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 .
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-
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Claims 1-15 are rejected on the ground of nonstatutory double patenting as being
unpatentable over claims 1-20 of U.S. Patent No. 12,239,054. Although the claims at issue are
not identical, they are not patentably distinct from each other because they both claim an
apparatus and method regarding a protective device for seeds and seedlings comprising a
device base, a perimeter boundary, at least one primary and one secondary palisade, a chasm
between the palisades, and angled inward sharpened spine truncated to a spike. The claims of
the instant application are coextensive in scope to the claims of the patented parent application.
Merely eliminating known elements when those elements are not required does not present a
patentable distinction and are merely constitute an obvious engineering design change.
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.
Claim(s) 1-3, 6-11, 14, 15 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by U.S. Patent Pub. No. 2012/0291344 to Castagno et al.
Regarding Claims 1 and 9, Castagno teaches a protective device and method for seeds
and seedlings comprising: a device base defining an open interior perimeter (Castagno Fig. 2
#200); a perimeter boundary extending from the device base (Castagno Fig. 2 and 3 #130); at
least one primary palisade (Castagno Fig. 1 #112) and at least one secondary palisade
(Castagno Fig. #110) extending from the perimeter boundary, and defining at least one chasm between the at least one primary palisade and the at least one secondary palisade (Castagno Fig. 1 gaps between each palisade #110; alternatively opening created by #108 can be interpreted as between due to broad nature of the claim); defining an interior (Castagno Fig. 3 inside #300) of the protective device via the at least one primary palisade and the at least one secondary palisade; the at least one primary palisade and at least one secondary palisade each defining a sharpened spine truncating in a protective spike (Castagno Fig. 1 each #110 truncates to spike; in addition, even though the longer palisades have #112 they still satisfy the limitation since they truncate in a spike shape but merely have #112 added on to the spike); and the at least one primary palisade and at least one secondary palisade each defining an angled ledge that angles the sharpened spine and protective spike inward (Castagno Fig. 3 palisades angled inward to meet at top center to close off #300) with respect to the interior of the protective device and the length of the primary palisade is greater than a radius of a bottom opening of the protective device (Castagno Fig. 1 the claim does not specify where the palisade stops and starts nor the length of the chasm relative to the start and stop of the palisade; therefore, Castagno Fig. 1 elements #110 and #112 could be the top end of the palisade and extend down to element #108 or even all the way down to edge #128 at the bottom end of the palisade which satisfies the limitation that they are longer than the radius of a bottom opening).
Regarding Claims 2 and 10, Castagno teaches at least one score line (Castagno Fig. 1
#108) defined into a device body of the protective device.
Regarding Claims 3 and 11, Castagno teaches the device base defines at least one
stake opening (Castagno Fig. 1 and 3 #132).
Regarding Claim 6, Castagno teaches two or more primary palisades are present and
form an open end via a distal end of each of the two or more primary palisades angling toward
one another (Castagno Fig. 2 each #110 is angled inward toward each other).
Regarding Claims 7 and 14, Castagno teaches the open end is enclosed via a plurality
of protective spikes forming a perimeter of the open end (Castagno Fig.2 and 3 ends of #110
enclose opening).
Regarding Claims 8 and 15, Castagno teaches the at least one chasm forms an
unobstructed, uncovered opening allowing free flow of air and light into the protective device
interior (Castagno Fig. 2 spacing between each #110 is a chasm, alternatively opening created
by the score line of #108 is designed for ventilation and applicant doesn't explicitly claim the
exact location of the chasm).
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.
Claim(s) 4, 5, 12, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over
U.S. Patent Pub. No. 2012/0291344 to Castagno et al in view of U.S. Patent Pub. No.
2018/0077878 to Sands et al.
Regarding Claims 4, 5, 12 and 13, Castagno is silent on explicitly teaching the protective
device is biodegradable and the protective device is formed to melt when exposed to flame of
approximately 200 °F to 800 °F. However, Sands teaches the general knowledge of one of
ordinary skill in the art to provide a protective device that is formed to melt and biodegrade as
claimed (Sands teaches PLA, abstract, paragraph [0006]). It would have been obvious to one of
ordinary skill in the art to modify the teachings of Castagno with the teachings of Sands before
the effective filing date of the claimed invention with a reasonable expectation of success for the
organic nature of the PLA as taught by Sands. The modification is merely the selection of a
known material for intended use [Leshin 125 USPQ 416] for its known physical properties. The
modification is merely the simple substitution of one known material for another to obtain
predictable results.
