shell powder is conveniently obtained from the same source as the coconut pith to function as a carbon based material of Limbaugh’s invention.
As for 2-5 percent of coconut shell powder, CN 107382513 discloses 5-25 parts + up to 188 parts of other ingredients. Such proportion is suggestive of the claimed 2-5 percent range.
Compression ratio of at least 3:1, 5:1, 8:1, or 10:1
Bertin discloses that coconut coir pith is known to be compressed at a compression ratio typically of about 5:1 to enable economical overseas shipping costs (paragraph 8). It would have been obvious to the ordinary skilled artisan to increase the compression ratio to at least 10:1 when exigencies of overseas shipping cost require further compression.
Pellets comprise a sphere made of two half-spheres pressed together
At this time, this feature does not actually require anything more than a spherical pellet. Limbaugh discloses coconut coir pith particles with “horticulturally acceptable non-coir materials,” which can be made into a product in the form of “granules, balls, or prills” for ease of handling and applications for a variety of end uses, such as for example landscaping and golf courses (paragraph 17; see also paragraph 37). Without more, Limbaugh’s granules or balls are suggestive of this claim feature.
Starch at 0.3-0.9 percent + grass seed
Limbaugh discloses coconut coir pith particles (e.g., granules, balls) with “horticulturally acceptable non-coir materials” such as binding materials for residential landscaping and golf courses (paragraphs 17, 32, 36-37). It would have been obvious to add grass seed to Limbaugh’s coconut coir pith particles to further improve the landscaping and beauty of full turf in gold courses because Bertin is suggestive of adding grass seeds to coconut coir pith products.
0.3-0.9% of starch is an obvious amount that would have been obtainable from several considerations. First, as a known binder, it would have been obvious to add starch as Limbaugh’s binder material. The claimed amount would have been within the skill of the ordinary skilled artisan upon routine experimentation with a binder. Second, coated grass seed that can be incorporated in Limbaugh’s coconut coir pith particles can comprise multiple layers of coatings, as taught by Vernay, which seed can contain up to 50% coating material comprising a binder such as starch. Therefore, the ordinary skilled artisan would have found it obvious to adjust and fine tune the percent of starch in the final coir pellet to be within the claimed percent range, depending on the particular seed and/or binding requirements of the overall composition.
Molasses at 0.5-1.0 percent + grass seed
Limbaugh discloses coconut coir pith particles (e.g., granules, balls) with “horticulturally acceptable non-coir materials” such as binding materials for residential landscaping and golf courses (paragraphs 17, 32, 36-37). It would have been obvious to add grass seed to Limbaugh’s coconut coir pith particles to further improve the landscaping and beauty of full turf in gold courses because Bertin is suggestive of adding grass seeds to coconut coir pith products.
0.5-1.0% of molasses is an obvious amount that would have been obtainable from several considerations. First, as a known binder, it would have been obvious to add molasses as Limbaugh’s binder material. The claimed amount would have been within the skill of the ordinary skilled artisan upon routine experimentation with a binder. Second, coated grass seed that can be incorporated in Limbaugh’s coconut coir pith particles can comprise multiple layers of coatings, as taught by Vernay, which seed can contain up to 50% coating material comprising a binder such as molasses. Therefore, the ordinary skilled artisan would have found it obvious to adjust and fine tune the percent of molasses in the final coir pellet to be within the claimed percent range, depending on the particular seed and/or binding requirements of the overall composition.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited references.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No.11,758,855 (‘855 patent) in view of Bertin (US 2009/0113791), CN 107382513 and Vernay (US 2019/0150354).
Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
Claims of ‘855 patent are directed to a method of producing coir pellets comprising coconut pith and other materials by compressing the materials to produce spherical pellets (claim 1). The other materials of the coir pellets include “hard shell coconut granulars, dolomite lime, worm casings, deodorants, grass seeds, molasses, starch, or compost material” (claim 3). Spherical pellets are made by compressing the materials into opposed half cup ball granulators and then pressing the half cup ball granulators together (claims 1, 6, 7, 10).
Bertin (US 2009/0113791) discloses compressed granular coconut coir pith products, which may be composed of coconut coir pith, horticulturally acceptable media such as fertilizers, micronutrients, pH adjusting agetns, wetting agents, biostimulants, other bioactive materials (paragraph 14), bark fines, rice hulls, “other materials familiar to those skilled in the art” (paragraph 18), and grass seeds (paragraphs 30-31). The compressed granules can be in the form of pellets or particles (paragraph 18). The pH adjusting agent can be lime, such as dolomite lime (paragraphs 19, 42). Size of granules can be adjusted based on application, for example less than about 4 mesh to greater than about 18 mesh for granules as mulch in a combination of grass seed, fertilizers, and mulch product (paragraph 31). Bertin discloses that coconut coir pith is known to be compressed at a compression ratio typically of about 5:1 to enable economical overseas shipping costs (paragraph 8).
