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 .
Election/Restrictions
Applicant’s election of Group I (claims 1-12 and new claim 16) in the reply filed on 8/20/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 13-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II invention, there being no allowable generic or linking claim.
Status of the Claims
Claims 1-16 are currently pending.
Claims 13-15 are withdrawn from consideration.
Claims 1-12 and 16 are under consideration.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. The instant application is a 371 of PCT/EP2022/083383 11/27/2022 which claims priority to BE 2021/5951 (filed: 12/07/2021). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/2/24 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Oath/Declaration
The submission of inventor oaths on 5/2/24 is acknowledged.
Drawings (Objections)
The drawings are objected to because.
The Figures should use the abbreviation Fig.
Figure 2 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). and
Figure 2, having two parts, should utilize the correct alphanumeric designation. Note the “Brief” and “Detailed” Description should be revised to correspond to any drawing corrections. See 37 CFR 1.84 and MPEP 1606 for guidance
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification: Objection(s)
The disclosure is objected to because of the following informalities:
a. In the specification there are several instances where an amount including a decimal is incorrectly indicated with a comma (,) when a period is more appropriate. For example,
Page 3, lines 3 to 6: please address the comma typos: e.g. “0,1” …. “1,25”; “3,75” and “2,5”; and
page 11, lines 5-10 containing numerous instances of a comma when a period is needed for designating amounts
b. On page 4, lines 3-5, please indicate the units (in the first instance) that correspond to “Pa.s”.
c. On page 4, line 27: “Short” should be changed to “Brief” regarding the “Description of the Drawings” consistent with PTO practice.
d. On page 6, “dimethyldiclorosilane” is misspelled
e. The use of the terms , “Agripure TM “ and “Aerosil TM”, which area trade names or marks used in commerce, has been noted in this application (see e.g. pages 5 and 11).. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
. Appropriate correction is required.
Claim Objections
Claims 3 and 10 are objected to because of the following informalities:
A In claim 3, in the phrase “the bio-based was coating” ; the term “was” is a typo. Consider changing to “wax”.
B In claim 10, line 1, the open parentheses symbol before “of claim 1” appears to be a typo. Consider deleting the open parentheses symbol.
. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-6 and 8-10 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.
a . In claim 1, the phrase “wherein the nanoparticles do not extend beyond the bio-based wax coating” is indefinite because the specification page 7 provides conflicting interpretations. First, the specification defines this term as meaning “essentially smooth”; which is a relative term regarding the degree and evaluation of what degree of smoothness is within the scope of the claim. Then in a “another embodiment, the specification states that ” this phrase is said to encompass “a small fraction of the nanoparticles may still protrude. The term “small” is a relative term which without a means for evaluation is indefinite. Further the two definitions appear to be inconsistent.
b. In claim 2, the term “primary particle size” as defined in the specification on page 6 is confusing since it refers to a formula in which “Dp” is referred to as the “primary particle diameter”. The ambiguity is whether “particle size” is equivalent to “particle diameter” ; or whether “size” is more generic, wherein “diameter” is a species. Clarification is requested.
c. In claims 2 and 6, the metes and bounds of the phrase “(a), (b), and (c )” is unclear as to whether one, more than one, or all of the overlapping size limitations must be met; and the specification does not rectify this ambiguity. Consider amending to recite “selected from the group consisting of” if alternatives are intended or recite the intended single range directly.
d. In claims 3 and 4, the metes and bounds of the phrase “(a) and (b )” is unclear as to whether one, more than one, or all of the overlapping size limitations must be met; and the specification does not rectify this ambiguity.. Consider amending to recite “selected from the group c onsisting of” if alternatives are intended, or recite the intended single range directly.e. In claim 3, “m%” is not defined and the metes and bounds of this terminology is not clarified by the specification. May consider amending to “mass %” or “weight %” if supported by the specification.
e. In claim 4, “m%” is not defined and the metes and bounds of this terminology is not clarified by the specification. May consider amending to “mass %” or “weight %” if supported by the specification.
