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 .
Priority
This application, which discloses and claims only subject matter disclosed in prior Application No. 17/040,628, filed 09/23/2020, appears to claim subject matter directed to an invention that is independent and distinct from that claimed in the prior application, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application appears to constitute a divisional application.
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).,
The disclosure of the prior-filed provisional application, Application No. 62/648,066, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The only reference to “calcined” materials in Applicant’s priority document (62/648,066) distinguishes "activated alumina particles" from other forms of alumina, such a gel alumina, smelter-grade alumina or calcined alumina [0005]. This does not comply with the requirements of 35 U.S.C. 112(a) with regard to the claim limitation(s) “calcined alumina, calcined iron oxide, calcined bauxite, calcined clay, calcined kaolin” because the conflicting information does not constitute a written description of the invention 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.
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 21-32 and 37-39 are rejected under 35 U.S.C. 103 as being unpatentable over Lynch et al. (US Patent No. 6,287,357 B1) (cite no 2 in 02/21/2024 IDS) as evidenced by (Canada, 2001), regarding claims 21 and 30, as evidenced by Huber (Martinswerk GmbH, 2017) (cite no 7 in 02/21/2024 IDS) and Wang et al. (US EPA, 2000) (cite no 6 in 02/21/2024 IDS), regarding claims 22-24 and 37-38, as evidenced by Muby Chem (2021), regarding claim 27.
In regard to claim 21, Lynch et al. disclose a process of plant fertilization (e.g. applying Al-P onto soil to meet the needs of the species of plants) [Column 7, lines 15-22] comprising:
adsorbing phosphorus from an anthropogenic phosphorus source (e.g. phosphoric acid; food grade phosphoric acid) [col. 14, lines 53-60] (e.g. while phosphorus naturally exists in the Earth's crust as phosphate rock, the concentrated chemical known as phosphoric acid is manufactured by humans through industrial processes) [Canada, pg. 15, last para.; table 3.9] onto a plurality of particles of at least one phosphorus adsorbent (e.g. Al-P) [col. 14, lines 58-61], wherein the Al-P absorbent is in the form of alumina pellets [col. 3, lines 37-41], wherein the Al-P phosphorus adsorbent has a basic pH (e.g. the resulting pH from alumina activation is preferably between 6.0 – 7.5 which overlaps with a basic pH value in amounts greater than 7.0) [col. 6, lines 12-13], and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); and then
applying the plurality of particles of at least one phosphorus adsorbent to a plant medium (e.g. mum cuttings are planted in soil containing charged Al-P) [col. 14, lines 66-67].
Lynch discloses activated alumina [Column 4, lines 25-35] but does not explicitly recite calcined alumina. Activated alumina is a porous, solid form of aluminum oxide (Al2O3). Calcined alumina is alumina subjected to calcining temperatures to convert it to activated alumina by driving off chemically-bound water molecules [Applicant’s Specification, para. 0022]. Acid-activated alumina is subjected to low pH conditions to also remove chemically-bound water molecules and results in a material which is structurally the same as the claimed heat-activated alumina. Therefore, the claimed (calcined alumina) and prior art (activated alumina) are considered identical or substantially identical in structure or composition, and thus a prima facie case of anticipation has been established [MPEP 2112.01]. To put it another way, “calcined” alumina is considered a product-by-process limitation (e.g. activated alumina obtained by the process of heat treatment) and only the structure implied by the process step (calcination) is considered when compared to the prior art structure.
In regard to claims 22-24, Lynch et al. disclose the process of claim 21, wherein the activated alumina is, for example, commercially available DD-2 and Compalox [Column 5, lines 22-25], including Compalox AN/V-801 which has a size range from 0.3 mm to 1.0 mm [Huber, pg. 1]. DD-2 is size 14 mesh (1.4 mm) [Wang, pg. 42]. These values overlap and/or lie inside the claimed range.
In regard to claims 25-26, Lynch et al. disclose the process of claim 1, wherein the adsorbing comprises adsorbing a first amount of phosphorus (e.g. contacting alumina with a solution containing phosphoric acid) [Column 3, lines 44-46], then drying the plurality of particles of at least one phosphorus adsorbent [Column 3, lines 52-54], and then adsorbing an additional amount of phosphorus from the anthropogenic phosphorus source onto the plurality of particles of at least one phosphorus adsorbent (e.g. recharging through subsequent fertilizer application) [Column 4, lines 10-15]. It necessarily follows that the first amount and the additional amount is greater than a phosphorus loading capacity of the plurality of particles without the sub-step drying because the material is described as recharged (e.g. an additional amount of phosphorous is introduced) [see also col. 14-15; Example 8 for recharging Al-P].
