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 .
Applicants’ arguments, filed 12/31/2025, have been fully considered. Rejections and/or objections not reiterated from previous office action are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
1) Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Juan-Martinez et al. (Ingenieria Agricola y Biosistemas, 2020, vol. 12, no. 1, p. 69-77), as evidenced by Kirkby et al. (Plant, Cell and Environment, 1984, vol. 7, p. 397-405) in view of Kumari et al. (Colloids and Surfaces B: Biointerfaces, 2010, vol. 75, p. 1-18) and Ahers et al. (US 2008/0003292 A1, publication date 01/03/2008).
Juan-Martinez investigates calcium-loaded gelatin nanoparticles as a source of agricultural fertilizer [title]. Juan-Martinez et al. teaches that the particles size should be less than 700 nm [p. 69, Results] and that the size of the particles is the result of the synthesis conditions and techniques [p. 72-72, last and first para.].
Calcium is a plant nutrient (i.e., nutritional supplement; instant claim 8), as evidenced by Kirkby at the title.
Purely arguendo, Juan-Martinez will be interpreted as not teaching the instantly claimed particle size.
Kumari, which relates to biodegradable polymeric nanoparticles [title], discloses that nanotechnology has various applications such as agriculture [p. 2, left col., para. 2]. Kumari discloses that particle size influences how the nanoparticles interact with cell membranes [p. 2, left col, penultimate sentence].
In regard to claim 2, Ahers teaches, “The size of the nanoparticles is a decisive factor for their usability and can vary depending on the field of application. In many cases, nanoparticles with an average diameter of at the most 200 nm are preferred” (p. 1, para. [0015]). Ahers further teaches, “A further embodiment of the invention relates to nanoparticles with an average diameter of at the most 150 nm, preferably from 80 to 150 nm. These may be used by exploiting the so-called EPR effect (enhanced permeability and retention).” (Id. at para. [0016]).
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the nanoparticles of Juan-Martinez to be within the claimed range of 10 to 200 nm, since 200nm is most preferred, generally, and, 80 to 150 nm is preferred for exploiting the so-called EPR effect, i.e., enhanced permeability and retention, as taught by Ahers. One would have had a reasonable expectation of success with the adjustment because Juan-Martinez discloses that particle size should be less than 700 nm.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have treated a plant with a composition comprising a gelatin nanoparticle with a diameter within the instantly claimed range.
2) Claims 1, 8, 10 and 12-14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Juan-Martinez et al. (Ingenieria Agricola y Biosistemas, 2020, vol. 12, no. 1, p. 69-77), as evidenced by Kirkby et al. (Plant, Cell and Environment, 1984, vol. 7, p. 397-405).
Juan-Martinez investigates calcium-loaded gelatin nanoparticles as a source of agricultural fertilizer [title]. Juan-Martinez et al. teaches that the particles size should be less than 700 nm [p. 69, Results] and that the size of the particles is the result of the synthesis conditions and techniques [p. 72-72, last and first para.].
Calcium is a plant nutrient (i.e., nutritional supplement; instant claim 8), as evidenced by Kirkby at the title.
The prior art is not anticipatory because it does not disclose the claimed particle size in one example or embodiment. However, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05). Here, a prima facie case of obviousness exists insofar as the claimed range of 10 to 200 nm, lies inside the range disclosed by the prior art of less than 700nm.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have treated a plant with a composition comprising a calcium-loaded (nutritional supplement) gelatin nanoparticle with a diameter within the instantly claimed range.
In regard to claims 10, 12-14, "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (See MPEP 2113.). In this case, the prior art product appears to be the same or obvious as claimed, despite not teaching the claimed freezing, thawing, purifying steps, insofar as the calcium-loaded gelatin nanoparticles of Juan-Martinez are taught to be crosslinked. Juan-Martinez teaches that the gelatin nanoparticles are crosslinked with calcium nitrate and citric acid [p. 71, para. 4]. The presence of calcium suffices as the fertilizer and/or nutritional supplement in the gelatin nanoparticle, as per claim 14.
3) Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Juan-Martinez et al. (Ingenieria Agricola y Biosistemas, 2020, vol. 12, no. 1, p. 69-77), as evidenced by Kirkby et al. (Plant, Cell and Environment, 1984, vol. 7, p. 397-405) as applied to claims 1, 8, 10 and 12-14 above, and in further view of Li et al. (Molecular Nutrition & Food Research, 2011, vol. 55, p. 1096-1103).
Juan-Martinez, evidenced by Kirkby and taught above, differs from the instant claims insofar as it does not teach a zeta potential.
Li relates to gelatin nanoparticles [title] and discloses that stability of nanoparticles in suspension is impacted by zeta potential [p. 1101, last sentence]. Specifically, Li notes “[n]anoparticles with higher zeta-potentials are more stable in solution due to static repulsion of particles. In this study, zeta-potentials of the nanoparticle suspensions were around +18 mV. The resultant nanoparticles under these three mass ratios were stable opalescent suspensions in deionized water” [p. 1102, first paragraph].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have combined the nanoparticles of Juan-Martinez with the zeta potential of Li. One would have been motivated to make this change to provide a more stable nanoparticle suspension. One would have had an expectation of success because both Juan-Martinez and Li disclose gelatin nanoparticles. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
3) Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Juan-Martinez et al. (Ingenieria Agricola y Biosistemas, 2020, vol. 12, no. 1, p. 69-77), as evidenced by Kirkby et al. (Plant, Cell and Environment, 1984, vol. 7, p. 397-405) as applied to claims 1, 8, 10 and 12-14 above, and in further view of Kirkby et al. (Plant, Cell and Environment, 1984, vol. 7, p. 397-405) and Li et al. (Molecular Nutrition & Food Research, 2011, vol. 55, p. 1096-1103).
Juan-Martinez, evidenced by Kirkby and taught above, differs from the instant claims insofar as it does not teach a specific plant which may be treated with the gelatin nanoparticles. Juan-Martinez does disclose “development and application of new types of fertilizers using nanotechnology are potentially effective options for increasing agricultural production” [p. 69, Introduction].
Kirkby discloses calcium improves the relative growth rate of tomato plants (i.e., an edible agricultural crop) [p. 398, Table 1].
Li relates to gelatin nanoparticles [title] and discloses they are suitable for use in foods [p. 1096, Scope].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have treated a tomato plant with the gelatine nanoparticle agricultural fertilizer of Juan-Martinez. One would have been motivated to, and had an expectation of success in, treating tomato plants because Kirkby discloses calcium improves the growth of tomatoes, which is the desired outcome of Juan-Martinez. Also, one would have had an expectation of success because Li discloses gelatin nanoparticles are suitable for use in foods. See MPEP 2143, Exemplary Rationale A.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have treated an edible agricultural crop (tomatoes) with a composition comprising gelatin nanoparticles taught by Juan-Martinez.
4) Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Juan-Martinez et al. (Ingenieria Agricola y Biosistemas, 2020, vol. 12, no. 1, p. 69-77), as evidenced by Kirkby et al. (Plant, Cell and Environment, 1984, vol. 7, p. 397-405) as applied to claims 1, 8, 10 and 12-14 above, and in further view of Crop Matters (Redox, 2020 [retrieved 9/24/2025], https://redox.com/news/crop-matters-redox-calcium-nitrate/).
Juan-Martinez, evidenced by Kirkby and taught above, differs from the instant claims insofar as it does not teach a specific plant which may be treated with the gelatin nanoparticles. Juan-Martinez does disclose “development and application of new types of fertilizers using nanotechnology are potentially effective options for increasing agricultural production” [p. 69, Introduction].
Crop Matter discloses calcium fertilizer is useful for turf and gold courses (i.e., lawns) and ornamentals (i.e., flowers) [p. 3].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have treated lawn with calcium-loaded gelatin nanoparticle fertilizer of Juan-Martinez because Crop Matter discloses calcium fertilizers are useful for turf and gold courses (i.e., lawns). Similarly, one would have had an expectation of success because Crop Matter discloses calcium fertilizers are useful for turf and gold courses (i.e., lawns). See MPEP 2143, Exemplary Rationale A.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have treated lawn with calcium-loaded gelatin nanoparticles as taught by Juan-Martinez.
