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 .
Election/Restrictions
Newly submitted claims 21-22 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: applicants have added claims to a new method which is not related to the previously claimed method and which is patentably distinct from the previously elected method of treating plant roots with the claimed blend which has been solubilized in water. Particularly the new method is to coating a seed which does not require the blend to be solubilized and/or in the form of a blend solution and as such is an invention which is distinct from the previously elected invention at this time.
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 Accordingly, claims 21-22 are withdrawn from consideration as being directed to a non-elected invention.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 interpretation
Applicant’s claims still recite: “…the method comprising…” but have amended the blend used in the method claims of 1-2, 4, 8, 10-13 “to consist essentially of…”. The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976). However, for the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising.” See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 135. Since applicant’s have not defined what the consisting essentially of is mean to exclude, this transitional language is being interpreted as comprising.
Applicant’s claims recite organic acid and organic herbicide. Applicants have not defined the term organic as it relates to these terms, e.g. applicants have not defined “organic acid” nor have they defined “organic herbicide”. Thus, the examiner is giving these terms the broadest definition in that it includes both any herbicide or any acid which contains carbon atoms and/or it can also be used to mean any herbicide or acid which is sourced naturally, not synthetically made (i.e. inorganic acids sourced from natural sources, e.g. sulfuric acid which occurs naturally, would read on the broad interpretation of these terms as interpreted by the examiner).
Claim Objections
Claim 13 is objected to because of the following informalities: the claim incorrectly depends from claim 28 which does not exist and as such is clearly a typo. Claim 13 should depend from claim 12 based on the contents of the claim, and for examination purposes this is how the claim is being interpreted and examined, just as in the previous office action.
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 1-2, 4, 8, 10-13, and 23-24 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 1-2, 4, 8, 10-13 are now indefinite because applicant’s have added the limitations of claim 6 into claim 1 (claim 6 previously depended from claim 5 which was/appeared to be adding an additional organic acid/organic ester to the composition of claim 1). These amendments by applicant have now caused issues with respect to the scope of the organic acid in claim 1 as now claimed. Previously, the examiner was interpreting the organic acid of claim 1 as an organic acid, e.g. a carboxylic acid and/or any acid from a natural source, because applicants did not provide an explicit/specific definition defining the organic acid to be contrary to the art known definition, (the issues with what scope was to be encompassed with organic acid was discussed with respect to claim 5 (and 6) which appeared to previously be adding an additional organic acid to the composition, and a typo missed claim 6 in the 112(b) rejection (in addition to the 112(d) rejection of claim 6) which was also clearly being addressed with this rejection as this rejection discusses the issues with claiming wherein the carboxylic acid is a carboxylic ester because the specification never explicitly exemplifies or discloses that an ester is/can be a carboxylic acid nor has the specification explicitly and clearly redefined organic acid to include carboxylic esters as the specification states, “Briefly organic acid may be defined as an organic compound with acidic properties” and carboxylic acid esters do not have acidic properties. Further, as is discussed below “may be” means this is not an explicit definition as “may be” signals/is optional language. Additionally, the discussion of the carboxylic acid ester within the 112(b) rejection of claim 5 was obviously meant to include claim 6, as claim 6 was the only claim which contained the carboxylic acid is a carboxylic acid ester language/limitations. Thus, it is clear from reading this rejection it should have been over claim 5 and claim 6 and the missing claim 6 was clearly a typo as the examiner discussed the issues with respect to claiming a carboxylic acid is a carboxylic ester in this rejection). Thus, applicant’s amendments to claim 1 now render this claim indefinite because applicant have never explicitly defined organic acid to include carboxylic acid ester, i.e. applicants have never provided the required explicit and clear definition if they want to be their own lexicographer (See MPEP 2111.01 (IV) including (IV) (A)), “The only exceptions to giving the words in a claim their ordinary and customary meaning in the art are (1) when the applicant acts as their own lexicographer; and (2) when the applicant disavows or disclaims the full scope of a claim term in the specification. “To act as their own lexicographer, the applicant must clearly set forth a special definition of a claim term in the specification that differs from the plain and ordinary meaning it would otherwise possess.