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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 1 recites, “an outer layer that is permeable to water and air; an inner layer within the outer layer that is impermeable to water and air;” and “wherein each of the inner layer and the outer layer are degradable, the inner layer degrading faster than the outer layer to permit water and air to access the inner cavity.”
The specification does not provide the necessary details to make or use the invention without undue experimentation. In reviewing the WANDS factors in light of applicant’s claims (MPEP 2164.01 (a)) the office’s findings are as follows:
A) Breadth of the claim- Claim 1 encompasses two materials, outer permeable material, inner impermeable material, both degradable wherein the inner layer degrades faster than the outer layer and all materials that would result in this.
B) Nature of the invention- the invention requires the use of layered products to hold seed
C) State of the Art- prior arts of record (note for instance Sun below) teach that it is known to use degradable materials for housing seeds
D) Level of ordinary skill in the art – One would understand it is desirable for these devices to degrade over time to reduce pollutants and provide feed/organic matter for the growing plant
E) Level of predictability of the art- One would understand that it is predictable that organic materials will degrade at various rates over time
F) The amount of direction provided by the inventor- The inventor notes a laundry list of materials (para 0014, para 0023) from which the layers may be derived including materials “derived from poly lactic acid (PLA), a poly vinyl alcohol (PVA), a lignocellulosic based fiber compound held together by resins and plasticizers, other biodegradable and water-soluble compounds that may be a synthetic blend of polymer or a natural based composition, or combinations or blends thereof.” The inventor further notes the inner and outer layer may be “the same base composition as the inner layer with some modifications that provides a desired rate of degradation.” The inventor notes in para 0008 that the inner layer being substantially “impermeable”.
G) The existence of working examples- Applicant has provided no specific examples of which materials or amounts thereof to use to create the two layers. While in general it is known that for instance “polyvinyl alcohol” is water soluble and impermeable, this does not explain what ratios of this material are used to make the inner layer and outer layer, what modifications must be made to this material if it was used as both layers that would make the outer layer then water permeable and degrade slower, etc.
H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure- Applicant disclosure lacks the specifics required to readily make and use applicant’s invention. While applicant does disclose some usable materials, the lack of detail as to how to specifically combine these materials or coatings into an inner layer and an outer layer having the specific properties as claimed is not disclosed. It would require undue experimentation given applicant’s broad list of material choices to re-invent a seed vessel having the properties as desired.
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.
Claim(s) 1-2, 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Sun (KR 100458948, provided herein, see English translation provided herein).
For claim 1, Sun teaches a vessel for plant propagants (bag 10 containing seeds 30), comprising:
an outer layer (10) that is permeable to water and air (10 is made from jute which is permeable to water and air, para 0022);
an inner layer within the outer layer (20, sheets 21 and 22); and
growth media and one or more plant propagants sealed within an inner cavity defined by the inner layer (para 0019 soil, and seeds 30, plus elements 40 and 50, sealed as per para 0027);
wherein each of the inner layer and the outer layer are degradable, the inner layer degrading faster than the outer layer to permit water and air to access the inner cavity (para 0038, 21 and 22 degrade or melt the seeds remain in the soil contained in bag 10, thus clear that 21 and 22 must be degrading at a faster rate).
Sun is silent about the inner layer being impermeable to water and air. However Sun does teach paper inner layer (20, 21, 22) that is water decomposable and that “melt and corrode when wet with soil water or rain, causing plant seeds (30), fertilizer (50), and moisturizer (40), etc., to fall into the soil inside the soil bag (10)” thus the sheets would simply erode with the water and do not let the water pass through.
Therefore it would have been obvious to one having ordinary skill in the art at the time the invention was filed to make the inner layer of Sun water impermeable, with a reasonable expectation of success, in order to protect the contents within the cavity from unexpected water or spillage until such a time as they are planted into the soil and can be properly and completely decomposed to allow for the growth of the seeds.
Sun further teaches the inner layer degrade much faster than the outer layer (the paper sheets 21-22 melt while jute will take several months to decompose).
Sun is silent about wherein the inner layer is designed to degrade sufficiently to unseal the inner cavity within a period of 1 to 2 days.
wherein the outer layer is designed to retain structural integrity over a period of 20-40 days after the inner layer degrades sufficiently to unseal the inner cavity.
