The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-8 are canceled. Claims 9-20 are pending and under consideration.
Priority: This application is a 371 of PCT/JP2023/006468, filed February 22, 2023, which claims benefit to foreign application JP 2022-035822, filed March 9, 2022. A copy of the foreign priority document has been received in the instant application on August 14, 2024 and is not in the English language.
Claim Rejections - 35 USC § 102
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 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.
Claims 9-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN ‘841 (CN 106890841, translation provided by Google Patents cited herein). CN ‘841 teaches a recycling method comprising collecting agricultural stalk (or harvest residues) and storing the collected agricultural stalk; subjecting the collected agricultural stalk to an anaerobic treatment step that produces biogas and residues (or fermentation residue); and processing the residues to a biomass organic fertilizer for return to the agricultural field (p. 1-5; instant claim 9).
Regarding instant claims 10, 19, CN ‘841 teaches that the agricultural stalks are collected in the field and stored in a storage workshop for daily storage under maintenance management and then delivered or supplied for anaerobic treatment (at least p. 2-3).
Regarding instant claim 11, CN ‘841 teaches that the agricultural stalks are collected in the field from rural areas and stored and then transported to a centralized plant for the anaerobic treatment (at least p. 1, 2, 3). Therefore, CN ‘841 teaches the collected agricultural stalks are stored in a plurality of storage locations.
Regarding instant claim 12, CN ‘841 teaches agricultural stalks (biomass straws such as corn stover, wheat stalk, melon seedling) is collected into bales in the field and further compressed (convenient for transportation and storage) and stored in the agricultural stalk storage workshop and is pre-processed on demand and where pretreatment can also be carried out in the centralized plant such as by crushing and packing (p. 4). Since CN ‘841 teaches different types of agricultural stalks are collected at different fields and processed and stored at different storage workshops, CN ‘841 can be deemed to teach different storage conditions at the plurality of storage locations.
Regarding instant claims 13, 19-20, CN ‘841 teaches daily maintenance of the storage workshops, including resource distribution, traffic convenience, haul distance, which then includes at least monitoring supply, timing, transportation of the agricultural stalks in storage to the centralized plant for anaerobic treatment.
Regarding instant claims 14-18, 19-20, CN ‘841 teaches biogas, biogas residue (fermentation residue), and biogas slurry are obtained after anaerobic treatment, where biogas residue is processed, including drying, into solid organic fertilizer and biogas slurry flows back for anaerobic treatment and stored and processed into liquid organic (at least p. 5). CN ‘841 teaches the use of biomass organic fertilizer effectively avoids straw being returned directly to the field, avoiding seedling issues, pests/disease in soil, and improving soil texture, soil organisms, increasing soil fertility, promoting microbial activity and crop development (p. 3). Therefore, CN ‘841 teaches a step of storing the fermentation residues produced in the anaerobic treatment step before returning a portion of the processed fermentation residues (i.e. fertilizer) back into the agricultural field.
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 9-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18838507 (‘507) (reference application) in view of CN ‘841 (supra). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and the ‘507 application claims are drawn to a recycling method comprising collecting harvest residues and storing the collected harvest residues; subjecting the collected agricultural stalk to an anaerobic treatment step that produces biogas and fermentation residues; and processing the residues for return to the agricultural field. Additionally, if any features and/or components of the instant claims are not expressly recited in the ‘507 application claims, it would have been obvious to incorporate the feature(s) and/or component(s) as noted in the teachings of CN ‘841 noted above into the ‘507 application claims for the reasons noted above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
No claim is allowed.
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/Marsha Tsay/Primary Examiner, Art Unit 1656
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