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 .
Information Disclosure Statement
The listing of references in the PCT international search report is not considered to be an information disclosure statement (IDS) complying with 37 CFR 1.98. 37 CFR 1.98(a)(2) requires a legible copy of: (1) each foreign patent; (2) each publication or that portion which caused it to be listed; (3) for each cited pending U.S. application, the application specification including claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion, unless the cited pending U.S. application is stored in the Image File Wrapper (IFW) system; and (4) all other information, or that portion which caused it to be listed. In addition, each IDS must include a list of all patents, publications, applications, or other information submitted for consideration by the Office (see 37 CFR 1.98(a)(1) and (b)), and MPEP § 609.04(a), subsection I. states, “the list ... must be submitted on a separate paper.” Therefore, the references cited in the international search report have not been considered. Applicant is advised that the date of submission of any item of information in the international search report will be the date of submission of the IDS for purposes of determining compliance with the requirements for the IDS with 37 CFR 1.97, including all timing statement requirements of 37 CFR 1.97(e). See MPEP § 609.05(a).
The information disclosure statement (IDS) submitted on 12/15/2023 has been considered by the examiner.
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 4-10 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.
In regard to claims 4 and 8, the recitation wherein a stable aqueous suspension comprises from 8% (w/w) to 13 % (w/w) boron (claim 4) or from 0.008% (w/w) to 13% (w/w) boron (claim 8) is indefinite as it does not relate to the limitations set forth in claim 1. Potassium pentaborate is roughly 18% boron by weight but the claims recite an aqueous suspension comprising boron in amounts less than what is exhibited in the potassium pentaborate recited in claim 1.
In regard to claims 4, 6, 8 and 10, the claims recite spraying “[…] lbs/acre of boron”. However, potassium pentaborate is roughly 18% boron by weight. If the aqueous suspension of claim 1 is sprayed at the maximum rate of 0.70 lbs/acre the maximum possible boron applied is only 0.091 lbs/acre. It is physically and mathematically impossible to satisfy the application rate of the components of claims 4, 6, 8 and 10 while simultaneously staying within the boundaries set forth in independent claim 1. The claims are contradictory and indefinite to a person having ordinary skill in the art. For the purposes of examination, this limitation is interpreted as “[…] lbs/acre of the suspension of claim 1”.
In regard to claims 5-6 and 9-10, the claims recite an amount of potassium oxide in (w/w) and an amount sprayed onto the plant. The rates of potassium oxide mathematically contradict the total application rate required by claim 1 based on the suspension comprising from 30% (w/w) to 60% (w/w) potassium pentaborate when the chemical composition of potassium oxide in potassium pentaborate is less than the ranges set forth in the claims.
In regard to claim 7, the claims recite a step of diluting the suspension with water and then spraying the diluted suspension at the same rate as recited in claim 1. It is unclear how the suspension and the diluted suspension can both be sprayed at the same rate.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Sawant (WO-2019215631-A1) in view of Babu (US-20190225556-A1).
In regard to claims 1-2, Sawant teaches a process comprising:
providing a stable (e.g. stable suspension) [pg. 9, lines 23-24] aqueous suspension (e.g. liquid suspension; the term liquid suspension also encompasses aqueous suspension) [pg. 7, line 13; pg. 9, lines 25-26] comprising from 0.1% (w/w) to 55% (w/w) suspended particles of boron salts [pg. 7, lines 13-14], wherein the boron salts include, for example, boric acid, disodium octaborate, potassium tetraborate [pg. 17, lines 16-20]; and
spraying the boron-containing liquid suspension onto leaves of a plant (e.g. the composition can be applied in the form of a foliar spray) [pg. 49, lines 16-17] in amounts ranging from, for example 76.65 g/acre [pgs. 61-62, table 2] to 200 g/acre [pgs. 79-80, table 7] [see also Experiment 1 – Experiment 8 exemplifying values within this range] which equates to a rate of 0.17 lbs/acre to 0.44 lbs/acre.