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to make the inner layer degrade within 1-2 days and the outer layer degrade within 20-40 days, with a reasonable expectation of success, in order to quickly allow access of water to the seeds for germination but to maintain a covered environment for early growth and development of the outer layer covered seed and since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. In re Aller, 105 USPQ 233.
For claim 2, Sun further teaches wherein the inner layer and the outer layer degrade when exposed to water (para 0038-0039).
For claim 5, Sun further teaches wherein the outer layer comprises a screen or a mesh (jute 10, para 0038 mesh-like).
For claim 6, Sun is silent about wherein the inner cavity has a volume of between 1.27 cm3 and 20.32 cm3.
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to make volume of the inner cavity between 1.27-20.32 cm3, with a reasonable expectation of success, in order to allow for the amount of seeds desired to be grown in a specific area to be fitted into the cavity and since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. In re Aller, 105 USPQ 233.
For claim 7, Sun further teaches wherein the one or more plants propagants comprises one or more seeds (seeds 30).
For claim 8, Sun further teaches wherein the contents of the outer layer consist essentially of the inner layer and the growth media and the one or more plant propagants sealed within the inner cavity (see fig. 1, the contents within the outer layer 10 consist essentially of the inner layer (21, 22), the plant propagants (seeds 30), and growth media (the soil, moisturizer 40, resin 41, powders 42-44, and and fertilizer 50 are all parts of the growth media).
Claim(s) 9 is rejected under 35 U.S.C. 103 as being unpatentable over Sun, as applied to claim 1 above, in view of Johnson (US 2011/0225884).
For claim 9, Sun is silent about wherein the inner layer enclosed by the outer layer is a single inner layer that defines a single inner cavity.
Johnson teaches a vessel for plant propagants (abstract and figs.) including an inner layer (14) and an outer layer (16) and a single inner cavity (where 12 is), wherein the inner layer enclosed by the outer layer is a single inner layer that defines a single inner cavity (see figs.).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to make the connected inner layers of Sun a single inner layer around a single inner cavity, as taught by the vessel of Johnson, with a reasonable expectation of success, in order to simplify the design of ease of manufacture.
Response to Arguments
Applicant's arguments filed 09/16/2025 have been fully considered but they are not persuasive.
Applicant argued that (in view of 112a enablement rejections):
“As noted by the Examiner, the specification provides a detailed example with various examples of materials that may be used to as degradable layers and suggests the use of additives and modifying agents to control the rate of degradation. The Applicant submits that degradable materials, including degradable polymers, are well-characterized and predictable.
Section 2164.05(b) of the Manual of Patent Examining Procedure states that "the specification is enabling if it enables persons skilled in each art to carry out the aspect of the invention applicable to their specialty." The Applicant submits that a person of skill with respect to designing degradable materials, including polymers, cellulose-based fibers, etc. would have sufficient skill to create an outer layer that is degradable and permeable to water and air, and an inner layer that is degradable impermeable to water and air, in the claimed manner.
In support of the enablement objection, the Examiner suggests that the specification does not provide a working example, and that the specification defines a significant number of examples that would lead to undue experimentation. The Applicant respectfully disagrees. Section 2164.06 of the MPEP states that the "quantity of experimentation ... is only one factor that must be considered", and that "a considerable amount of experimentation is permissible, if it is merely routine." The Applicant submits that, given that the experimentation would be straightforward using known materials with known properties, the claims are properly enabled. The Applicant further submits that the examples of materials provided and their general purposes would provide direction to a person skilled in the art, and would not lead to undue experimentation.”
This is not found persuasive because the application does not provide for any embodiments or specifics of how to formulate or make the product. Having knowledge of basic material properties does not remedy the fact that there is no formulation or specified product provided by the application.
For instance, with reference to applicant’s para 0014 states, “One or both layers may be derived from poly lactic acid (PLA), a poly vinyl alcohol (PVA), a lignocellulosic based fiber compound held together by resins and plasticizers, other biodegradable and water-soluble compounds that may be a synthetic blend of polymer or a natural based composition, or combinations or blends thereof.”
