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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/08/2026 has been entered.
Applicants’ arguments, filed 06/08/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 § 112 – Indefiniteness
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, 4-6, and 8-14 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.
Instant claim 1 recites “treating the plant with a composition” and “wherein the gelatin nanoparticle electrostatically adheres to a plant leaf surface or root surface of the plant” which renders the claim indefinite because it is not clear how the plant is treated such that the gelatin nanoparticle electrostatically adheres to a plant leaf surface or root surface of the plant. It is not clear what is meant by “treating a plant” such that the artisan would reasonably appreciate the metes and bound of what is encompassed by the method. For the purposes of examination, “treating the pant” will be interpreted as the step of spraying the plant with a spray formulation. This interpretation is supported by the instant specification (as published) at paragraph 51 which recites “Furthermore, due to the inherent zeta potential as described above, if the composition is sprayed in the form of a spray type formulation, it may be better bound to a microstructure of plant leaf thus to perform inherent function for a long period of time, but it is not limited thereto.”
Claim Rejections - 35 USC § 112 – Improper Dependent Form
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The limitation of “injected into the plant” of claim 9 fails to further limit the spray treatment of claim 1, the claim from which claim 9 depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) Claims 1, 5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Ammar et al. (Bioprocess and Biosystems Engineering, 2019, v. 42, p. 1947–1961) in view of Hu et al. (ACS Nano, 2020, 14, p. 7970-7986) and Patil et al. (Marumegh, 2018, v. 3, no. 1, p. 49-53).
Ammar discloses antifungal copper nanoparticles that “can be used safely in the management of plant rotting fungi” [abstract]. “Different polymers including gelatin, […] were used as stabilizing agents” (i.e., antimicrobial copper carried in gelatin nanoparticle; instant claim 8) [sentence spanning pages 1953-1954]. Ammar found “that the average size distribution of CuNPs coated with SDS, TSC and gelatin were 122, 94 and 78 nm, respectively” (i.e., average diameter between 10 nm and 200nm) [p. 1954, col. 2, penultimate sentence]. Ammar also found that “the samples demonstrated a negative zeta potential in aqueous solution, in which CuNPs coated with gelatin demonstrated the maximum negative value (− 35.8 mV)” [p. 1955, col. 1, lines 7-8]. According to Ammar zeta potential is important because it may be employed to stabilize the nanoparticles and prevents agglomeration [p. 1959, col. 2, first full paragraph]. Specifically, Ammar discloses that “[p]articles with positive or negative values more than ± 30 mV for zeta potential are considered to create stable dispersion” [p. 1959, col. 2, lines 20-21 (or about halfway down)]. Finally, Ammar discloses that Fusarium oxysporum and Phytophthora parasitica are responsible for sever damages to the yield of crops, such as tomatoes (i.e., instant claim 5) [p. 1948, col. 1, para. 2, lines 5-7] and that a “3.2 and 2.8 μg ml−1 of nanoparticle solution totally inhibited the growth of both Fusarium oxysporum and Phytophthora parasitica, respectively” [abstract].
Ammar does not disclose treating a plant and gelatin nanoparticles with a positive charge.
Hu studied the impact of zeta potential and hydrodynamic size of hydrophilic nanoparticles on their delivery efficiency to specific leaf cells and organelles [abstract]. According to Hu, “[p]ositive NP charge results in higher foliar delivery efficiencies into chloroplasts, possibly due to their higher affinity with the negatively charged plant cell walls and negative transmembrane electrical potential of the cell membrane” [p. 7979, col. 2, para. 1, lines 8-12]. Hu suggests a positive charge of greater than 15mV [abstract].
Patil discloses that “[p]lants are able to absorb essential elements through their leave. The absorption takes place through their stomata and also through their epidermic, it is the application of fertilizers to foliage of the crop as spray solution is known as foliar spray” [abstract].
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have modified the nanoparticles of Ammar to have the zeta potential disclosed by Hu. One would have been motivated to make these modifications because Hu discloses positive zeta potentials improve delivery efficiency of nanoparticles to plants. One would have had an expectation of success because Ammar discloses that nanoparticles can be stabilized with negative and positive zeta potentials. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined by known methods, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I). In the present case, the instantly claimed ranges for average particle diameter (10-200nm) and zeta potential (0-50mV) in instant claim 1 overlap with the ranges of the prior art (78nm and >15mV, respectively) and so a prima facie case of obviousness exists for both ranges.