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366, 62 USPQ2d 1658, 1662 (Fed. Cir. 2002). An applicant is entitled to be their own lexicographer and may rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s) in the specification at the relevant time. See In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994) (holding that an inventor may define specific terms used to describe invention, but must do so “with reasonable clarity, deliberateness, and precision” and, if done, must “‘set out his uncommon definition in some manner within the patent disclosure’ so as to give one of ordinary skill in the art notice of the change” in meaning) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387-88, 21 USPQ2d 1383, 1386 (Fed. Cir. 1992)). In the instant case, as discussed in the previous 112 rejections of claims 5-6, the specification at [0059] states: Briefly organic acid may be defined as an organic compound with acidic properties. May be defined is not a clear and explicit definition because “may be” is optional language and as such this definition is not required by applicant’s specification or claims as originally filed. Additionally, the exemplified organic acids listed in this paragraph by applicants in no way include carboxylic acid esters. Thus, the examiner maintains as discussed previously that applicant’s claims that the organic acid is a carboxylic acid ester is contrary to the art known definition of an organic acid as was previously addressed by the examiner with respect to previous 112 rejections of claims 5-6. Thus, now the scope of what applicants are claiming with claim 1 is unclear because an organic acid does not include a carboxylic acid ester because an ester is not an acid by definition, even according to applicants own optional definition in the spec at [0059] because a carboxylic acid ester does not have acidic properties, e.g. it does not/cannot deprotonate to form a COO- group having the negative charge because there is no hydrogen there to remove. Thus, because applicants did not clearly redefine organic acid to include carboxylic acid ester as an explicit/clear definition of how they are using/defining the term “organic acid” in order to be their own lexicographer, in order to have organic acid encompass compounds which are contrary to the art known definition, e.g. the carboxylic acid ester now claimed in claim 1, the term “organic acid” is to be given it art known meaning, e.g. an organic is an actual organic acid, e.g. a carboxylic acid, or other actual acid compound and does not include compounds which are not acids/do not function as acids, e.g. carboxylic acid esters. Thus, the metes and bounds of what applicant is actually trying to claim in claim 1 are very unclear because a carboxylic acid ester is not an acid. For compact prosecution purposes and for prior art searching the examiner is interpreting the claim as comprising both an actual organic acid, and a carboxylic acid ester.
Claims 2, 4, 8, and 10-13 are also rejected because they now depend from amended claim 1 and do not resolve the ambiguities of that claim created by applicant’s amendments.
Claim 23 is indefinite because it now recites applying “the solution” to plant roots which lacks antecedent basis. This makes it unclear where “the solution” is coming from because there is no liquid present in the claim as part of the blend in order to form “the solution” as claimed. Further, applicant’s claims require the blend to consist of only the listed ingredients because consisting of is closed language. Thus, water or other liquids cannot be added to the blend solution as claimed when applicant’s use consisting of, and as such it is unclear how the blend is being formed into a solution or if the blend itself is meant to be the solution which is applied to plant roots and a solution by definition has a solute which is dissolved in/solubilized in a solvent and in this case the blend consists of solute components but no solvent so it is completely unclear how the solution that is claimed is to be formed. Thus, because of this issue with respect to the indefiniteness as to what is actually in applicant’s blend solution in order to form the solution, the examiner is interpreting applicant’s consisting of as comprising at this time.
Claim 24 is rejected because it depends from rejected claim 23 and does not resolve the issues of that claim.
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.
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.
Claim(s) 1-2, 4, 8, 10-13, 23-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Scott (https://web.archive.org/web/20160727222151/http://www.underwoodgardens.com/milk-molasses-magic-garden/, from IDS), (as evidenced by Palmonari et al. (Short communication: Characterization of molasses chemical composition, J. Dairy Sci. 103, 6244-6249, 2020)), and further in view of Liles et al. (WO2016054222, from IDS) and Drescher (https://web.archive.org/web/20180827092235/https://www.drescher.com.ar/active/htm/novedades/novedades_obipektin/pectin_tech_brochure_tabbed_aw.pdf, from IDS), and JP2018516066A (‘066).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Regarding claims 1, 12, and 23, Scott teaches applying a composition comprising milk which reads on the claimed polyvalent cation being calcium and calcium being present in the form of milk and reads on providing polyvalent cation, and molasses (which as evidenced by Palmonari molasses contains organic acids, minerals, etc. which are nutrients for plants (see Tables 1 and 2) which read on claim 12 and read on providing an organic acid and a further organic acid (as molasses contains more than one organic acid) as in claim 1) and solubilizing this blend/mixture with water to form a solution which is applied to plants via the roots, wherein the composition is for stimulating the growth of plants by applying the composition to the roots (See entire document; see also comment by Stephen on 06/21/16; More gardening recipes section; milk as soil food section; molasses feeds micro-organisms section).
