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
Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected method for forming a compressed horticultural slab, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on August 20th, 2026.
Applicant's election with traverse of Group I (claims 1-13) in the reply filed on August 20th, 2026, is acknowledged. The traversal is on the ground(s) that:
Undue search burden is not present, as “all the claims are sufficiently related”.
That “the Office’s demand for election is burdensome, not only of the Patent Office and the Applicant, but also the public,” and that “Applicant may be forced to expend considerable monies for filing and prosecuting at least one additional patent application,” which would lead to the Office being “burdened by multiple unnecessary applications” and the public “generally burdened”.
This is not found persuasive because:
The inventions have attained recognition in the art as separate subjects for inventive effort, based on their classifications. In addition, the inventions must be searched in a manner not likely to yield art pertinent to the other inventions. For example, the non-elected method would require search for specific dwell times and a container with a shape matching the formed slab, while the elected product requires searching for a specific formula describing final loose bulk density. Therefore, the subject matter between the two inventions differs.
The use of the term “burden” within restriction practice is in reference to search and examination burden, per the language of MPEP 808.02, and not the matters of burden as argued by Applicant. MPEP 808.02 indicates that burden is demonstrated by a determination that either the claim groupings are classified separately, have achieved separate status in the art where classifiable together, and/or require different fields of search. The Examiner has indicated that the claim groupings are both classified separately and require different fields of search. This argument does not appear to address the substantive analysis outlined in the previous requirement for restriction.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 10 is objected to because of the following informalities: the units “lbs/ft3” requires a superscript, which should be changed to “lbs/ft3). Appropriate correction is required.
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 1-13 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 the phrases “a moisture content of up to about 20 to 25 wt. %” and “increases above about 20 to 25 wt. %,” but the endpoints of the described ranges are unclear. It Is not clear if the first range should be taken as “a moisture content of up to about 20 wt. %, and further up to 25 wt. %” which is equivalent to “up to 25 wt. %,” or instead, if the range should be taken as “up to some any point that is in the range of about 20 to 25 wt.%,” which is equivalent to “up to about 20 wt.%.” With respect to the second range, it is not clear if the range should be taken as “increases above the entire range of about 20 to 25 wt.%,” which is equivalent to “increases above 25 wt.%,” or instead taken as “increases above some point within the range of about 20 to 25 wt.%,” which is equivalent to “increases above about 20 wt.%.” In the interest of compact prosecution, the claims will be interpreted as directed to a substrate with a first volume having a first moisture content of up to 25 wt. % and a second volume having a second volume with a second moisture content of above to 20 wt.%, further wherein the second moisture content is greater than the first.
Claims 2-8 are rejected as indefinite due to dependence on indefinite claim 1.
Claims 6 and 8 each recite “the first set of dimensions” and “the second set of dimensions,” but there is no antecedent basis for these limitations. In the interest of compact prosecution, the claims will be interpreted as specifying “a first set of dimensions” and “a second set of dimensions”.
Claims 9 and 13 recite “the substrate”, but technically, there is a lack of antecedent basis for this limitation. It is possible the claim instead should reference the preceding claimed fibrous substrate. In the interest of compact prosecution, the claim will be interpreted as directed to the previously-recited fibrous substrate. Similarly, and with respect to claim 9, the phrases “the initial loose bulk density” and “the compression factor”. Since the slab undergoes a process of compression, there are potentially multiple initial loose bulk densities and compression factors (depending on the time selected). In the interest of compact prosecution, the claim will be interpreted as directed to an initial loose bulk density and a compression factor.
Claims 10-13 are rejected as indefinite due to dependence on indefinite claim 9.
Claim 12 recites the phrase “the slab’s surface”, which lacks antecedent basis. It is noted that the slab has multiple surfaces, as best understood (in which case, it is unclear which surface is being referenced by the phrase “the slab’s surface”. In the interest of compact prosecution, the claim will be interpreted as directed to a surface of the slab.
Claim Rejections - 35 USC § 102
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.
Claims 1-3 and 6-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Blieninger (EP1210866A2). Blieninger is read from an English machine translation, which appears in the prosecution history.
