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 .
Status of the Claims
Pursuant to the amendment dated 10/12/2025, claims 4, 6-8, 18, and 20 were cancelled and new claims 27 and 28 were added. Claims 20-24 have been cancelled previously.
Claims 1-3, 5, 9-17, 19, and 26-28 are pending and under current examination.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 5, 9-12 and are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
This is a new matter rejection. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Specifically, the examiner is unable to locate support for the limitation that the fertilizer carrier composition primarily comprises a potassium-containing composition.
Claims depending from rejected claims have also been rejected because they incorporate all of the limitations of the claims from which they depend, but fail to resolve the new matter concerns outlined above.
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 1-3, 5, 9-17, 19, and 26-28 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.
The term “primarily” in claim 1 is a relative term which renders the claim indefinite. The term “primarily” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. As such, the amount of “potassium-containing composition” required for a fertilizer product to fall within the scope of the claims is unclear. The importance of unambiguously identifying the scope of this term is important because inter alia Applicant relies on the word “primarily” in arguments directed to distinguishing the prior art from the claimed invention (see page 17 of the remarks filed 10/13/2025 where Applicant states “Hartmann primarily teaches calcium cyanamide and urea fertilizer compositions”).
Claims 1 and 13 recite “oxidized carbon black additive”. This term renders the claim indefinite because carbon black acid does not appear to be a recognized substance. There is no CAS Registry number associated with the term and the examiner’s search led to ambiguous results in terms of what the term encompasses. Moreover, carbon black itself contains acid groups, see e.g. Khodabakhshi et al. (Carbon 162 604-649; 2020), figure 1d which depicts carbon black structure as containing both hydroxyl groups and carboxylic acid groups. In view of this disclosure, it is unclear whether the term “oxidized carbon black additive” recited in the claims reads on carbon black itself, since this substances does contain products of oxidation. The record establishes Applicant to interpret this term to distinguish from the substance known as carbon black (see the declaration and remarks filed 10/13/2025); however the record also fails to identify a clear delineation between these groups of substances that would be a boundary marker to one of ordinary skill seeking to determine the scope of the claims. Clarification is required.
Claims depending from rejected claims have also been rejected because they incorporate all of the limitations of the claims from which they depend, but fail to resolve the indefiniteness concerns outlined above.
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 1-3, 5, 9, 10, 12 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Hartmann (US20210070668; publication date: 03/11/2021; of record) as evidenced by Khodabakhshi (Carbon 162 604-649; publication year 2020; of record).
With regard to claim 1, Hartmann discloses granules comprising 0.1 to 1.1 % carbon black powder (claim 1) that are homogenously mixed (i.e. the carbon black is embedded within the granule). The examiner considers carbon black to have acid groups because this substance has pendant carboxylic acid groups (see Khodabakhshi et al. (Carbon 162 604-649; 2020), figure 1d). With regard to the limitation requiring the carbon black to be “oxidized”, guidance on the scope of this term provided by the instant specification only indicates that “[e]xamples of carbon-based additives include carbon black acids sourced from the incomplete combustion of materials including vegetable matter or other organic matter, or petroleum products, that are oxidized by controllable chemical oxidation to create the functional groups on its surface” (page 7). However, carbon black itself is also produced by this method: Khodabakhshi states: Carbon black (CB, CAS No. 1333–86–4) materials are formed under the rigorously controlled thermal decomposition of carbon rich feeds in inert (pyrolysis) or oxygen-depleted (partial combustion) atmosphere” (page 605). Khodabakhshi discloses further that substances referred to in the prior art as “carbon black” possess pendant acid groups (i.e. they are oxidized; Fig. 1), The specification does not provide any clarity as to the degree of oxidation where a substance ceases to fall within the scope of “carbon black” as the term is used in the art and instead is an “oxidized carbon black”. Accordingly, the examiner considers the term “carbon black” employed by Hartmann to also inherently embrace carbon black having a pendant carboxylic acid group.
Hartmann does not disclose an example composition containing a potassium-containing composition and an oxidized carbon black additive embedded within the potassium-containing composition; however, Hartmann discloses that the composition may additionally contain nutrients such as potassium (0006), therefore it would have been prima facie obvious to add a potassium containing nutrient to the composition because such was contemplated by Hartmann. With regard to the limitation that the granule must primarily comprises potassium containing composition, as noted above, it is unclear the extent to which this language limits the relative proportions of potassium composition and other components. Additionally, the broadest reasonable interpretation of the phrase “potassium-containing composition” is a composition (i.e. collection of substances) containing at least one potassium atom. As such, the phrase “potassium-containing composition” reads on any fertilizer granule containing any amount of potassium, as the granule itself is a composition and contains potassium. In view of the foregoing, Hartmann renders obvious this limitation by proposing to include potassium in their granules. Finally, the examiner also does not consider this limitation to patentably define over the prior art as it would be merely routine to formulate the granule to contain amounts of nutrients needed for any particular crop, which would vary extensively based on identity of the crop plant and location.
