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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/30/2026 has been entered.
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 1-2, 5-10 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.
Claims 1-2, 5-10 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites, “wherein the entirety of the impermeable layer is contiguous with the permeable layer”. The specification lacks disclosure of the layer being “contiguous”. Additionally the drawing show layer 12 (impermeable layer) spaced from layer 14 (permeable layer). Contiguous is defined as “being in actual contact with, touching along a boundary or at a point”, the entirety of 12 is not in contact with 14.
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.
Claim 1 is 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.
Claim 1, line 7 recites, “the outer layer”. There is insufficient antecedent basis for this limitation in the claim. It is unclear what the outer layer is. (see also claims 5, 8, 9 and 10).
Claims 2, 5-10 are rejected based on their dependency on 1.
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:
a permeable 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 wherein an entirety of the impermeable layer is contiguous with the permeable layer (see figs. 2, 20 extends all around and is contiguous with 10 in its entirely)
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 impermeable 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 an impermeable layer that is 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.
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 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 fertilizer 50 are all parts of the growth media).
For claim 10, Sun is silent about wherein the outer layer retains structural integrity over a period of 20-40 days after the inner layer degrades sufficiently to permit water and air to access 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 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.
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):
In considering the WANDS factors, the Examiner has mischaracterized at least the following factors: the level of ordinary skill in the art, the level of predictability of the art, the existence of working examples, and the quantity of experimentation needed.
With respect to the level of ordinary skill in the art, the Examiner suggested that "one would understand it is desirable for these devices to degrade over time". Respectfully, this is unrelated to the level of ordinary skill. Instead, the Applicant submits that the level of ordinary skill would include designers or engineers that are familiar with degradations rates of different materials, including those listed in the present specification. Such a person would be familiar with different degradable materials, and how different materials would respond to various environmental factors. Such a person would be able to determine such rates, if necessary, through routine and predictable 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 and degradation rates does not remedy the fact that there is no formulation or specified product provided by the application. Each of the different materials would have variable degradation rates under various environmental conditions creating nearly limitless possibilities which would be impossible to measure or calculate.
With respect to the level of predictability of the art, the Applicant submits that the degradation rates of relevant materials are well-characterized and are therefore predictable.
While the rate of a specific material maybe characterized, applicant has not proposed one material. As previously noted 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.”
While individual materials have been characterized the identification of the characteristics of near infinite combinations is in question and not predictable as it would also vary relevant to environmental conditions.
With respect to the existence of working examples, the Examiner acknowledged that polyvinyl alcohol (PVA) is water soluble and impermeable, but suggested the specification did not explain the ratios, or modifications were required. Respectfully, the Applicant submits that it is unnecessary to teach what is well known in the art (MPEP, S. 2164.01). PVA is a well-known material that was discovered in the early 1900s, and since that time, has been thoroughly studied and characterized. Furthermore, the additives and their effect are well known and predictable when combined with materials such as PVA.
The office maintains that while characteristics of PVA are known in general, applicant has not shown how the layers are derived from these materials, i.e. ratios of the material used with which combination of resin or plasticizer that would be beneficial in growing environments to obtain the desired product. The product as claimed details permeable and impermeable layers, the structure of the product as claimed requires a combination of the materials to make it, especially if considering the specific decomposition periods. The invention itself is a result of how materials are combined and as such must be disclosed.
With respect to the quantity of experimentation needed to make or use the invention, the Examiner suggested that the disclosure was deficient because "[the disclosure lacks the specifics required to readily make and use applicant's invention". In the Response to Arguments, the Examiner further suggested that "there is no formulation or specified product provided by the application", and that "one would effectively have to recreate the entire product from a laundry list of materials." As noted by the specification, the specific formulation may vary depending on the conditions. As such, it is not possible to provide a "specified product", nor is this level of detail required.
This is not found persuasive because applicant has not provided any working examples. In order to make or use the product a user must be able develop the product from the disclosure as written. Notably the specification states, “composition of inner and outer layers 12 and 14 may be any suitable material that allows for the desired degradation rates” which requires 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, “Claim 1 as amended states that "an entirety of the impermeable layer is contiguous with the permeable layer." Sun does not teach this. Instead Sun teaches plant paper (20), which the Examiner compared to the claimed impermeable layer, that lines the inside surface of a soil bag (10), which the Examiner compared to the claimed permeable layer. This is shown in shown in FIG. 1 and 2. As the plant paper lines the inside surface of the soil bag, it is clear that an entirety of the plant paper is not contiguous with the soil bag. Instead, only one side of the plant paper is contiguous with the soil bag. This is shown in FIG. 2.
In response to applicant’s argument the office respectfully disagrees, with respect to fig. 2 of Sun it can be seen that the inner layer (20) is contiguous with the outer layer (10) in its entirety. 20 is in contact with 10 all around the bag. The fact that 20 has two layers does not mean it is not contiguous with 10. The inner side of applicant’s inner layer would also never touch the outer layer. Furthermore it is unclear what applicant means by this limitation as it is not disclosed in the specification or shown in the drawings (see 112a new matter above).
Applicant argued that, “with respect to claim 9, the Examiner cited Johnson as teaching a single inner cavity. The Applicant respectfully submits that there would be no motivation to modify Sun based on Johnson. According to paragraph 27 of Sun, the distribution of seeds, fertilizer and moisturized in a grid shape is to evenly distribute them on the inner wall of the soil bag. As such, while manufacturing may be simplified by making a single space, doing so would be contrary to the stated purpose of Sun and would reduce its utility.
This is not found persuasive as seeds would still be grown in the bag and multiple bags used for forestry would still constitute the grid structure.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Huson can be reached at 5712705301. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAGDALENA TOPOLSKI/Primary Examiner, Art Unit 3642
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