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 .
Status of Application
Claims 1-13 are pending and presented for examination.
Response to Arguments
Applicant's arguments filed 6/11/2026, with respect to claims 11 and 12 have been fully considered but they are not persuasive. Applicant argues that the products of claims 11 and 12 are different than those of Winter. Applicant argues that Winter does not disclose the reaction and that Winter forms a carbon-carbon bond between the fatty component and the anhydride moiety and yields a cyclohexene adduct and that no ester bond is formed. However, the Examiner disagrees and maintains that the manner in which compound C is generated is not relevant to the claimed product. In this case, the claimed product must have a compound (C) which has at least one ester bond (regardless of how the ester is generated). Winter’s compound as shown in Applicant’s arguments includes an ester bond and that ester bond could have been derived from a reaction as claimed even though Winter derives it from different starting materials. Therefore, the Examiner maintains that Winter teaches the product as claimed.
Applicant’s arguments regarding claims 1-8, 10 and 13 are not persuasive. Applicant argues that the prior art fails to teach or suggest the claimed process. In particular, Applicant argues that one would not combine the references as claimed because the two reaction pathways would not yield the same product. However, the Examiner disagrees and notes the Winter’s product as illustrated in Applicant’s arguments could be prepared using the reactivity as disclosed by Jain using the precursors
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thereby arriving at an identical product. Therefore, the Examiner maintains one would have looked towards Jain’s synthetic scheme for modifying Winter’s scheme as one could substitute one synthetic scheme for another to arrive at the same product with a reasonable expectation of success. Therefore, the rejections of record are maintained.
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.
1. Claim(s) 11 and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Winter et al. (U.S. PGPUB No. 2004/0197363).
I. Regarding claim 11, Winter teaches a coated fertilizer granule (claims 1 and 6) and a method for preparing the coated granule (claim 9) comprising: providing the granular material (claim 9); providing a compound (C) having at least one ester bond which is obtainable from the reaction of a hydroxyl group of a compound (A) and an anhydride of a compound (B) (claims 9 and 14, note that the compound (C) of Winter is obtained by a different synthetic scheme; however, as noted above, this compound (C) will be identical to the claimed compound (C) prepared by reacting a hydroxyl group with a carboxyl or anhydride group as claimed); providing a compound (D) including an epoxy group (claim 9); and reacting the compound (C) and (D) to form a compound having an ester bond in the presence of the granule to produce the coated granular material (claim 9 and 0066). Winter teaches the compound (A) can be a triglyceride (0029) or a fatty acid ester of a polyhydric alcohol and a fatty acid (0033); the compound B can be a compound having the formula (b-1) as in claim 4 (claim 17) or maleic acid (claim 17) or maleic anhydride (claim 17); and the compound D can be an epoxidized fatty acid amide (0055) or a fatty acid ester of an alcohol and an epoxidized fatty acid (0054). Winter teaches all the critical limitations of claim 11; therefore, Winter anticipates the claims.
II. Regarding claim 12, Winter teaches a kit comprising: a compound (C) (0074-0075 and 0082); and a compound (D) including an epoxy group (0074-0075 and 0082). Winter teaches all the critical limitations of claim 12; therefore, Winter anticipates the claim.
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.
2. Claim(s) 1-8, 10 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Winter in view Jain et al. (“Hydroxy fatty acid based polyanhydride as drug delivery system: synthesis, characterization, in vitro degradation, drug release, and biocompatibility”).
Regarding claims 1-8, 10 and 13, Winter teaches a coated fertilizer granule (claims 1 and 6) and a method for preparing the coated granule (claim 9) comprising: providing the granular material (claim 9); providing a compound (C) having at least one ester bond (an acid-modified fatty acid component) which is obtainable from the reaction of a hydroxyl group of a compound (A) and an anhydride of a compound (B) (claims 9 and 14, note that the compound (C) of Winter is obtained by a different synthetic scheme; however, as noted above, this compound (C) will be identical to the claimed compound (C) prepared by reacting a hydroxyl group with a carboxyl or anhydride group as claimed); providing a compound (D) including an epoxy group (claim 9); and reacting the compound (C) and (D) to form a compound having an ester bond in the presence of the granule to produce the coated granular material (claim 9 and 0066). Winter teaches the compound (A) can be a triglyceride (0029) or a fatty acid ester of a polyhydric alcohol and a fatty acid (0033); the compound B can be a compound having the formula (b-1) as in claim 4 (claim 17) or maleic acid (claim 17) or maleic anhydride (claim 17); and the compound D can be an epoxidized fatty acid amide (0055) or a fatty acid ester of an alcohol and an epoxidized fatty acid (0054). Winter fails to teach the compound (C) obtained by reacting a hydroxyl group or epoxy group of a compound (A) with a carboxyl group or anhydride group of a compound (B).
However, Jain teaches that acid-modified fatty acid components can be obtained by the reaction of a hydroxy functional fatty acid with maleic anhydride (see Scheme 1, reaction of ricinoleic acid with maleic anhydride to yield an ester functionalized, acid-modified fatty acid component). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Winter’s process by obtaining the compound (C) from the reaction of a hydroxy group on Winter’s triglyceride with Winter’s maleic anhydride or Winter’s compound having the formula (b-1). One would have been motivated to make this modification as one could have substituted one synthetic scheme for a product for another synthetic scheme for the same product with a reasonable expectation of success (both reaction sequences would be expected to yield an identical product), and the predictable result of obtaining compound (C) for further reaction with compound (D).
3. Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Winter in view of Jain as applied to claim 1 above, and further in view of Wan et al. (U.S. PGPUB No. 2011/0126602).
Regarding claim 9, Winter in view of Jain teach all the limitations of claim 1, including the compound (A) being castor oil (0031) and compound (B) can be an anhydride (see above), but fails to teach the anhydride being trimellitic anhydride.
However, Wan teaches a process for coating fertilizer granules (abstract) comprising providing a coating agent (0006) by reacting (0018) a plant oil (0019), such as castor oil (0019), with an anhydride (0018), such as trimellitic anhydride (0019). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Winter in view of Jain’s process by substituting trimellitic anhydride for Winter in view of Jain’s anhydride. One would have been motivated to make this modification as one could have made the substitution with a reasonable expectation of success (particularly given that Wan teaches the same type of reactivity, utilizing castor oil, and in the preparation of a similar coated fertilizer granule), and the predictable result of providing a reactant for preparing the coated fertilizer granule.
Conclusion
Claims 1-13 are pending.
Claims 1-13 are rejected.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
August 8, 2026Primary Examiner, Art Unit 1717
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