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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
Applicant states that this application is a continuation or divisional application of the prior-filed application. A continuation or divisional application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application: The facets of claims 2-3 are not disclosed in the parent application 16/943,138.
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 16/943,138, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Claims 2-3 do not have support in the parent application, and therefore will only receive the regular filing date of application 19/037,141.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the delineation of claim 1 must be shown or the feature(s) canceled from the claim(s). Additionally, this element is not given a reference number in the specification. No new matter should be entered.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the facets of claims 2-3 must be shown or the feature(s) canceled from the claim(s). Additionally, this element is not given a reference number in the specification. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 4 is objected to because of the following informalities:
Claim 4 reads “The device of claim 1, wherein the device, and the first plurality of flexible
protrusions therein, are sufficient to support one or more plants germinated from the seeds, plant clones, plant cuttings, root stock, or plants placed into the device, “ which should read “The device of claim 1, wherein the device, and the first plurality of flexible protrusions therein, are sufficient to support one or more plants germinated from the seeds, plant clones, plant cuttings, root stock, or plants placed into the device. “
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 2-3 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.
Claims 2 and 3 are rejected for a lack of clarity for the limitations regarding the “facets.” As noted above, neither the specification nor the drawings of the parent application or the instant application mention the facets of claims 2-3. Based on claim 2, it appears that the facets may simply be a portion of the structure at the delineation that are connected to the protrusions. However, it is unclear how the protrusions then separate from making contact with the facets as claimed in claim 3. The drawings do not provide any further details or clarity. Clarification and correction are required but no new matter may be added.
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-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4-5 and 7-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21-34 of U.S. Patent No. 12253249 . Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons.
Regarding claim 1, Patent 12253249 claims a device for growing plants, comprising:
a first plurality of flexible protrusions comprising a synthetic, non- biodegradable polymer (claim 21, lines 2-3)
wherein the flexible protrusions are attached to a structure that defines a delineation between a root zone and a shoot zone (claim 21, lines 4-5)
wherein the flexible protrusions are sufficient to suspend one or more seeds in air, such that, when the device is in use (claim 21, lines 6-7), the seeds are in contact with one or more of the protrusions of the first plurality of flexible protrusions (claim 21, lines 9-10), and wherein the seeds cannot pass through the delineation under their own weight (claim 21 lines, 7-8),and
wherein the first plurality of flexible protrusions are (a) attached to the structure in a resting position, and (b) adopt a flexed position in response to an external force, and (c) the flexible protrusions return to the resting position upon removal of the external force (claim 21, lines 16-19).
Regarding claim 4, Patent 12253249 claims the device of claim 1, wherein the device, and the first plurality of flexible protrusions therein, are sufficient to support one or more plants germinated from the seeds, plant clones, plant cuttings, root stock, or plants placed into the device (claim 21, lines 13-15).
Regarding claim 5, Patent 12253249 claims the device of claim 1, wherein the delineation provided by the structure to which the device is attached, when in use, has an orientation relative to the ground selected from the group consisting of a horizontal plane, a vertical plane, and a slanted plane (claim 23).
Regarding claim 7, Patent 12253249 claims the device of claim 1, wherein the protrusions have a Shore A hardness of less than 100 (claim 24).
Regarding claim 8, Patent 12253249 claims the device of claim 1, wherein the device is removable from the structure (claim 25).
Regarding claim 9, Patent 12253249 claims the device of claim 1, wherein the device is permanently attached to the structure (claim 26).
Regarding claim 10, Patent 12253249 claims the device of claim 1, wherein the structure to which the device is attached is removable from a superstructure (claim 27).
Regarding claim 11, Patent 12253249 claims the device of claim 1, wherein the superstructure is mobile (claim 28).
Regarding claim 12, Patent 12253249 claims a method of growing plants, comprising:
growing one or more plants from seed (claim 29 line 2), the device comprising:
a first plurality of flexible protrusions comprising a synthetic, non- biodegradable polymer (claim 29, lines 3-4),
wherein the flexible protrusions are attached to a structure that defines a delineation between a root zone and a shoot zone (claim 29, lines 5-6),
wherein the flexible protrusions are sufficient to suspend one or more seeds in air (claim 29, lines 7-9), such that, when the device is in use, the seeds are in contact with one or more of the protrusions of the first plurality of flexible protrusions (claim 29, lines 10-11), and wherein the seeds cannot pass through the delineation under their own weight, wherein the device (claim 29, lines 7-9) and
the first plurality of flexible protrusions therein, are sufficient to support one or more plants germinated from the seeds, plant clones, plant cuttings, root stock, or plants placed into the device (claim 29, lines 14-16), and
wherein the first plurality of flexible protrusions are (a) attached to the structure in a resting position, and (b) adopt a flexed position in response to an external force, and (c) the flexible protrusions return to the resting position upon removal of the external force (claim 29, lines 17-20).