With regard to claims 2 and 3, as noted above, carbon black contains pendant carboxylic acid groups, which are comprised of carboxyl and hydroxyl moieties.
With regard to claim 5, the composition can contain e.g. potassium chloride or muriate of potash (0097; example 5, table A).
With regard to claim 9, as noted above, Hartmann discloses a granule in which all ingredients are mixed homogenously (i.e. the carbon black is embedded within the granule). Hartmann also discloses an embodiment in which the carbon black-containing mixture is coated onto the surface of a solid core (claim 20). It would have been obvious to combine these two formats, resulting in a granule having carbon black distributed throughout the core and as a coating over the core because this would merely be combining prior art elements according to known techniques to yield predictable results (see MPEP 2143(I)(A)).
With regard to claim 10, as noted above, the carbon black is present at between 0.1 and 1.1 % (claim 1).
With regard to claim 12, the examiner considers the phrase “the oxidized carbon black additive comprises a liquid form” to be product by process language, as the claimed final product is in the form of a granule. The final product is a dry granule whether the carbon-based additive is in liquid or solid form prior to application.
With regard to claim 27, Hartmann discloses that “it is possible to include other plant fertilizing materials, nutrients and soil amendments in embodiments of the compositions of the present invention. Other plant fertilizers, nutrients and soil amendments include, but are not limited to … micronutrients” (0082).
Claims 1-3, 5, 9-17, 19, and 26-28 are rejected under 35 U.S.C. 103 as being unpatentable over Hartmann (US20210070668; publication date: 03/11/2021; of record) in view of Yu et al. (US 2020/0305424; publication date: 10/01/2020; of record).
With regard to claims 1 and 13, Hartmann discloses granules comprising 0.1 to 1.1 % carbon black powder (claim 1) that are homogenously mixed (i.e. the carbon black is embedded within the granule).
As noted in the rejection over Hartmann supra, the examiner considers the term “oxidized carbon black additive” to read on the carbon black substances disclosed by Hartmann; however, Hartmann does not refer to oxidized carbon black verbatim. However, such was known in the prior art:
Yu describes a substance they refer to as “carbon black acid” having carboxyl groups that can act as a plant growth promoter and has an average particle size of between 5 – 200 nm (abstract).
It would have been prima facie obvious to combine or replace the carbon black in Hartmann invention with the substance referred to as “carbon black acid”, which the instant specification identifies as an oxidized carbon black. The artisan of ordinary skill would have been motivated to do so in order to provide a plant growth effect to the granule and would have had reasonable expectation of success because this would merely require including the “carbon black acid” in the preparation steps where carbon black is added in Hartmann’s composition.
With regard to claims 1 and 14, Hartmann does not disclose an example composition containing potassium; however, Hartmann discloses that the composition may additionally contain nutrients such as potassium, therefore it would have been prima facie obvious to add a potassium containing nutrient to the composition because such was contemplated by Hartmann. With regard to the limitation that the granule must primarily comprises potassium containing composition, as noted above, it is unclear the extent to which this language limits the relative proportions of potassium composition and other components. Additionally, the broadest reasonable interpretation of the phrase “potassium-containing composition” is a composition (i.e. collection of substances) containing at least one potassium atom. As such, the phrase “potassium-containing composition” reads on any fertilizer granule containing any amount of potassium, as the granule itself is a composition and contains potassium. In view of the foregoing, Hartmann renders obvious this limitation by proposing to include potassium in their granules. Finally, the examiner also does not consider this limitation to patentably define over the prior art as it would be merely routine to formulate the granule to contain amounts of nutrients needed for any particular crop, which would vary extensively based on identity of the crop plant and location.
With regard to claims 2 and 3, as noted above, carbon black contains pendant carboxylic acid groups, which are comprised of carboxyl and hydroxyl moieties.
With regard to claims 5 and 15, the composition can contain e.g. potassium chloride or muriate of potash (0097; example 5, table A).
With regard to claim 9, as noted above, Hartmann discloses a granule in which all ingredients are mixed homogenously (i.e. the carbon black is embedded within the granule). Hartmann also discloses an embodiment in which the carbon black-containing mixture is coated onto the surface of a solid core (claim 20). It would have been obvious to combine these two formats, resulting in a granule having carbon black distributed throughout the core and as a coating over the core because this would merely be combining prior art elements according to known techniques to yield predictable results (see MPEP 2143(I)(A)).
