would change colors. Therefore, the comments made by the Examiner go against what I
`
`taught in my patent.
`
`7.
`
`With regards to the Examiner's statements that it would have been obvious to
`
`modify my teachings with the teachings of Skelty to make the dye fluorescent, again goes
`
`against the teachings of my patent. I specifically taught that the color of the mulch is
`
`green to match the color of grass. Since the color of grass is not fluorescent, it would
`
`not be obvious to modify my teachings with the teachings of Skelty.
`
`8.
`
`With regards to the Examiner's statements that one of skill in the art would be
`
`motivated to modify my teachings with the teachings of Swatzina, for an aesthetic
`
`design, I disagree. The Examiner states that Holton as modified by Swatzina, the
`
`selection of a red fertilizer would inherently teach as the red disappears or fades from the
`
`mulch, the fertilizer is disappearing too. This again goes against the teachings of my
`
`patent. My patent specifically teaches a green color to match grass. It would be against
`
`my teachings to have a red color since red does not match grass. Further, as stated
`
`above, it is not in the teachings of my patent for the color to fade, based on fertilizer
`
`disappearing, nor would I want the color to fade.
`
`9.
`
`I hereby declare that all of the statements made herein of my own
`
`knowledge are true, and that all statements made on information and belief are
`
`believed to be true; and further that these statements were made with the
`
`knowledge that willful false statements and the like so made are punishable by
`
`fine or imprisonment, or both, under Section 1001 of Title 18 of the United
`
`3
`
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`States Code, and that such willful false statements may jeopardize the validity of
`
`the patent application to which it relates or any patent issued thereon.
`
`Dated: LJ/r/J6
`
`•'
`
`Charles Holton
`
`4
`
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`'f~- (0
`
`l
`
`PTO/SB/22 (12·04)
`Approved for use through 07131/2006. OMS 0651-003
`U.S. Patent and Trademark Office; U.S. DEPARMENT OF COMMERCE
`..
`er the paperwork Reduction Aa.of 199!>: no persons are required to respond to a collection of information unless if displays a valid OMS control number.
`
`.
`
`TITION FOR EXTENSION OF TIME UNDER 37CFR1.136(a)
`FY 2005
`Fees ursuant to the Consolidated Approprfafjons Act, 2005 (H.R. 4818 .
`
`Docket Number (Optional}
`
`P/35-4 CIP
`
`Application Number 09/769,076
`
`Filed
`
`January 25, 2001
`
`For COLORED OR FRAGRANCED HORTICULTURAL..
`
`Art Unit 3643
`
`Examiner A. Valenti
`
`This is a request under the provisions of 37 CFR 1.136(a) to extend the period for filing a reply in the above identified
`application.
`
`The requested extension and fee are as follows {check time period desired and enter the appropriate fee below):
`Fee
`$120
`
`Small Entit~ Fee
`$60
`
`$
`
`$450
`
`$1020
`
`$1590
`
`$2160
`
`$225
`
`$510
`
`$795
`
`$1080
`
`555.00
`
`$
`
`$
`
`$
`
`$
`
`0 One month (37 CFR 1.17(a)(1))
`D Two months (37 CFR 1.17{a)(2))
`0 Three months (37 CFR 1.17(a){3))
`0 Four months (37 CFR 1.17(a)(4))
`D Five months (37 CFR 1.17(a)(5))
`Applicant claims small entity status. See 37 CFR 1.27.
`
`0
`[ZJ
`0
`D
`D The Director is hereby authorized to charge any fees which may be required, or credit any overpayment, to
`
`A check in the amount of the fee is enclosed.
`
`Payment by credit card. Form PT0-2038 is attached.
`
`The Director has already been authorized to charge fees in this application to a Deposit Account.
`
`I have enclosed a duplicate copy of this sheet.
`Deposit Account Number
`WARNING: Information on this form may become pulSllc. Credit card Information should not be included on this form.
`Provide credit card information and authorization on PT0-2038.
`
`I am the D
`D
`0
`D
`
`applicanUinventor.
`
`assignee of record of the entire interest. See 37 CFR 3. 71.
`Statement under 37 CFR 3.73(b) is enclosed (Form PTO/SB/96).
`attorney or agent of record. Registration Number _3_4_, 7_5_1 _____ _
`
`attorney or agent under 37 CFR 1.34.
`egistration number if acting under 37 CFR 1.34
`
`April 8, 2010
`Date
`
`Philip M. Weiss
`Typed or printed name
`
`01 FC:225J Telephone Number
`
`OP
`
`555.
`NOTE: Signatures of all lhe invenlors or assignees of record of the entire interesl or their represenlative(s) are required. Submit multiple forms it more than one
`signature is required. see below.
`
`D Total of
`
`forms are submitted.
`
`CERTIFICATION UNDER 37C.F.R.§1.10
`I hereby certify that this correspondence and the documents referred to as enclosed are being deposited with the United
`States Postal Service on date below in an envelope as "Express Mail Post Office to Addressee" Mail Label Number EM
`490589120 US add,esse<l to: Comm;ss;one' fo, Patents, P.O. Bo~xandri~1450.