Regarding claim 13, Patent 12253249 claims the method of claim 12, wherein an edible portion of the plants is harvested from the device by shearing, picking, or severing (claim 30).
Regarding claim 14, Patent 12253249 claims the method of claim 12, wherein the harvesting includes leaving a portion of the one or more plants in the device, and subsequently removing said portion from the device, and reusing the device (claim 31).
Regarding claim 15, Patent 12253249 claims the method of claim 12, wherein the growing comprises germinating and growing the plants without a fibrous or porous media (claim 32).
Regarding claim 16, Patent 12253249 claims the method of claim 12, wherein, when one or more of the flexible protrusions adopt the flexed position in response to an external force, the seeds, plants, or portions of plants remaining in the device following a harvest, pass through the delineation and are removable from the device (claim 33).
Regarding claim 17, Patent 12253249 claims the method of claim 12, wherein the external force is a high-pressure washing device (claim 34).
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) 1-5, and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Castaldini (US-20180317408-A1) in view of Van Buren (US-20200008378-A1).
Regarding claim 1, Castaldini discloses a device for growing plants, comprising:
a first plurality of flexible protrusions (flexible teeth, see para 0014, lateral teeth 1 for supporting plant 7, see para 0026) comprising a synthetic, non- biodegradable polymer (plastic, see para 0007);
wherein the flexible protrusions (1) are attached to a structure (2) that defines a delineation between a root zone and a shoot zone (upper portion for canopy growth and lower portion for root growth, see para 0026 and see fig 3);
wherein the first plurality of flexible protrusions (1) are (a) attached to the structure in a resting position (see para 0014, 0026 and fig 1), and (b) adopt a flexed position in response to an external force (teeth may bent where needed to allow space for plants, see para 0014), and (c) the flexible protrusions return to the resting position upon removal of the external force (deformation is elastic or reversibly so the protrusions return to their original shape, see para 0014).
Castaldini fails to disclose wherein the flexible protrusions are sufficient to suspend one or more seeds in air, such that, when the device is in use, the seeds are in contact with one or more of the protrusions of the first plurality of flexible protrusions, and wherein the seeds cannot pass through the delineation under their own weight.
Van Buren teaches wherein the flexible protrusions are sufficient to suspend one or more seeds in air (seed holder 490 set within pins and protrusions 433, 434 and 436, see figs 34a-e), such that, when the device is in use, the seeds are in contact with one or more of the protrusions of the first plurality of flexible protrusions (seeds in 490 connected to/in contact with protrusions 433, 434 and 436), and wherein the seeds cannot pass through the delineation under their own weight (seed holder 490 set within pins and protrusions 433, see figs 34a-e).
It would have been obvious to one of ordinary skill in the art before the effective filing date of
the claimed invention to have modified the system of Castaldini with the seed suspension of Van Buren with a reasonable expectation of success as this will provide a supportive and protective growing environment for all stages of the plants life cycle to provide higher yield of healthy adult crops.
Regarding claim 2, the modified reference teaches the device according to claim 1, and Castaldini further discloses wherein the first plurality of protrusions (1), when in the resting position, contact one or more facets (3) of the structure that defines the delineation between the root zone and the shoot zone (see fig 1 and 112(b) rejection above).
Regarding claim 3 , the modified reference teaches the device according to claim 2, and Castaldini further discloses wherein when one or more protrusions of the first plurality of protrusions adopt the flexed position in response to an external force (teeth may bent where needed to allow space for plants, see para 0014), said protrusions separate from making contact with one or more facets of the structure that defines the delineation between the root zone and the shoot zone until the external force is removed (see 112(b) rejection above).
Regarding claim 4, the modified reference teaches the device according to claim 1, and Castaldini further discloses wherein the device, and the first plurality of flexible protrusions therein, are sufficient to support one or more plants germinated from the seeds, plant clones, plant cuttings, root stock, or plants placed into the device (see para 0026 and fig 3).
