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 .
DETAILED ACTION
Claims 1-20 are currently pending and the claims as originally filed on 02/19/2025 are acknowledged.
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.
Specification
The abstract of the specification is objected to a minor informality.
Applicant is reminded of the proper content of an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. The form and legal phraseology often used in patent claims, such as "means" and "said," should be avoided. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, "The disclosure concerns," "The disclosure defined by this invention," "The disclosure describes," etc. See MPEP 608.01(b)
In the instant case, the abstract exceed 150 words.
Therefore, replacement of abstract is respectfully requested.
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.
Claim 20 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 20 recites the broad recitation “mineral elements”, and the claim also recites “phosphorous (P), iron (Fe), copper (Cu) … which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Appropriate correction is requested.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over US2022/0030878A1 (hereinafter US ‘878) in view of US2022/0174960A1 (hereinafter US ‘960).
Applicant claims the below claim 1 filed on 02/19/2025:
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For examination purpose, the clauses led by “when applied to grass … of the turf grass” of instant claims 1, 19 and 20 refer to intended uses of the composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. However, the claimed intended uses do not patentably distinguish the composition, per se, since such undisclosed uses are inherent in the claimed composition. In this context, please see the supportive case law holding that “the patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure." Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Thus, "recitation of a new intended use for an old product does not make a claim to that old product patentable." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1977).
Therefore, when the prior art teaches the claimed composition, the claimed intended uses are implicit.
Level of Ordinary Skill in the Art
(MPEP 2141.03)
MPEP 2141.03 (I) states: “The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). The level of skill is that of a grass treatment research scientist, as is the case here, then one can assume comfortably that such an educated artisan will draw conventional ideas from agricultural medicine, pharmacy, physiology and chemistry— without being told to do so.
In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
Determination of the scope and content of the prior art (MPEP 2141.01);
Ascertainment of the difference between the prior art and the claims (MPEP 2141.02) and Finding of prima facie obviousness Rational and Motivation (MPEP 2142-2143)
US ‘878 discloses methods for enhancing root strength and safety of turf grass (title); methos include applying a turf grass treatment composition containing a combination of microbe and/or their growth by-products to the turf grass roots and/or to soil (abstract); the composition further comprises biosurfactants produced by microorganism growth by-product such as glycolipids (e.g., sophorolipids, cellobiose lipids, rhamnolipids, mannosylerythritol lipids and trehalose lipids) which reads on the claimed at least one biosurfactant in an amount of 0.001 to 10% which overlaps the range of instant claim 7 (e.g., [0020], [0047], [0095]-[0097]); the composition further comprises fertilizers, herbicides, pesticides, etc. ([0023]) which reads on the claimed at least one plant health component; the composition further comprises prebiotics such as kelp extract, fulvic acid, chitin, humate and humic acid (e.g., (e.g., [0017]-[0019] and [0022]) and microorganisms such as tricoderma, fungi, yeast, etc. (e.g., [0065], [0071], [0084]-[0086]), which reads on the claimed biostimulant, and the prebiotics can be applied is about 0.1L/acre to about 0.5L/acre (e.g., [0182]), and the kelp extract can be used in an amount of 5 to 10% or about 6%, and humic acid can be used in an amount of 8 to 12% or about 10% (e.g., [0214]) which overlaps the range of instant claim 12; and the composition further comprises water (e.g., [0214]) which reads on the claimed inert component; application of the composition enhances the strength of the turf grass roots by increasing root density, increasing root diameter, and/or increasing root depth (e.g., claim 8), resulting in increased tensile strength of a root or root system, meaning increased ability to resist breaking under tension (e.g., [0102]), improves maintenance and upkeep of natural turf grass fields (abstract), produces microbial metabolites such as, enzymes, proteins, etc. (e.g., [0156]), and improves the nutrient and moisture retention properties of the rhizosphere in which the turf grass grows ([0028]), etc. (instant claims 1 and 13-16 (in part), and instant claims 2-12 and 17-20). For the overlapping ranges, please see MPEP 2144.05: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
However, US ‘878 does not expressly teach at least one synthetic surfactant of instant claims 1 and 13-15 and its amount of instant claim 16. The deficiencies are cured by US ‘960.
US ‘960 discloses agricultural compositions for applying to the plant e.g., turf grass ([0251]) comprising one or more carbohydrates, one or more surfactants in an amount of at least 5% or about 5 to about 50% that overlaps the range of instant claim 16, and one or more active agents selected from the group comprising one or more phytotoxins, one or more nutrients, and one or more organic molecules (abstract and claims 5-6 of prior art) wherein the surfactants include nonionic surfactants, anionic surfactants, cationic surfactants and/or amphoteric surfactants and promote the ability of aggregates to remain in solution during spraying (e.g., [0271]), and for example, non-ionic alkyl polyglucosides (e.g., [0112] and Example 7) which reads on the claimed synthetic surfactant.
It would have been obvious to add further synthetic surfactants of US ‘960 to the composition of US ‘878 containing biosurfactant in order to promote the ability of aggregates to remain in solution during spraying as taught by US ‘960.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the combined teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the combined references, especially in the absence of evidence to the contrary.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 9-25 of copending application No. 18/750519.
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets require at least one biosurfactants and the amount thereof, microorganism including bacteria, yeast, and fungi, plat health component or biostimulant, inert component water, and intended uses. The different between them is that 1) instant claims are directed to a composition while copending ‘519 claims are mainly directed to methods (claims 2-4 and 9-25), and however both claims require almost same composition, and thus, it would be obvious; and 2) the instant claims further requires synthetic surfactant such as alkyl polyglucosides ( APGs), while copending ‘519 claims requires additional naturally-derived surfactants such as APGs, and however, replacing naturally-derived surfactant of copending ‘519 with the synthetic same surfactant material is a matter of choice and have yielded no more than the predictable results.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
This is a provisional double patenting rejection since the conflicting claims have not yet been patented.
Conclusion
All claims examined are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYUNG S CHANG whose telephone number is (571)270-1392. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yong (Brian-Yong) S Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYUNG S CHANG/ Primary Examiner, Art Unit 1613
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