Ascertainment of the difference between prior art and the claims
(MPEP 2141.02)
Regarding claims 1-2, 4, 8, 10-13, 23-24, Scott does not teach wherein their blend comprises providing a uronic acid polymer having a backbone of repeating uronic acid units, specifically a backbone of repeating D-galacturonic acid units, e.g. a homo or heteropolymer, and wherein the composition also comprises a carboxylic acid ester or wherein the blend comprises the claimed herbicides. Scott also does not specifically teach adding an additional product to the blend, specifically wherein the product to the blend which allows the product, e.g. plant nutrients, etc., specifically an organic herbicide or a pre-emergent, to also be delivered via the solution with the milk and molasses, etc. However, these deficiencies in Scott are addressed by Liles and ‘066.
Regarding claims 1-2, 4, 8, 10-13, 23-24, Liles teaches using pectin, including low methoxyl pectin (which by definition has a degree of esterification of less than 50% which reads on claims 1, 8 and 23-24), which has a backbone of D-galacturonic acid with D-xylose or D-apiose or L-rhamnose and are as such heteropolymers, and beneficial bacteria, specifically bacteria which improve plant growth and health and also have disease and pest-controlling activity (which read on the product of claim 8, more specifically the ameliorating and/or plant protectant products of claim 9) and wherein the composition can be applied to plants with a liquid carrier including the plant roots (See abstract; [0027-0032]; [0049-0050]; [0058]; [0004]; [0048-0054]; [0061-0062]; [0064]).
‘066 teaches compositions which are gels for treating plant roots and improving plant growth which can comprise herbicides, and wherein the compositions which form the gels can also comprise carboxylic acid esters (see paragraphs beginning: The present disclosure provides a root signaling gel matrix that can be used to control rhizosphere root and mucilage water physiology. Rhizoligands increase the rhizosphere wetting rate as well as the uniformity of rhizosphere rewetting.; In some embodiments, suitable lysoligands according to the present disclosure include alkyl end block copolymers,…; The higher viscosity and cation exchange capacity of the rhizosphere, including the root signaling gel matrix 10, due in part to the interconnected.,..; Claims).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
Regarding claims 4 and 12, it would have been obvious to one of ordinary skill in the art at the time of the instant filing to add the pectin and PGPR bacteria (plant nutrients/plant protection agent) to the milk and molasses liquid formulation of Scott in order to develop the instantly claimed blend as a liquid which is then diluted for application with water as taught by Scott. One of ordinary skill in the art would want to do this because it is known that, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In reKerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Regarding claims 1, 10-11, 23, applicant’s now claim 1 to 50 g of uronic acid polymer that is esterified, and 1 to 100mg of polyvalent cation in claims 1 and 23, 25 mg of calcium/polyvalent cation for 7-35g of pectin/uronic polymer (claim 11) or they claim about 14 mg to about 70 mg of calcium/polyvalent cation for each gram of pectin (claim 10), which is a uronic acid polymer. It would have been obvious for one of ordinary skill in the art to optimize the amount of calcium by optimizing the amount of milk used to form the blend which is subsequently diluted and to optimize this amount based on the amount of pectin that is used because as taught by Drescher depending on the type of pectin used each need different amounts of calcium or even no calcium and merely acidic conditions in order to gel properly if that is desired, e.g. for low methoxy pectin 40-60 mg calcium per g pectin or amidated pectin 15-25 mg calcium per gram of pectin (see gelling properties table at top of numbered pg. 10). Thus, it would have been obvious to one of ordinary skill in the art to optimize the amount of calcium (i.e. milk) necessary for the plants and to achieve the desired viscosity of the pectin for appropriate handling/desired viscosity for treating plants, and as such it would be obvious to optimize the amount of polyvalent cation/calcium ions in the final solution to contain the now claimed amounts of polyvalent cation(s) to uronic acid units which are esterified which are then applied to the roots in order to afford effective amounts of calcium per gram of pectin so that the solution gels/sticks upon application to plant roots providing nutrients and protection to the plant roots.