With regard to claims 10 and 19, as noted above, the carbon black is present at between 0.1 and 1.1 % (claim 1).
With regard to claims 11 and 13, Hartmann is also silent with respect to the particles size of the carbon black; however, as noted above it would have been obvious to use the particles of Yu, and these have a size range overlapping with the range recited in the instant claims. See MPEP 2144.05.
With regard to claim 12, the examiner considers the phrase “the oxidized carbon black additive comprises a liquid form” to be product by process language, as the claimed final product is in the form of a granule. The final product is a dry granule whether the carbon-based additive is in liquid or solid form prior to application.
With regard to claims 16 and 17, the composition can contain triple superphosphate (0097, example 5, table A).
With regard to claim 26, the composition comprises urea, a nitrogen-containing composition (claim 1).
With regard to claims 27 and 28, Hartmann discloses that “it is possible to include other plant fertilizing materials, nutrients and soil amendments in embodiments of the compositions of the present invention. Other plant fertilizers, nutrients and soil amendments include, but are not limited to … micronutrients” (0082).
Response to Arguments
Applicant’s amendment to the claims to require that the oxidized carbon black additive be embedded within the potassium-containing composition has overcome the rejections set forth in the Office action mailed on 06/13/2025.
The declaration filed 10/13/2025 has been marked “do not enter” because it was not properly executed with an electronic signature (i.e. /s/ signature) or a handwritten signature. In the interest of compact prosecution, the examiner has responded to the content of the declaration; however, to be afforded the probative value of evidence on the record, a declaration must be properly signed.
As noted above, Applicant’s amendment to the claims to require that the oxidized carbon black additive be embedded within the potassium-containing composition has overcome the rejections set forth in the Office action mailed on 06/13/2025; however, the traversals addressing Yu and Hartmann may be relevant to the new grounds of rejection.
Response to Declaration:
The declaration contains data to support the position that carbon black and carbon black acid differ, e.g. para 14 states “[o]ne of ordinary skill in the art would recognize that carbon black acid is both physically and chemically different than carbon black, and that due to their differences, one of ordinary skill in the art would not have had a reasonable expectation of success by merely substituting carbon black acid for the carbon black in … Hartmann”. Declarant characterizes carbon black acid as having been oxidized by exposure of carbon black to nitric acid (HNO3), oxygen (O2), or ozone (O3) (para 15).
With regard to the position that “carbon black acid” (possibly also applicable to the term “oxidized carbon black additive” recited in the amendment to the claims filed 10/13/2025), the examiner maintains the opinion that these terms fail to unambiguously identify a substance that is distinct from the substances embraced by “carbon black” as the term as been used in the art up to the instant effective filing date. Carbon black is not a single substance, but refers to a product of combustion and as such would have an amount of oxidation that varies depending on the degree and conditions of combustion. The prior art (Khodabakhshi) establishes that the term “carbon black” was used in the art at the time of filing to refer to substances that possessed pendant hydroxyl and carboxylic acid groups. The examiner does not contest that the methods used to further oxidize a carbon black starting material results in further oxidation of the material. The concern is that the language recited in the instant claims does not distinguish from the substances referred to in the art as “carbon black”, as it was used at the time the instant application was filed and the specification does not provide sufficient guidance to clearly delineate the scope of the terms “carbon black acid” or “oxidized carbon black additive”. The examiner considers the broadest reasonable interpretation of the phrase “oxidized carbon black additive”, in view of the prior art usage and the guidance in the specification to read on any material that has been formed from carbon rich feeds under rigorously controlled thermal decomposition in inert (pyrolysis) or oxygen-depleted (partial combustion) atmosphere. While perfect pyrolysis might lead to a product containing only carbon atoms and no products of oxidation, the term “carbon black” also refers to products formed by a partial combustion reaction, in which oxygen is reduced but still present as a reactant in the combustion reaction. The product of partial combustion would fall within the term “oxidized carbon black additive”. The examiner’s position is supported by Khodabakhshi’s table 1, in which substances referred to as “carbon black” are also described as functionalized by oxidation (e.g. see col 2 and 5 of table 1; Fig 1, which depicts “Cabot REGAL 250”, a type of “carbon black” as the term is used in Khodabakhshi). The examiner maintains the opinion that the term “carbon black” as used by Hartmann would have embraced carbon black having at least some pendant oxygen-containing moieties. As the term “oxidized carbon black additive” does not identify a degree of oxidation over that found in substances referred to in the art as “carbon black” the examiner does not consider these terms to be distinct in meaning.
