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 Claims
Receipt of Remarks/Amendments filed on 06/29/2026 is acknowledged. Claim 5 is amended and claims 1-2 and 6-10 remain withdrawn as being directed to a non-elected invention. Claims 3-5 are examined on the merits herein.
Priority
The instant application filed 08/28/2024, claims foreign priority to CN2024107762207, filed 06/17/2024.
Withdrawn Objections/Rejections
Claim 5 was rejected under 35 U.S.C. 112(b) as being indefinite. Applicant’s amendment to claim 5 has overcome the rejection and the rejection is withdrawn.
The following grounds of rejection are maintained:
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 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Nie, N. (CN 114041411 A, 02/15/2022, on record), hereinafter Nie, in view of Huang, Y., et al. (CN 110537478 B, 10/15/2021, on record), hereinafter Huang, and Wu, M., et al. (CN 116918674 A, 10/24/2023, on record), hereinafter Wu.
Nie discloses a soilless seedling method for garden greening plants (title).
Regarding claim 3: The soilless seedling method utilizes a prefabricating seedling matrix comprising 20-30 parts cotton fiber (abstract; contents of the invention; Examples; claim 1), thereby reading on a seedling-raising matrix cotton.
Regarding claims 4 and 5: A nutrient solution is added to the matrix in step 4 of the method and then periodically supplemented in step 5 (contents of the invention, Examples, claim 1). The nutrient solution is composed of: calcium nitrate 10-15 parts, nitrogen, phosphorus, potassium compound fertilizer 20-30 parts, magnesium sulphate 1 to 5 parts, ethylene diamine tetraacetic acid 1 to 5 parts, manganese sulphate 0.1 to 0.5 parts, water 1000 parts, and bactericide 0.5 to 1 parts (contents of the invention, Examples, claim 4). Thus, the nutrient supplemented matrix of Nie reads on a matrix cotton further comprising a fertilizer (i.e., nitrogen, phosphorus, potassium, calcium, magnesium, sulfur, manganese).
The teachings of Nie differ from that of the instantly claimed invention in that Nie does not explicitly teach wherein a walnut green peel fermentation extract is added to the seedling-raising matrix cotton, as recited in claim 3, nor the ratio of said extract to the fertilizer, as recited in claim 5.
Huang discloses a seedling substrate. The seedling matrix comprises walnut green husk fermentation substrate and water-holding substrate; the walnut green husk fermentation substrate is mainly prepared by the following raw materials: walnut green husk, leguminous plant straw, auxiliary fermentation substrate, and composite fermentation microbial inoculum (abstract). The preparation method of the walnut green husk fermentation substrate comprises the following steps: S1, weighing walnut green husk, leguminous plant straw, auxiliary fermentation substrate and composite fermentation microbial inoculum; S2, crushing the walnut green husk, leguminous plant straw and auxiliary fermentation substrate into respectively powder, uniformly mixing, adjusting the water content to obtain the fermentation stack body; S3, adding 1/2 amount of composite fermentation microbial inoculum weighed in S1 in the fermentation stack of step S2; covering the heat preservation film with hole; turning one time every 2 ~ 3 days; fermenting for one time; S4, when the fermentation temperature of step S3 is reduced to 40 ° C, then accessing the remaining composite fermentation microbial inoculum in the fermentation stack, covering the heat preservation film with hole, turning for one time every 2 to 3 days, performing secondary fermentation (Embodiment 1; claim 5), thereby resulting in a walnut green peel fermentation product.
Previous work found that walnut green husk extract as feed additives, can replace the antiviral drug and antibiotic in the feed to inhibit common pathogenic bacteria and virus propagation of livestock and poultry and prevent infectious disease thereby increasing the survival rate of livestock and poultry (background para. 4). The walnut green husk fermentation substrate of Huang provides the needed N, P, and K elements for the growth of the seedling and improves the seedling germination rate. The method of use has a simple operation, shortens the seedling period, and reduces the cost (abstract).