f. Claim 5 (dependent on claim 1) recites the limitation "The particles". Claim 1 has two types of particles e.g. anti-caking and nanoparticles. There is ambiguous antecedent basis for this limitation in the claim. Please consider amending to more clearly delineate the antecedent basis.
g. In claim 6, undefined unit “kg/t: amounts are unclear as is the relationship of these units to other compositional components. May consider amending to (if supported) in the following manner: , “in an amount of 0.1 to 10 kilograms of bio-based wax per metric ton of inorganic fertilizer core,”
h. In claim 8, the metes and bounds of the phrase “(a), (b), (c ), (d), ( e) and (f) ” is unclear as to whether one, more than one, or all of the overlapping size limitations must be met; and the specification does not rectify this ambiguity.
i. In claim 9, the term “stabilize the anti-caking efficiency” is a functional term of degree that may lack objective boundaries unless the specification clearly defines the test method, baseline, and acceptable performance variation. Please consider amending, to either, identify a lubricant (s) or recite an objective anti-caking test, test conditions, and stability criterion.
j. In claim 10, the term “the inorganic buffer” lacks clear antecedent basis in claim 1.
Claim Interpretation
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. There is a presumption of “plain meaning” which is rebuttable if applicant provides a “special definition”. To successfully redefine a term, the applicant must clearly set forth an uncommon or special definition inside the specification (the written description) with reasonable clarity, deliberateness, and precision. See MPEP 2111; 2111.01.
With respect to claim “preambles”, a statement of purpose or use in the preamble does not restrict claim scope or add patentable weight if the claim body already describes a complete, self-contained structure or process. To satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). See MPEP 2111.02.
Instant Claim 1 (with emphasis) is as follows:
Anti-caking fertilizer particles comprising
an inorganic fertilizer core and
a bio-based wax coating,
wherein the bio-based wax coating comprises nanoparticles; and
wherein the nanoparticles do not extent beyond the bio-based wax coating.
Claim Interpretation in light of the specification. -Specification definitions: p. 7 et seq/
“Nanoparticles not extending beyond the surface of the bio-based coating”
In another embodiment, the nanoparticles of the invention do not extend beyond the surface of the bio-based wax coating. This means that the nanoparticles are essentially immersed or embedded in the bio-based wax coating such that the surface of the anti- caking particles is essentially smooth.
In another embodiment, a small fraction of the nanoparticles may still protrude through the surface. An example of protruding nanoparticles as roughening agents is shown in comparative Figure 2.
However, the protruding nanoparticles of the invention are less than 30 w% of the total dry weight of the nanoparticles (104) and even more preferably less than 10 w% of the total dry weight of the nanoparticles (104). In another embodiment less 5 w%, or even less than 1 w% of the nanoparticles are protruding through the surface as shown for the protruding roughening agents in comparative Figure 2.
“Protruding” means that the shape of the nanoparticles is discernible on the surface of the anti-caking fertilizer particles (100) as shown for the protruding roughening agents in comparative Figure 2. The number of protruding nanoparticles and their corresponding weight can be estimated for example through electron-microscopy. Typically, at least 10 anti-caking particles are assessed to arrive at an average protrusion value.
“Embedded” means that the nanoparticle is fully covered by the bio-based wax coating to allow for a smooth surface of the bio-based wax coating. Consequently, embedded nanoparticles are not discernible as surface protrusions such as shown for the protruding roughening agents in comparative Figure 2.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 5, 7, 8, 12 and 16 are rejected under 35 U.S.C. 102(a1),(a2) as being anticipated by
WO 2009/143654A1 (PCT search report of record: Google English translation).
WO 2009/143654A1 discloses a fertilizer (e.g. inorganic N containing such as urea/potassium sulfate) coated with a wax (beeswax: bio-based: 100gms) film emulsion comprising nanoparticles (e.g. latex: 70-300nm). See WO 2009 document e.g. Abstract; claims 1, 2, 5 and 9. See also, Example 2: “fertilizer coating formula and process”.
