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 .
Election/Restrictions
Newly submitted claims 21-28 and 37-40 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claims 21-27 and 37-40 contain limitations not previously examined. The originally examined invention did not contain the limitations of the visible color of the fibrous composition resulting from in-situ formation of pigments from the pigment precursors by oxidation or the fibrous tree bark comprising naturally occurring pigment precursors including tannins.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 21-28 and 37-40 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 29-31 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.
In claim 29, fibrous wood components can be used alternative to fibrous tree bark. However, the limitation of “a color of the composition is imparted by pigments derived from the tree bark” requires tree bark, even though the limitation immediately prior lists tree bark in the alternative. This conflict is further reflected in claims 30 and 31, both of which require the absence of tree bark.
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) 29-34 and 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wright US 2006/0112629 in view of MacConnell US 2006/0150495.
Regarding claim 29, Wright discloses a dyed mulch or growing medium composition comprising: fibrous tree bark (Wright, ¶0042, 0043) and/or fibrous wood components (Wright, ¶0033); and a non-permanent dye (Wright, ¶0038), a color of the composition is imparted by pigments derived from the tree bark (inherent) and from the non-permanent dye, the dyed mulch or growing medium composition having a dry bulk density of about 6.5 lb/ft3 or lower (Wright, ¶0045). Wright fails to disclose the medium having a color with a dominant wavelength from about 400 nm to about 780 nm. MacConnell teaches a media substrate comprising wood which is dyed brown (MacConnell, ¶0040). It is known to those of ordinary skill in the art that the color brown corresponds to the claimed wavelength. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention with a reasonable expectation of success to modify the medium of Wright so that it was brown as taught by MacConnell as to increase the aesthetic appeal of the medium (Wright, ¶0038).
Regarding claims 30 and 31, Wright in view of MacConnell further discloses the composition including 100% fibrous wood components (Wright, ¶0033).
Regarding claims 32, Wright in view of MacConnell further discloses the fibrous wood components include softwood varieties (Wright, ¶0031).
Regarding claim 33, Wright in view of MacConnell further discloses the composition comprising coir (Wright, ¶0042).
Regarding claim 34, Wright in view of MacConnell further discloses sand (Wright, ¶0042).
Regarding claim 36, Wright in view of MacConnell further discloses the non-permanent dye being non-toxic (Wright, ¶0056).
Claim(s) 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wright US 2006/0112629 in view of MacConnell US 2006/0150495, as applied to claims 29-34 and 36 above, and in further view of Spittle et al US 2009/0265980.
Regarding claim 35, Wright in view of MacConnell discloses the mulch of claim 29 but fails to disclose the color imparted by the non-permanent dye lasting up to 30 days post-application. Spittle teaches a non-permanent dye of mulch lasting up to 30 days post-application (Spittle, ¶0006). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention with a reasonable expectation of success to modify the mulch of Wright so that the color of the non-permanent dye lasted up to 30 days post-application as ensure the mulch was colorfast for an extended period of time.
Response to Arguments
Applicant’s arguments with respect to the claim(s) 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.
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 KRISTEN C HAYES whose telephone number is (571)272-7881. The examiner can normally be reached M-F 8am-6pm.
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, Michener Joshua can be reached at 571.272.1467. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISTEN C HAYES/Primary Examiner, Art Unit 3642
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