DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Status of the Claims
Claims 1-7 and 9-14 are pending. Claim 8 is cancelled. Claims 9 and 12-14 are withdrawn. Claims 1-7, 10, and 11 are under consideration in this action.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-7 and 10-14) and the following species in the reply filed on December 10, 2025 is acknowledged:
One potassium salt of organic acid: a potassium formate salt (i.e., a potassium salt of formic acid);
One nitrogenous compound: N,N’-diformylurea.
Claims 9 and 12-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention or species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 10, 2025.
Claim Objections
Claim 3 is objected to because of the following informalities: at the end of line 4, “hydrosylates” should be “hydrolysates”.
Claim 4 is objected to because of the following informalities: for consistency with how it’s written in claim 1, “the plant growth hormones” in line 2 should be “the growth hormones”.
Claim 7 is objected to because of the following informalities: in line 3, the space between “/” and “vehicles” should be removed.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-7, 10, and 11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 introduces new matter as the claim recites the limitation: “wherein the ratio of nitrogenous compounds to the one or more potassium salts of organic acids varies between 1:0.5 to 1:5 (w/w). There is no support in the specification for this limitation. In particular, there is no support for the amended upper limit of 1:5. The limitation as written was not described in the specification as filed, and a person skilled in the art would not recognize in the Applicant’s disclosure a description of the invention as presently claimed. The specification discloses wherein the ratio of nitrogenous compounds to the one or more potassium salts of organic acids varies between 1:0.5 to 1:1 or 1:2, but does not describe the instantly claimed limitation. In particular, the specification does not describe or provide guidance for the entire claimed range of ratios of the nitrogenous compounds to the one or more potassium salts of organic acids – specifically, between 1:2 to 1:5, and from MPEP 2163.06: “Applicant should therefore specifically point out the support for any amendments made to the disclosure.” Applicant has not directed the Examiner to the support in the specification for the amendments. Therefore, it is the Examiner’s position that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of filing of the instant application.
Claims 2-7, 10, and 11 are subsequently rejected as they incorporate the aforementioned limitation of claim 1 and do not remedy the issue discussed above.
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 3, 5, and 7 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.
With regards to claim 3, the claim recites the limitation “urea formaldehyde (both oligomers and polymers)” in line 3. The claim contains parentheses which raises the question as to which term is required by the claim because the subject matter in the parentheses is not identical in scope. Essentially, the claims use both narrow and broad limitations. In the present case, it is unclear if both urea formaldehyde oligomers and polymers are required if urea formaldehyde is included to meet the claim, or if only one of either urea formaldehyde oligomer or urea formaldehyde polymers is sufficient to meet the claim in the case urea formaldehyde is included. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
Further regarding claim 3, the claim recites the limitation “amine oxides—polyamines”. It is unclear what structure the limitation is referring to as “amine oxides—polyamines” is not a single compound or class of compounds. Rather, “amine oxides” and “polyamines” are two distinct compounds/classes of compounds. Thus it is unclear what structure the limitation is referring to (e.g., are the amine oxides and polyamines linked or included in a single compound in a certain way, is it referring to a mixture of amine oxides and polyamines, etc.).
With regards to claim 5, the claim recites amounts of phosphorous “in an amount of 1:5…w/w of the total composition” and the secondary nutrients being present “in an amount of 1:0.05…w/w of the total composition.” The amounts are written as ratios, indicating that the amount of one component is being compared to the amount of a second component. However, the ratios for each of the identified limitations only recite a first component. Furthermore, each limitation ends with “of the total composition”. However, it does not appear that the ratios are indicating that the first component is in a certain amount compared to that of the total composition because the list of ratios include ratios wherein the amount of the phosphorous and secondary nutrients are each in amounts greater than the total composition, which is not possible as the phosphorous and secondary nutrients are each part of the composition. Thus, it is unclear what the ratios are indicating and how they should be interpreted, and in turn, what amounts of phosphorus and secondary nutrients are encompassed by claim 5 as currently written.
With regards to claim 7, the claim recites the inclusion of “excipients/vehicles”. Because excipients and vehicles are not synonymous and not identical in scope, it is unclear if the limitation is intended to mean that both excipients and vehicles are present, or if they are in the alternative. For the purposes of examination below, the limitation will be interpreted as excipients and vehicles being in the alternative.
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.
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.
Claims 1-4, 6, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Chaudhry (US 2017/0166488 A1; published June 15, 2017) and Dean (US 2003/0145640 A1; published Aug. 7, 2003).
