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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-15, drawn to a water-dispersible particle composition, classified in A01N 25/12 and A01P 17/00.
II. Claims 16-20, drawn to process of distributing granule particles over an area , classified in C09K17/16.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, the process as claimed can be practiced with another materially different product such as applying an ammonia-based fertilizer in granular form .
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) The inventions have acquired a separate status in the art in view of their different classification;
(b) The inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) The inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) The inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
In this instant case, Group I would require a search in at least A01N 25/12 and A01P 17/00, in addition to a unique text search. Group II would not be searched as above and would instead be searched in at least C09K17/16, as well as a unique text search.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Election-of-Species Requirement
The applicant is required to elect one species of the soil nutrient in the composition described in claim 7 and 15. Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Applicant is strongly encouraged to identify where in the claims, specification, or drawings of the present application, as originally filed, there is support for the elected species.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: First, the species or groups of patentably indistinct species have acquired a separate status in the art in view of their different classification. For example, as shown in A01N 59/20, A01N 59/02 and A01N 59/06. Second, it is necessary to search for each species in a manner that is not likely to result in finding art pertinent to the other species and vice versa. MPEP § 808.02.
Additionally, the applicant is required to elect one species of the additive ingredient in the composition described in claim 8. Applicant is required to elect a single substance for the prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Applicant is strongly encouraged to identify where in the claims, the specification, or the drawings of the present application, as originally filed, there is support for the elected species. The species are independent or distinct because of their mutually exclusive structures and properties.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: First, the species or groups of patentably indistinct species have acquired a separate status in the art in view of their different classification. For example, as shown in C05F 3/00, C05F 7/00, and C05F 11/02. Second, it is necessary to search for each species in a manner that is not likely to result in finding art pertinent to other species. MPEP § 808.02.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out
supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with Avery Goldstein on 04/08/2026 a provisional election was made without traverse to prosecute Claims 1-15. Additionally, regarding the election of a soil nutrient, calcium was selected from the group. For the additive ingredient described in claim 8, humic acid was selected. Affirmation of this election must be made by applicant in replying to this Office Action. Claims 16-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(it).
The examiner has required restriction between product claims and process of use claims. Where applicant elects claims directed to the product, and all product claims are subsequently found allowable, withdrawn process claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all limitations of an allowable product claim for that process invention to be rejoined. In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examiner for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103, and 112. Until all claims to the elected product are found allowable, an otherwise proper restriction requirement between product claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 821.01.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 4-9 are rejected under 35 U.S.C.102(a)(1) as being anticipated by Lynch (US 20090013743 A1).
Lynch discloses a water-dispersible bioavailable fertilizer for delivery of bioavailable components.
Regarding claim 1 and 5, Lynch describes that the water-dispersible particles have a mean particle domain size, and disperse into more than 100 pieces when in contact with water (see claim 1). The particles break up into the smaller pieces over a time period of 1 second to 24 hours, or 1 minute to 1 hour (para. [0013]). The time period range described in Lynch fully encompasses that of instant claim 5. Additionally, the particles are prepared in a drum granulator (para. [0024]), to prepare the granules. Lynch further describes that the fertilizer can comprise a natural organic product, such as seed meal (see claim 21), and there is a binder component present in an amount ranging from 1-95 wt.% (see claim 1).
Regarding claim 4, the water-dispersible particles described in Lynch make up a bioavailable fertilizer (see claim 1), that can contain micronutrients or other active ingredients (para. [0013]).
Regarding claims 6- 8, Lynch discloses that the water-dispersible particles can further consist of calcium, magnesium, sulfur, iron, manganese, copper, and zinc (see claim 26). The particles can also consist of a natural organic product selected from humic acid, blood meal, bone meal, seed meal, feather meal, soy meal, meat meal, animal waste, activated sludge, hydrolyzed animal hair, a fish byproduct, chitin, composts, or a combination (see claim 27).
Regarding claim 9, Lynch describes that contact with water causes particle dispersion in a range of 1,000 to 10,000 pieces (see claim 14), and the particles have a mean domain size range from 0.1 to 30 millimeters (see claim 16).
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.