In regard to claim 27, Lynch discloses the process of claim 21, including the anthropogenic phosphorous source (e.g. food grade phosphoric acid) [col. 8, lines 56-57]. Lynch does not explicitly disclose a brackish source, including greater than 100 ppm sodium. However, Muby Chem discloses 250 ppm Na (sodium) in reagent grade phosphoric acid [pg. 4] and one of ordinary skill in the art would understand commercial phosphoric acid contains sodium as it is made from treating phosphate rock which contains trace amounts of salts and metals.
In regard to claims 28-29, Lynch discloses, after rinsing the plurality of particles, adsorbing an additional amount of phosphorus from the anthropogenic phosphorus source onto the plurality of particles of at least one phosphorus adsorbent (e.g. the phosphorus is adsorbed onto the activated alumina pellets and the process comprises a step of rinsing to remove excess salt wherein the rinse solution is retained and analyzed to check for phosphorus desorption wherein a percent desorbed phosphorus after a rinsing step is 0.013 percent, the amount desorbed after a rinse step is not significant) [column 3, lines 37-60; column 9, lines 1-29; column 11, third table]. Lynch describes after rinsing the plurality of particles (claim 10) adsorbing an additional amount of phosphorus from the anthropogenic phosphorus source onto the plurality of particles of at least one phosphorus adsorbent (e.g. recharging phosphorus onto desorbed alumina by percolating a phosphorus containing liquid through the soil such as effluent from greenhouses or other point sources of phosphorus runoff [column 3, lines 37-60; column 4, lines 27-56; column 11, lines 60-67; column 12, lines 59-67].
In regard to claim 30 and 32, Lynch et al. disclose a composition comprising:
a soil amendment (e.g. Al-P for application onto soil to meet the needs of the species of plants) [Column 7, lines 15-22] comprising:
a plurality of particles of at least one phosphorus adsorbent (e.g. Al-P) [col. 14, lines 58-61], wherein the Al-P absorbent is in the form of alumina pellets [col. 3, lines 37-41], wherein the Al-P phosphorus adsorbent has a basic pH (e.g. the resulting pH from alumina activation is preferably between 6.0 – 7.5 which overlaps with a basic pH value in amounts greater than 7.0) [col. 6, lines 12-13], and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); and then
phosphorus from an anthropogenic phosphorus source (e.g. phosphoric acid; food grade phosphoric acid) [col. 14, lines 53-60] (e.g. while phosphorus naturally exists in the Earth's crust as phosphate rock, the concentrated chemical known as phosphoric acid is manufactured by humans through industrial processes) [Canada, pg. 15, last para.; table 3.9] absorbed onto the plurality of particles of at least one phosphorus absorbent (e.g. recharged Al-P) [col. 14, line 66];
a plant medium (e.g. soil) [col. 14; Example 8].
Lynch discloses activated alumina [Column 4, lines 25-35] but does not explicitly recite calcined alumina (claim 32). Activated alumina is a porous, solid form of aluminum oxide (Al2O3). Calcined alumina is alumina subjected to calcining temperatures to convert it to activated alumina by driving off chemically-bound water molecules [Applicant’s Specification, para. 0022]. Acid-activated alumina is subjected to low pH conditions to also remove chemically-bound water molecules and results in a material which is structurally the same as the claimed heat-activated alumina. Therefore, the claimed (calcined alumina) and prior art (activated alumina) are considered identical or substantially identical in structure or composition, and thus a prima facie case of anticipation has been established [MPEP 2112.01]. To put it another way, “calcined” alumina is considered a product-by-process limitation (e.g. activated alumina obtained by the process of heat treatment) and only the structure implied by the process step (calcination) is considered when compared to the prior art structure.
In regard to claim 31, Lynch et al. disclose the composition of claim 30, wherein the soil amendment is mixed with the plant medium (e.g. the phosphorus bound to the alumina is applied to soils and released into soil; Al-P in situ in soils) [Column 3, lines 65 – Column 4, line 4; col. 14; Example 8].
In regard to claims 37-38, Lynch et al. disclose the process of claim 21, wherein the activated alumina is, for example, commercially available DD-2 and Compalox [Column 5, lines 22-25], including Compalox AN/V-801 which has a size range from 0.3 mm to 1.0 mm [Huber, pg. 1]. DD-2 is size 14 mesh (1.4 mm) [Wang, pg. 42]. These values overlap and/or lie inside the claimed range.
In regard to claim 39, Lynch et al. disclose the composition of claim 30, wherein the plant medium is selected from the group consisting of a naturally-occurring soil, a soil containing one or more additive, a hydroponic medium, and an aeroponic medium (e.g. naturally occurring earthen soils, as well as earthen soils containing additives, and all combinations or mixtures thereof) [col. 3, lines 17-20].