CN 107382513 is cited to establish that 5-25 parts of coconut shell powder is known to be used as a component in vegetable seedling matrix that can contain up to 188 parts of other matrix ingredients (abstract; claim 1). Improved growth of seedling and good soil permeability features are disclosed (abstract).
Vernay (US 2019/0150354) discloses seed coating compositions comprising seed, at least one layer comprising a crosslinked biopolymer and a binder, wherein the binder includes, inter alia, starch, molasses, and combination thereof (paragraph 43, 84; claims 1-2). A seed coating can increase the raw weight of seed or seed agglomerates 1-5%, or up to 10-50% (paragraph 97). The seed coating can comprise an agglomerate of multiple seeds (paragraph 102). The coated seed cab be rounder than the original seed (paragraph 280. The seed can be the seed of turf grass (paragraph 54), and application can be on golf courses and sport and park turf (paragraph 40).
Coir pellets produced by the claims of ‘855 patent are substantially similar to the coir pellets claimed in the instant application. By practicing the claimed method of the ’855 patent, coconut coir pellet with coconut pith, hard shell coconut granulars, starch, and molasses would have been obviously obtained.
Claims of ‘855 patent do not disclose specific percentages and compression ratio of the instant claims, but those features and the claimed invention as a whole would have been recognized as obvious variations of the invention set forth in the claims of ‘855 patent.
Granulated hard shell crumbs at concentration of 2-5 percent
The “granulated hard shell crumbs” of the instant claims are readable on hard shell coconut granulars of ‘855 patent. CN 107382513 discloses 5-25 parts of coconut shell powder + up to 188 parts of other ingredients. Such proportion is suggestive of the claimed 2-5 percent range.
Compression ratio of at least 3:1, 5:1, 8:1, or 10:1
Bertin discloses that coconut coir pith is known to be compressed at a compression ratio typically of about 5:1 to enable economical overseas shipping costs (paragraph 8). It would have been obvious to the ordinary skilled artisan to increase the compression ratio to at least 10:1 when exigencies of overseas shipping cost require further compression.
Pellets comprise a sphere made of two half-spheres pressed together
At this time, this feature does not actually require anything more than a spherical pellet. However, claims of ‘855 patent disclose that spherical pellets are made by compressing the materials into opposed half cup ball granulators and then pressing the half cup ball granulators together (claims 1, 6, 7, 10), thereby rendering obvious this claim feature.
Starch at 0.3-0.9 percent + grass seed
0.3-0.9% of starch is an obvious amount that would have been obtainable from several considerations. First, as a known binder, it would have been obvious to add starch, and the claimed amount would have been within the skill of the ordinary skilled artisan upon routine experimentation with a binder. Second, the grass seed of ‘855 patent claim 3 can be a coated grass seed. Vernay teaches multiple layers of coatings, wherein seed can contain up to 50% coating material comprising a binder such as starch. Therefore, the ordinary skilled artisan would have found it obvious to adjust and fine tune the percent of starch in the final coir pellet to be within the claimed percent range, depending on the particular seed and/or binding requirements of the overall composition.
Molasses at 0.5-1.0 percent + grass seed
0.5-1.0% of molasses is an obvious amount that would have been obtainable from several considerations. First, as a known binder, it would have been obvious to add molasses, and the claimed amount would have been within the skill of the ordinary skilled artisan upon routine experimentation with a binder. Second, the grass seed of ‘855 patent claim 3 can be a coated grass seed. Vernay teaches multiple layers of coatings, wherein seed can contain up to 50% coating material comprising a binder such as molasses. Therefore, the ordinary skilled artisan would have found it obvious to adjust and fine tune the percent of molasses in the final coir pellet to be within the claimed percent range, depending on the particular seed and/or binding requirements of the overall composition.
Therefore, the ordinary skilled artisan would have recognized the claimed invention as an obvious variation of the invention set forth in the claims of U.S. Patent No. 11,758,855.
For the foregoing reasons, all claims must be rejected at this time. No claim is allowed.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JOHN PAK/Primary Examiner, Art Unit 1699
1 For example, claim 5 of claim set version #2 is presented as claim 9 in claim set version #1.
2 Machine translation is provided herewith.