`
`Dated: April 8, 2010
`
`, cb~ W')l
`
`Debbie Broderick
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`U NITED STATES P ATENT AND TRADEMARK O FFICE
`
`UNITED STA TES DEPARTMENT OF COMMERCE
`United States f>ateot and Trademark Office
`Address: COMMISSIONF.R FOR PATENTS
`P.O. (lox 1450
`Alexandria. Virginia 22313· 1450
`www.usplo.gov
`
`APPLICATION NO.
`
`FIUNGDATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`091769,076
`
`01125/2001
`
`Michael D. Krysiak
`
`P/35-4
`
`7 143
`
`0612512010
`
`7590
`Philip M. Weiss, Esq.
`Weiss & Weiss
`300 Old Country Road
`Suite 251
`Mineola, NY 11501
`
`EXAMINER
`
`VALENTI, ANDREA M
`
`ART UNIT
`
`PAPER NUMBER
`
`3643
`
`MAil. DATE
`
`06/25/2010
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time peliod for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
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`Office Action Summary
`
`Application No.
`
`Applicant(s)
`
`09/769,076
`
`Examiner
`
`KRYSIAK ET AL.
`
`Art Unit
`
`ANDREA M. VALENTI
`3643
`- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE~ MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`- Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no even~ however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1 )[8J Responsive to communication( s) filed on 08 April 2010.
`2a)[8J This action is FINAL.
`2b)0 This action is non-final.
`3)0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`4)[8J Claim(s) 1-30.32.36-42 and 45-53 is/are pending in the application.
`4a) Of the above claim(s) 1-25.36.37.39-42.45.46.48.49.51 and 53 is/are withdrawn from consideration.
`5)0 Claim(s) __ is/are allowed.
`6)[8J Claim(s) 26-30. 32. 38. 47. 50. 52 is/are rejected .
`7)0 Claim(s) __ is/are objected to.
`8)0 Claim(s) __ are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)0 The specification is objected to by the Examiner.
`10)0 The drawing(s) filed on __ is/are: a)O accepted or b)O objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`11 )0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PT0-152.
`
`Priority under 35 U.S.C. § 119
`
`12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)O All b)O Some* c)O None of:
`1.0 Certified copies of the priority documents have been received.
`2.0 Certified copies of the priority documents have been received in Application No. __ .
`3.0 Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`1) 0 Notice of References Cited (PT0-892)
`2) 0 Notice of Draftsperson's Patent Drawing Review (PT0-948)
`3) 0 Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date __ .
`
`4) 0 Interview Summary (PT0-413)
`Paper No(s)/Mail Date. __ .
`5) 0 Notice of Informal Patent Application
`6) 0 Other: __ .
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 08-06)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20100621
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`Application/Control Number: 09/769,076
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`Page 2
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`DETAILED ACTION
`
`Claim Rejections - 35 USC§ 102
`
`The following is a quotation of the appropriate paragraphs of 35 U .S.C. 102 that
`
`form the basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless -
`
`(a) the invention was known or used by others in this country, or patented or described in a printed
`publication in this or a foreign country, before the invention thereof by the applicant for a patent.
`
`Claims 26, 27, and 38 are rejected under 35 U.S.C. 102(a) as being anticipated
`
`by U.S. Patent No. 6,021,598 to Holton.
`
`Regarding Claim 26, 27, 38, Holton teaches a colored mulch product (Holton
`
`abstract) consisting essentially of: a material comprising a fiber cellulose, clay, loam,
`
`sand, and/or a combination of same; a binding agent (Holton, water claim 1 ); and a dye
`
`and/or pigment (Holton Col. 4 line 8-1 O); the mulch product not being in a form of a mat
`
`(Holton Col. 6 line 1-24 ). Holton teaches a dye and that the dye indicates to a user
`
`environmental conditions of the soil where the mulch is placed. The mulch of Holton
`
`includes a dye, seed and a fertilizer (Holton Col. 6 line 1-3). Therefore, when the user
`
`sees the mulch color the user will known that mulch has been applied to that portion of
`
`soil along with a fertilizer/seed i.e. that soil portion has been fertilized/seeded which is
`
`an environmental condition.
`
`Claim Rejections - 35 USC§ 103
`
`The following is a quotation of 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 of this title, if the differences between the subject matter sought to be patented and
`
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`Application/Control Number: 09/769,076
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`Page 3
`
`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 negatived by the manner in which the invention was made.
`
`Claims 26, 27, 28, 29, 30, 38, and 50 are rejected under 35 U.S.C. 103(a) as
`
`being unpatentable over U.S. Patent No. 6,021,598 to Holton in view of U.S. Patent No.
`
`6,019,062 to Lombard et al.
`
`Regarding Claim 26, 28, 29, 30 and 50, Holton teaches a colored mulch product
`
`(Holton abstract) consisting essentially of: a material comprising a fiber cellulose, clay,
`
`loam, sand, and/or a combination of same; a binding agent (Holton Claim 1, water); and
`
`a dye and/or pigment (Holton Col. 4 line 8-10). Holton teaches a dye, but is silent on
`
`the dye indicates to a user environmental conditions of the soil where said mulch is
`
`placed; the dye indicates to a user the acidity of said soil; the dye indicates to a user
`
`the moisture content of said soil; or the dye indicates to a user the chemical content of
`
`said soil and it is an environmentally safe dye (Lombard abstract second to last line).