Claims 33-36 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Lynch et al. (US Patent No. 6,287,357 B1) as applied to claim 30 above, and further in view of Hughes (US Patent Publication No. 2003/0196966 A1) and Clay Minerals (Clay Glossary, 2016)
In regard to claims 33-36 and 40, Lynch et al. disclose the composition of claim 30, wherein the phosphorus adsorbent is alumina [Column 4, lines 25-35], wherein the Al may be supplied various forms, including but not limited to commercially available alumina pellets which have been activated, aluminum hydroxide, clays, and oxide rich soils [Column 3, lines 39-43]. The reference does not explicitly teach wherein the adsorbent includes calcined iron oxide (claim 33), calcined bauxite (claim 34, claim 40), calcined clay (claim 35) or calcined kaolin (claim 36).
Hughes is directed to a composition comprising a material for filtration/purification of contaminated water [abstract]. The absorbent material used for the purification include minerals containing iron, and aluminum [0057]. An example of a suitable material is the commercially available calcined bauxite sold by CE Minerals [0055]. Bauxite is the term for an aluminum ore consisting of primarily hydrous aluminum oxides [gibbsite, Al(OH)3; boehmite, AlO(OH); and diaspore AlO(OH)], often mixed with iron oxyhydroxides (goethite, FeO(OH), and hematite, Fe2O3), kaolinite, and small amounts of anatase (TiO2) [Clay Minerals, pg. 10]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the activated alumina absorbent of Lynch with calcined bauxite as described by Hughes. One of ordinary skill in the art would have been motivated to substitute the aluminum-oxide based materials because they are equivalents known for the same purpose (e.g. absorbents for removing contaminants from water) [Hughes, para. 0057].
Double Patenting
In response to applicant' s request to hold in abeyance a response, it is noted that the rejection cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims”. As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated. See MPEP § 804.02, subsection VI., for filing terminal disclaimers required to overcome nonstatutory double patenting rejections in applications filed on or after June 8, 1995.
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 21-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 11,952,319. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims being examined are generic to a species or sub-genus claimed in the conflicting patent (i.e., the entire scope of the reference claims falls within the scope of the examined claims).
Response to Arguments
The rejection of claim 36 is withdrawn in view of the amendment (05/18/2026) to the claim.
The rejection of claim 26 under 35 U.S.C. 112(b) (incorrectly referenced as “claim 25” in the 03/03/2026 Office Action) is withdrawn.
Applicant’s arguments, filed 05/18/2026, with respect to the rejection of the claims based on the teachings of the Lynch reference have been fully considered but are not persuasive. Applicant argues (pg. 7, 1st full para.) Lynch teaches a step of acidifying the activated alumina with phosphoric acid but does not teach a step of adsorbing phosphorous from an anthropogenic phosphorous source. In response to this argument, Lynch’s loading and “recharging” with phosphoric acid is considered to meet the claim limitations. Phosphoric acid is an anthropogenic phosphate source when “anthropogenic” is given its plain meaning.
Anthropogenic: of, relating to, or resulting from the influence of human beings on nature
Phosphoric acid is considered a human-made material and does not exist, by itself, in nature. While Lynch also describes adsorbing phosphorus from effluent from greenhouses or other point sources of phosphorus runoff [column 3, lines 37-60; column 4, lines 51-56; column 11, second table], the claim(s) are not currently limited to such pollution sources and Lynch’s phosphoric acid component reads on the claim limitation “anthropogenic phosphorus source” when given its broadest reasonable interpretation.
In response to applicant's argument (pg. 8) that Hughes is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). Applicant argues it is not predictable that Hughes’ activated bauxite is equivalent in function to Lynch’s activated alumina for the purpose for which Lynch’s activated alumina is intended. In this case, Lynch describes a possible use of acid-activated alumina or desorbed Al--P is as a phosphorus filter for effluent from greenhouses and other point sources of phosphorus runoff, once charged with phosphorus through use as a filter, the filter material can then be used as a fertilizer and fertility amendment [col. 4, lines 51-56]. Hughes describes absorbent material used for the purification including minerals containing iron, and aluminum [0057]. An example of a suitable material is the commercially available calcined bauxite sold by CE Minerals [0055]. A person of ordinary skill in the art would have recognized Lynch as analogous to Hughes, as both references are drawn to the same field of endeavor as the claimed invention. Calcined alumina and calcined bauxite are aluminum-rich sorbents used to filter and remove contaminants.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731 May 29, 2026
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