Additionally, applicant’s para 0028 states, “The composition of inner and outer layers 12 and 14 may be any suitable material that allows for the desired degradation rates. Examples of materials that may be incorporated into the inner and/or outer layers include a resin polymerized together; a blend of different synthetic polymers; a single cellulose-based fiber; a blend of lignocellulosic and cellulosic fibers formed together; polyvinyl alcohol; polyethylene glycol; polyacrylamides; polyacrylic acid; poly lactic acid; cellulose-based fiber such as flax, hemp, wheat, straw; or a blend of cellulose-based fibers and other compostable naturally derived fibers. It is understood that the materials may be suitable combinations of these materials or others, and the materials may be further modified with the use of plasticizers, resins, glues, binders, and other surface modifying agents.”
Given this information one would effectively have to recreate the entire product from a laundry list of materials. The list, for instance does not even specify what “resins” or “plasticizers” are being considered. The terms “other biodegradable and water-soluble compounds that may be a synthetic blend of polymer or a natural based composition” have no specificity and would require considerations of exceedingly large lists of materials and products to completely reinvent applicant’s invention. The specification states, “composition of inner and outer layers 12 and 14 may be any suitable material that allows for the desired degradation rates” requiring the user to consider excessively large options of materials in unknown quantities and combinations which may not be listed.
While the specification may require a reasonable amount of experimentation, the open-ended listing of applicant’s specification fail to correlate with a reasonable amount as the list is so exceedingly broad. MPEP 2164.06 notes that, “"[A]n extended period of experimentation may not be undue if the skilled artisan is given sufficient direction or guidance." In re Colianni, 561 F.2d 220, 224, 195 USPQ 150, 153 (CCPA 1977). The specification does not provide for “sufficient direction or guidance” given its all-inclusive nature in listing the products that can be used, in some unknown amount and combination, to arrive at applicant’s invention. MPEP 2164.06 further states “The test is not merely quantitative, since a considerable amount of experimentation is permissible, if it is merely routine, or if the specification in question provides a reasonable amount of guidance with respect to the direction in which the experimentation should proceed.’" In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) (citing In re Angstadt, 537 F.2d 498, 502-04, 190 USPQ 214, 217-19 (CCPA 1976)). The experimentation in the instant case is not merely quantitative as the meets and bounds of the experimentation is not readily encompassed by applicant’s specification. In response to applicant’s argument that the experimentation is merely routine, this is not found persuasive because there is no indication of how such experimentation would be routine or nor is there sufficient information in the specification to provide guidance for the course of experimentation required.
Applicant argued that, “Sun teaches a soil bag intended to be filled with soil that includes a vegetation sheet attached to an inner surface of the bag. The soil bag is intended to support slopes that may degrade over time. Based on the discussion in the Background of Sun, it is clear that the vegetation bag is not only used to support the germination of seeds, but to provide structural support and to resist erosion for newly- constructed slopes. Of particular note, Sun describes the risk of seeds collapsing even after a small rainfall until the seeds take sufficient root to resist erosion. To accomplish these goals, Sun makes the vegetation bag out of jute. While jute is biodegradable, it will retain structural integrity for significantly longer than 40 days, such as up to 1-2 years. In doing so, Sun retains both the soil and plants that germinate from the seeds for a significant period of time. In particular, the soil and plants are supported by the vegetation bag until the resulting plants have well-established roots are able to resist erosion.”
In response to applicant’s arguments the office notes that this is not found persuasive because the decomposition of Jute is dependent on the conditions it is placed in. For instance, Jute will decompose faster in wet conditions or at optimal temperatures of 37 deg C. Jute can decompose as quickly as 1-4 months (as evidenced by the article “Biodegradability in Fashion: All You Need to Know” provided herein) which notes that jute materials can decompose within 1 month when left on the ground (nr. 7). Therefore, it would have been obvious to make Sun decompose within 40 days even with Jute material as this is dependent upon the conditions and exposure of the jute. Additionally it must be noted that grass seed for instance will substantially root within 30 days, thus fulfilling Sun’s intended slope management within the allotted time frame.
Furthermore in arguendo applicant’s own arguments: “The Applicant submits that a person of skill with respect to designing degradable materials, including polymers, cellulose-based fibers, etc. would have sufficient skill to create an outer layer that is degradable and permeable to water and air, and an inner layer that is degradable impermeable to water and air, in the claimed manner,” indicating it is obvious to one having ordinary skill in the art to design these materials to function in the claimed manner.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 MAGDALENA TOPOLSKI whose telephone number is (571)270-3568. The examiner can normally be reached M-F 9-5.
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/MAGDALENA TOPOLSKI/ Primary Examiner, Art Unit 3642