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 .
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.
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.
Claims 1-10 and 12-15 are rejected under 35 U.S.C. 103 as being as being obvious over Koripelly et al. (WO 2020/121164 A1) in view of Babu et al. (US 2019/0225556 A1).
Regarding claim 1, Koripelly discloses a urea granule fertilizer core covered with an organic chelated zinc coating and an aqueous liquid carrier (abstract; claim 1; claim 19) [0045]. The coated fertilizer can contain one or more than one coating and can further include micronutrients other than Zn, such as copper [0069] [0071].
Koripelly does not disclose the coating includes an inorganic Zn compound.
Babu teaches fertilizer coating compositions, such as for urea, with both a micronutrient source in chelated form and second source of the same target micronutrient, but provided in non-chelated form (abstract) [0114]-[0115]. ZnCl2 and ZnSO4 are disclosed as micronutrients in non-chelated form [0130]. Babu teaches that ZnCl2 and ZnSO4 provide the soil with zinc, which is a micronutrient for plant growth [Fig 6A] [0004] and that the concentration of zinc in the soil solution was maintained at higher levels by the chelated and non-chelated form combined than was the case with the disodium-Zn-EDTA (non-chelated alone) [0144] (Fig 6 A-B). Furthermore, Babu teaches that the addition of chloride or sulfate along with the disodium-Zn EDTA can enhance its stability and prolong the availability of zinc from this source combination during plant growth with the added advantage of maintaining and bringing in more calcium, iron, and manganese into the acidic soil solution than conventional sources [0144] (Fig 6 A-B).
Since Koripelly generally teaches a coating for urea with an organic chelated zinc, it would have been prima facie obvious to one of ordinary skill in the art to include an inorganic Zn compound, such as ZnCl2 or ZnSO4, within the teachings of Koripelly, because Babu teaches ZnCl2/ZnSO4 in combination with the organic chelated zinc, disodium-Zn-EDTA, in a coating composition for fertilizers such as urea. An ordinarily skilled artisan would be motivated to use a combination of a chelated and non-chelated form of zinc because Babu teaches that the concentration of zinc in the soil solution was maintained at higher levels by the chelated and non-chelated form combined than was the case with the disodium-Zn-EDTA alone. Furthermore, Babu teaches that the addition of chloride or sulfate along with the disodium-Zn EDTA can enhance its stability and prolong the availability of zinc from this source combination during plant growth with the added advantage of maintaining and bringing in more calcium, iron, and manganese into the acidic soil solution than conventional sources [0144] (Fig 6 A-B). Additionally, an ordinarily skilled artisan would be motivated to use ZnCl2 or ZnSO4 because Babu teaches that ZnCl2 and ZnSO4 provide the soil with zinc, which is a micronutrient for plant growth [Fig 6A] [0004].
Further regarding claim 1, the limitations of the method of production are interpreted as product-by-process limitations. Even though the product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, then the claim is unpatentable even though the prior product was made by a different process. In the instant case, the combined teachings of Koripelly and Babu, read on the claimed fertilizer granule. As such, the patentability of the instant claim does not depend on its method of production, and the Applicant' s limitation regarding the process of formation is not patentable, in view of Koripelly and Babu.
Claims 2-3 are rendered prima facie obvious because Koripelly discloses the coating composition can further include calcium lignosulfonate [0068]. Calcium lignosulfonate is disclosed as a binder which is present in a weight ratio to the organic chelated zinc of 0.5:1 to 6:1 [0013]. The organic chelated zinc is present in a weight ratio of 0.001 wt.% to 10 wt.% based on the total weight of the coated fertilizer [0010] [0068]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05 A. Additionally, the general condition of the amount of the calcium lignosulfonate has been taught by the prior art; as such, it would not have been inventive for the skilled artisan to have discovered the optimum amount via routine experimentation.
Claims 4-5 are rendered prima facie obvious because Koripelly discloses the coating can further include micronutrients other than Zn, such as copper [0069].
Claim 6 is rendered prima facie obvious because Koripelly discloses the fertilizer component comprises urea (claim 1) [0045].
Claims 7-8 are rendered prima facie obvious because Koripelly discloses the organic Zn complex is a chelated Zn complex, such as Zn-EDTA [abstract] [0011] [0067].
Claim 9 is rendered prima facie obvious because it would have been obvious to include ZnCl2 or ZnSO4, as taught by Babu, within the teachings of Koripelly, as previously discussed.
Claim 10 is rendered prima facie obvious because Koripelly discloses at least one coating layer and the coating can contain an additional coating layer between the fertilizer core surface and the organic chelated zinc coating [0071]. The organic chelated zinc coating includes the organic chelated zinc and can include an additional micronutrient, such as copper [0067]-[0069] and it would have been prima facie obvious to include the inorganic zinc compound, as previously discussed.
Claims 12-13 are rendered prima facie obvious because Koripelly discloses organic chelated zinc particles with a diameter of 10 to 350 microns [0011]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Regarding claim 14, Koripelly discloses that the organic chelated zinc is present in a weight ratio of 0.001 wt.% to 10 wt.% based on the total weight of the coated fertilizer [0010] [0068].
Koripelly does not disclose the inorganic Zn compound or the amount of the second micronutrient, such as copper.
Babu teaches that the range of the chelated complex (e.g., ZnEDTA) in the fertilizer composition (coating) is about 4-20 wt.% and the non-chelated source (e.g., ZnSO4) is 20-40 wt.% [0107] [0135]. Babu teaches that the fertilizer can be customized to have “mixing and matching” among micronutrient sources and discloses copper as an additional micronutrient [0108]. Additional micronutrients are present in an amount of about 20-40 wt.% [0107]. The fertilizer composition is coated onto the carrier (i.e., urea [0115]) so that the final coated fertilizer product includes the fertilizer composition at levels from 0.1-10% by weight [0116].
