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 .
DETAILED ACTION
This action is in response to Applicant’s amendment filed June 25, 2026 in reply to the First Office Action on the Merits mailed April 8, 2026. Claims 1, 2, 4-7, 9-14, and 18-25 have been amended; and claims 3, 8, and 15-17 have been canceled. Claims 5-7, 11, 12, 14, and 19-22 have been withdrawn. Claims 1, 2, 4, 9, 10, 13, 18, and 23-25 are under examination in the application.
Claim Rejections - 35 USC § 112(b)
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.
Claim 10 is 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.
Claim 10 is in improper Markush format, and one of ordinary skill in the art cannot definitively ascertain the metes and bounds of the claimed subject matter. Applicant is advised that a proper Markush claim has the general format “selected from the group consisting of A, B, C, D, and E”, not “selected from the group consisting of A, B, at least one of C or D, and E”.
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.
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.
Claims 1, 2, 4, 9, 10, 13, 18, and 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Reus et al. (U.S. Patent Application Pub. No. 2012/0065060), in view of Peddrick (U.S. Patent No. 2,203,744), Tanaka et al. (HortScience. 2006; 41(3): 775-779), and Afzal et al. (Agriculture. 2020; 10: 526).
***the elected subject matter is being addressed at this time.
Applicant Claims
Applicant’s elected subject matter is directed to a seed coated with an aluminum oxide layer comprising aluminum oxide particles and a bioavailable species of phosphorus; wherein the coating directly contacts the seed and is in the form of an encrusting; and wherein the aluminum oxide particles have a size of about 200 mesh, comprise 19.7% to 98% of the total coated seed weight, and are in the form of bauxite.
Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Reus et al. disclose a seed coated with a layer comprising inorganic particles and nutrients/minerals; wherein the coating directly contacts the seed, wherein the inorganic particles can be e.g. aluminum oxide particles, wherein the aluminum oxide particles have a size of e.g. about 30-100 microns, and wherein the coating can advantageously provide insecticidal benefits (abstract; paragraphs 0002, 0008-0010, 0015, 0018-0021, 0023, 0040, 0045, 0049, 0050).
Peddrick discloses that e.g. bauxite (a mineral rich in aluminum oxide) particles about 200 mesh or finer in size exhibit insecticidal properties, and can be suspended in a liquid carrier for deposition onto surfaces for protection of the surface from insects.
Tanaka et al. disclose that phosphorus is an essential nutrient for plant growth and that the combination of alumina particles and phosphorus can facilitate the more efficient use of phosphorus for enhanced vegetable production while minimizing environmental contamination.
Afzal et al. disclose that encrusted seeds, in which seed coatings contain solid particulates and are thick enough to increase the weight of the seed by 8-500%, providing greater amounts of active components without changing the original seed shape, have been shown to improve seedling emergence with a significantly higher germination rate.
Ascertainment of the Difference Between the Scope of the Prior Art and the Claims (MPEP §2141.02)
Reus et al. do not explicitly disclose that the aluminum oxide particles are in the form of bauxite, that the plant nutrient/mineral is phosphorus, and that the coating in in the form of an encrusting. These deficiencies are cured by the teachings of Peddrick, Tanaka et al., and Afzal et al.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been prima facie obvious for one of ordinary skill in the art at the time the present application was filed to combine the respective teachings of Reus et al., Peddrick, Tanaka et al., and Afzal et al., outlined supra, to devise Applicant’s presently claimed coated seed.
Reus et al. disclose a seed coated with a layer comprising inorganic particles and nutrients/minerals; wherein the coating directly contacts the seed, wherein the inorganic particles can be e.g. aluminum oxide particles, wherein the aluminum oxide particles have a size of e.g. about 30-100 microns, and wherein the coating can advantageously provide insecticidal benefits to protect the seed. Since Peddrick discloses that e.g. bauxite (a mineral rich in aluminum oxide) particles about 200 mesh or finer in size exhibit insecticidal properties, and can be suspended in a liquid carrier for deposition onto surfaces for protection of the surface from insects; since Tanaka et al. disclose that phosphorus is an essential nutrient for plant growth and that the combination of aluminum oxide particles and phosphorus can facilitate the more efficient use of phosphorus for enhanced vegetable production while minimizing environmental contamination; and since Afzal et al. disclose that encrusted seeds, in which seed coatings contain solid particulates and are thick enough to increase the weight of the seed by 8-500%, providing greater amounts of active components without changing the original seed shape, have been shown to improve seedling emergence with a significantly higher germination rate; one of ordinary skill in the art would thus be motivated to employ bauxite particles as the aluminum oxide particles, and phosphorus as the plant nutrient/mineral, in the Reus et al. seed coating, and to apply the seed coating as an encrusting, with the reasonable expectation that the resulting coated seed will exhibit insecticidal properties, will exhibit improved seedling emergence, and the more ready and efficient use of phosphorus to facilitate seedling growth, while minimizing environmental contamination.
In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious 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 was 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.
Response to Arguments
Applicant's arguments filed June 25, 2026 have been fully considered but they are not persuasive.
i) Applicant contends that “the Patent Office has not accurately restated the disclosures of Peddrick”; that “Peddrick only discloses that bauxite treated with a…fluorine radical…to form a new material…consisting of the original unaltered mineral plus aluminum fluoride” which “is the only form of bauxite actually disclosed by Peddrick to have insecticidal properties”; that “Reus warns that the application of prior art powders to seeds is accompanied by severe and undesirable dusting during processing”; that “any process or material according to Peddrick that produces a free-flowing powder…to provide an insecticidal effect would therefore render the seed coating of Reus unsuitable for its intended purpose”; that bauxite plus aluminum fluoride “is disclosed by Peddick to be highly toxic” and “what might have been considered in 1938 to be a highly toxic material is hardly even imaginable at the time of Reus as being an appropriate material for inclusion into a seed coating”; that thus “the Patent Office’s proposed modification of the seed coatings of Reus with the…modified bauxite of Peddrick is improper”.
The Examiner, however, would like to point out the following:
1. Reus discloses a coated seed in which the coating contains inorganic particles, wherein the inorganic particles can be e.g. aluminum oxide particles, wherein the aluminum oxide particles have a size of e.g. about 30-100 microns, and wherein the coating can advantageously provide insecticidal benefits. Hence, Reus wants fine powder size inorganic particles with insecticidal properties. Therefore, in stark contrast to Applicant’s assertion, fine bauxite (i.e. a type of aluminum oxide) particles with insecticidal properties is precisely what is suitable for Reus.
2. One of ordinary skill in the art at the time the present application was filed would be familiar with coated seeds in which the coating contains insecticides and other toxic agents, e.g. herbicides. Indeed, Reus wants their seed coating to have insecticidal properties. There is no conflict between Reus’s intended purpose and the insecticidal bauxite particles of Peddrick.
3. Applicant has not provided any hard evidence of any kind whatsoever to establish that the fine bauxite particles of Peddrick will somehow render Reus unsatisfactory for its intended purpose. Reus wants fine aluminum oxide particles. Hence, fine aluminum oxide particles, such as the fine bauxite particles of Peddrick, will work just fine as part of the Reus seed coating.
For the foregoing reasons, the 35 USC 103 rejection is hereby maintained.
Conclusion
No claims are allowed.
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.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID BROWE whose telephone number is (571)270-1320. The examiner can normally be reached Monday - Friday, 9:30 AM to 6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID BROWE/Primary Examiner, Art Unit 1617
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