Wu teaches a strawberry seedling substrate comprising walnut green peel extract (abstract; claim 1). The preparation method of the walnut green peel extract comprises taking the waste walnut green peel, adding distilled water according to the material-liquid ratio of 1: 20, ultrasonically extracting for 30 min, refluxing and extracting for 2 h, collecting the extracting solution, filtering, rotary steaming and concentrating to obtain the extract to obtain the walnut green peel extract (content, para. 8; claim 7). The seedling substrate comprises 1-1.5 parts of walnut green peel extract (claim 3). The walnut green peel extract added in the strawberry seedling substrate formulation has the effect of resisting plant diseases, insect pests, and bacteria, which can obviously improve the ability of resisting plant diseases and insect pests of strawberry seedling when being applied to strawberry seedling substrate, so that the survival rate of the seedling is improved (content, para. 21).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to add a walnut green peel fermentation product as taught by Huang, specifically in the form of an extract as taught by Wu, into the seedling matrix of Nie since walnut peel fermentation products and extracts are known and routine in the art of seedling matrices. First, one of ordinary skill in the art would have been motivated to select a walnut green peel fermentation product for use in a seedling matrix since walnut peel fermentation substrates are known and effective for improving the germination rate of seedlings within a seedling-raising matrix, as taught by Huang. One of ordinary skill in the art would have been further motivated to incorporate the walnut green peel fermentation product in the form of an extract as instantly claimed, since walnut peel extracts improve the disease resistance and survival of seedlings as taught by Wu. Additionally, an extract has the benefit of being applied to the soilless substrate of Nie in more specific and adjustable amounts compared to the fermentation product of Huang. Thus, one of ordinary skill in the art could have combined the teachings of Nie, Huang, and Wu according to known methods to predictably yield a seedling-raising matrix cotton containing a walnut green peel fermentation extract, wherein the germination rate and disease resistance of the seeds are improved. Furthermore, Nie teaches the inclusion of an unspecified bactericide. Given the teachings of Huang and Wu, a walnut green peel fermentation extract inherently possesses bactericidal properties, meaning one of ordinary skill in the art could have substituted the bactericide of Nie with a walnut green peel fermentation extract, as suggested above, to yield predictable results.
Regarding the weight ratio of the walnut green peel fermentation extract to the fertilizer, Wu teaches adding 1-1.5 parts of walnut green peel extract to the seedling substrate. As best interpreted given the 112(b) issue above, Nie teaches elemental fertilizers to make up a total of 31.1-50.5 parts of the nutrient solution. Nie also teaches the nutrient solution to comprise 0.5 to 1 parts of bactericide, which may comprise the walnut green peel fermentation extract as discussed above. While the prior art does not explicitly teach the instantly claimed ratio (i.e., 1-2:12-20) it is well within the abilities of an ordinary artisan to optimize such a ratio depending on the desired effect of the final product (i.e., fertilization, disease resistance, etc.). As such, one of ordinary skill in the art would have used the amounts taught by Wu and Nie as guidance to arrive at the instantly claimed ratio of extract to fertilizer through no more than routine experimentation. 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).
One of ordinary skill in the art would have had a reasonable expectation of success in making the above modification since Nie, Huang, and Wu teach seedling-raising matrices and methods.
Regarding the “method for preparing the walnut green peel fermentation extract”, such a recitation is a product-by-process limitation. "[E]ven though 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, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In the instant case, Huang teaches a fermentation method and Wu teaches an extraction method for walnut green peels. Both products are used to improve seedling matrices, and as discussed above, it would have been obvious to combine the two to provide a walnut green peel fermentation extract that could be added to the seedling matrix of Nie. The instant claims nor the instant specification identify specific active compounds that result from the claimed preparation method. As such, the walnut green peel fermentation extract produced by the fermentation method of Huang and the extraction method of Wu would result in a fermentation extract which is the same or similar to that which is claimed, despite being produced by slightly different methods. In such a situation the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983)
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Nie, N. (CN 114041411 A, 02/15/2022, on record), hereinafter Nie, in view of Fu, H., et al. (CN 115226734 A, 10/25/2022, on record), hereinafter Fu.
Nie discloses a soilless seedling method for garden greening plants (title).
Regarding claim 3: The soilless seedling method utilizes a prefabricating seedling matrix comprising 20-30 parts cotton fiber (abstract; contents of the invention; Examples; claim 1), thereby reading on a seedling-raising matrix cotton.
Regarding claims 4 and 5: A nutrient solution is added to the matrix in step 4 of the method and then periodically supplemented in step 5 (contents of the invention, Examples, claim 1). The nutrient solution is composed of: calcium nitrate 10-15 parts, nitrogen, phosphorus, potassium compound fertilizer 20-30 parts, magnesium sulphate 1 to 5 parts, ethylene diamine tetraacetic acid 1 to 5 parts, manganese sulphate 0.1 to 0.5 parts, water 1000 parts, and bactericide 0.5 to 1 parts (contents of the invention, Examples, claim 4). Thus, the nutrient supplemented matrix of Nie reads on a matrix cotton further comprising a fertilizer (i.e., nitrogen, phosphorus, potassium, calcium, magnesium, sulfur, manganese).