5) Claim 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Juan-Martinez et al. (Ingenieria Agricola y Biosistemas, 2020, vol. 12, no. 1, p. 69-77), as evidenced by Kirkby et al. (Plant, Cell and Environment, 1984, vol. 7, p. 397-405) as applied to claims 1, 8, 10 and 12-14 above, and in further view of Koh et al. (KR 20200140041 A, publication date 12/15/2020; citing English machine translation).
Juan-Martinez, evidenced by Kirkby and taught above, differ from the instant claims insofar as they do not teach a spray formulation or injecting the nanoparticles into a plant.
Koh relates to plant nutrient nano particles [title] which may comprise mineral fertilizers such as calcium [p. 8, para. 6]. Koh discloses the nanoparticles may be injected into the plants or sprayed (i.e., spray formulation) [p. 7, para. 2].
Regarding instant claim 7, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have applied the known technique for applying nanoparticle fertilizer by means of a spray, to the known nanoparticle fertilizer of Juan-Martinez. One would have been motivated to, and had an expectation of success in applying the known method of Koh to the known fertilizer of Juan-Martinez because Juan-Martinez does not disclose a method of administering the fertilizer and Koh discloses spray application is suitable for nanoparticle fertilizers. One would have understood that applying the known method of spraying nanoparticle fertilizers (i.e., spray formulation) would yield nothing more than predictable results because the fertilizer of Juan-Martinez is also a nanoparticle fertilizer.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have treated a plant with a composition comprising gelatin nanoparticles, wherein the composition is a spray formulation.
Regarding instant claim 9, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have applied the known technique disclosed by Koh of injecting a nanoparticle fertilizer, to the known nanoparticle fertilizer of Juan-Martinez. One would have been motivated to, and had an expectation of success in applying this known method to the known fertilizer because Juan-Martinez does not disclose a method of administering the fertilizer to a plant and Koh discloses injection is suitable for nanoparticle fertilizers comprising calcium. One would have understood that applying the known method of injecting nanoparticle fertilizers, which may comprise calcium, would yield nothing more than predictable results because the fertilizer of Juan-Martinez is also a nanoparticle fertilizer comprising calcium.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to treated a plant with a composition comprising gelatin nanoparticles taught by Juan-Martinez by injecting the composition into the plant.
Claim 11 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Juan-Martinez et al. (Ingenieria Agricola y Biosistemas, 2020, vol. 12, no. 1, p. 69-77), as evidenced by Kirkby et al. (Plant, Cell and Environment, 1984, vol. 7, p. 397-405) as applied to claims 1,8, 10, and 12-14 above and further in view of Ahers et al. (US 2008/0003292 A1, publication date 01/03/2008).
Juan-Martinez, which is taught above, differs from the instant claims insofar as it does not teach glutaraldehyde.
In regard to claim 11, Ahers also discloses the gelatin nanoparticles are cross-linked to improve stability and adjust degradation behavior i.e. “The stability of the nanoparticles is increased considerably due to crosslinking and, in addition, the degradation behavior of the nanoparticles can be adjusted selectively as a result of the degree of cross-linking chosen” (see [0021]). In its method of making nanoparticles, Ahers uses the cross-linking agent glutaric aldehyde also known as glutaraldehyde (see p. 3, Example 1, para. [0060]).
It would have also been obvious to one of ordinary skill in the art, at the time of filling, to use glutaraldehyde as the crosslinking agent for the particles of Juan-Matinez et al. based on its suitability for its intended use, as taught by Ahers. “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)” (see MPEP 2144.07).
Response to Arguments
1) On page 7 of their remarks, Applicant argues that “’[l]ess than 700nm’ does not render 10-200 nm obvious where the art actually teaches ~700 nm particles”.
This argument is not persuasive. While Juan-Martinez does not discloses exactly the instantly claimed range, the range of “less than 700 nm” nevertheless encompasses the claimed 10-200 nm range. The prior art’s mere disclosure of more than one alternative (e.g., 680 nm and 698nm) would not prevent a skilled artisan from investigating other particle sizes because such a disclosure does not criticize, discredit or otherwise discourage the solution. See MPEP 2123. There is nothing directly stated in Juan-Martinez would have discredited or discouraged the solution as claimed therefore this argument has not been found persuasive.
