Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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.
It should be noted that the intended use of the compositions are not the same; however, no weight has been given to the intended use because the compositions of the patents and applications contain the same components.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,084,623. Although the claims at issue are not identical, they are not patentably distinct from each other because the components are the same and proportions overlap.
Claims 1-3, 8-11 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,351,770. Although the claims at issue are not identical, they are not patentably distinct from each other because the components are the same and proportions overlap.
Claims 1 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 11,959,038. Although the claims at issue are not identical, they are not patentably distinct from each other because the components are the same and proportions overlap.
Claims 1 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,516,262. Although the claims at issue are not identical, they are not patentably distinct from each other because the components are the same and proportions overlap.
Claims 1-3, 7-11 and 15-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,497,570. Although the claims at issue are not identical, they are not patentably distinct from each other because the components are the same and proportions overlap.
Claims 1-3, 8-11 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-9 and 11-12 of U.S. Patent No. 12,577,487. Although the claims at issue are not identical, they are not patentably distinct from each other because the components are the same and proportions overlap.
Claims 1-3, 7-11 and 15-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19-21, 23-24, 26, and 28-31 of copending Application No. 17/390,687 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims contain the same components in ranges that overlap.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3, 7-11 and 15-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 6-7, 10 and 12-16 of copending Application No. 17/390,524 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims contain the same components in ranges that overlap.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 7, 9, 15 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-20 of copending Application No. 17/390,491 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims contain the same components in ranges that overlap.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1,3-4, 6-9, 11-12, 14, and 16-17 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lee (US 20110172092-appears on PTO-892).
Lee teaches oxygenated biochar and soil formulations containing the oxygenated biochar (see abstract).
The oxygenated biochar can have any suitable carbon, nitrogen, oxygen, hydrogen, phosphorous, calcium, sulfur, ash, and volatile matter content. The carbon content can be about, at least, or no more than, for example, 55, 60, 65, 70, 75, 80, 85, 90, or 95 mole percent, or within a particular range therein. The nitrogen content can be about, at least, or no more than, for example, 0.1, 0.25, 0.5, 0.75, 1.0 mole percent, or within a particular range therein. The hydrogen content can be about, at least, or no more than, for example, 1, 2, 5 mole percent, or within a particular range therein. It should be noted that the conversion of the mole percents for the above elements would convert into weight percents that overlap the weight percentages of the present claims. The phosphorus or calcium content can independently be about, at least, or no more than, for example, 5, 10, 25, 50, 100, 500, 1000, 5000, 7500, 10000, 15000, 20000, or 25000 mg/kg, or within a particular range therein. The sulfur content can be about, at least, or no more than, for example, 50, 100, 200, 300, 400, 500, 600, 700, 800, 900, 1000, 1500, or 2000 ppm, or within a particular range therein (see para 0072). The ash content can be about, at least, or no more than, for example, 1, 2.5, 5, 10, 15, 20, 30, 40, 50, 60, or 70%, or within a particular range therein. The volatile matter content can be about, at least, or no more than 1, 2.5, 5, 10, 15, 20, 25, 30, 35, or 40%, or within a particular range therein (see para 0072). The moisture level can be suitably adjusted, for example, to a humidity level of about, at least, or no more than 1%, 2%, 5%, 10%, 15, 20%, 25%, 30%, 35%, 40%, 45%, 50%, 55%, 60%, 65%, 70%, 75%, 80%, 85%, 90%, 95%, or 100%, or a humidity level within a range bounded by any two of these values (see para 0059). The oxygen content can be about, at least, or no more than, for example, 1, 2, 5, 10, 15, 20, 25 or 30 mole percent (see para 0072). The ppm listed for the above elements overlap those of the present claims.
The oxygenated biochar may also be admixed in one or more soil-fertilizing compounds or materials. The soil-fertilizing compounds or materials can be, for example, carbonate-based (e.g., CaCO3 (salt)), phosphate-based (e.g., the known phosphate minerals, such as in rock phosphate or triple superphosphate), and potassium-based (e.g., KCI (metal halide)) (see para 0076). The salt and the metal halide overlap those of the present claims.
The oxygenated biochar can also have any suitable particle size. In various embodiments, the oxygenated biochar can have a particle size of about, at least, or no more than, for example, 50, 100, 250, 500, 750, 1000, 1500, 2000, 2500, 3000, 3500, 4000, 4500, or 5000 microns, or a particle size within a particular range bounded by any two of the foregoing values. In certain applications (e.g., to ensure the biochar materials are resistant to becoming airborne in windy and/or desert areas), larger biochar particle sizes, such as 6000, 7000, 8000, 9000, 10,000, 20,000, 30,000, 40,000, 50,000 microns or higher (for example, up to 100,000 microns), or a particle size within a particular range bounded by any two of the foregoing values, may be preferred (see para 0073). Lee meets the limitations of the claims other than the differences set forth below. Lee does not specifically teach that the biochar is a biogenic pulverized-carbon composition. However, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020).
With respect to the heat value of at least about 11,000 BTU/lb, it would be reasonable to expect that Lee meets this limitation because he teaches a biochar that contains all of the claimed components within the claimed proportions.
Claims 5 and 13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art fails to teach or suggest a composition comprising a particle size is of at most about 6 mm; at least about 80 wt% carbon; at least about 0.6 wt% to at most about 0.8 wt% sulfur; at least about 1 wt% to at most about 20 wt% volatile matter; at most about 13 wt% ash; and at most about 13 wt% moisture.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CEPHIA D TOOMER whose telephone number is (571)272-1126. The examiner can normally be reached Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6368. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CEPHIA D TOOMER/Primary Examiner, Art Unit 1771 19180681/20260417
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