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 .
Claims 1-11 have been presented for examination on the merits.
Claim Double patenting
Applicant is advised that should claim 1 be found allowable, claims 10-11 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 1 is drawn to a method of promoting seed germination and plant growth. Claim 10 is drawn to a method of promoting seed germination and claim 11 is drawn to a method of promoting plant growth. The method of claims 10 and 11 are substantially the same as the method of claim 1 with the exception of reciting -under conditions suitable for growth of the crop-. While claim 1 does not expressly recite this limitation, it is inherently in the method of promoting seed germination and plant growth. Additionally, the limitation of -a growth medium- in claim 1 encompasses -soil- in claims 10-11. Thus claims 10 and 11 are essentially duplicates of claim 1.
Claim Rejections - 35 USC § 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 9-11 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 9 is indefinite for reciting “but are not limited to”. This renders the claim indefinite because it is not clear what is included or excluded from the claim.
Claim 9 is also indefinite for reciting a group of Markush species using Markush format without the proper transitional phrase "consisting of", which is indefinite. Since the Markush groups are recited without the transition phrase “consisting of”, it is unclear whether the Markush species are limited to those recited in the claims or the Markush species can include those which are not recited in the claims. Since one of ordinary skill in the art would not be reasonably apprised what the scope of these Markush species is, the claims are rendered indefinite. Proper Markush language is “selected from the group consisting of A, B, C and D”. The examiner suggests rewording the claim to include the proper Markush language. Note: MPEP § 803.02.
It is improper to use the term “comprising” instead of “consisting of.” Ex parte Dotter, 12 USPQ 382 (Bd. App. 1931). In this instant “including” is the same as “comprising”.
Claim 9 is further indefinite for reciting (e.g. organic cotton wool). Firstly, limitations placed inside of parenthesis are not considered part of the claim. Secondly, use of the terms “(e.g,) for example” and “such as” render the claim scope indefinite because it is not clear if the exemplified species is part of the claim or not. Thirdly, this is a broader and narrower limitation together rejection because the term (organic cotton wool) is a narrower limitation of “cellulose”.
Claim 9 is indefinite for including a trade name. The product Vermiculite™ is a trade name. When a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirement of 35 U.S.C. 112, second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name.
Claim 10 recites the limitation "into the soil" in the method of claim 9. There is insufficient antecedent basis for this limitation in the claim. Neither the method of claim 9 nor the method of claim 1, which it depends from, support a recitation / limitation of soil.
Claim 10 recites the limitation "growing the crop" in the method of claim 9. There is insufficient antecedent basis for this limitation in the claim. Neither the method of claim 9 nor the method of claim 1, which it depends from, support a recitation/limitation of a crop.
Claim 11 recites the limitation "into the soil" in the method of claim 9. There is insufficient antecedent basis for this limitation in the claim. Neither the method of claim 9 nor the method of claim 1, which it depends from, support a recitation / limitation of soil.
Claim 11 recites the limitation "growing the crop" in the method of claim 9. There is insufficient antecedent basis for this limitation in the claim. Neither the method of claim 9 nor the method of claim 1, which it depends from, support a recitation/limitation of a crop.
Applicant’s claims
Instant claim 1 is drawn to: A method of promoting seed germination and plant growth, the method comprising: (a) applying to a growth medium at least one device comprising a substrate and at least one melanin material selected from the group consisting of natural melanin, synthetic melanin, melanin precursors, melanin derivatives, and melanin analogs; and (b) exposing the at least one device to a source of electromagnetic energy to initiate a reaction of water electrolysis by the at least one melanin material, such that hydrogen and oxygen gases are released into the growth medium.
NOTE: The Specification does not appear to provide a definition, description or sufficient examples of a “device” as claimed. It is stated that the device comprises silica and melanin, can be cubed or porous.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-8 and 10-11 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by each of Solis Herrera (WO 2017216707), Solis Herrera (US 20190150371) and Solis Herrera (EP 3650516).
Since the disclosure of all three reference documents is the same, one rejection will be provided covering all three reference documents. The recitations are from the US document ‘371.