Regarding claim 5, the modified reference teaches the device according to claim 1, and Castaldini further discloses wherein the delineation provided by the structure to which the device is attached, when in use, has an orientation relative to the ground selected from the group consisting of a horizontal plane, a vertical plane, and a slanted plane (support member 2 divides the plant device into upper and lower chambers and has a horizontal orientation, see fig 1 and 3).
Regarding claim 8, the modified reference teaches the device according to claim 1 except wherein the device is removable from the structure. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device to be removable with a reasonable expectation of success as this will allow for easier and more efficient cleaning, and since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179.
Regarding claim 9, the modified reference teaches the device according to claim 1, and Castaldini further discloses wherein the device is permanently attached to the structure (1 and 2 permanently connected, see fig 1).
Regarding claim 10, the modified reference teaches the device according to claim 1, and Castaldini further discloses wherein the structure (2) to which the device is attached is removable from a superstructure (container 4, see fig 2).
Regarding claim 11, the modified reference teaches the device according to claim 10, and Castaldini further discloses wherein the superstructure is mobile (container 4 can be placed in a liquid medium, see para 0006).
Regarding claim 12, Castaldini discloses a method of growing plants, comprising:
a first plurality of flexible protrusions (flexible teeth, see para 0014, lateral teeth 1 for supporting plant 7, see para 0026) comprising a synthetic, non- biodegradable polymer (plastic, see para 0007);
wherein the flexible protrusions (1) are attached to a structure (2) that defines a delineation between a root zone and a shoot zone (upper portion for canopy growth and lower portion for root growth, see para 0026 and see fig 3);
a first plurality of flexible protrusions (flexible teeth, see para 0014, lateral teeth 1 for supporting plant 7, see para 0026) comprising a synthetic, non- biodegradable polymer (plastic, see para 0007);
wherein the flexible protrusions (1) are attached to a structure (2) that defines a delineation between a root zone and a shoot zone (upper portion for canopy growth and lower portion for root growth, see para 0026 and see fig 3).
Castaldini fails to disclose growing one or more plants from seed, the device comprising: wherein the flexible protrusions are sufficient to suspend one or more seeds in air, such that, when the device is in use, the seeds are in contact with one or more of the protrusions of the first plurality of flexible protrusions, and wherein the seeds cannot pass through the delineation under their own weight, wherein the device.
Van Buren teaches growing one or more plants from seed (growing seeds with seed holder 490, see para 0195), the device comprising: wherein the flexible protrusions are sufficient to suspend one or more seeds in air (seed holder 490 set within pins and protrusions 433, 434 and 436, see figs 34a-e), such that, when the device is in use, the seeds are in contact with one or more of the protrusions of the first plurality of flexible protrusions (seeds in 490 connected to/in contact with protrusions 433, 434 and 436), and wherein the seeds cannot pass through the delineation under their own weight (seed holder 490 set within pins and protrusions 433, see figs 34a-e).
It would have been obvious to one of ordinary skill in the art before the effective filing date of
the claimed invention to have modified the method of Castaldini with the seed suspension and growing plants from seeds as taught by Van Buren with a reasonable expectation of success as this will provide a supportive and protective growing environment for all stages of the plants life cycle to provide higher yield of healthy adult crops.
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over Castaldini (US-20180317408-A1) in view of Van Buren (US-20200008378-A1) as applied to claim 1 above, and further in view of Giacomantonio (US-8181391-B1).
Regarding claim 6, the modified reference teaches the device according to claim 1.
The modified reference fails to teach wherein the polymer is a food grade polymer.
Giacomantonio teaches wherein the polymer is a food grade polymer (food grade plastic mats 38/39 for planting, see col 5, lines 51-68).
It would have been obvious to one of ordinary skill in the art before the effective filing date of
the claimed invention to have modified the planting polymer to be food-grade as taught by Giacomantonio with a reasonable expectation of success as this will ensure that the environment will result in plants that are safe for consumption.
Claim(s) 7 is rejected under 35 U.S.C. 103 as being unpatentable over Castaldini (US-20180317408-A1) in view of Van Buren (US-20200008378-A1) as applied to claim 1 above, and further in view of Goldsmith (US-10517241-B1).
Regarding claim 7, the modified reference teaches the device according to claim 1.
The modified reference fails to teach wherein the protrusions have a Shore A hardness of less than 100.
