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 .
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, 7-9 and 13-27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-20] of copending Application No. 19/493440(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been within the level of skill of one of ordinary skill in the art to determine a suitable amount of the element in the composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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.
Claims 1, 4, 7-9 and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/218089 A1 in view of Pursell et al (US 2012/0017659). WO 2019/218089 A1 discloses a composition comprising cellulose and a salt of a micronutrient such as iron or manganese. (See Paragraphs [0044] through [0048] and [0052].) WO 2019/218089 A1 discloses in Table 2 on page 14 that the iron loading can be as high as 8% (w/w). The difference between the composition disclosed by WO 2019/218089 A1, and that recited in applicant’s claims, is that WO 2019/218089 A1 does not disclose that the particle size should range from about 0.05 mm to about 1.5 mm. Pursell et al disclose a fertilizer composition for delivering micronutrients, and teach that the particle size of the granules should range from 0.7 mm to 1.5 mm. (See Paragraph [0015].) It would have been obvious from Pursell et al to provide a particle size of 0.7 mm to 1.5 mm for the particles of WO 2019/218089 A1. One of ordinary skill in the art would have been motivated to do so, since the compositions of WO 2019/218089 A1 and Pursell are analogous in that both entail delivery systems comprising micronutrients as fertilizers, and it is well-known that solid fertilizers are typically in the form of granules.
Regarding claim 7, WO 2019/218089 A1 discloses in Paragraph [0044] that the carrier may comprise about 0.2% to about 40% (w/w) lignin and about 60% to about 98.8% (w/w) cellulose.
Regarding claims 9 and 18, WO 2019/218089 A1 discloses these carriers in Paragraph [0048].
Regarding claims 13 and 14, WO 2019/218089 A1 discloses in Paragraph [0062] that the mixture is heated to a temperature of about 80 C.
Regarding claims 13 and 15, WO 2019/218089 A1 discloses he addition of a base in claim 30. It would have been obvious to employ such conventional bases as sodium hydroxide or sodium carbonate as such base.
Regarding claim 16, WO 2019/218089 A1 discloses sodium bicarbonate as the base in claim 33.
Regarding claim 19, WO 2019/218089 A1 discloses in Paragraph [0050] that up to 30% (w/w) base to total weight of the carrier may be used.
Regarding claim 20, WO 2019/218089 A1 discloses in claim 38 that the composition is dried. It would have been within the level of skill of one of ordinary skill in the art to determine a suitable degree to which the composition should be dried.
Claims 21-27 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/218089 A1 in view of Pursell et al, as applied to claim1, 4, 7-9 and 13-20 above, even further in view of Medoff (US 9,970,039). It would have been even further obvious from Madoff]. To employ microwave heating to heat the composition of WO 2019/218089 A1. One of ordinary skill in the art would have been motivated to do so, since Medoff establishes microwave heaters as conventional aq conventional heat source, and one would have expected that any known or conventional heat source could be used for heating the composition of WO 2019/218089 A1.
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 19 and 26 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. The e4citation of “up to about 30% (w/w) base…is combined with the base” is indefinite.
DE 202012001243U1 is made of record for disclosing fertilizer agglomerates comprising cellulose and trace elements in Paragraph [0006] of the English translation.
EP 2,258,159 A2 is made of record for disclosing fertilizer pellets comprising micronutrients on an organic a carrier.
WO 2005121051 A1 is made of record for disclosing an organic fertilizer including cellulose and starch elements.
Burnham (US 2002/0098982) is made of record for disclosing biosolids including a layer of zinc. (See Paragraph [0032].)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WAYNE A LANGEL whose telephone number is (571) 272-1353. The examiner can normally be reached Monday through Friday from 8:15 am to 4:15 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WAYNE A LANGEL/Primary Examiner, Art Unit 1736
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