The teachings of Nie differ from that of the instantly claimed invention in that Nie does not explicitly teach wherein a walnut green peel fermentation extract is added to the seedling-raising matrix cotton, as recited in claim 3, nor the ratio of said extract to the fertilizer, as recited in claim 5.
Fu discloses a walnut green husk and sedum damici composite agricultural ferment composition comprising 250-350 parts of ferment raw liquid among other ingredients (abstract). The ferment raw liquid is obtained by extracting walnut green peel and sedum damate. It is then mixed with a fermentation microbial inoculum, sealed and fermented to obtain a fermentation product (Embodiments), thereby resulting in a fermentation product which reads on the instantly claimed walnut green peel fermentation extract. The composite agricultural ferment composition has good bacteriostatic and insecticidal effect, it can be used as a plant protective agent such as pesticide or bacteriostat (abstract). In recent years, a large number of research shows that: walnut green husk contains chemical substances with biological activity to insects, which can be used for preventing and treating agricultural pests. Research also shows that the walnut green tangerine peel contains active substance for inhibiting fungi, such as walnut quinone, walnut 5-hydroxy-2-methoxy-4-naphthoquinone, beta-sitosterol and so on. These active substances are mainly used for protecting the effect of fungi, capable of inhibiting hypha growth and spore germination. Further research shows that the walnut green peel contains active substance for inhibiting viruses. Active substances such as juglone in walnut green husk also have the function of inhibiting the growth of some plants. Therefore, walnut green husk can be used as plant source pesticide, bactericide, herbicide for development and utilization (background, para. 1).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to add the walnut green peel fermentation extract of Fu to the seedling matrix of Nie since walnut green peel fermentation extracts are known and routine in the art of plant protection. One of ordinary skill in the art would have been motivated to add the walnut green peel fermentation extract of Fu into the seedling matrix of Nie since the product of Fu and walnut green husks in general have good bacteriostatic and insecticidal effect. Furthermore, Nie teaches the addition of a bactericide into the seedling matrix. Thus, one of ordinary skill in the art could have used the walnut green peel fermentation extract of Fu as the bactericide of Nie, though simple substitution of one known bactericide for another to yield predictable results.
Regarding the weight ratio of the walnut green peel fermentation extract to the fertilizer, as best interpreted given the 112(b) issue above, Nie teaches elemental fertilizers to make up a total of 31.1-50.5 parts of the nutrient solution. Nie also teaches the nutrient solution to comprise 0.5 to 1 parts of bactericide, which may comprise the walnut green peel fermentation extract as discussed above. While the prior art does not explicitly teach the instantly claimed ratio (i.e., 1-2:12-20) it is well within the abilities of an ordinary artisan to optimize such a ratio depending on the desired effect of the final product (i.e., fertilization, disease resistance, etc.). As such, one of ordinary skill in the art would have used the amounts taught by Nie as guidance to arrive at the instantly claimed ratio of extract to fertilizer through no more than routine experimentation. 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).
One of ordinary skill in the art would have a reasonable expectation of success in making the above modifications since Nie teaches a seedling matrix for nurturing and protecting seed during germination while Fu teaches plant protection methods.
Regarding the “method for preparing the walnut green peel fermentation extract”, such a recitation is a product-by-process limitation. "[E]ven though 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, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In the instant case, Fu teaches extracting and fermenting walnut green peels. The instant claims nor the instant specification identify specific active compounds that result from the claimed preparation method. As such, it is believed that the walnut green peel fermentation extract produced by the fermentation and extraction method of Fu would result in a fermentation extract which is the same or similar to that which is claimed, despite being produced by slightly different methods. In such a situation the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983)
Response to Arguments
(1) Applicant argues that the office has failed to establish a prima facie case that the prior art products are identical or substantially identical to the claimed walnut green peel fermentation extract. Applicant asserts that fermentation, pH adjustment, solvent partitioning, and separate recovery of liquid and solid fractions would alter the identity and relative concentration of phytochemicals, resulting in the products of the instant invention to have distinguishable properties (p. 5-7 of Remarks).
First, it is noted that the instant specification provides no structural or compositional characterization of the claimed extract. As such, there is no means for ascertaining if the claimed method does in fact result in a different identity or concentration of phytochemicals than the extraction method of the prior art, or if the difference that may occur is non-obvious. The Applicant has provided no specific discussion regarding the purpose and result of each step in the extraction method nor do the claims recite any specific structural differences or properties which result from the claimed method. For instance, are the additional/different steps in the claimed extraction method arbitrary or do they actually result in an extract having increased amounts of beneficial phytochemicals? Since no characterization of the extract is provided and no concentrations are claimed there is no way of determining this. Currently, the only means of characterizing the instant extract is by its functional properties. Which are defined by Applicant as “antibacterial, growth-regulating, and root-development-influencing properties” and “avoiding potential risks of plant growth inhibition from direct use of walnut green peel raw materials.”
