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 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 1-15 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.
Claim 1 recites “An agricultural composition that is:”. This claim omits a transitional phrase such as “consisting of” or “comprising”, thus rendering the scope of the claim indefinite. The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004). In contrast, the transitional phrase "consisting of" excludes any element, step, or ingredient not specified in the claim. In re Gray, 53 F.2d 520, 11 USPQ 255 (CCPA 1931); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) ("consisting of" defined as "closing the claim to the inclusion of materials other than those recited except for impurities ordinarily associated therewith"). Thus, it is unclear whether the instant claim is open to additional, unrecited elements or limited to only what is claimed. For purposes of compact prosecution, as dependent claim 2 recites “comprising” language, the instant claim language is being interpreted as “An agricultural composition comprising:”.
Claims 2-15 depend from claim 1 and do not cure the deficiencies of claim 1. Therefore, claims 2-15 inherit the deficiencies of parent claim 1."
Claim 13 recites “wherein a material of the coating film is a mixture of a water-insoluble polymer and a water-soluble polymer”. This claim omits a transitional phrase such as “consisting of” or “comprising”, thus rendering the scope of the claim indefinite. The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. In contrast, the transitional phrase "consisting of" excludes any element, step, or ingredient not specified in the claim. See MPEP 2111.03. Thus, it is unclear whether the instant claim is open to additional, unrecited elements or limited to only what is claimed. For purposes of compact prosecution, the instant limitation is being interpreted as “wherein a material of the coating film comprises a mixture of a water-insoluble polymer and a water-soluble polymer”.
Claim 15 recites “wherein the water-insoluble polymer has a weight average molecular weight of from 1000 to 100000, and the water-soluble polymer has a weight average molecular weight of from 500 to 20000.” This renders the claim indefinite. As written, it is unclear what units the weight average molecular weight is expressed in. For purposes of compact prosecution, if the prior art teaches the recited values, it will be considered to read on the instant limitations.
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, 3-7, 9, and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Edgar et al. (WO 99/55774, published 11/4/1999, cited on the 6/1/2026 IDS).
Regarding claims 1, 3-6, Edgar teaches a controlled-release composition comprising a biodegradable cellulose ester and a functional additive [Abstract]. The composition is formed by coprecipitating the functional additive and cellulose ester with a carboxylic acid [pg. 13 lines 12-15]. When the cellulose ester (reads on instant claims 1, 4) is cellulose acetate (reads on claims 1, and 3-5), the carboxylic acid may be acetic acid [pg. 21 lines 6-7]. Edgar further teaches that the functional additive may be an agricultural additive such as an inorganic compound [pg. 14 lines 28]. The resulting precipitate is a composition of carboxylic acid (i.e. acetic acid), cellulose ester (i.e. cellulose acetate), and functional additive (i.e. inorganic compound) [pg. 20 lines 23-25]. The composition may be in the form of a granule [pg. 36 lines 1], reading on the claimed granular material. Edgar further teaches that suitable types of biodegradable cellulose ester include cellulose acetate, cellulose acetate propionate, and cellulose acetate butyrate [pg. 18 lines 17-19] (reads on instant claim 5). The degree of substitution of the cellulose ester ranges is from 1.0 to 3.0 [pg. 29 lines 24-25 (reads on instant claim 6).
Edgar does not explicitly teach that the biodegradable polymer is miscible with acetic acid or has a solubility in acetic acid of 1 wt.% to 95 wt.% at 50°C. However, the instant claims and specification recite cellulose acetate, cellulose acetate propionate, and cellulose acetate, and the aliphatic polyesters comprising an aliphatic dicarboxylic acid and an aliphatic diol, disclosed by Edgar, as reading on the instant limitations of claims 1 and 3 (see Instant Specification pg. 4 lines 35-36; pg. 5-8]. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. MPEP 2112.01. Furthermore, the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Regarding claims 4 and 7, Edgar teaches that the composition may comprise additional polymers, preferably aliphatic polyesters [pg. 10, lines 1-3]. The aliphatic polyesters may comprise of aliphatic dicarboxylic acid and diols such as polyethylene glycol (reads on aliphatic diol) [pg. 10, lines 11-25].
Regarding claim 9, Edgar teaches that the composition may comprise of calcium acetate [pg. 21, line 27].
Regarding claims 11-12, Edgar teaches that the composition may comprise of about 0.005 to 0.5 wt.% acetic acid [pg. 25 lines 14-15] (reads on instant claim 11). The agricultural additive (inorganic compound) may comprise from 0.1 to 50 % by weight [pg. 33 lines 10-14] (reads on instant claim 12). It would be obvious to include the inorganic compound, an agricultural additive, in the amount that the agricultural additive is taught to be suitable in. The amounts of acetic acid and agricultural additive taught in the reference overlap with and make obvious the instantly claimed ranges. MPEP 2144.05. (For example, if the acetic acid is present in the amount of 0.5 wt.% of the composition, and the inorganic compound is present in the range of 0.5% wt.% of the composition, this equates to a ratio wherein the inorganic additive is present in an amount of 100 parts by weight per 100 parts of the acetic acid, which falls within the claimed range.)