In the examples, the melted wax is mixed with the nano-particles (immersed) (instant claims 7) and sprayed onto the “inorganic fertilizer core i.e. “melt spraying” anticipating claim 5.
In example 4, beeswax (biobased: 100 gms MP about 63 °C: anticipates instant claim 8 ) and latex nanoparticles (154nm) are sprayed onto the “inorganic fertilizer core” (5 kg: potassium sulfate particle : 3-5 mm: anticipates instant claims 12 and 16) which result (with the resin component) of have “anti-wear” properties. In example 4, the size of the nanoparticle (154nm) as compared to the size of the inorganic fertilizer core (3-5 mm potassium sulfate results in a ration of 1:20,000 to 1:33,333 which anticipates claim 2 (smaller than 1:100 or 1:500 or 1:1000).
Regarding instant claim 1 preamble “anti-caking” fertilizer particle; and the “wherein” limitation regarding the nanoparticles not extending beyond the based wax coating, it is noted that the reference composition contains componentS within the scope of the instant that are mixed and melt sprayed onto a feritilizer core composition in the same manner as disclosed in applicant’s specification and thus would be expected to possess the same property (anti-caking) and the same structure (e.g. limited nanoparticle extension from the wax layer. It is noted that the prior art product produced by the same method as disclosed in the specification appears to meet the instant claim 1 limitations and the patent office lacks the facilities for making prior art comparisons.
Additionally, Figure 1 of the reference supports a “wax film” that is “essentially smooth” with no noted protrusions or nanoparticles extending outside the wax film layer:
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Thus, claim 1 is anticipated. See MPEP 2113.
Claim(s) 1-12 and 16 are rejected under 35 U.S.C. 102(a1),(a2) as being anticipated by McLaughlin et al. US2020/231516A1 (Pub: 7/23/20).
McLaughlin teaches a fertilizer composition including a base fertilizer granule with a hydrophobic or super-hydrophobic coating that reduces fertilizer caking (i.e. an “anti-caking” composition) and dust formation. See e.g. Abstract.
McLaughlin teaches that the anti-caking composition comprises :
a base fertilizer granule; and
a moisture control coating applied to the base fertilizer granule, the coating including a hydrophobic material component and a roughening component. See claim 1.
The “roughening component” corresponds to the instantly claimed “nanoparticle”.
Figures 1 and 2 are illustrative of the base fertilizer granule with a hydrophobic coating comprising one or two additives (roughening components):
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100: a hydrophobic coated fertilizer granule.
102: core fertilizer portion 104: “roughening component” (micro/nanoparticle) of hydrophobic coating that can comprise silicates
The “hydrophobic material is preferably bio-based waxes . See e.g. claims 8, 14 and 24.
NOTE: in both of the above Fig. 1 and 2; the nanoparticle do NOT appear to extend beyond the bio-based wax coating which anticipates instant claim 1. See [0030]-[0035]
Regarding claim 2: The reference teaches [0035] that additives particles can be 50 nm to about 250 um and exemplify in examples 1-2 the use of nano-sized roughen particles in the hydrophobic (candellia wax) coat. The MOP particles of the examples (typically 1-4 mm in size) compared to the nanosized roughen particles clearly are less than the proportions of instant claim 2. Additionally, Fig. 1 and 2 indicate that these nanoparticles are at least one thousand fold smaller than the MOP particle that typically measure 1-4mm across.
Regarding claims 3 and 4 (e.g. nanoparticle amounts >5-7% but less than 12%), the reference teaches that the amount of the “roughening component” (e.g. nanoparticle) can be present in an amount of from about 0.01 wt % to about 10 wt % based on a total weight of the granule or as much as about 0.1 wt % to about 1.0 wt % percent of the total weight of the granule. See reference claims 5-6,11, 21-22; See also examples.
Regarding claim 5 (“melt spraying”), the reference teaches that the hydrophobic (wax) coating can be a “molten” form that is spray coated thus anticipating “melt spraying”. See e.g. [0033].