Solis Herrera references teach methods of fertilizing soil, and of increasing a crop yield, plant growth, and rate of seed germination using melanin, or a melanin precursor, derivative, or analog and a source of electromagnetic energy, such as visible or invisible light energy, to catalyze the electrolysis of water. The electrolysis of water causes the release of diatomic hydrogen into the soil, resulting in fertilization of the soil (See abstract).
Regarding claim 1, US ‘371 teach a method of fertilizing soil, increasing a crop yield, plant growth, or a rate of seed germination, the method comprising: (a) applying to the soil at least one device comprising a substrate and at least one melanin material selected from the group consisting of natural melanin, synthetic melanin, melanin precursors, melanin derivatives, and melanin analogs;
(b) adding water to the soil, wherein the water is added before, after, or at the same time as step (a); and (c) exposing the at least one device to a source of electromagnetic energy to initiate a reaction of water electrolysis by the at least one melanin material, such that H2 gas is released into the soil (See claims 1 and 9).
The -soil- of the reference claims meets the -growth medium- of instant claim 1 and while reference claim does not expressly disclose release of oxygen, it is inherently released as stated by the disclosure.
US ‘371 states that “This electron transfer releases energy and establishes a proton gradient sufficient to initiate the splitting of water into diatomic hydrogen (H2) and diatomic oxygen (O2) along with the release of four high energy electrons for every two water molecules that are reformed” (See [0066]).
Regarding claim 2, US ‘371 teach wherein the soil comprises at least one seed, plant, or crop (See claim 2).
Regarding claim 3, US ‘371 teach wherein the source of electromagnetic energy is selected from the group consisting of invisible light energy, visible light energy, X-rays, ultraviolet radiation, radio waves, and gamma rays (See claim 3).
Regarding claim 4, US ‘371 teach wherein the source of electromagnetic energy is visible or invisible light energy having a wavelength between 200 nm and 900 nm (See claim 4).
Regarding claim 5, US ‘371 teach wherein the source of electromagnetic energy is sunlight (See claim 5).
Regarding claim 6, US ‘371 teach wherein the substrate is silica (See claim 6).
Regarding claim 7, US ‘371 teach wherein the at least one melanin material is natural melanin or synthetic melanin (See claim 7).
Regarding claim 8, US ‘371 teach wherein the method is performed in a closed container (See claim 8).
Regarding claim 10, US ‘371 teach a method of increasing a rate of seed germination, the method comprising growing the seed in the fertilized soil composition according to claim 16 under conditions suitable for growth of the seed, and exposing the at least one device to a source of electromagnetic energy to initiate a reaction of water electrolysis by the at least one melanin material, such that H2 gas is released into the soil (See claim 20).
Regarding claim 11, US ‘371 teach a method of increasing plant growth, the method comprising growing the plant in the fertilized soil composition according to claim 16 under conditions suitable for growth of the plant, and exposing the at least one device to a source of electromagnetic energy to initiate a reaction of water electrolysis by the at least one melanin material, such that H2 gas is released into the soil (See claim 19).
Claim Rejections - 35 USC § 103
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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over each of Solis Herrera (WO 2017216707), Solis Herrera (US 20190150371) and Solis Herrera (EP 3650516) in view of Layzell et al (WO 0108493).
The teachings of Solis Herrera references are delineated above and incorporated herein.
Solis Herrera references teach a growth medium which typically encompasses soil. Considering the definition of growth medium provided in the Specification, as soil alternative, the limitation is taught by Layzell et al.
Layzell et al teach methods of enhancing plant growth or yield, comprising exposing soil to hydrogen gas (H2), and growing plants in the soil. The H2 gas employed can be generated by electrolysis of water, produced by H2 evolving microorganisms and/or produced by legumes. Soil can be exposed to H2 and plants then grown in it, or H2 can be applied directly to soil in which plants are already growing or can be applied to seeds (See abstract).
Regarding claim 9, Layzell et al teach that in this method soil or a soil substitute such as mulch, peat moss, compost, sand, Vermiculite™, etc, can be used (See Page 6, lines 11-17).
It would have been prima facie obvious to a person of ordinary skilled in the art at the time the invention was made to have combined the teachings of Layzell et al with that of Solis Herrera to arrive at the instant invention. It would have been obvious to do because Solis Herrera teach the method of promoting seed germination and plant growth by exposing the said seed or plant in their growth medium to a release of hydrogen and oxygen gases when melanin is present. While Solis Herrera uses soil as the growth medium for the said seed or plant, Layzell et al teach a similar process and disclose that either soil or a soil substitute such as peat moss or wood bark (mulch) can be used successfully.