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Edgar et al. (WO 99/55774, published 11/4/1999, cited on the 6/1/2026 IDS), as applied to claim 1 and 4 above, and further in view of JP2004168873A, published 6/17/2004, cited on the 12/6/2024 IDS).
Regarding claim 8, Edgar teaches that the granular composition may comprise an aliphatic polyester, but does not explicitly teach polycaprolactone. JP2004168873A (hereinafter JP’873) teaches a granular fertilizer composition comprising a biodegradable resin comprising an aliphatic polyester [claims 1, 4-5]. JP’873 further teaches that suitable polymers for the composition include cellulose acetate, polycaprolactone, and poly(glycols and dicarboxylic acid) [0024]. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would be obvious to one of ordinary skill, before the effective filing date of the claimed invention, modify the teachings of Edgar with that of JP’873 to include polycaprolactone in the granular composition pf Edgar, as both cellulose acetate and polycaprolactone are taught to be biodegradable polymers suitable for a granular agricultural composition.
Claims 2, 10, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Edgar et al. (WO 99/55774, published 11/4/1999, cited on the 6/1/2026 IDS), as applied to claim 1 above, and further in view of Lillard et al. (US 2017/0280712 A1, published 10/5/2017).
Regarding claims 2 and 13-14, Edgar does not explicitly teach a granular material comprising a coating on the surface comprising the instantly claimed polymers. Lillard teaches a composition for delivery of a bioactive agent to a plant [Abstract]. The composition of Lillard comprises nanoparticles with a release coating comprising polycaprolactone and polyethylene glycol (i.e. a polyether polyol) (read on instant claims 2 and 13-14) [0012]. The composition may be in the form of a powder (reads on granules) [0068]. Lillard further teaches that the release coating facilitates controlled delivery of bioactive agents and increases the mechanical strength of the particles [0044]. It would be obvious to one or ordinary skill, before the effective filing sate of the claimed invention, to modify the teachings of Edgar with that of Lillard, and add a coating layer comprising polycaprolactone and polyethylene glycol to the composition of Edgar, in order to facilitate a controlled release of active agents from the composition and impart mechanical strength to the granules.
Regarding claim 10, Edgar does not explicitly teach an inorganic additive comprising a phosphate or carbonate of potassium. Lillard teaches that potassium carbonate and potassium metaphosphate are plant nutrients/fertilizers [0103]. Edgar teaches that the granular composition may comprise of agricultural additives such as fertilizer [pg. 14 lines 19-20]. The selection of a known material based on its suitability for its intended use is prima facie obvious. MPEP 2144.07. Thus, it would be prima facie obvious to select known fertilizers such as potassium carbonate and potassium metaphosphate for inclusion in the composition of Edgar.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Edgar et al. (WO 99/55774, published 11/4/1999, cited on the 6/1/2026 IDS) and Lillard et al. (US 2017/0280712 A1, published 10/5/2017), as applied to claims 1-2 and 13 above, and further in view of Halliday et al. (CA 2664545, published 4/24/2008).
Regarding claim 15, Edgar and Lillard do not explicitly teach a coating wherein the water-insoluble polymer has a weight average molecular weight of from 1,000 to 100,000, and the water-soluble polymer has a weight average molecular weight of from 500 to 20,000.
Halliday et al. teaches a bioresorbable (reads on biodegradable) polymer comprising polycaprolactone and polyakylene oxide (i.e. polyethylene glycol) [Abstract]. The polymer may be used to impart sustained release properties to drugs/active agents such as fertilizers [pg. 11 lines 14-17]. Halliday further teaches that the polyethylene glycol (i.e. the water-soluble polymer) may have a weight average molecular weight of 200 to 35,000 g/mol [pg. 4a, lines 1-2]. Halliday does not explicitly teach the weight average molecular weight of the polycaprolactone (i.e. water-insoluble polymer). Generally, differences in parameters such as concentration, proportions, or degree will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such parameter is critical. See MPEP 2144.05. "[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). Halliday teaches that the degradation rate and drug release weight of the polymer is affected by the polymer molecular weight [pg. 10 lines 21-23; see also pg. 5 lines 18-25], and that a skilled artisan would be able to select the polymeric components to achieve desired product properties [pg. 12, lines 19-23]. Thus, it would be obvious to one of ordinary skill to modify the teachings of Edgar and Lillard with that of Halliday, and select polymers with the instantly claimed weight average molecular weights, in the course of routine optimization, to specifically tailor the degradation rate of the polymer coating and achieve a desired release profile.
Conclusion
No claims are allowed.
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/AMANDA LYNN CHI/Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
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