Regarding claim 6 (wax amount applied to the fertilizer from .1 kg/ton-10 kg/ton). The reference teaches coating amounts of 2lbs/ton (stearate) and 3lbs/ton (hydrophobic coating) which correspond to 0.91kg/ton (stearate) and 1.36 kg/ton (hydrophobic coating) which are both w/n range of the instant claim 6 amounts.
Regarding claim 7 (particles immersed in biobased wax coating) , the reference teaches mixing or combining (i.e. “immersing”) the “roughening component” (micro/nano particle) and the “hydrophobic component” (e.g. bio-based wax) and subsequently coating the fertilizer granule.
Regarding claim 8 (wax melting point ranges): the reference teaches bio-based waxes (e.g. candelilla/beeswax/carnauba) within the scope of those waxes disclosed in the instant application to possess melting points within the scope of the broad ranges of instant claim 8. Additionally, the Ference teaches the use of plant waxes with melting points between point between 50° C. and about 105° C. (about 122° F. to about 221° F.) which are within the broad ranges of this claim.
See e.g. [0031]:
“[0031] According to embodiments, the low-surface energy hydrophobic material 106 can comprise candelilla wax, beeswax, carnauba wax, waxes recycled from food industries, wax emulsions, or combinations thereof. In other embodiments, the hydrophobic material 106 can be any plant or chemical based wax with a melting point between 50° C. and about 105° C. (about 122° F. to about 221° F.). …”
Regarding claim 9 (“lubricant” added to fertilizer particles), the reference at [0030; claims 4, 14, 20 and 30] teaches that “stearates including, for example but not limited to sodium stearate and zinc stearate, fatty acids such as stearic acid micro/nanoparticle roughening components can be incorporated into the “hydrophobic” (biobased) wax coating. This reference teaching of various stearates would be considered “lubricants”. See also [0045] exemplifying sodium stearate.
Regarding claim 10, the reference teaches “a primer layer” between the hydrophobic layer and the “inorganic (buffer) core”. In this respect, the reference teaches a (micro/nano particle) roughening component layer (that serves as the primer layer) that is added before the subsequent addition of the mixed outer hydrophobic layer and (micro/nano) roughening layer coat. See e.g. method claim 17
Regarding claim 11 (use of oil-seed- rape-based wax:. canola wax), the reference discloses [0032 and claims (claims 9 and 25) the use of “canola oil” as the hydrophobic coating material from a small listing which anticipates claim 11.
Regarding claims 12 and 16, the reference teaches that the inorganic fertilizer can contain N, P, or K separately or in combination. See [0011] which includes potash and “ phosphorus-based, nitrogen-based, and/or potassium-based fertilizers (collectively, “NPK fertilizers”). See also examples that teach MOP and claim 12.
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) 1-12 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over McLaughlin et al. US2020/231516A1 as applied to claim 1-12 and 16 above, and further in view of Latorre et al. US 2020181037A (9/19).
The 102 rejection over the McLaughlin reference supra is herein incorporated by reference in its entirety.
McLaughlin teaches a fertilizer composition including a base fertilizer granule with a hydrophobic or super-hydrophobic coating that reduces fertilizer caking (i.e. an “anti-caking” composition) comprising :
an inorganic base fertilizer granule; and
a moisture control coating applied to the base fertilizer granule, the coating including a hydrophobic material component and a roughening component. See claim 1. The “roughening component” corresponds to the instantly claimed “nanoparticle”.
McLaughlin teaches that the inorganic fertilizer can contain N, P, or K separately or in combination. See [0011] which includes potash and “ phosphorus-based, nitrogen-based, and/or potassium-based fertilizers (collectively, “NPK fertilizers”).
McLaughlin further teaches “hydrophobic material is preferably bio-based waxes . See e.g. (claims 8, 14 and 24), Including the use of oil-seed- rape-based wax:. canola wax). See e.g. [0032 and claims (claims 9 and 25.
McLaughlin still further teaches incorporating “roughening additive(s”) comprising silicates and optionally stearate within the hydrophobic (e.g. wax) layer. See e.g. [0030]; claims 4 and 20.
