Detailed Office Action
The communication dated 6/7/2024 has been entered and fully considered.
Claims 1-10 are pending with claims 7-10 withdrawn from consideration.
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/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-6, drawn to a method of making mulch with old newspapers, classified in D21C5/02
II. Claims 7-10, drawn to a paper product for mulch, classified in D21H11/14
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the mulch product could be made by making the sheet and then soaking it in inorganic matter instead of incorporating the organic matter into the pulp prior to papermaking.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the inventions have acquired a separate status in the art in view of their different classification
the inventions have acquired a separate status in the art due to their recognized divergent subject matter
the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation (phone message) with Attorney Dan Sullivan on 12/8/2025 a provisional election was made with traverse to prosecute the invention of group I, claims 1-6. Affirmation of this election must be made by applicant in replying to this Office action. Claims 7-10 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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 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.
The term “relatively warm or hot water bath” in claim 1is a relative term which renders the claim indefinite. The term “relatively warm or hot” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of examination the Examiner interprets the temperature as about 110 deg F to about 130 degrees F.
Claims 2-6 depend from claim 1 and are similarly rejected.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over JPH10248409A ITSUO, hereinafter ITSUO, in view of GB1564783A, INTEROX, hereinafter INTEROX.
As for claims 1-3, ITSUO discloses making a mulching sheet (A method for making biodegradable mulch material, comprising the steps of: [0001]).
ITSUO discloses taking old newspapers [0006] and turning them into a pulp [0006]. The pulp is mechanically treated in a pulper (soaking device) and then further in a refiner beaten the mechanical action of which the Examiner interprets as “pounding” (b) allowing the newspaper to soak in the water bath for a sufficient period time to soften the paper; c) pounding the newspaper so that it breaks down and forms a paper pulp[0018]).
ITSUO discloses that this pulp suspensions mixed with more water and is mixed with ground tobacco leaf (d) adding organic matter to the paper pulp; and [0015, 0018]).
ITSUO discloses that the paper pulp is then sent to a paper machine which filters the paper through a mesh (screen) and dried (e) pouring the paper pulp onto a screen and spreading the pulp evenly so that it covers the screen [0018]).
ITSUO does not disclose the temperature of the pulper or the time soaking in the pulper.
INTEROX discloses that waste paper including newsprint can be pulped [pg. 1 lines 11-15] with hydrogen peroxide [pg. 1 lines 65-70] and at a temperature of 15 to 120 degrees C (59-266 degrees F) [col. 2 lines 77-80] which encompasses the instant claimed range. INTEROX additionally discloses the specific point of 50 degrees C (122 degrees F) which falls within the claimed range [Table 1 example 6]. INTEROX discloses greater than 1 minute pulping which overlaps the instant claimed range [pg. 1 lines 83-85].
A prima facie case of obviousness is established when a claimed narrow range is within a broad prior art range or partially overlaps or touches the broad range.
Harris, 409 F.3d at 1341; Peterson, 315 F.3d at 1329-30
At the time of the invention it would be obvious to the person of ordinary skill in the art to apply the newspaper pulping technique of INTEROX to the newspaper pulping of ITSUO. The person of ordinary skill in the art would be motivated to do so to produce a paper pulp with a low bacterial load [pg. 2 lines 5-10 and Table 1]. The person of ordinary skill in the art would expect success as INTEROX discloses the techniques to produce pulp from old newspaper while producing a pulp with lower bacterial count which would improve mulching (high bacteria would be negative for mulching of edible fruits and vegetables).
As for claims 4 and 6, ITSUO discloses adding ground tobacco stems and leaves [0018] which are both organic particulates and vegetable matter.
As for claim 5, ITSUO discloses coffee grounds that have been turned into carbon powder. In as much as the applicant disagrees that “coffee grounds” which are tuned into charcoal powder/carbon powder does not read on the claim the applicant should state so on the record.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over ITSUO and ITEROX ,as applied to claim 1 above, and further in view of A Common-Sense Guide to Using Coffee Grounds in the Garden by HENDRY, hereinafter HENDRY.
As for claim 5, the Examiner has argued above that carbonized coffee grounds read on the coffee grounds of claim 5. In the alternative should the applicant state they do not read on the claim language then the Examiner withdraws the above rejection to claim 5. In the alternative, HENDRY discloses that coffee grounds can be added to mulch [pg. 1]. At the time of the invention it would be obvious to the person of ordinary skill in the art to substitute or combine the plant matter of ITSUO with the coffee grounds of HENDRY. The person of ordinary skill in the art would expect success as ITSUO discloses that plant matter can be used and coffee grounds are plant matter while HENDRY states that coffee grounds can be used for mulch and act as fertilizer when mixed with other carbon rich materials including newspaper [pg. 1 and pg. 2].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J CALANDRA whose telephone number is (571)270-5124. The examiner can normally be reached Monday-Friday 7:45 AM -4:15 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at (571)270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/Primary Examiner, Art Unit 1748