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 .
Election/Restrictions
Applicant's election with traverse of Invention I, claims 1-14 in the reply filed on June 23, 2026 is acknowledged. The traversal is on the ground(s) that all of the embodiments could be searched by one Examiner without undue effort (Remarks, Line 12-13). This is not found persuasive because Inventions II and I are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product of Invention I could be made using a materially different process. For example, the soil amendment of Invention I could be made through the process of spray agglomeration where the mineral material and organic material are reduced in size and sprayed with a binder in a rotating disc. Furthermore, the invention of Group I is drawn to a soil amendment composition, classified in C05D 1/04, while invention of group II drawn to a process of making a soil conditioner, classified in C05G. Each invention is drawn to different classification, requiring different field of search and search strategies. Therefore, the requirement is still deemed proper and is therefore made FINAL.
Claim Status
The status of the claims is as follow
Pending Claims
1-23
Withdrawn Claims
15-23
Claims Currently Under Consideration
1-14
Currently Rejected Claims
1-14
Allowed Claims
None
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on December 22, 2023 and May 16, 2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is being considered by the examiner.
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 1-3, 7-11, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Horton et al (US 10,766,827B1; hereafter “Horton”) (IDS Reference filled 10/31/2023), in view of Lin et al (CN 109503243A; hereafter “Lin”) as evidenced by Sappo “Pig Manure: From Waste to Asset”, NPL.
Regarding claim 1, Horton teaches a soil amendment composition comprising basalt, metabasalt, or combination thereof, present at 50 wt% to 98 wt% based on a total weight of the soil amendment composition (Col.3, Line 46-51). This range overlaps with claim 1, which discloses a range from 30 wt% to 70 wt%.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the basalt weight percent of Horton by selecting a value within the overlapping range. Under MPEP 2144.05, a prima facie case of obviousness exists where the claimed range “overlap or lie inside ranges disclosed by the prior art” [MPEP 2144.05-I]. The property of the composition is expected to be the same if one of ordinary skill in the art chose the amount which overlapped between the prior art and the claim. Accordingly, the claimed range is rejected as obvious over Horton.
One of ordinary skill in the art would have had a reasonable chance of success in modifying the teaching of Horton because modifying the concentration of a known component for the purpose of optimizing the composition was recognized as part of ordinary capabilities of one skilled in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Horton further teaches that the soil amendment composition comprises a binder, where the binder is an organic liquid (Col.2 Line 1-4) in an amount between 1 wt% to 20 wt% (Col.3, Line 51-52).
Horton further teaches that this soil amendment composition is in the form of a plurality of particles (Col.3, Line 54-55).
Horton did not explicitly teach that the soil amendment composition comprises a separate organic portion that is present at 20 wt% to 65 wt% based on the total weight of the soil amendment composition.
However, in the same field of endeavor, Lin teaches a fertilizer produced by pig manure, using the following raw materials in terms of parts by weight: 40-55 parts of pig manures, 10-18 parts basalt powder, and other ingredients (Abstract).
Horton and Lin are combinable because they are both directed to fertilizer composition comprising organic components and basalt rocks
It would have been obvious to one of ordinary skill in the art prior to the effective filling date of the invention to combine the pig manure of Lin as organic portion with Horton. One would have been motivated to make such combination because pig manure adds plant nutrients and improves soil quality. Applying manure to croplands is the most obvious method of replacing plant nutrients. As evidenced by Sappo, other benefits include improving soil texture and quality, improving water uptake and water holding capacity, among others (Para.1).
Regarding claims 2 and 3, Horton-Lin teaches a soil amendment composition of claim 1
Horton further teaches that the soil amendment composition comprises at least one of basalt (re: claim 2), metabasalt (re: claim 3), or a combination thereof (Col.3, Line 46-49) as part of the soil amendment composition.
Regarding claims 5 and 6, Horton-Lin teaches a soil amendment composition of claim 1
Horton-Lin teaches that the soil amendment composition comprises organic portion comprises of animal manure (Pig manure, Abstract) comprises 40-65 wt% (40-55 parts of pig manure, Abstract).
Regarding claim 7, Horton-Lin teaches the soil amendment composition of claim 1 above.