Furthermore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have combined the foliar application of Hu and the foliar spray of Patil with the nanoparticle solutions disclosed by Ammar. One would have been motivated to apply the nanoparticles of Ammar according to the methods of Hu because Hu disclosed spray application is particularly suited for nanoparticles with positive zeta potentials and Patil discloses spray is suited for foliar application. The compositions of Ammar are solutions and so a skilled artisan would have reasonably expected success in applying compositions of Ammar as a foliar spray according to the methods of Hu. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined by known methods, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have treated a plant by spraying a composition comprising gelatin nanoparticles with an average diameter and zeta potential within the claimed range, wherein the nanoparticles electrostatically adhere to a plant leaf surface or a root surface of the plant. Wherein the plant is a tomato plant. Wherein an antimicrobial (i.e., copper) is carried in the gelatin nanoparticle.
2) Claims 1, 8, 10 and 12-14 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) in view of Hu et al. (ACS Nano, 2020, 14, 7970-7986) and Patil et al. (Marumegh, 2018, v. 3, no. 1, p. 49-53), as evidenced by Kirkby et al. (Plant, Cell and Environment, 1984, vol. 7, p. 397-405).
Regarding instant claim 1 and 8, 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., fertilizer/nutritional supplement; instant claim 8), as evidenced by Kirkby at the title.
Juan-Martinez does not explicitly disclose the step of treating a plant with the nanoparticles and does not disclose the instantly claimed particle size and zeta potential.
Hu studied how zeta potential and hydrodynamic size of hydrophilic nanoparticles influence delivery efficiency and pathways to specific leaf cells and organelles [abstract]. According to Hu, “Overall, the efficient delivery of NPs into guard cells, extracellular space, and chloroplasts is dependent on NP size and charge, and plant species” [p. 7979, col. 1, last full sentence]. Hu found “empirical models based on hydrodynamic size and ζ potential indicate that hydrophilic nanoparticles with <20 and 11 nm for cotton and maize, respectively, and positive charge (>15 mV), exhibit the highest foliar delivery efficiencies” [abstract]. The difference in particle size “points out to possible different cell wall pore size for these two plant species” [p. 7979, col. 2, para. 1, lines 7-8]. Additionally, the “[p]ositive NP charge results in higher foliar delivery efficiencies into chloroplasts, possibly due to their higher affinity with the negatively charged plant cell walls and negative transmembrane electrical potential of the cell membrane” [p. 7979, col. 2, para. 1, lines 8-12].
Patil discloses that “[p]lants are able to absorb essential elements through their leave. The absorption takes place through their stomata and also through their epidermic, it is the application of fertilizers to foliage of the crop as spray solution is known as foliar spray” [abstract].
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have modified the nanoparticles of Juan-Martinez to have the particle size and zeta potential disclosed by Hu. One would have been motivated to make these modifications because Hu discloses particle size and zeta potential are important to improving delivery efficiency of nanoparticles to plant cells. Hu further disclosed that the particle sizes and zeta potentials disclosed therein provided the highest delivery efficiency of nanoparticles to some plants. One would have had an expectation of success because the properties disclosed by Hu (particle size and zeta potential) are generic properties that can be applied to nanoparticles generally, and the gelatin nanoparticles of Juan-Martinez fall within the scope of Hu’s hydrophilic nanoparticles. Furthermore, Juan-Martinez discloses that the size of the nanoparticle is controlled by synthesis parameters. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined by known methods, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
Furthermore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have applied the nanoparticles taught by Juan-Martinez and Hu by a spray foliar application as discussed by Hu and Patil. One would have been motivated to, and had an expectation of success in treating a plant with the nanoparticles taught by Juan-Martinez and Hu by spray application because, according to Hu, the particle sizes and zeta potentials disclosed therein are particularly suited for foliar application, and Patil disclosed sprays are suited for foliar application. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined by known methods, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have treated a plant by spraying a compositions comprising gelatin nanoparticles with an average diameter and zeta potential as instantly claimed, wherein the nanoparticles electrostatically adhere to a leaf surface or root surface of the plant. Wherein the nutritional supplement (calcium) is carried in the gelatin nanoparticle.