Claim(s) 1, 2, 6, 7, 8, 9, 10, 14, 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. D25,490 to Orner in view of U.S. Patent No. 757,045 to Lane and U.S. Patent No. 325,184 to Nichols.
Regarding Claims 1, 6, 7, 9, 14, 15 Orner teaches a protective device for seeds and seedlings comprising: a device base defining an open interior perimeter (Orner Fig. 1 #1); at least one primary palisade (Orner Fig. 1 #3), and at least one secondary palisade (Orner Fig. 1 #3 plurality of element #3 satisfies first and second) extending from the perimeter boundary, and defining at least one chasm (Orner Fig. 1 #3 space between each element #3) between the at
least one primary palisade and the at least one secondary palisade; defining an interior of the
protective device via the at least one primary palisade and the at least one secondary palisade;
the at least one primary palisade and at least one secondary palisade each defining an angled
ledge (Orner Fig. 1 point at which elements #3 angle inward, lines 26-27 "inwardly bent") that
angles the end of the palisade inward with respect to the interior of the protective device; the at
least one primary palisade and at least one secondary palisade each defining a sharpened
spine truncating in a protective spike (Orner Fig. 1 #8).
Orner is silent on explicitly teaching a perimeter boundary extending from the device
base. However, Lane teaches the general knowledge of one of ordinary skill in the art that it is
known to provide a perimeter boundary extending from the device base (Lane Fig. 1 and 3
element a). It would have been obvious to one of ordinary skill in the art to modify the teachings
of Orner with the teachings of Lane before the effective filing date of the claimed invention with
a reasonable expectation of success to prevent it from sinking into the ground as taught by
Lane. The modification is merely the application of a known technique to a known device ready
for improvement to yield predictable results.
Omer as modified appears to teach the length of the primary palisade is greater than a radius of a bottom opening of the protective device (Omer Fig. 1 the claim does not specify where the palisade stops and starts nor the length of the chasm relative to the start and stop of the palisade; therefore, Omer Fig. 1 #3 point could be the top end of the palisade and extend down to element #5 or even all the way down to top hinge #2 at the bottom end of the palisade which satisfies the limitation that they are longer than the radius of a bottom opening).
Alternatively, it could be argued that Omer as modified is silent on the length of the primary palisade is greater than a radius of a bottom opening of the protective device. However, Nichols teaches the general knowledge of one of ordinary skill in the art to provide primary palisades that are greater in length than a radius of a bottom opening of the protective device (Nichols Fig. 1 and 2 element H in a flattened state is longer than the radius). It would have been obvious to one of ordinary skill in the art to further modify the teachings of Omer with the teachings of Nichols before the effective filing date of the claimed invention with a reasonable expectation of success for the spring feature to adjust with plant growth as taught by Nichols. The modification is merely the application of a known technique to a known device ready for improvement to yield predictable results and/or the simple substitution of one known palisades for another to obtain predictable results.
Regarding Claim 2, Orner as modified teaches at least one score line (Orner Fig. 1 #4)
defined into a device body of the protective device.
Regarding Claim 8, Orner as modified teaches the at least one chasm (Orner Fig. 1 #3
elements do not touch and the chasm is the space between each element #) forms an
unobstructed, uncovered opening allowing free flow of air and light into the protective device
interior.
Regarding Claim 10, Orner as modified teaches comprising forming at least one score
line (Orner Fig. 1 #4) into a device body of the protective device.
Claim(s) 3 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. D25,490 to Orner in view of U.S. Patent No. 757,045 to Lane and U.S. Patent No. 325,184 to Nichols as applied to claims 1 and 9 and above, and further in view of U.S. Patent Pub. No. 2012/0291344 to Castagno et al.