Thus, the claims would have been obvious because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over each of Solis Herrera (WO 2017216707), Solis Herrera (US 20190150371) and Solis Herrera (EP 3650516) in view of Prejean et al (WO 9103149).
The teachings of Solis Herrera references are delineated above and incorporated herein.
Solis Herrera references teach a growth medium which typically encompasses soil. Considering the definition of growth medium provided in the Specification, as soil alternative, the limitation is taught by Prejean et al.
Prejean et al teach a matrix composition for use in germinating, growing, and protecting a variety of seeds or plants under different conditions. The composition provides protection from predation and mechanical injury, and upon exposure to moisture is converted to a water-retentive, gas-permeable gel which bonds the seed to the ground and establishes a nurturing habitat facilitating plant growth. The composition is of use in forestry and agronomy and for specialty crops. In addition, the matrix may be substituted for conventional potting soil (See abstract).
Regarding claim 9, Prejean et al teach that the matrix composition comprises hydrophilic fibrous bulking agents selected from the group consisting of peat, cotton, mineral wool, paperpulp, wool and hair and one or more water retentive polymers including cellulose, cellulose derivatives, polystyrenes, etc (See at least claims 2 and 6).
It would have been prima facie obvious to a person of ordinary skilled in the art at the time the invention was made to have combined the teachings of Prejean et al with that of Solis Herrera to arrive at the instant invention. It would have been obvious to do because Solis Herrera teach the method of promoting seed germination and plant growth by exposing the said seed or plant in their growth medium to a release of hydrogen and oxygen gases when melanin is present. While Solis Herrera uses soil as the growth medium for the said seed or plant, Prejean et al teach a method of promoting seed germination and plant growth wherein a matrix composition is used as a soil substitute including peat, cotton, wool, cellulose or polymers. That is Prejean et al teach the benefits of employing a matrix composition for the successful promotion of plant and seed growth.
Thus, the claims would have been obvious because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
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.
Claim 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 8-12 and 15 of copending Application No. 16/308,909 (US 20190150371) (reference application) in view of Layzell et al (WO 0108493). The Obviousness Double Patenting rejection is appropriate because while the conflicting claims are not identical, the examined claims are not patentably distinct from the reference claims and would have been obvious over the reference claims in view of Layzell et al.
The Examined claim 1 is delineated above and incorporated here.
Reference claim 1 is directed to a method of fertilizing soil, and reference claim 9 is directed to method of increasing a crop yield, plant growth, or a rate of seed germination, the method comprising: (a) applying to the soil at least one device comprising a substrate and at least one melanin material selected from the group consisting of natural melanin, synthetic melanin, melanin precursors, melanin derivatives, and melanin analogs; (b) adding water to the soil, wherein the water is added before, after, or at the same time as step (a); and (c) exposing the at least one device to a source of electromagnetic energy to initiate a reaction of water electrolysis by the at least one melanin material, such that H2 gas is released into the soil.
The differences are 1- examined claims recite a growth medium while reference claim recite soil. This is not a patentable distinction because a- growth medium typically includes soil and as such the examined claim’s growth medium encompasses reference claim’s soil. And b- as taught by Layzell et al, it would have been obvious to one of ordinary skill in the art to have substituted reference claim’s soil with a soil substitute such as peat moss with a reasonable expectation of success. 2- examined claims recite that hydrogen and oxygen are released into the growth medium while reference claims disclose hydrogen is released. However, as stated above, water comprises both hydrogen and oxygen and when water molecule is exposed to energy source both oxygen and hydrogen are released. Thus, the reference claim’s method inherently releases oxygen as well as hydrogen.
Additionally, reference claim 1 is drawn to a method of fertilizing soil, while examined claims are drawn to a method of promoting seed germination and plant growth. However, these are not patentable distinguished because fertilizing soil (or growth medium) inherently promotes plant growth.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-11 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mina Haghighatian whose telephone number is (571)272-0615. The examiner can normally be reached M-F, 7-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue X. Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Mina Haghighatian/
Mina Haghighatian
Primary Examiner
Art Unit 1616