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) 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) in view of Hu et al. (ACS Nano, 2020, 14, 7970-7986), 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, Hu and Patil, evidenced by Kirkby and taught above, differ from the instant claims insofar as they do not teach a specific plant that is 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 and Hu. 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, before the effective filling date of the claimed invention, to have treated, by spray application, an edible agricultural crop (tomatoes) with a composition comprising gelatin nanoparticles taught by Juan-Martinez and Hu.
4) Claims 4 and 6 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) in view of Hu et al. (ACS Nano, 2020, 14, 7970-7986) and Patil et al. (Marumegh, 2018, v. 3, no. 1, p. 49-53), 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 Ahmed et al. (Cotton Production and Uses, Chapter 6, 2020, p. 81-104).
Juan-Martinez, Hu and Patil, evidenced by Kirkby and taught above, differ from the instant claims insofar as they do 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].
Hu discloses average particles sizes and zeta potentials that are particularly suited for cotton [abstract].
Ahmed relates to the role of macronutrients, like calcium, in enhancing cotton yield [title & abstract]. Specifically, Ahmed discloses “[e]xternal applications of calcium under drought conditions improve the chlorophyll content and improve antioxidant enzymes activities” [p. 94, para. 3, last sentence] and that “calcium was applied as foliar application, and fruitful results were reported for alleviating heat stress with reducing oxidative damages and improved photosynthesis” [p. 95, first sentence].
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have applied the nanoparticles taught by Juan-Martinez and Hu to cotton because Ahmed discloses external application of calcium to cotton improves chlorophyll content, antioxidant enzyme activity, alleviates heat stress and oxidative damages and improves photosynthesis, i.e., improve crop yield as desired by Juan-Martinez. One would have had an expectation of success because Ahmed calls for external application, Hu discloses the nanoparticles of the prior art are especially suited for cotton, and Juan Martinez teaches the particles are for agricultural applications. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined by known methods, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have treated cotton by spray application of the gelatin nanoparticles as taught by Juan-Martinez and Hu, as discussed above.
5) Claim 9 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) in view of Hu et al. (ACS Nano, 2020, 14, 7970-7986) and Patil et al. (Marumegh, 2018, v. 3, no. 1, p. 49-53), 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, Hu and Patil, as evidenced by Kirkby and taught above, differ from the instant claims insofar as they do not teach injecting the nanoparticles into a plant.
Hu discloses that “feeding/injecting methods are highly efficient to delivery nanomaterials directly into plants” [p. 7971, col. 1, lines 7-9].
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 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 Hu and Koh discloses injecting nanomaterials into a plant is a suitable method of application. 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, before the effective filling date of the claimed invention, to treated a plant with a composition comprising gelatin nanoparticles taught by Juan-Martinez by injecting the composition into the plant.
6) Claim 11 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) in view of Hu et al. (ACS Nano, 2020, 14, 7970-7986) and Patil et al. (Marumegh, 2018, v. 3, no. 1, p. 49-53), 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 Ahlers et al. (US 2008/0003292 A1, publication date 01/03/2008).
Juan-Martinez, Hu and Patil, as evidenced by Kirkby, which is taught above, differ from the instant claims insofar as they do not teach glutaraldehyde. Juan-Martinez discloses a crosslinking agent [p. 71, paragraph 4].
In regard to claim 11, Ahlers 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, Ahlers 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-Martinez et al. based on its suitability for its intended use, as taught by Ahlers. “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 5 of their Remarks, Applicant argues that even assuming a POSITA could produce a 10--200 nm gelatin nanoparticle with positive zeta potential, the cited references provide no reason whatsoever to expect that such nanoparticles would electrostatically adhere to plant leaf microstructures or root surfaces, remain attached after washing, or enhance plant growth through the mechanisms demonstrated in the Specification.