The examiner notes that Yu describes a substance referred to as “carbon black acid” that has been formed by exposing a carbon black to nitric acid or ozone (page 3). The examiner has rejected the claims on the basis that it would have also been obvious to replace the carbon black in Hartmann’s composition with the carbon black acid disclosed by Yu (see rejection above). With regard to Declarant’s position that one having ordinary skill in the art would not reasonably have expected that Hartmann’s carbon black could be substituted with Yu’s carbon black acid, the examiner respectfully disagrees. Yu proposes using carbon black acid as a plant growth promoter and includes it in fertilizer treatments (table 2, page 5). The substance is clearly suitable for application to plants, and beneficial to their growth. Therefore one having ordinary skill would have reasonably expected that the carbon black disclosed by Hartmann could be substituted or combined with the carbon black acid disclosed by Yu. Conclusive proof of efficacy is not required to show a reasonable expectation of success, and obviousness does not require absolute predictability, but at least some degree of predictability is required. See MPEP 2143.02(I) and (II). Declarant has merely stated that there are some physical and chemical differences between the substance they refer to as carbon black and the substance they refer to as carbon black acid, but no explanation as to why these differences would have made Yu’s carbon black acid incompatible with Hartmann’s composition has been provided. This is further supported by the evidence that one having ordinary skill in the art would have interpreted the term “carbon black” to embrace a graphitic basic structural unit having some degree of oxidation. Lastly, the data presented in the declaration would not have been available to one of ordinary skill at the instant effective filing date, therefore this specific information cannot be relied upon to establish what one of ordinary skill would have been able to readily predict at the time of filing, as required under 35 USC 103.
At para 24, Applicant states that it was observed that CBA with higher charge density increased root elongation when incorporated at 20 mg/L, while carbon black had no effect compared to a control.
Insomuch as this may be an assertion of unexpected results, please refer to MPEP 716.02(b) which details the burden on Applicant to establish that results in a side-by-side comparison to the closest prior art are unexpected and significant. Specifically, Applicant must establish that differences in results are in fact unexpected and unobvious and are of both practical and statistical significance. Additionally, evidence of unexpected properties must be commensurate in scope with the claims.
In the instant case, Yu discloses that carbon black acid (i.e. carbon black that has been oxidized by exposure to ozone or nitric acid (0015) improves the growth of plants (abstract). Thus, the result would not have been unexpected to one of ordinary skill. Additionally, the data are not commensurate in scope with the claims because the claims embrace a carbon black additive having any degree of oxidation other than zero whereas the data shows increase in root growth only at certain levels of oxidation.
Response to Arguments:
Applicant’s arguments on pages 7-16 traversing the anticipation rejections and the obviousness rejections over Hennart as evidenced by Khodabakhshi are moot as these rejections have been withdrawn in view of the amendment to the claims filed 10/13/2025. Insomuch as the arguments on pages 15-17 are pertinent to the obviousness rejections above, they are address as follows:
Applicant’s arguments filed 10/15/2025 have been fully considered and are not persuasive.
On page 15, Applicant argues that Yu’s description of the term “carbon black acid” as used in their disclosure provides further evidence that carbon black is different from carbon black acid. Applicant argues further that due to the functional and physical differences between carbon black acid and carbon black, as evidenced in the declaration, there is no reasonable expectation of success by merely substituting one material for the other.
These two positions have been fully addressed above in the “Response to Declaration” section of this action. See above.
On page 17, Applicant argues that the combination of Hartmann and Yu does not render obvious all the limitations of the instant claims because “Hartmann primarily teaches calcium cyanamide and urea fertilizer compositions”.
Insomuch that Applicant may be arguing that Hartmann’s range of calcium cyanamide (60-99.9%), and necessarily also containing urea and carbon black is excluded by the phrase “a fertilizer carrier composition primarily comprising a potassium-containing composition”, this argument is not persuasive. The phrase “potassium-containing composition” is broader than simply the substance potassium or a potassium-containing substance, such as muriate of potash. The examiner considers the phrase “potassium-containing composition” to read on any granule containing any amount of potassium, as the granule itself is a composition and contains potassium. Therefore, Hartmann renders obvious this limitation by proposing to include potassium in their granules.
The examiner also notes that the phrase “Hartmann primarily teaches calcium cyanamide and urea fertilizer compositions” on page 17 of the remarks is most reasonably interpreted as meaning that the focus of Hartmann is on granules containing calcium cyanamide and urea fertilizers. This interpretation of the argument is also not persuasive because “[d]isclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971)”; see MPEP 2123(II).
Conclusion
No claims are allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE PEEBLES whose telephone number is (571)272-6247. The examiner can normally be reached Monday through Friday: 9 am to 3 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE PEEBLES/ Primary Examiner, Art Unit 1617