As discussed in the rejection above, Huang teaches a walnut green peel fermentation product which provides needed NPK elements for the growth of seedlings and improves seedling germination rate. Huang also teaches walnut green husk extract as a known antiviral/antibiotic. Similarly, Wu teaches walnut green peel extract being added to seedling substrates to prevent plant diseases and pests, thereby improving the survival rate of the seedlings. As such, one of ordinary skill in the art would immediately recognize from the teachings of Huang and Wu, that a combined walnut green peel fermentation extract would provide antibacterial properties as taught by Huang and Wu; growth regulating properties, as taught by Huang; and root development influencing properties (i.e., germination), as taught by Huang. Since the use of walnut green peel raw materials is not taught by either Huang or Wu, the potential risks of plant growth inhibition from their direct use is necessarily avoided. Therefore, the walnut green peel fermentation extract of the prior art appears to function the same as that of the instant invention and must therefore be the same until proven otherwise or more structural limitations are claimed. It is noted that the Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983)
(2) Applicant further argues that Nie does not disclose the ferment extract of walnut husks and the fiber cotton of Nie is only one component of the seedling substrate, its role being to participate in the formation of a seedling substrate for landscaping plants. Applicant asserts that Nie fails to recognize the increased susceptibility of rice seedlings to bakanae disease in block-based cotton seedling cultivation and does not propose solutions to the problems of poor root entanglement, weak seedlings, and poor quality of machine-transplanted seedlings (p. 7-8 of Remarks).
In response to applicant's arguments against Nie individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As discussed in the rejections above, Nie’s deficiencies in teaching the ferment extract of walnut husks is remedied by the teachings of Huang and Wu. Regarding the technical problems typically faced by rice seedlings, which are not addressed by Nie, it is noted that the instant claims are to a product, not a method of rice cultivation. As such, the seedling substrate of Nie which comprises cotton and is used for landscaping plants, reads on the instantly claimed “seedling-raising matrix cotton”. The claims are not drawn to a method of cultivating rice seedlings meaning there is no requirement for Nie to teach anything relating to rice cultivation. Furthermore, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
(3) Applicant argues that Huang discloses a walnut husk fermentation substate, not the walnut husk fermentation extract of the present invention (p. 8-9 of Remarks). Regarding Wu, Applicant argues that the extraction method of Wu is different than the instantly claimed extraction method and therefore, the resulting compositions cannot be automatically considered the same (p. 9 of Remarks).
As discussed above, arguments against references individually cannot show nonobviousness where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Regarding the extract made obvious by the prior art and the instantly claimed extract, the response to argument (1) above provides an in depth explanation of why the extracts are being treated as the same.
(4) Applicant argues that the absence of a complete chemical characterization does not establish that two products are identical, rather the specification demonstrates that the claimed extract possesses functional properties that distinguish it from conventional walnut materials. Applicant cites examples in the specification which compare blank controls vs samples treated with the instantly claimed extract (p. 10-11 of Remarks). Applicant further argues that the experimental data refutes the assertions of predictability and a reasonable expectation of success, alleging unexpected results (p. 12-13 of Remarks).
The fact that the claimed extract possesses functional properties different from conventional walnut materials does not serve as evidence that the instant extract is different than the prior art extract, especially when the prior art is not a conventional walnut material but a combination between a walnut green peel fermentation product and a walnut green peel extract. Furthermore, as discussed above, the walnut green peel products of Huang and Wu are taught to have functional properties which read on and overlap with those argued by the applicant in regards to antibacterial effect, seedling and root growth, etc. Additionally, the example in the instant specification compares seedlings treated with the instant extract to those which are not treated at all. As such, the comparison provides no understanding of if the claimed extract is in fact better than conventional bactericides and walnut materials or those of the prior art. Regarding Applicants assertion of unexpected results, the examples in the specification do not compare the claimed invention with the invention of the prior art which at the very least comprises a conventional bactericide, as taught by Nie. Lastly, as discussed above, the teachings of Huang and Wu actually encourage the use of walnut green peel fermentation product and walnut green peel extracts in seedling substrates, specifically for the purpose of enhancing seedling growth and protecting against diseases and pest. As such, the results in the specification examples are not unexpected in view of the prior art.
Conclusion
No claims allowed.
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 SUSANNAH S ARMSTRONG whose telephone number is (571)272-0112. The examiner can normally be reached Mon-Fri 9-5 (Flex).
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/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/ERIN E HIRT/Primary Examiner, Art Unit 1616
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