2) On page 7 of their remarks, Applicant argues that it would not have been obvious to look to Ahers for particles size because Ahers relates to biomedical/drug delivery and Juan-Martinez relates to plant treatment/fertilizer delivery.
This argument is not persuasive. It has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, in the present case Ahers relates to active loaded gelatin nanoparticles (see Ahers at abstract & [0033]) which is the same field of endeavor as the instantly claimed gelatin nanoparticles.
3) on pages 7-8 of their remarks, Applicant argues that one would not have been able to modify or had an expectation of success in modifying Juan-Martinez to achieve gelatin nanoparticles with a diameter of 10-200 nm.
This argument is not persuasive. As discussed in the obviousness reasonings above Juan-Martinez discloses that that the size of the particles is the result of the synthesis conditions and techniques [p. 72-72, last and first para.]. A skilled artisan motivated to adjust the particle size would have understood that the “conditions and techniques” refer to Juan-Martinez at pages 73-74:
“The size and morphology of the particles can be attributed to factors such as the nature of the polymer used and its concentration, the diameter of the grid hole used in the Nano Spray Dryer B-90 equipment (Beck-Broichsitter et al, 2012; Schafroth, Arpagaus, Jadhav, Makne, & Douroumis, 2012), the drying temperature, the gas flow or feed rate (Richard & Benoit, 2000) and the solutes content within each drop formed before drying (Kumar, Bhanjana, Sharma, Sidhu, & Dilbaghi, 2014). In the latter, it has been found that there is a close correlation between the size of the drop to be sprayed and the size of the solid particle obtained after drying, as reported by Schmid, Arpagaus, and Friess (2011) in work done with bovine serum albumin. On the other hand, Li et al. (2010) mention that the particle size distribution of sodium chloride, obtained with the same type of equipment, was related to the concentration of the sample.”
Therefore, a skilled artisan would have known how to and had an expectation of success adjusting the particle sizes of the calcium loaded gelatin nano-fertilizer particles of Juan-Martinez.
4) On page 8 of their remarks, Applicant argues that the claimed 10-200 nm particle range is critical to the improved plant uptake/utility associated with the instantly claims gelatin nanoparticles.
This argument is not persuasive. Attorney statements regarding unexpected results, commercial success, long-felt need, inoperability of the prior art, skepticism of experts, and copying are not evidence without the support of objective evidence or a supporting declaration. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). See MPEP 716.01(c). In the present case, Applicant has not provided objective evidence to support the assertion that the instantly claimed range is critical to any feature.
5) On page 8 of their remarks, Applicant argues that “[t]he cited art does not provide a reasoned basis to expect that shrinking Juan-Martinez's -700 nm particles to 10-200 nm would be routine, predictable, or specifically motivated for the claimed method.”
This argument is not persuasive. Juan-Matinez suggest that particle size may be controlled by reaction parameters [p. 72-72, last and first para.]. Therefore, a skilled artisan would have expected adjusting particle size to be routine. Juan-Martinez specifically discloses that “a close correlation between the size of the drop to be sprayed and the size of the solid particle obtained after drying” [p. 74, last paragraph]. Therefore, a skilled artisan would have had an expectation of predictable results in adjusting the particle size. Finally, the instantly claimed particle size lies within the range of the prior art and so a prima facie case of obviousness exists. And Ahers discloses that gelatin nanoparticles with a diameter less than 200 nm is preferred for enhanced permeation (see Ahers at [0016]). Therefore, a skilled artisan would have been motivated to modify the particle sizes.
6) On page 9 of their remarks, Applicant argues that the dependent claims are not obvious over the prior art because the independent claim is not obvious over the prior art for the reasons above.
This argument is not persuasive. The claims stand rejections for the reasons above and of record.
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.
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/C.T.W./ Examiner, Art Unit 1612
/WALTER E WEBB/ Primary Examiner, Art Unit 1612