Chaudhry discloses a multifunctional agricultural organic bio-complexed composition comprising essential and non-essential nutritional elements; useful as a fertilizer, nutrient, bio-stimulant, complexing agent, pH controller, pH indicator, hard water salts inactivator, surface tension reducer, spreader, penetrator, adjuvant, alkaline hard water ill effects mitigator, water conditioner, and drip system irrigation cleaner (abstract).
With regards to Claims 1 and 2, Chaudhry discloses the multifunctional organic biocomplexed agricultural composition comprises nutrient sources such as nitrogen, phosphorus, and potassium in an amount of 2-45% (para.0056-0057, 0070).
The potassium source is present in an amount of 2 to 35% of the total composition. Among the suitable potassium sources is potassium formate (reading on potassium monoformate) (para.0074).
The nitrogen source is present in an amount of 5-30% of the total composition (para.0071).
With regards to the ratio between the nitrogenous compounds to the potassium salts of organic acids, Chaudhry discloses suitable amount of each components, which would overlap with the claimed weight ratio range. 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. Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. In the present case, given the art recognized range of nitrogen and potassium sources disclosed by Chaudhry for inclusion in a composition, one of ordinary skill in the art would have found it prima facie obvious and would have been motivated to start from the art recognized amounts and engage in routine experimentation and adjust of each within the disclosed ranges based on art recognized factors such as the target plant, the state of the plant and its environment, and growth stage of the plant to determine optimal or workable ranges that produce expected growth enhancing results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955).
With regards to Claim 4, the claim depends from claim 1, which recites that the growth hormones are optional. Claim 4 as currently written does not positively recite that the growth hormones are present, but rather, that if the growth hormone are present, then it is selected from the group recited in claim 4. Thus, claim 4, as currently written encompass the growth hormone still being optional.
With regards to Claim 6, the composition is mixed with N, P, K fertilizers (para.0043). The composition also includes non-essential elements such as pH indicators, humectants, surfactants, penetrating agents, defoamers, antifoaming agents, and thickeners/stabilizers (reading on agriculturally acceptable excipients) (par.0092). The composition also includes complexing agents, peptides, carbohydrate source, trace minerals, and vitamins (reading on supplements) (para.0058-0069).
With regards to Claim 7, the composition is prepared in various forms such as solid powder, granule, or liquid (para.0102). The composition also includes non-essential elements such as pH indicators, humectants, surfactants, penetrating agents, defoamers, antifoaming agents, and thickeners/stabilizers (reading on agriculturally acceptable excipients) (par.0092).
Chaudhry does not appear to explicitly disclose the inclusion of the elected species of nitrogenous compound (N,N’-diformylurea). Dean is relied upon for this disclosure. The teachings of Dean are set forth herein below.
Dean discloses agricultural uses of N,N’-diformylurea (reading on a diacyl urea) (abstract; para.0002, 0014). Dean discloses that N,N’-diformylurea has been found to produce enhanced growth in plants when used in a variety of ways. In particular, it produces enhanced growth when applied to seeds prior to planting, when applied to the soil surrounding the plant at or after planting, or when applied to the foliage of the plant (para.0009, 0020). It may mimic plant growth hormones and/or plant growth regulators based upon the similarity of its skeletal structure to a variety of biologically active compounds (para.0019).
The N,N’-diformylurea may be applied as an aqueous solution mixed with excipients such as surfactants (para.0021, 0023).
With regards to the nitrogenous compound (elected species: N,N’-diformylurea) of Claims 1 and 3, one of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the teachings of Chaudhry and Dean and incorporate N,N’-diformylurea as the nitrogen source in Chaudhry’s agricultural composition. One of ordinary skill in the art would have been motivated to do so in order to obtain the beneficial effects of Dean’s N,N’-diformylurea, such as enhanced plant growth, possibly mimicking plant growth hormones and/or plant growth regulators. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as both Chaudhry and Dean are directed to agricultural compositions and components for such compositions, and Dean’s N,N’-diformylurea is known to be formulated into agricultural compositions.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Chaudhry (US 2017/0166488 A1; published June 15, 2017) and Dean (US 2003/0145640 A1; published Aug. 7, 2003) as applied to claims 1-4, 6, and 7 set forth above, further in view of Freire et al. (Freire) (US 2007/0173409 A1; published Jul. 26, 2007).
The teachings of Chaudhry and Dean and the motivation for their combination as they apply to Claims 1-4, 6, and 7 are set forth above and incorporated herein.
The combined teachings of Chaudhry and Dean do not appear to explicitly disclose the inclusion of growth hormones in amounts are cited in the instant Claims 10 and 11. Freire is relied upon for this disclosure. The teachings of Freire are set forth herein below.
