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 .
New Examiner
The new examiner of record is Erin Hirt.
Election/Restrictions
Applicant's election with traverse of group I, claims 1-9 in the reply filed on 12/12/25 is acknowledged. The traversal is on the ground(s) that it would not be a serious search and examination burden to examine all of the claims because applicants believe that the search will not uncover many relevant references. This is not found persuasive because whether or not the search uncovers many relevant references the searches require searching different classifications for different limitations and in some cases term searching completely different terms/search strings for the distinct inventions in the instant application and further there is an examination burden because the method claims have 112(b) issues which are not present in the elected particle claims. However, the examiner is amenable to rejoinder of the method claims upon determining/finding the composition/particle claims allowable as requested by applicants.
The requirement is still deemed proper and is therefore made FINAL.
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected method claims, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/12/25.
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.
Claim(s) 1-3, 5-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Farahat et al. (J. Soil. Sci. and Agric. Eng., Mansoura Univ. vol. 7(12): 907-911, 2016, from IDS and cited in parent case) in view of Azeem et al. (Procedia Engineering, 2016, 148, 282-289) and Trinh et al. (Int. J. of Chem. Eng. And Appl., 2014, 5(1), 58-63), and as further evidenced by Thisvsthat (http://thisvsthat.io/granular-urea-vs-prilled-urea).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1-3, Farahat teaches a composite particle comprising a seed particle/granule(s) of urea as the core and which has a coating/shell disposed on the surface of the seed particle/granule(s) which comprises a clay, specifically Aswan red clay and wherein the granules are first sprayed with a coating of polymer, specifically chitosan, followed by the red clay (see entire document; abstract; experimental section; Methods section, producing ARCCU granules pg. 907, pg. 908, left col., determination of coating %, determination of nitrogen% sections; Table 2; results and discussion section; Release urea from coated urea(ARCCU) section; Application section and Conclusion sections on pg. 910).
Regarding claim 8, Farahat teaches wherein the size of the urea granules prior to coating have sizes ranging from 1.2 to 3.5mm which is between 16 and 6 mesh, and wherein the coating, is applied in about 15% of the total weight of the coated particles, and as such the resultant particles would still fall within the claimed mesh sizes of about 2 mesh to about 400 mesh (See entire document; Experimental section).
Regarding claim 9, Farahat does not teach the shape of the coated fertilizer granules/composite particles formed. However, the urea granules which are used as starting material have an irregular/unsymmetrical shape as is evidenced by Thisvsthat (See comparison table) and by adding coatings to the granules would not be expected to change the shape since it is liquid coatings being applied to the unsymmetrical granule and as such they too would take the shape of the granules to which the coatings are applied (See Farahat: entire document; abstract; experimental section; Methods section, producing ARCCU granules pg. 907, pg. 908, left col., determination of coating %, determination of nitrogen% sections; Table 2; results and discussion section; Release urea from coated urea(ARCCU) section; Application section and Conclusion sections on pg. 910).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 1-3, 5-9, Farahat does not teach wherein the seed particle comprises about 30% to about 80% of the average cross-sectional length of the composite particle and wherein the seed particle comprises about 30% to about 80% of the total volume of the composite particle or the other properties claimed in claims 5-7. However, these deficiencies in Farahat are addressed by Azeem and Trinh.
Azeem teaches that it is known to that the thickness of coatings on fertilizer granules controls the release rate of the fertilizer/urea fertilizer from the covered granules/particles, and Azeem teaches that the thicker the coating the slower the release rate (Abstract). Thus, it was known to control the release rate by controlling the thickness of the coating on the urea fertilizer granules.