Claim(s) 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Lynch (US 20090013743 A1) in view of Zaseybida (WO 2017210768 A1).
With respect to claim 2 and 3, Lynch teaches the claimed invention as shown above but does not disclose the presence of biochar or microbes in the water-dispersible particles.
Regarding claims 2 and 3, Zaseybida teaches a bioavailable fertilizer composition that contains micronutrients for soil health. The composition taught in Zaseybida further comprises biochar as a remediating agent that functions as a carrier of microorganisms (see claim 7). Zaseybida teaches many benefits of biochar, specifically how it can be impregnated with microbes (pg. 79, para [0003]).
Lynch and Zaseybida are considered to be analogous to the claimed invention because they are in the same field of bioavailable fertilizers with similar active ingredients. It would have been obvious to combine the biochar and microbes taught in Zaseybida into the water-dispersible fertilizer particles taught in Lynch. Zaseybida teaches that biochar can be added to soil to increase retention of nutrients and improve soil functions (pg. 79, para. [0003]). Additionally, Zaseybida teaches that microbes fix and solubilize essential nutrients for plants (pg. 17, para. [0004]). The skilled artisan could have combined the biochar and microbes into the fertilizer particles because Zaseybida teaches these components are both known to be suitable for applications in fertilizers. It would have been obvious that the combination of these components would result in improved benefits of the fertilizer, such as increased retention of nutrients. MPEP § 2143(I)(a).
Claim(s) 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Lynch (US 20090013743 A1) in view of Fan (CN 106916012 A), evidenced by Chen et al. (Paddy Water Environment, 2012, 10, 291-300), hereinafter Chen.
While Lynch teaches the claimed invention as above, it does not teach particles where the seed meal is specifically camellia seed meal.
Regarding claim 10 and 11, Fan teaches a fertilizer that is comprised of camellia seed meal, which contains saponin (see claim 1).
Lynch and Fan are considered to be analogous to the claimed invention because they teach bioavailable fertilizers. Chen teaches that camellia seed meal is known to contain saponin, which is toxic to ectotherms (i.e. worms, pg. 292 Chen 2012). The skilled artisan would have expected success in incorporating the camellia seed meal in Fan’s fertilizer with the fertilizer taught in Lynch, because camellia seed oil is known in the art to be suitable for use in fertilizers and repelling pests. It would have been obvious to the person of ordinary skill in the art that the combination would keep undesired pests (i.e. worms) away from the region where fertilizer is applied. MPEP § 2143(I)(a).
Claim(s) 12 is rejected under 35 U.S.C. 103 as being unpatentable over Lynch (US 20090013743 A1), in view of Zhang (CN 109776218 A).
Lynch teaches the claimed invention as above, but does not teach that the fertilizer further contains mustard seed oil. Further, Fan and Chen teach the presence of camellia seed meal in a fertilizer, as described above.
Regarding claim 12, Zhang teaches a fertilizer that contains mustard seed meal (see claim 1).
Lynch and Zhang are considered to be analogous to the claimed invention because they are each in the field of fertilizers. Zhang teaches that mustard seed meal contains polyphenols, which promote root growth and prevent the occurrence of underground pests (para. [0019]). The person of ordinary skill in the art would have recognized the reasons for adding the mustard seed meal taught in Zhang into the fertilizer taught in Lynch, and would further have predicted that the combination would help to reduce presence of underground pests. MPEP § 2143(I)(a).
Claim(s) 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Lynch (US 20090013743 A1) in view of Fan (CN 106916012 A) evidenced by Chen et al. (Paddy Water Environment, 2012, 10, 291-300), and further in view of Zaseybida (WO 2017210768 A1).
Regarding claim 13 and 15, Lynch is directed to a water-dispersible bioavailable fertilizer for delivery of bioavailable components. Lynch teaches water-dispersible particles that have a mean particle domain size, and disperse into over 100 pieces when exposed to water (see claim 1). Additionally, Lynch describes that there is a binder component present in an amount ranging from 1-95 wt.% (see claim 1). Lynch also teaches that the water-dispersible particles can further consist of calcium, magnesium, sulfur, iron, manganese, copper, and zinc (see claim 26).