Freire discloses formulations activating the absorption of mineral nutrients by plants. Consequently, it has also an effect on the metabolization of these mineral compounds by the plants. The main component of these formulations is 2-hydroxy-4-methylthiobutanoic (HMTB) acid and its derivatives (abstract; para.0001, 0009).
The formulations can be formulated in solid or liquid state (para.0017).
With regards to Claims 10 and 11, the metabolic activators can contain, in addition to the HMTB, one of more several compounds with plant growth regulating activity, including cytokinins, ethylene, brassinosteroids, salicylic acid, or jasmonic acid. This component can be included in the formulation at any percentage, though the optimum percentage ranges from 1 and 5% in weight (para.0013).
With regards to Claims 10 and 11, one of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to further combine the teachings of Chaudhry and Dean with the teachings of Freire and incorporate Freire’s metabolic activating formulation comprising plant growth regulating activators in the agricultural composition of the combined teachings of Chaudhry and Dean discussed above. One of ordinary skill in the art would have been motivated to do so in order to improve plant growth through a variety of mechanisms of action (e.g., additional nutrients, plant growth regulators, improved absorption of mineral nutrients). Furthermore, as a general principle it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06. In the present case, both the composition of the combined teachings of Chaudhry and Dean discussed above and the composition of Freire are directed to agricultural compositions to enhance plant growth, and being combined for the very same purpose.
With regards to the amounts recited in the instant Claims 10 and 11, 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. Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. In the present case, given the art recognized range of plant growth regulators disclosed by Freire for inclusion in a composition, one of ordinary skill in the art would have found it prima facie obvious and would have been motivated to start from the art recognized amounts and engage in routine experimentation and adjust the amount of plant growth regulator based on art recognized factors such as the target plant, the state of the plant and its environment, and growth stage of the plant to determine optimal or workable ranges that produce expected growth enhancing results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955).
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed 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.
Claims 1-4, 6, 7, 10, and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over (i) claims 1-8, 10, and 11 of copending Application No. 18/551,823 (Copending 823) and (ii) claims 1-16 and 19 of copending Application No. 18/551,835 (Copending 835), in view of Chaudhry (US 2017/0166488 A1; published June 15, 2017) and Dean (US 2003/0145640 A1; published Aug. 7, 2003).
Although the claims at issue are not identical, they are not patentably distinct from each other because all of the cited claims are directed to plant growth stimulant compositions comprising overlapping components, including potassium formate (potassium monoformate) and optionally growth hormones.
The primary differences between the instant claims and the cited claims of Copending 823/Copending 835 are: (i) Copending 823/Copending 835 does not appear to explicitly claim the ratio of nitrogenous compound to the one or more potassium salts of organic acids as recited in the instant claim 1, and (ii) Copending 823/Copending 835 does not appear to explicitly claim the inclusion of the elected species of the nitrogenous compound, N,N’-diformylurea. Chaudhry and Dean are relied upon for these disclosures. Their teachings are set forth above and incorporated herein.
With regards to difference (i), both Copending 823 (e.g., claims 5-6) and Copending 835 (e.g., claim 4-5) claim the inclusion of nitrogen compounds in their compositions. Chaudhry discloses suitable amount of potassium (e.g., potassium formate) and nitrogen sources, which would overlap with the claimed weight ratio range. 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. Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. In the present case, given the art recognized range of nitrogen and potassium sources disclosed by Chaudhry for inclusion in a composition, one of ordinary skill in the art would have found it prima facie obvious and would have been motivated to start from the art recognized amounts and engage in routine experimentation and adjust of each within the disclosed ranges based on art recognized factors such as the target plant, the state of the plant and its environment, and growth stage of the plant to determine optimal or workable ranges that produce expected growth enhancing results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955).
With regards to difference (ii), one of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the teachings of Chaudhry and the claims of Copending 823/Copending 835 with the teachings of Dean and incorporate N,N’-diformylurea as the nitrogen source in the plant growth composition of the combined teachings of Chaudhry and Copending 823/Copending 835. One of ordinary skill in the art would have been motivated to do so in order to obtain the beneficial effects of Dean’s N,N’-diformylurea, such as enhanced plant growth, possibly mimicking plant growth hormones and/or plant growth regulators. One of ordinary skill in the art would have had a reasonable expectation of success in doing so Copending 823/Copending 835, Chaudhry, and Dean are all directed to agricultural compositions and components for such compositions, and Dean’s N,N’-diformylurea is known to be formulated into agricultural compositions.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1-7, 10, and 11 are rejected. No claims are allowed.
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/MONICA A SHIN/Primary Examiner, Art Unit 1616