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-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, 3-10, 13-20, and 23-25 are rejected on the ground of nonstatutory double patenting.
For example, of claims 1, 3-10, 13-20 and 23-25, claim 1 is unpatentable over claim 1 of U.S. Patent No. US 12,402,553 B2 (corresponding to claim 50 as allowed in the application that issued into US 12,402,553 B2). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘553 patent includes the same structure of an output from the at least one sensor is used to trigger application of seed dressing to the separated seed while it is falling freely onto the underlying surface, through the recitation of a “detecting with the first sensor and the detecting with the second sensor, wherein the impact location is along the fall line of the individual seed and outside the sowing device; and spraying the seed dressing from an application nozzle onto the individual seed while in free fall at the impact location and with the time delay to produce a treated seed, wherein the treated seed lands on an underlying surface” in lines 5-15 of ‘553. The ‘553 patent also includes the structure of wherein seeds which are present in a reservoir container are removed from the reservoir container and separated, through the recitation of “separating an individual seed from a reservoir container containing a plurality of seeds; dispensing the individual seed from the separating” in lines 2 and 3 of ‘553.
Allowable Subject Matter
Claims 1, 3-10, 13-20, and 23-25 would be allowable if rewritten or amended to overcome the double patenting rejections.
The prior art of reference fails to disclose or make obvious the combined limitations of Applicant’s claimed invention. Regarding wherein the application of seed dressing to the separated seeds takes place while the separated seeds fall freely onto the underlying surface for seed, wherein after the seeds have been separated they are allowed to fall past at least one sensor that detects each separated seed, and wherein an output from the at least one sensor is used to trigger application of seed dressing to the separated seed while it is falling freely onto the underlying surface, the most relevant art is Wilkerson (US 20040231575 A1), as the art contains what could be considered a calculation of an impact location for the individual seed and a time delay for spraying of a seed dressing of the individual seed based on the detecting with the first sensor and the detecting with the second sensor. Wilkerson, however, fails to disclose that the application of seed dressing to the separated seeds takes place while the separated seeds fall freely onto the underlying surface for seed, wherein after the seeds have been separated they are allowed to fall past at least one sensor that detects each separated seed, and wherein an output from the at least one sensor is used to trigger application of seed dressing to the separated seed while it is falling freely onto the underlying surface. Kowalchuk (US 20160374260 A1), contains what could be considered wherein seeds which are present in a reservoir container are removed from the reservoir container and separated; however, the art fails to remedy the deficiencies of Wilkerson to teach an output from the at least one sensor that detects each separated seed is used to trigger application of seed dressing to the separated seed while it is falling freely onto the underlying surface, as claimed.
Therefore, the prior art of record while teaching some aspects of the claimed invention fail to cure the deficiencies of each other in a manner that would render the claim obvious.
Response to Arguments
Applicant's arguments filed 12/26/2025 have been fully considered but they are not persuasive.
Regarding the argument on pages 8 and 9 that “However, it is submitted that the Office Action does not show that all features of independent claim 1 is not patentably distinct from claim 1 of 12,402,553 (i.e., corresponding to claim 50 as allowed in the application that issued into 12,402,553). For example, independent claim 1 recites, ‘wherein an output from the at least one sensor is used to trigger application of seed dressing to the separated seed while it is falling freely onto the underlying surface.’ In comparison, claim 1 of '553 does not include this limitation, but rather recites ‘spraying the seed dressing from an application nozzle onto the individual seed while in free fall at the impact location and with the time delay to produce a treated seed, wherein the treated seed lands on an underlying surface’,” the Examiner submits that although independent claim 1 and claim 1 of ‘553 are not identical, the claims are not patentably distinct, as both claims recite the same structure of an output from the at least one sensor is used to trigger application of seed dressing to the separated seed while it is falling freely onto the underlying surface and wherein seeds which are present in a reservoir container are removed from the reservoir container and separated. The specific limitations “wherein an output from the at least one sensor is used to trigger application of seed dressing to the separated seed while it is falling freely onto the underlying surface” of independent claim 1, and “spraying the seed dressing from an application nozzle onto the individual seed while in free fall at the impact location and with the time delay to produce a treated seed, wherein the treated seed lands on an underlying surface” of ‘553 do not demonstrate that the claims are patentably distinct, as both list an application of seed dressing to a seed while it is falling freely onto an underlying surface. ‘553 also recites “detecting with a second sensor of the array of sensors the individual seed from the dispensing; calculating an impact location for spraying of a seed dressing of the individual seed and a time delay for spraying of the seed dressing of the individual seed based on the detecting with the first sensor and the detecting with the second sensor,” which is not patentably distinct from “wherein an output from the at least one sensor is used to trigger application of seed dressing.” Therefore, the Examiner maintains that claims 1, 3-10, 13-20, and 23-25 are rejected on the ground of nonstatutory double patenting.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure.
Hubner et al., US 9936631 B1, discusses a device and method for detecting and reporting seed placement.
Goldman et al., US 20110046776 A1, discusses a seed planter data acquisition and management system.
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.
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/S.T.C./Examiner, Art Unit 3642
/MAGDALENA TOPOLSKI/Primary Examiner, Art Unit 3642