Horton further teaches that the binder is present at 1 wt% to 20 wt% based on the total weight of the soil amendment composition (Col.3, Line 51-54). This value lies inside the range disclosed in claim 7, which state that the binder is present at 0.5 wt% to 20 wt%.
Because the range taught by Horton is encompassed by the claimed range, claim 7 is rendered obvious in view of Horton-Lin.
Regarding claim 8, Horton-Lin teaches the soil amendment composition of claim 1 above.
Horton further teaches that in one aspect, the binding agent is humic acid, lignosulfonate, or a combination thereof. (Col.4, Line 8-9).
Regarding claim 9, Horton-Lin teaches the soil amendment composition of claim 1 above.
Horton further teaches in an embodiment where the binding agent is a combination of humic acid and lignosulfonate, and the weight ratio of humic acid to the lignosulfonate is 10:1 to 99:1 (Col.4, Line 11-13). In this embodiment, the composition comprises lignosulfonate and further comprises humic acid.
Regarding claim 10, Horton-Lin teaches limitations of claim 1 and claim 9 above.
Claim 10 is state the humic acid is present at 0.5 wt% to 25 wt% based on the total weight of the soil amendment composition.
Horton teaches that the binder is present at 1 wt% to 20 wt% based on the total weight of the soil amendment composition (Col.3, Line 51-54), and in a particular embodiment, the binding agent includes a combination of humic acid and lignosulfonate (Col.7, Line 24-26). Because the ratio of humic acid to lignosulfonate is 10:1 to 99:1, then at 10:1 the humic acid to lignosulfonate percentage is:
10
10
+
1
=
90.91
%
At 99:1 humic acid to lignosulfonate percentage is:
99
99
+
1
=
99
%
When the binder comprises 1% of the total composition, humic acid comprises:
1% * 90.91% = 0.9091%
When the binder comprises 20% of the total composition, humic acid comprises
20% * 99% = 19.8 %
Therefore, humic acid is present at 0.9091 wt% to 19.8 wt% and is encompassed by the values disclose in claim 10 (0.5 wt% to 25 wt%).
Regarding claim 11, Horton-Lin teaches the soil amendment composition of claim 1.
Horton further teaches in an embodiment, the composition is substantially free of a microbial component (Col.8, Line 10-11). Horton defines substantially free of a microbial component in a composition means less than about 1 wt% of a microbial component based on the total weight of the composition (Col.8, Line 11-14).
Regarding claim 14, Horton-Lin teaches the soil amendment composition of claim 1.
Horton further teaches in an embodiment, the plurality of particles has an average particle size of about 0.25mm to about 10mm (Col.4, Line 25-26).
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Horton (US 10,766,827B1) (IDS Reference filled 02/11/2021) in view of Lin et al (CN 109503243A; hereafter “Lin”) as evidenced by Dual Manufacturing (USA Standard Mesh Chart, 2017).
Regarding claim 12 and 13, Horton-Lin teaches the soil amendment composition of claim 1.
Horton further teaches in an embodiment, at least 60% of the basalt particles passing 100 mesh (Col.3, Line 18-19), and in another embodiment, at least 60% of the plurality of particles pass 100 US mesh (Col.4, Line 31-32).
As evidenced by Dual Manufacturing, 100 US mesh has openings of 150 microns (Pg.3, Line 10), while 40 US mesh has openings size 425 microns (Pg.3, Line 4), therefore if 60 % of basalt particles passes 100 US mesh (re: claim 12), then at least 60% of basalt particles will also pass 40 US mesh (re: claim 13).
Therefore, claims 12 and 13 are rendered obvious in view of Horton-Lin.
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 1-3, 7,9, 11 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 12 and 15 of Horton (U.S. Patent No. 10,766,827 B1) (IDS Reference filled 02/11/2021).
Regarding claim 1, Horton teaches in claim 1 a soil amendment composition comprising:
At least one of basalt, metabasalt, or a combination thereof, wherein the at least one of basalt, metabasalt, or a combination thereof is present at 50 wt% to 98 wt% based on a total weight of the soil amendment composition; and
A binding agent, wherein the binding agent is present at 1 wt% to 20 wt% based on the total weight of the soil amendment composition,
Wherein the binding agent is humic acid,
Wherein the soil amendment composition is in the form of a plurality of particles, and
Wherein the plurality of particles has an average particle size of about 0.25mm to about 10mm.