Trinh teaches that the thickness of coatings on fertilizer granules/urea granules, and the size of the urea granules controls the release rate of the fertilizer/urea fertilizer from the covered granules/particles, and Trinh teaches that the thicker the coating and/or the larger the size of the urea granule, the slower the release rate of the urea from the covered controlled-release/slow-release urea fertilizer particles/granules (Abstract; introduction section; pg. 60-61, Results and Discusstion section: see effect of particle size of the release of urea section and effect of coating thickness of the release of urea section; conclusion).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
Regarding claims 1-3, and 5-9, specifically 1, and 5-7, it would have been obvious to one of ordinary skill in the art to control and optimize the thickness of the shell coating and the size of the seed particle of urea/core of the composite particle so that the seed particle comprises about 30% to about 80% of the average cross-sectional length of the composite particle, and wherein the composite particle has volume and the seed particle comprises about 30% to about 80% of the volume of the composite particle, and wherein the composite particle has mass and the seed particle comprises about 30% to about 80% of the mass of the composite particle, and wherein the shell comprises about 10% to about 40% of the mass of the composite particle, and wherein the shell comprises about 10% to about 40% of the average cross-sectional length of the composite particle as claimed because it is known to control the thickness of the coating on the urea fertilizer granules and/or the size of the urea fertilizer granules in order to control/achieve the desired slow/controlled release rate of the urea fertilizer from the granules. Thus, it would have been obvious to optimize the thickness of the shell and the size of the urea granule as the seed particle in order to afford the claimed properties of the granules, and in order to provide composite particles which provide the desired release of the urea from the fertilizer granules because this is something that one of ordinary skill in the art routinely does and one of ordinary skill in the art would have recognized that the thickness of the shell coating over the seed particle/granule of urea and/or the size of the urea seed particle core/granule would impact the release rate of the urea from the composite particles and is therefore an optimizable variable in order to achieve the claimed properties and it is known, “[D]iscovery of an optimum value of a result effective variable…is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276. Additionally, the courts have previously determined that, “[W]here 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 reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Farahat et al. (J. Soil. Sci. and Agric. Eng., Mansoura Univ. vol. 7(12): 907-911, 2016, from IDS and cited in parent case) in view of Azeem et al. (Procedia Engineering, 2016, 148, 282-289) and Trinh et al. (Int. J. of Chem. Eng. And Appl., 2014, 5(1), 58-63), and as evidenced by Thisvsthat (http://thisvsthat.io/granular-urea-vs-prilled-urea) as applied to claims 1-3 and 5-9 above and further in view of Lu et al. (Springerplus, 2016, 5, 457).
Determination of the scope and content of the prior art
(MPEP 2141.01)
The combined references together teach the composite particle of claims 1-3 and 5-9 as discussed above and incorporated here.
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
The combined references do not teach wherein the polymer is other than chitosan, specifically the instantly claimed polyurea. However, this deficiency in the combined references is addressed by Lu.
Lu teaches using polyurea derived from urea to coat urea granules for controlled/slow release urea fertilizer granules wherein the polyurea is biodegradable and also provides urea which is a source of nitrogen to the soil and provides excellent controlled release of the urea from the polyurea coated urea granules (Abstract; see also entire document; results and discussion section and conclusion section).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art at the time of the instant filing to have replaced the chitosan of Farahat and the combined references or to have combined the chitosan of Farahat with the polyurea of Lu in order to coat the urea granules of Farahat in addition to the clay coating because Lu teaches that polyurea provides additional urea and helps to provides excellent controlled release of the urea from the polyurea coated urea granules and also provides additional urea, which is a source of nitrogen to the soil which are additional benefits not offered by the polymeric chitosan coating alone and as such is motivation to combine the chitosan and polyurea or substitute the polyurea for the chitosan of Farahat and the combined references in order to form the instantly claimed composite particle(s).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11970429. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘429 teaches a species of the instantly claimed genus of composite particles having the claimed properties and made of the same clays, etc. as claimed and as such the composite particles of ‘429 anticipate the instantly claimed composite particles. Thus, one of ordinary skill in the art would conclude that the instantly claimed invention is obvious when taken in view of U.S. Patent No. 11970429.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616