Regarding Claim 3, Orner as modified is silent on the device base defines at least one
stake opening. However, Castagno teaches the general knowledge of one of ordinary skill in the
art that it is known to provide stake openings in protective plant devices (Castagno Fig. 1 and 3
#132, #308). It would have been obvious to one of ordinary skill in the art to further modify the
teachings of Orner with the teachings of Castagno before the effective filing date of the claimed
invention with a reasonable expectation of success to prevent undesired displacement in the
wind. The modification is merely the application of a known technique to a known device ready
for improvement to yield predictable results.
Regarding Claim 11, Orner as modified is silent on the device base defines at least one
stake opening. However, Castagno teaches the general knowledge of one of ordinary skill in the
art that it is known to provide stake openings in protective plant devices (Castagno Fig. 1 and 3
#132, #308). It would have been obvious to one of ordinary skill in the art to further modify the
teachings of Orner with the teachings of Castagno before the effective filing date of the claimed
invention with a reasonable expectation of success to prevent undesired displacement in the
wind. The modification is merely the application of a known technique to a known device ready
for improvement to yield predictable results.
Claim(s) 4, 12, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. D25,490 to Orner in view of U.S. Patent No. 757,045 to Lane and U.S. Patent No. 325,184 to Nichols as applied to claims 1 and above, and further in view of U.S. Patent Pub.
No. 2018/0077878 to Sands et al.
Regarding Claims 4 and 5, Orner as modified is silent on the protective device is formed
to melt when exposed to flame of approximately 200 °F to 800 °F; the protective device is
biodegradable. However, Sands teaches the general knowledge of one of ordinary skill in the
provide a protective device that is formed to melt and biodegrade as claimed (Sands teaches
PLA, abstract, paragraph [0006]). It would have been obvious to one of ordinary skill in the art to
further modify the teachings of Orner with the teachings of Sands before the effective filing date
of the claimed invention with a reasonable expectation of success for the organic nature of the
PLA as taught by Sands. The modification is merely the selection of a known material for
intended use [Leshin 125 USPQ 416] for its known physical properties. The modification is
merely the simple substitution of one known material for another to obtain predictable results.
Regarding Claims 12 and 13, Orner as modified is silent on the protective device is
formed to melt when exposed to flame of approximately 200 °F to 800 °F; the protective device
is biodegradable. However, Sands teaches the general knowledge of one of ordinary skill in the
provide a protective device that is formed to melt and biodegrade as claimed (Sands teaches
PLA, abstract, paragraph [0006]). It would have been obvious to one of ordinary skill in the art to
further modify the teachings of Orner before the effective filing date of the claimed invention with
a reasonable expectation of success for the organic nature of the PLA as taught by Sands. The
modification is merely the selection of a known material for intended use [Leshin 125 USPQ
416] for its known physical properties. The modification is merely the simple substitution of one
known material for another to obtain predictable results.
Response to Arguments
Applicant's arguments filed 16 February 2026 have been fully considered but they are not persuasive.
The newly added amendment states that the length of the primary palisade is greater than a radius of a bottom opening of the protective device. However, the claim does not specify where the palisade stops and starts nor the length of the chasm relative to the start and stop of the palisade. Without the explicit structural limits of the palisades claimed it opens for broader interpretation of the claim. For example, Castagno Fig. 1 elements #110 and #112 could be the top end of the palisade and extend down to element #108 or even all the way down to edge #128 at the bottom end of the palisade which satisfies the limitation that they are longer than the radius of a bottom opening via Fig. 1 proportions. Similarly with the teachings of Omer, Omer Fig. 1 the claim does not specify where the palisade stops and starts nor the length of the chasm relative to the start and stop of the palisade; therefore, Omer Fig. 1 #3 point could be the top end of the palisade and extend down to element #5 or even all the way down to top hinge #2 at the bottom end of the palisade which satisfies the limitation that they are longer than the radius of a bottom opening.
Applicant’s arguments with respect to claim(s) 1-15 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The examiner maintains that applicant hasn’t patentably distinguished over the prior art of record.
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 ANDREA M VALENTI whose telephone number is (571)272-6895. The examiner can normally be reached Available Monday and Tuesday only, eastern time.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Poon can be reached at 571-272-6891. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREA M VALENTI/Primary Examiner, Art Unit 3643
18 March 2026