It would have been obvious to combine and/or form the claimed combination of the milk/polyvalent cations/calcium and the pectin as the uronic acid/D-galacturonic acid polymer, organic acids into the claimed blend to afford the desired gelling of pectin and/or nutrients to the roots and soil to which it is being applied because as discussed above it was known to use various concentrations of milk as necessary to improve soil conditions/feed microbes in the soil and fertilize plants and it was known to use various amounts of pectin in compositions for applications to plant roots to hold the PGPR onto the plant roots and provide improved growth of the roots and it was known to use molasses which contains multiple organic acids and minerals which can function as plant nutrients, and sugars, etc. in fertilizing compositions for promoting root and plant growth as is discussed above. The amount of milk, pectin, and molasses (organic acids, minerals/nutrients, sugars, etc.) contained in the instant blend which is diluted for application in the instant method for stimulating growth of plant roots and increasing plant biomass is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize depending on the soil type and weather conditions, the types of roots being treated, etc. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success since each component was already known in the art to be used for improving plant/root growth. It would have been customary for an artisan of ordinary skill to determine the optimal amount of milk, the optimal amount of pectin, optimal amount of organic acid in order to best achieve the desired level of root treatment results and the claimed method and to adjust the blend as necessary to have the desired viscosity upon gelling which would provide advantageous biological effect of improving plant growth/root growth and plant biomass as well as feeding the soil microbes and providing the most effective coating of the PGPR onto the plant roots for improved growth, etc. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Scott teaches that it was known to use various concentrations of milk and molasses to treat plant roots/plants to improve their growth and biomass/yields and Liles teaches it was known to use various amounts of pectin to treat plant roots and provide a gel which holds the PGPR to the plant roots to improve root growth. The Examiner considers it prima facie obvious to optimize the amounts of any biologically active agent, e.g. the claimed pectin, milk/calcium, and molasses to achieve their known biological effect, absent any unexpected properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amount of milk and the amount of pectin in the blend before dilution will impact the efficacy of the milk for increasing root growth and plant biomass and the efficacy of the pectin for forming a gelled composition which adheres the PGPR to the plant roots thereby increasing root growth, etc. and therefore these are optimizable variables especially since it was already known to provide compositions comprising applicant’s components to plants to promote growth, specifically root growth and it was known to solubilize the pectin root treatments of Liles in water and to use them as root dips on plants and by adding milk one can more readily gel the pectin so that it keeps the PGPR in contact with the roots of the plant promoting root growth and protects the roots and provides nutrients from the milk and sugar/molasses to the plants and bacteria in the immediate vicinity of the plant roots where the treatment has been placed.
It also would have been obvious to optimize the degree of esterification (DE) of the pectin/uronic acid polymer to fall within the claimed 10% to 50% because it was known to use low-methoxyl pectin which has a DE of less than 50% thus it would be obvious to optimize the DE to fall within the claimed range to afford pectin which gels to the degree desired especially since it was already known to use low methoxyl pectin on plant roots as taught by Liles.
Finally, it also would have been obvious to add herbicides to the blend taught by the combined references because it was known to deliver herbicides to the soil etc. via root gel treatments as is taught by ‘066. It also would have been obvious to incorporate carboxylic acid esters into the blend of the combined references as claimed because ‘066 teaches that the esters can act a lysoligands with root gels compositions containing polysaccharides to stabilize the gels/blends that form the gels (see paragraph beginning: The lysoligand 40 is a compound that forms a complex of plant and microbial…). =
It would have been obvious to develop the claimed method when looking to the combination of the prior art because each agent was already known in the art to be effective for improving plant and root growth and were known to be applied to plant roots. Thus, it would be obvious to solubilize the actives in water to form a solution which is easier to apply to the roots of the plant thereby leaving behind a film/gel of pectin, etc. as the water evaporates/is taken up by the plant and wherein the claimed components are more easily placed in contact with the roots to provide the necessary nutrients/protection to the roots to promote root growth.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103(a).