Where 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. See MPEP 2144.05(II)(A). In this case, the general conditions of the amount of the chelated Zn complex, non-chelated Zn source, and additional micronutrient (i.e., copper) have been taught by the prior art; as such, it would not have been inventive for the skilled artisan to have discovered the optimum amounts via routine experimentation to obtain the desired micronutrient level for plant growth as taught by Babu [0107] [0004].
Regarding claim 15, while Koripelly discloses Zn-EDTA [0011] [0067], Koripelly does not explicitly disclose (NH4)Zn-EDTA or (Na)2Zn-EDTA. Nevertheless, there is a prima facie case of obviousness of species when the prior art teaches genus. See MPEP 2144.08.
Additionally, Babu teaches Na2ZnEDTA as a micronutrient source in chelated form to be used in a fertilizer coating composition [abstract] [0144] [Fig 6A-B].
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. In the instant case, since Koripelly generally taught Zn-EDTA as an organic chelated zinc compound micronutrient for a fertilizer coating, it is prima facie obvious to select Na2ZnEDTA for incorporation into a fertilizer coating based on its recognized suitability for the intended use as a Zn micronutrient source in chelated form to be used in a fertilizer coating composition [abstract] [0144] [Fig 6A-B].
Claim 11 is rejected under 35 U.S.C. 103 as being as being obvious over Koripelly et al. (WO 2020/121164 A1) in view of Babu et al. (US 2019/0225556 A1) and further in view of Burnham et al. (US 2020/0148605 A1).
The 35 U.S.C. 103 rejection over Koripelly in view of Babu was previously discussed.
Additionally, Koripelly discloses that the coated fertilizer can contain multiple coatings, such as more than two coatings [0071].
The combined teachings of the prior art do not disclose that the components are located on separate coating layers.
Burnham discloses coated fertilizer granules with multiple layers for the delivery of micronutrients, such zinc (abstract) [0032] [0041] where the agents are in separate layers around the core granule [0038]-[0039]. Burnham teaches that the multi-layered coating with agents in separate layers is an inexpensive means of controlling the release of micronutrients/actives [0034]-[0041].
Since Koripelly generally teaches a multi-layer coating for fertilizer granules, it would have been prima facie obvious to one of ordinary skill in the art to include the components in separate layers because Burnham teaches a multi-layered fertilizer coating with agents in separate layers around the core granule. An ordinarily skilled artisan would be motivated to have the micronutrients in separate layers because Burnham teaches that the multi-layered coating with agents in separate layers is an inexpensive means of controlling the release of micronutrients/actives [0034]-[0041].
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,291,493 in view of Babu et al. (US 2019/0225556 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other. The claims recite all of the features instantly recited for the composition except for an inorganic Zn compound and an additional micronutrient.
Babu teaches fertilizer coating compositions, such as for urea, with both a micronutrient source in chelated form and second source of the same target micronutrient, but provided in non-chelated form (abstract) [0114]-[0115]. ZnCl and ZnSO4 are disclosed as micronutrients in non-chelated form [0130]. Babu teaches that ZnCl and ZnSO4 provide the soil with zinc, which is a micronutrient for plant growth [Fig 6A] [0004] and that the concentration of zinc in the soil solution was maintained at higher levels by the chelated and non-chelated form combined than was the case with the disodium-Zn-EDTA (non-chelated) alone. Furthermore, Babu teaches that the addition of chloride or sulfate along with the disodium-Zn EDTA can enhance its stability and prolong the availability of zinc from this source combination during plant growth with the added advantage of maintaining and bringing in more calcium, iron, and manganese into the acidic soil solution than conventional sources [0144] (Fig 6 A-B). Babu also teaches additional micronutrients for plant growth, such as copper [0004] [0108].
It would have been prima facie obvious to one of ordinary skill in the art to include an inorganic Zn compound and an additional micronutrient, such as copper, within the claims. The ordinarily skilled artisan would have been motivated to use a combination of a chelated and non-chelated form of zinc because Babu teaches that that the concentration of zinc in the soil solution was maintained at higher levels by the chelated and non-chelated form combined than was the case with the disodium-Zn-EDTA alone. Furthermore, Babu teaches that the addition of chloride or sulfate along with the disodium-Zn EDTA can enhance its stability and prolong the availability of zinc from this source combination during plant growth with the added advantage of maintaining and bringing in more calcium, iron, and manganese into the acidic soil solution than conventional sources [0144] (Fig 6 A-B). Additionally, an ordinarily skilled artisan would be motivated to use an inorganic Zn source and an additional micronutrient, such as copper, because Babu teaches them as micronutrients for plant growth [0004] [0108].
Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-21 of U.S. Patent Application No. 17/906,812 in view of Babu et al. (US 2019/0225556 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims recite all of the features instantly recited for the composition except for an additional micronutrient, such as copper.
Babu teaches fertilizer coating compositions, such as for urea [0115], with micronutrients, such as copper [0086]. Babu teaches that copper is a micronutrient for plant growth [0004] [0108].
It would have been prima facie obvious to one of ordinary skill in the art to include a micronutrient, such as copper, within the copending claims. The ordinarily skilled artisan would have been motivated to use an additional micronutrient, such as copper, because Babu teaches it as a micronutrient for plant growth [0004] [0108].
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/ASHLEE E WERTZ/Examiner , Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612