Goldsmith teaches wherein the protrusions have a Shore A hardness of less than 100 (Non-cellular silicone elastomers have approximately 10 shore A hardness, see col 15, lines 3-7).
It would have been obvious to one of ordinary skill in the art before the effective filing date of
the claimed invention to have modified the protrusions with the shore A hardness of Goldsmith with a reasonable expectation of success as this will ensure the protrusions are rigid enough to prevent the seeds from falling through the protrusions during germination.
Claim(s) 13 is rejected under 35 U.S.C. 103 as being unpatentable over Castaldini (US-20180317408-A1) in view of Van Buren (US-20200008378-A1) as applied to claim 12 above, and further in view of Bidram (US-20220110270-A1).
Regarding claim 13, the modified reference teaches the method of claim 12.
The modified reference fails to teach wherein an edible portion of the plants is harvested from the device by shearing, picking, or severing.
Bidram teaches wherein an edible portion of the plants is harvested from the device by shearing, picking, or severing (picking or pruning the fruit or peppers, see para 0057).
It would have been obvious to one of ordinary skill in the art before the effective filing date of
the claimed invention to have modified the system with the harvesting the edible plant portion as taught by Bidram with a reasonable expectation of success as this will allow the plant to continue growing and produce more fruits or vegetables.
Claim(s) 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Castaldini (US-20180317408-A1) in view of Van Buren (US-20200008378-A1) and Bidram (US-20220110270-A1) as applied to claim 13 above, and further in view of Millar (US-10905052-B2).
Regarding claim 14, the modified reference teaches the method of claim 13, and Bidram further teaches wherein the harvesting includes leaving a portion of the one or more plants in the device (see fig 7).
The modified reference fails to teach subsequently removing said portion from the device, and reusing the device.
Millar teaches further teaches wherein the harvesting includes leaving a portion of the one or more plants in the device (harvest then remove plant matter, see col 3, lines 6-8), and subsequently removing said portion from the device (harvest then discard plant matter, see col 3, lines 6-8), and reusing the device (carts washed for reuse after harvesting & discarding plant matter, see col 3, lines 6-8).
It would have been obvious to one of ordinary skill in the art before the effective filing date of
the claimed invention to have modified the method with the discarding of plant matter and reusing the device as taught by Millar with a reasonable expectation of success as reusing the planting devices provides a more environmentally friendly and economical planting method.
Regarding claim 15, the modified reference teaches the method of claim 14, and Castaldini further discloses wherein the growing comprises germinating and growing the plants without a fibrous or porous media (gravel or perlite, para 0002, liquid medium, para 0006 and 0019).
Regarding claim 16, the modified reference teaches the method of claim 14, and Castaldini further discloses when one or more of the flexible protrusions adopt the flexed position in response to an external force (protrusions flex in response to external force, see para 0014), the seeds, plants, or portions of plants remaining in the device following a harvest, pass through the delineation and are removable from the device (plants are removable from the holder, see para 0009).
Claim(s) 17 is rejected under 35 U.S.C. 103 as being unpatentable over Castaldini (US-20180317408-A1) in view of Van Buren (US-20200008378-A1), Bidram (US-20220110270) and Millar (US-10905052-B2) as applied to claim 6 above, and further in view of Fujisawa (US-20210204499-A1).
Regarding claim 17, the modified reference teaches the method of claim 16.
The modified reference fails to teach wherein the external force is a high-pressure washing device.
Fujisawa teaches wherein the external force is a high-pressure washing device (Pressure washing of cultivation vessels 3, see para 0066).
It would have been obvious to one of ordinary skill in the art before the effective filing date of
the claimed invention to have modified the method with the pressure washing of Fujisawa with a reasonable expectation of success as this will ensure the planting device is properly cleaned prior to reuse to reduce the risk of contamination or disease.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The art noted in the References Cited document is relevant as it pertains to similar systems for plant cultivation. Specifically, Robell discloses a planting device with a root zone and a shoot zone, along with the germination of seeds.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE ANNE KLOECKER whose telephone number is (571)272-5103. The examiner can normally be reached M-Th: 8:00 -5:30 MST, F: 8:00 - 12:00 MST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Huson can be reached at (571) 270-5301. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.A.K./Examiner, Art Unit 3642
/JOSHUA D HUSON/Supervisory Patent Examiner, Art Unit 3642