This argument is moot in view of the new rejections. Specifically in view of Hu, which disclosed “Positive NP charge results in higher foliar delivery efficiencies into chloroplasts, possibly due to their higher affinity with the negatively charged plant cell walls and negative transmembrane electrical potential of the cell membrane” at page 7979.
2) On pages 5 and 6 of their Remarks, Applicant argues that nothing in Juan-Martinez, Ahlers, Li, Kumari, Kirkby, Koh, or Crop Matter teaches suggests or even mentions particle size and zeta potential as it relates to: electrostatic adhesion to plant leaf microstructures, adhesion to root-cell surfaces, retention enabling extended plant treatment, enhanced plant growth without nutrient interference and long-distance spray delivery.
This argument is moot in view of the new rejections set forth above. This argument is also not persuasive as it may pertain to the newly applied art. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In the present case Hu disclosed nanoparticles having an average diameter and zeta potential within the instantly claimed ranges demonstrate improved delivery efficiencies to some plants [abstract]. As such a skilled artisan would have been motivated to provide nanoparticles with the average diameter and zeta potential of Hu (i.e., diameters and zeta potentials that overlap with the instantly claimed ranges).
3) On page 6 of their remarks, Applicant argues Li uses zeta potential as a measure of colloidal suspension stability while Applicant uses zeta potential to achieve electrostatic adhesion to plant tissue surfaces.
This argument is moot in view of the new rejections set forth above.
4) On page 6 of their Remarks, applicant argues that a skilled artisan would not apply the teachings of Ahlers to the nanoparticles disclosed in Juan-Martinez because they are directed to different subject matter.
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, Juan-Martinez, Ahlers and the instant application relate to the production of gelatin nanoparticles (see Juan-Martinez at the Abstract and Ahlers at the Title).
5) On pages 6 and 7 of their Remarks, Applicant argues that Li does not teach zeta potential for plant surface adhesion.
This argument is moot in view of the new rejections set forth above.
6) On page 8 of their Remarks, Applicant argues that Ahlers does not motivate and enable a skilled artisan to modify the diameter of the gelatin nanoparticles of Juan-Martinez.
This argument is moot in view of the new rejections set forth above.
7) On pages 8 and 9 of the prior art, Applicant argues the cited art provides no basis to expect that the resulting nanoparticle would: (1) electrostatically adhere to plant leaf microstructures; (2) bind to root-cell surfaces; (3) remain attached after repeated washing; or (4) enhance plant growth without inhibiting nutrient absorption.
These arguments are not persuasive. (1) and (2) would have been obvious in view of Hu at page 7979: “Positive NP charge results in higher foliar delivery efficiencies into chloroplasts, possibly due to their higher affinity with the negatively charged plant cell walls and negative transmembrane electrical potential of the cell membrane”. (3) would have been obvious in view of Ovissipour et al. (Journal of Agricultural and Food Chemistry, 2013, 61, p. 10183−10190). Ovissipour discloses “that removal of NPs is likely to be more effective when the moment ratio is >1, which can occur if the pH of the washing solution is significantly different from the IEP of NPs” (i.e., large zeta potential) [abstract]. As the difference between pH and the IEP of the nanoparticle increases, so does the zeta potential of the nanoparticle (see Figure 1). See also Figure of 3 of Ovissipour which teaches ineffective nanoparticle removal from a tomato when the zeta potential is small:
PNG
media_image1.png
626
900
media_image1.png
Greyscale
Regarding assertion (4), 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).
8) On page 9 of their Remarks, Applicant argues that the “less than 700nm” range of Juan-Martinez does not actually encompass the instantly claimed range because the actual examples disclosed by Juan-Martinez are 680 and698 nm which lie at the extreme upper boundary.
This argument is moot in view of the new rejections set forth above.
9) On page 10 of their remarks, Applicant argues that because the nanoparticles as amended are allegedly non-obvious over the prior are, so are the methods of producing them.
This argument is moot in view of the new rejections set forth above. The gelatin nanoparticles as instantly claimed are obvious over the prior art, as set forth above. Therefore, the process is obvious as well because “even 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.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COLMAN WELLES whose telephone number is (571)272-3843. The examiner can normally be reached Monday - Friday, 8:30am - 5:00pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached at (571)272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/C.T.W./Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
Prosecution Insights