While Lynch does not describe the presence of camellia seed meal, Fan teaches a fertilizer that does contain this element (see claim 1). Chen teaches the application of camellia seed meal in fertilizers, as it is toxic to ectotherms (i.e. worms, pg. 292 Chen 2012). As described in detail above, it would be obvious to one of ordinary skill in the art to incorporate the camellia seed meal taught in Fan into the fertilizer described in Lynch. MPEP § 2143(I)(a). Fan further teaches that the fertilizer will be made up of 6-8 parts camellia seed meal (see claim 1). While Fan does not disclose the amount of camellia seed meal to be between within the range disclosed in instant claim 13, Lynch teaches a bioavailable fertilizer present where the main component is in an amount from 5-99.9 wt.%, and the binder is present in an amount ranging from 1-95 wt.%. The skilled artisan would have expected success in substituting the bioavailable fertilizer component in Lynch with the camellia seed meal taught in Fan, in the amount 5-99 wt.%. MPEP § 2143(I)(b). The amount of camellia seed meal needed to be effective is an optimizable parameter, inviting one skilled in the art to experiment. Additionally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence that such concentration is critical. (“[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). MPEP § 2144.05(II).
Regarding claims 13 and 14, Lynch does not teach the presence of biochar in the fertilizer, however Zaseybida teaches biochar as a remediating agent in a fertilizer (see claim 7). As described in detail above, Zaseybida teaches many benefits of biochar (pg. 79, para [0003]), and as such it would be obvious one of ordinary skill in the art to incorporate the biochar from Zaseybida into the fertilizer taught in Lynch to improve the benefits of the fertilizer, such as improved retention of nutrients. MPEP § 2143(I)(a).
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 non-statutory obviousness-type double patenting as being unpatentable over claims 1, 8, 10, 15-16 of U.S. Patent No. US 8609145 B2 (hereafter Patent ‘145) in view of Zaseybida (WO 2017210768 A1).
Regarding claim 1,5, and 9 of instant invention, Patent ‘145 describes water-dispersible particles that contain seed meal (see claim 10) and a binder component in the amount 1-95 wt.% (see claim 1). When exposed to water, the particles of Patent ‘145 dissolve into more than 100 pieces within 1 second to 1 hour (see claim 1). This range is narrower than that described in instant claim 1. (“A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness”) MPEP § 2144.05(I). The particles disperse into 1,000-10,000 pieces (see claim 15), and the mean domain size of the particles is 0.1-30 millimeters (see claim 16).
Regarding claims 2-4, Patent ‘145 does not teach the presence of biochar, microbes, or bioavailable fertilizer in the composition. However, as discussed in detail above, Zaseybida does teach these components. Zaseybida teaches a bioavailable fertilizer (see claim 1) that contains both microbes and biochar (see claim 7). The person of ordinary skill in the art would have had reasonable expectation of success in incorporating the biochar and microbes of Zaseybida into the fertilizer described in Patent ‘145, for the benefits as described in detail above. MPEP § 2143(I)(a).
Regarding claims 6-8, Patent ‘145 teaches a fertilizer that contains an active ingredient selected from the list of calcium, magnesium, sulfur, iron, manganese, copper, zinc, and a combination (see claim 8). The fertilizer of Patent ‘145 further comprises a natural organic product of humic acid, blood meal, bone meal, seed meal, feather meal, soy meal, meat meal, animal waste, activated sludge, hydrolyzed animal hair, a fish byproduct, chitin, composts and combinations (see claim 10).
The conflicting claims of instant invention and Patent ‘145 differ only marginally in scope from claims 1-9 of the present application. Claims 1 and 7 of Zaseybida, which are discussed above in the rejections under 35 U.S.C. 103, compensate for the deficiency in the conflicting claims concerning the biochar, bioavailable fertilizer, and microbes.
Conclusion
Claims 1-15 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Makenna Miller whose telephone number is (571)272-9852. The examiner can normally be reached Mon-Fri 7:30-5:00 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached at (571) 272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/M.R.M./Examiner, Art Unit 1611
Prosecution Insights