As Sawant’s teaching of the numerical ranges overlaps with the claimed ranges, a prima facie case of obviousness exists in view of In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), absent contrary evidence of criticality or non-obviousness of the claimed range.
Sawant does not explicitly disclose wherein the boron source is potassium pentaborate. However, in the same field of endeavor, Babu is directed to micronutrient fertilizer comprising boron [abstract]. “Preferred water-soluble sources of boron include those selected from the group consisting of disodium octaborate tetrahydrate, boric acid, potassium tetraborate tetrahydrate, potassium pentaborate tetrahydrate, boric anhydride, and mixtures thereof” [para. 0094]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform simple substitution of the water-soluble boron micronutrient sources disclosed by Sawant for another water-soluble boron source such as potassium pentaborate descried by Babu. One of ordinary skill in the art would have been motivated to perform simple substitution of one known water-soluble boron micronutrient source for another to obtain predictable results.
In regard to claim 3, Sawant discloses a suspension wherein the particles of the boron source have an average particle size from 0.1 micron to 20 microns [pg. 7, lines 22-24] which overlaps with the claimed range.
In regard to claims 4-10, Sawant discloses diluting the stable aqueous suspension with water and forming a diluted stable aqueous suspension (e.g. intended for dilution with water before use); and spraying the diluted stable aqueous suspension on a plant at a rate of from 76.65 g/acre [pgs. 61-62, table 2] to 200 g/acre [pgs. 79-80, table 7] [see also Experiment 1 – Experiment 8 exemplifying values within this range] which equates to a rate of 0.17 lbs/acre to 0.44 lbs/acre. The recited values of boron, potassium oxide and application rates clash with the values recited in claim 1 as described above in the indefiniteness rejection. The values recited in claim 1 (from which claims 4-10 depend) are made obvious in view of the teachings of Sawant and Babu and therefore the limitations of claims 4-10, with regard to content of boron and potassium oxide are considered inherent features of an aqueous suspension of potassium pentaborate (e.g. potassium pentaborate contains both boron and potassium, though they are combined in the chemical structure as potassium oxide and boric oxide rather than as free elements).
Claims 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Sawant (WO-2019215631-A1) in view of Babu (US-20190225556-A1) as applied to claim 1 above, and further in view of Sutradhar et al. (University of Minnesota Extension, 2016).
In regard to claims 11 and 14, Sawant discloses application of the boron composition to corn [pgs. 78-79; Experiment 8]. The reference does not explicitly disclose wherein there is a first spraying during collar and a second spraying during silking growth stages.
Sutradhar et al. is directed to nutrient management for boron sufficiency for crops including corn [pgs. 3-4]. During the time when the corn plant is less than 12” tall and the initial silk, boron is required within sufficient ranges [pg. 3, Table 2]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to spray the aqueous suspension of Sawant/Babu at a first growth stage (e.g. collar, where the corn plant is less than 12” tall) and a second growth stage (e.g. silking) as described by Sawant. One of ordinary skill in the art would have been motivated to do so in order to achieve appropriate boron levels for boron-deficient plants. For corn crops boron is immobile and therefore deficiencies are observed on the youngest leaves first [pg. 1, 4th para.].
In regard to claims 12-13, Sutradhar discloses applying a boron composition to alfalfa [para. bridging pgs. 4-5] and soybean [pg. 5] plants. Because boron is measured prior to flowering [pg. 3; table 2] for alfalfa and early flowering for soybean [pg. 4, table 2], it necessarily follows that the boron suspension would be applied at the growth stage of flowering when applied to alfalfa or soybean. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform a second spraying of the boron suspension at a second soybean stage (e.g. pod stage / R3-R4). One of ordinary skill in the art would have been motivated to do so when deficiency symptoms in soybean are observed (e.g. In soybean, specific symptoms caused by B deficiency include yellowing leaves, curling of leaf tips, interveinal chlorosis, and dieback of tips. Soybean roots are stunted and flowering stops under severe deficiency conditions) [pg. 2].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer A Smith whose telephone number is (571)270-3599. The examiner can normally be reached Monday - Friday 9:30am-6pm EST.
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/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731 June 10, 2026
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