From the 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 would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the 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 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 1-2, 4, 8, 10-13, 23-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-9, 23 of copending Application No. 18193846 in view of Scott (https://web.archive.org/web/20160727222151/http://www.underwoodgardens.com/milk-molasses-magic-garden/, from IDS) and JP2018516066A (‘066). ‘846 teaches and claims similar methods of stimulating growth of plant roots, etc. comprising forming a blend of low-methoxyl pectin which reads on the claimed uronic acid polymer, D-galacturonic acid backbone repeat units, heteropolymer, etc. and the claimed degree of esterification, etc. and calcium which reads on the claimed polyvalent cation, milk, etc. in the claimed amounts of polyvalent cation to pectin which are instantly claimed and wherein the blend is solubilized in water to form a solution, applying the solution to plant roots and wherein the solution gels on the plant roots, and wherein the blend is in the form of a solid or liquid. ‘846 does not specifically teach wherein their blend comprises the claimed organic acid(s) and organic acid esters and herbicides in the specifically claimed amounts. However, these deficiencies in ‘846 are addressed by Scott and ‘066.
Scott teaches applying a composition comprising milk which reads on the claimed polyvalent cation being calcium and calcium being present in the form of milk and reads on providing polyvalent cation, and molasses (which as evidenced by Palmonari molasses contains organic acids, minerals, etc. which are nutrients for plants (see Tables 1 and 2) which read on claim 12 and read on providing an organic acid and a further organic acid (as molasses contains more than one organic acid) as in claims 1 and 5) and solubilizing this blend/mixture with water to form a solution which is applied to plants via the roots, wherein the composition is for stimulating the growth of plants by applying the composition to the roots (See entire document; see also comment by Stephen on 06/21/16; More gardening recipes section; milk as soil food section; molasses feeds micro-organisms section).
‘066 teaches compositions which are gels for treating plant roots and improving plant growth which can comprise herbicides, and wherein the compositions which form the gels can also comprise carboxylic acid esters (see paragraphs beginning: The present disclosure provides a root signaling gel matrix that can be used to control rhizosphere root and mucilage water physiology. Rhizoligands increase the rhizosphere wetting rate as well as the uniformity of rhizosphere rewetting.; In some embodiments, suitable lysoligands according to the present disclosure include alkyl end block copolymers,…; The higher viscosity and cation exchange capacity of the rhizosphere, including the root signaling gel matrix 10, due in part to the interconnected.,..; Claims).
It would have been obvious to add herbicides to the blend taught by the combined references because it was known to deliver herbicides to the soil etc. via root gel treatments as is taught by ‘066. It also would have been obvious to incorporate carboxylic acid esters and molasses containing organic acids into the blend of ‘846 as claimed because ‘066 teaches that the esters can acts a lysoligands with root gels compositions containing polysaccharides to stabilize the gels/blends that form the gels (see paragraph beginning: The lysoligand 40 is a compound that forms a complex of plant and microbial…).
It also would have been obvious to develop the claimed method when looking to the combination of the prior art because each agent was already known in the art to be effective for improving plant and root growth and were known to be applied to plant roots. Thus, it would be obvious to solubilize the actives in water to form a solution which is easier to apply to the roots of the plant thereby leaving behind a film/gel of pectin, etc. as the water evaporates/is taken up by the plant and wherein the claimed components are more easily placed in contact with the roots to provide the necessary nutrients/protection to the roots to promote root growth.
Thus one of ordinary skill in the art would conclude that the method taught and claimed by 18193846 in view of Scott (https://web.archive.org/web/20160727222151/http://www.underwoodgardens.com/milk-molasses-magic-garden/) and JP2018516066A (‘066) renders obvious the instantly claimed method.