With regards to claim 1, Blieninger discloses a swellable pressed block comprising wood fibers (i.e., a compressed horticultural slab comprising a plurality of compressed fiberswhich are compressed via piston to a ratio of 5.6:1 (i.e., corresponds to a claimed ratio of 1:5.6), which is within the claimed range of 1:4 to 1:60 (Blieninger, hereinafter with reference to its translation: claim 1; page 2, “The invention relates to…”; page 5, “The pressing took place…”). In the interest of compact prosecution, the Examiner notes that the claimed compression ratio is directed to a relationship between the volume of the slab prior to its compression/creation and thereafter. As written and described in the present specification, this language is technically product-by-process language, in that it is claiming the parameters of a compression process step. Such language does not limit the present claims to the performance of the recited step, but rather, only the structure implied, per MPEP 2113. In the present case, it is noted that, technically, any set of compressed fibers could be formed from any arbitrarily large initial fiber volume. It is not seen how beginning with a particular mass, number, and lengths of fibers with an overall volume of, for example, 1000 cm3, and compressing the amount to a final volume of 100 cm3, is any different structurally compared to starting with identical block 1000 cm3, expanding the block to a volume 2000 cm3 to reach a state which is initial with respect to compression, then compressing the fibers at their initial state to a final volume of 100 cm3 (i.e., the claimed compression ratio is not indicative of a particular density, void volume, and further, is made reference to a particular intermediate process step, regardless of other process steps which may be present). With regards to the claimed moisture content, Blieninger discloses an initial moisture content of 12 wt. % water, which is within the claimed range of up to 25 wt.%, and further, the final moisture content is achieved after six times the dry weight of the block is completely absorbed (i.e., an amount which is clearly above 25 wt.%) (Blieninger: page 5, “The pressing took place…” through to and including page 6, “The molded body was placed…). Blieninger further discloses that the change in volume due to swelling is at least 300% (i.e., at least 4 times the amount) of the initial volume (Blieninger: page 3, “According to a preferred embodiment, the Functional materials in the above… after two minutes of immersion in water a (swelling) volume of at least 200%, preferably 300%...”). However, in the interest of compact prosecution, it is noted that the present claims are directed to a functional property, and furthermore, the present claims do not positively recite a swelled horticultural slab or any particular moisture content. The present claims only state “when the substrate has a moisture content…” and technically, the claim does not preclude the inclusion of any additional processing steps which achieve the claimed moisture contents of the claimed volume increase.
With regards to claim 2, the wood fibers of Blieninger are produced via a wood pulp (i.e., 100% wood fiber) (Blieninger: page 2, “In principle, the functional material can be anyone wood pulp…).
With regards to claim 3, the block of Blieninger further includes a functional substance such as fertilizer (Blieninger: page 3, “This particularly includes fertilizers and binders”).
With regards to claim 6, it is noted that the term “substantially” is a rather broad term. The slab of Blieninger is “substantially free of bulging” in any state as it is in the form of a block (see above discussion). Alternatively, the claim only states that the slab must be substantially free of bulging “when the slab has a first set of dimensions.” In other words, this limitation is directed to a functional property. As the structure of Blieninger constitutes a slab according to the present claims, it is expected to possess the claimed functional property (i.e., capable of being substantially free of bulging when transformed to a state with either a first set of dimensions or a second set of dimensions). In other words, an article’s composition and structure have been held to be inseparable from its properties, per MPEP 2112. Since the composition and structure of Blieninger are substantially identical to that of the claimed invention, it is expected to possess the claimed property (see above discussion).
With regards to claim 7, it is noted that, technically, any material has a flexibility and is capable of resisting breakage to some degree, and therefore, the block of Blieninger meets the present claim (i.e., the present claim language is rather broad). However, it is further noted that the structure of Blieninger constitutes a slab according to the present claims, and therefore, it is expected to possess the claimed functional properties (i.e., flexibility and breakage-resistance). In other words, an article’s composition and structure have been held to be inseparable from its properties, per MPEP 2112. Since the composition and structure of Blieninger are substantially identical to that of the claimed invention, it is expected to possess the claimed flexibility and breakage resistance (see above discussion).
With regards to claim 8, as the structure of Blieninger constitutes a slab according to the present claims, it is expected to possess the claimed functional property (i.e., capable of being transformed from either a first state to a second state, or from a second state to a first state, such that the dimensions of the first state is about 1.25 to 5% greater than the first set of dimensions). In other words, an article’s composition and structure have been held to be inseparable from its properties, per MPEP 2112. Since the composition and structure of Blieninger are substantially identical to that of the claimed invention, it is expected to possess the claimed property (see above discussion).
Examiner’s Note
Claims 4-5 and 9-13 are considered to distinguish over the prior art of record, and would be considered to contain allowable subject matter presuming the issues under 35 U.S.C. 112(b) are rectified.
The following is a statement of reasons for the indication of distinguishing subject matter.
The closest prior art is Blieninger (EP1210866A2).
Blieninger is silent as to an express ratio or other volumetric relationship between capillary and non-capillary pores, and Blieninger is further silent as to pore capillarity before and after compression (i.e., or desired capillarity as a function of horticultural substrate compression). In addition, Blieninger desires higher capillary forces for the purpose of enhancing water retention. It is unclear why a person of ordinary skill would require or introduce non-capillary pores (i.e., Blieninger teaches away from the incorporation or adjustment of non-capillary pores such that a higher ratio or volume of capillary pores is present). In other words, Blieninger both: fails to acknowledge relative amounts of capillary and non-capillary pores as result-effective; and teaches away from introducing any degree of non-capillarity. Therefore, not only does Blieninger fail to disclose or teach the claimed subject matter, but Blieninger teaches away from the claimed subject matter.
Conclusion
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/ETHAN WEYDEMEYER/
Examiner, Art Unit 1783
Prosecution Insights