Although McLauglin fails to specifically exemplify an embodiment in which a NPS fertilizer particle is coated with a bio-based wax comprising silica/silicate nanoparticles, such a combination of components would have been obvious in view of the McLaughlin teaching by selecting from a Markush teaching of hydrophobic coatings and “roughening additives, that include bio-waxes and silica/silcate nanoparticles within the scope of the instant invention. Further, although McLauglin teaches embedded nanoparticles in the hydrophobic (e.g. bio-based wax) outer layer that don’t protrude, it does not appear to teach an ”essentially smooth” outer surface.
In addition to the McLauglin reference teaching, the prior art of record, provides a further motivation to combine bio-waxes and silica/silcate coating to achieve anti-caking fertilizer particles as exemplified by the Latorre et al. US 2020181037A.
Latorre et al. teaches making “anti-caking” fertilizers comprising “coarse” and/or “fine minerals” that are “coated” with a hydrophobic coating composition. Additionally, Latorre et al. teaches various processes for applying the “anti-caking” agent that comprises “coating” onto the “coarse” and and/or “fine minerals” fertilizer particles, including a “dry process”. See e.g. [00152].
NPK fertilizers and urea are preferred [166] –[170] minerals]to which the “anti-caking agent” is applied.
In this regard, Latorre et al. discloses and claims (claims 1, 3, 13 and 14) a fertilizer comprising urea coated with 0.1-2.0 wt.% of an anticaking agent comprising amorphous silica particles of sizes between 500 nm and 20 um, with an average particle size of 2-50 um and a silane.
Latorre further teaches ([0120]-[0124] that the coating can also comprise a wax, such as beeswax, carnauba wax or jojoba wax (all bio-based waxes).
Accordingly, the Latorre reference teaching would render obvious a silane intermediate coating and an outer bio-based wax layer; or alternatively the placement of a hydrophobic bio-based wax layer directly in contact with the inner core layer comprising “coarse” and “fine” “micro” and “nano” sized minerals (e.g. silica). Thus, since there is no clear separation between the core and the coating layer, the coating layer would “comprise” micro/nano particles within the scope of the instant invention.
Additionally, the Latorre teaching of completely embedding micro/nano particles within the coating layer to achieve a “smooth” and effective anti-caking composition is also taught by Latorre. In this respect the below Latorre anti-caking fertilizer particles result in what appears to be a “smooth” outer layer: See e.g.
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It is noted that both the McLauglin and Latorre references teach overlapping amounts of fertilizer particles, particle sizes, coating component amounts and sizes. However, in accordance with MPEP 2144.04 and the caselaw cited therein,
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);
Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)
"[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005).
Additionally, it is noted that:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature 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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to fully incorporate (embed) silica/silane nanoparticles in the bio-base wax to coat nitrogen/phosphorus/potassium (NPK) based fertilizer particles to obtain an anti-caking fertilizer composition .
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 1-12 and 16 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1 and 3-16 of copending Application No. 18706855: in view of McLaughlin et al. US2020/231516A1 and Latorre et al. US 2020181037A (9/19).
Co-pending application ‘855 teaches an anti-caking fertilizer particles comprising an inorganic fertilizer core and a nanoparticle coating. See claim 1.
The ‘855 claims differ by failing to incorporate the nanoparticles into a bio-based wax hydrophobic coating.
However, both McLaughlin and Latorre teach the benefits of incorporating nanoparticles into a bio-based wax coating for achieving anti-caking fertilizer particles. See McLaughlin and Latorre teaching discussed supra and incorporated by reference in its entirety.
Thus, it would have prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant application to modify the ‘855 patent application claim teaching of a nanoparticle coating, to further include bio-based waxes for the advantages as taught by the McLaughlin and Latorre references and arrive at the instantly claimed invention with a reasonable expectation of success.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENNETT CELSA whose telephone number is (571)272-0807. The examiner can normally be reached Monday-Friday 7-4.
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/BENNETT M CELSA/Primary Examiner, Art Unit 1600