Response to Arguments/Remarks
Applicant’s amendments to the claims have overcome the previous grounds of rejection under 112 and as such these rejections are withdrawn. Applicant’s amendments to the claims and new claims have prompted the new grounds of rejection under 112(b), specifically by not actually addressing the issues with respect to claims 5 and 6 previously and just moving claim 6 into claim 1, applicants have caused the same issues with respect to claim 6 which were discussed in the 112(d) and also discussed in the 112 (b) to occur in claim 1 as is discussed above. Applicant’s amendments to the claims also to incorporate claim 6 into claim 1 has prompted the examiner to also include claim 13 into this rejection with the other claims because claim 6 and claim 13 were previously treated together and used the same additional prior art reference to address these claims.
Applicant’s arguments with respect to the 103 rejections have been fully considered but were not persuasive at this time. Applicants first argue that the instant combination of prior art is no longer of relevance because the claims now use consisting essentially of with respect to the blend. However, as discussed above, applicants have not defined what would be excluded from the composition with the consisting of language and how it materially affects the composition they argue that the combined prior art does not teach a composition consisting essentially of a uronic acid polymer in the newly claimed amounts with the polyvalent cation in the claimed amounts, etc. as the claim has now been amended.
Applicants then argue that the teachings of Scott as related to milk would not read on the instant claims because the claims now use consisting essentially of language which would exclude the amino acids, proteins, enzymes, natural sugars, in the milk of Scott and further applicant’s argue that the amount of calcium/polyvalent cations required by the instant claims would require significant modification to Scott. The examiner respectfully disagrees because as discussed above nothing in milk would materially affect applicants composition so that it does not/would not work in the claimed method and as discussed above applicants have not clearly defined or disclosed what would be excluded from the composition with the consisting of language and how it materially affects the composition and absent this clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising.” See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 135, especially since for instance the instant disclosure actually exemplifies milk as a source of the claimed divalent/polyvalent ions, e.g. calcium and as such milk would not materially affect applicant’s composition.
Applicants then argue that Scott, Palmonari, and the PGPR of Liles are now excluded because the instant claims do not allow for other components from molasses to be present in the blend, e.g. the proteins, sugars, Ca, Mg, etc. of the PGPR of Liles, and that the amounts of cations, e.g. calcium from the molasses in addition to the milk would be too high for the claimed concentration. The examiner disagrees for the reasons discussed above with respect to how “consisting essentially of” is being interpreted.
Applicants further argue that the amounts of divalent/polyvalent cation in the molasses and the milk together would be much higher than allowed by the instant claims. The examiner respectfully points out that while applicants claim specific ranges of these components they have demonstrated no criticality of the claimed ranges. The prior art teaches that each and every component of the claimed blend was known to be useful for treating plants/plant roots to stimulate growth of the roots and/or the plants/plant biomass. Thus, it would have been obvious to one of ordinary skill in the art to combine the claimed components from the various compositions and to optimize the amounts of the polyvalent cations from the prior art to read on the claimed amounts/concentrations instantly claimed because, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In reKerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), and because “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The amount of milk, pectin, and molasses (organic acids, minerals/nutrients, sugars, etc.) contained in the instant blend which is diluted for application in the instant method for stimulating growth of plant roots and increasing plant biomass is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize depending on the soil type and weather conditions, the types of roots being treated, etc. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success since each component was already known in the art to be used for improving plant/root growth. It would have been customary for an artisan of ordinary skill to determine the optimal amount of milk, the optimal amount of pectin, optimal amount of organic acid in order to best achieve the desired level of root treatment results and the claimed method and to adjust the blend as necessary to have the desired viscosity upon gelling which would provide advantageous biological effect of improving plant growth/root growth and plant biomass as well as feeding the soil microbes and providing the most effective coating of the PGPR onto the plant roots for improved growth, etc. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955).
Applicant’s did not address the double patenting rejection in their arguments and as such it is maintained and modified as necessary due to applicant’s amendments.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new/revised 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 Erin E Hirt whose telephone number is (571)270-1077. The examiner can normally be reached 10:30-7:30 ET M-F.
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/ERIN E HIRT/Primary Examiner, Art Unit 1616