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 papers filed March 2, 2026. Applicant’s reply to the restriction/election requirement of January 9, 2026 has been entered. Claims 1, 2, 10, and 18-20 have been amended; claims 3, 8, and 15-17 have been canceled; and claims 24 and 25 have been newly added. Claims 1, 2, 4-7, 9-14, and 18-25 are pending.
Priority
Applicant’s claim for the benefit of prior-filed WIPO International Application No. PCT/US2022/044369, filed September 22, 2022 under 35 U.S.C. 365(c), which claims the benefit of prior-filed U.S. Provisional Patent Application No. 63/247,574, filed September 23, 2021 under 35 U.S.C. 119(e), is acknowledged.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1, 2, 4-7, 9-13, 16-19, and 23, is acknowledged. Applicant’s elections of i) “bauxite” as the species of aluminum oxide particle, ii) “encrusting” as the species of nature of the aluminum oxide coating, iii) “aluminum oxide layer directly contacts the seed” as the species of disposition of the aluminum oxide layer relative to the seed, iv) “aluminum oxide particles with an active agent” as the species of composition of the aluminum oxide layer, v) “binder” as the species of excipient present in the aluminum oxide layer, vi) “species of phosphorus” as the species of active agent present in the aluminum oxide layer, vii) “drum coater” as the species of device into which the aluminum oxide powder and the seed are introduced, viii) “coated seed is made prior to being transported to a farm” as the species of position at which the process of making the coated seed takes place relative to a farm are all also acknowledged. The Examiner has determined that claims 1, 2, 4, 9-11, 13, 18, and 23-25 read on the elected subject matter.
The traversal is on the following grounds:
1. The claims, “as currently amended, share the special technical feature…that the aluminum oxide particles constitute 7.4% to 98% of the total coated seed weight”; that “the very highest percentage of alumina in the coated seeds that could be derived from the disclosure of Taylor would be less than 4.5% by weight”; that “there is no motivation a person having ordinary skill in the art could have to modify the coatings of Taylor with such a dramatic increase in alumina”; and thus “Taylor does not anticipate or obviate the special technical features of the present claims”; and
2. “The required species elections are far in excess of any need to streamline prosecution and avoid unwarranted examination or search burdens”.
These grounds for traversal are not found persuasive because of the following:
1. The restriction requirement is based on the special technical feature common to Groups I-III at the time the restriction requirement was issued, which is found to lack unity a posteriori, not on the special technical feature newly created by amending the claims after the restriction requirement is issued, and which the actual restriction letter did not even address, and thus is not the issue before us in determining whether the actual restriction requirement is proper. Indeed, it is further noted that even for the amended claims, independent claim 23 does not require “that the aluminum oxide particles constitute 7.4% to 98% of the total coated seed weight”.
2. Applicant has provided no substantive evidence or even logical reasoning in support of their assertion regarding the election of species requirement. As noted in the restriction letter, there is absolutely an examination and search burden for the identified species due to their mutually exclusive characteristics.
3. It is noted that Applicant has already taken the initiative to withdraw (or at least indicate as withdrawn) claims 5-7, 12, 14, and 19-22.
Accordingly, claims 5-7, 12, 14, and 19-22 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected subject matter, there being no allowable generic or linking claim. The restriction/election requirement is deemed proper, maintained, and is therefore made FINAL.
Applicant timely traversed the restriction (election) requirement in the reply filed on March 2, 2026. Claims 1, 2, 4, 9-11, 13, 18, and 23-25 are under examination.
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.
Claims 1, 2, 4, 9-11, 18, and 23-25 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.
Claims 1 and 23 are directed to “an agricultural seed coating”, but then describe “aluminum oxide particles disposed on a seed”, and claim 1 further makes a reference to the “total coated seed weight”. One of ordinary skill in the art cannot definitively ascertain whether Applicant is claiming the seed coating composition only, or rather is claiming the coated seed which includes the coating composition and the seed thus coated with it. One of ordinary skill in the art thus cannot definitively ascertain the metes and bounds of the claimed subject matter.
Claim 9 stipulates in a wherein clause that the aluminum oxide layer contains an “active ingredient”. The present claims are directed to a composition, not to a method of treatment. Since the disease, disorder or condition that is being treated is an unknown variable “x”, the “active ingredient” for that unknown disease, disorder or condition is also an unknown variable “x”. One of ordinary skill in the art cannot definitively ascertain the metes and bounds of “active ingredient”. For example, is cadmium an active ingredient? How about bismuth? How about triglyceride?
Claim 10 recites at least one broader limitation (e.g. a plant protectant) together with at least one narrower limitation (e.g. a pesticide) that falls within the scope of the broader limitation in the alternative in the same claim, which is indefinite. Applicant is advised to consider all such pairs in the claim, e.g. water is a plant nutrient, etc.
Claims 2, 4, 9-11, 13, 18, 24, and 25 are (also) indefinite for depending from an indefinite claim.
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, 9-11, 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.
Conclusion
No claims are allowed.
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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/DAVID BROWE/Primary Examiner, Art Unit 1617