Horton further teaches in claim 15 a soil amendment composition comprising:
At least one of basalt, metabasalt, or a combination thereof, wherein the at least one of basalt, metabasalt, or combinaton thereof is present at 50 wt% to 98 wt% based on a total weight of the soil amendment composition; and,
A binding agent, wherein the binding agent is present at 1 wt% to 20 wt% based on the total weight of the soil amendment composition,
Wherein the soil amendment composition is in the form of a plurality of particles,
Wherein the binding agent is a combination of humic acid and lignosulfonate, and
Wherein a weight ratio of the humic acid and the lignosulfonate is 10:1 to 99:1.
Claim 1 differs from Horton’s claim 1 and 15 in specifically reciting other minerals as options in addition to basalt and metabasalt. However, this is recognized as a Markush limitation, and because Horton teaches basalt and metabasalt in claim 1 and 15, this limitation is anticipated by Horton.
Furthermore, claim 1 of the instant application differ from Horton’s claims 1 and 15 in the proportions of the rocks. The application discloses the basalt, metabasalt, diabase, andesite, meta-andesite, phyllite, rhyolite, or combination thereof is present at 30 wt% to 70 wt% of the composition, which overlapped with Horton’s claim 1 and 15 which discloses 50 wt% to 98 wt% of the composition. They overlapped from 50 wt% to 70 wt%.
It would have been obvious to one of ordinary skill in the art prior to the effective filling date of the claimed invention to modify the weight percent of basalt taught by Horton by selecting a value within the overlapping range. Under MPEP 2144.05, a prima facie case of obviousness exists where the claimed range “overlap or lie inside ranges disclosed by the prior art.” [MPEP 2144.05-I]. Therefore, this limitation is rendered obvious in view of Horton.
Claim 1 of the instant application further discloses a binder, which is taught in Horton’s claim 1 and 15 as a binding agent.
Claim 1 of the instant application further discloses that the soil amendment composition is in the form of a plurality of particles. Horton’s claim 1 and 15 also discloses the same limitation.
Therefore, claim 1 of the instant application is not patentably distinct from Horton’s claims 1 and 15.
Regarding claim 2, Horton’s claim 2 teaches the soil amendment composition comprises basalt.
Regarding claim 3, Horton’s claim 3 teaches the soil amendment composition comprises metabasalt.
Regarding claim 7, the instant application discloses the binder is present at 0.5 wt% to 20 wt% based on the total weight of the composition.
Horton’s claim 1 teaches the binding agent is present at 1 wt% to 20 wt% based on the total weight of the soil amendment composition. The ranges of the weight percent largely overlapped, from 1 wt% to 20 wt%.
It would have been obvious to one of ordinary skill in the art to modify the concentration of the binding agent by selecting a value within the overlapping range. Under MPEP 2144.05, a prima facie case of obviousness exists where the claimed range “overlap or lie inside ranges disclosed by the prior art” [MPEP 2144.05-I]. The property of the composition is expected to be the same if one of ordinary skill in the art chose the amount which overlapped between the prior art and the claim.
Therefore, claim 7 of the instant application is not patentably distinct from Horton.
Regarding claim 9, claim 15 of Horton teaches a soil amendment composition where the binding agent is lignosulfonate and humic acid. Claim 9 discloses that the composition further comprises humic acid. Claim 9’s limitation is encompassed by claim 15 of Horton, and is therefore not patentably distinct
Regarding claim 11, Horton’s claim 12 teaches the soil amendment composition is substantially free of a microbial component.
Regarding claim 14, Horton’s claim 1 teaches a soil amendment composition wherein the plurality of particles has an average particle size of about 0.25 mm to about 10 mm.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THINH GIA HOANG whose telephone number is (571)270-0275. The examiner can normally be reached 0730-1700.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Buie-Hatcher can be reached at 571-270-3870. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THINH GIA HOANG/ Examiner, Art Unit 1725
/NICOLE M. BUIE-HATCHER/ Supervisory Patent Examiner, Art Unit 1725
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