`
`However, Lombard et al teaches a dye indicator i.e. a pH indicating dye for
`
`application to cellulosic material such as paper (Lombard Col. 2 line 1-5 and Col. 2 line
`
`11-15; Col. 2 line 60-67). It would have been obvious to one of ordinary skill in the art to
`
`modify the teachings of Holton with the teachings of Lombard at the time of the
`
`invention since the modification is merely an engineering design choice involving the
`
`selection of a known alternate dye selected for the known advantage of monitoring pH
`
`levels as taught by Lombard and is an environmentally safe dye as taught by Lombard
`
`(Lombard abstract).
`
`Regarding Claim 27, Holton as modified teaches the mulch comprising; nitrogen,
`
`phosphorous, and potassium fortifiers (Holton Claim 8).
`
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`Application/Control Number: 09/769,076
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`Page 4
`
`Regarding Claim 38, Holton as modified teaches the mulch is the same or similar
`
`color of an actual plant, flower, fruit, or vegetable of a seed planted with the mulch
`
`(Holton Col. 4 line 8-10).
`
`Claim 52 is rejected under 35 U.S.C. 103(a) as being unpatentable over U.S.
`
`Patent No. 6,021,598 to Holton in view of U.S. Patent No. 6,019,062 to Lombard et al as
`
`applied to claim 26 above, and further in view Japanese Patent JP 01262735 A to
`
`Yanmar Agricult Equip Co LTD (Yamada).
`
`Regarding Claim 52, Holton as modified teaches a method of placing colored
`
`mulch on top of soil; changing the colors of the mulch based on the condition of the soil.
`
`Holton is silent on adding chemicals to the soil based on the color of the mulch.
`
`However, it is old and notoriously well-known in the art of plant husbandry to observe
`
`and test soil conditions to see if they meet the desired parameters and to adjust the
`
`parameters when necessary. Yanmar teaches the general knowledge of one of ordinary
`
`skill in the art to add fertilizer when the pH is out of desired range (Yanmar abstract and
`
`Fig. 1 #2). General knowledge that the pH of a growing medium component determines
`
`the addition of fertilizer. It would have been obvious to one of ordinary skill in the art
`
`further modify the teachings of Holton with the teachings of Yanmar at the time of the
`
`invention for the advantage of promoting healthy plant development. Examiner takes
`
`official notice that it is old and notoriously well-known to add fertilizer based on a pH of
`
`the soil e.g. tomato plants prefer a certain acidity in the soil for healthy development so
`
`it is general practice to test the pH to determine if and how much fertilizer is needed .
`
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`Page 5
`
`Claim 32 is rejected under 35 U.S.C. 103(a) as being unpatentable over U.S.
`
`Patent No. 6,021,598 to Holton in view of U.S. Patent No. 6,019,062 to Lombard et al as
`
`applied to claim 26 above, and further in view of U.S. Patent No. 5,734, 167 to Skelty.
`
`Regarding Claim 32, Holton as modified teaches coloring the mulch, but is silent
`
`on the dye is florescent. However, Sketly teaches it is old and notoriously well-known to
`
`dye agricultural products with florescent dye allowing the mulch to glow in the dark
`
`(Skelty Col. 1 line 35-45). It would have been obvious to one of ordinary skill in the art
`
`to further modify the teachings of Holton with the teachings of Skelty at the time of the
`
`invention since the modification is merely the selection of a known alternate coloring for
`
`the advantage of enabling safe night time agricultural operations as taught by Skelty
`
`(Skelty Col. 1line1-26).
`
`Claim 47 is rejected under 35 U.S.C. 103(a) as being unpatentable over U.S.
`
`Patent No. 4,067,140 to Thomas in view of U.S. Patent No. 6,019,062 to Lombard et al.
`
`Regarding Claim 47, Thomas teaches a colored mulch product (Thomas
`
`abstract) comprising: a material comprising a fiber cellulose (Thomas abstract first line),
`
`clay, loam, sand, and/or a combination of same; a binding agent (Thomas Col.1 line 30
`
`"wetting agent" and Col. 4 line 35-41 ); and a dye and/or pigment (Thomas Col. 1 line
`
`35) produced by a lifting and tumbling agglomeration operation (Thomas Col. 2 line 65-
`
`66. Thomas teaches adding fertilizer to the mulch mixture (Thomas Col. 1 line15). The
`
`language "indicates to a user environmental conditions of the soil where the mulch is
`
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`Page 6
`
`place" is functional language/result of the use of the product that the product is
`
`"capable" of performing. The applicant has not claimed a specific type or special dye;
`
`applicant has not claimed what environmental conditions; applicant has not claimed how
`
`the dye works. Applicant has merely claimed a dye. The color from the dye is capable
`
`of indicating to the user that the mulch has been placed on a desired surface and that
`
`the environmental condition of the soil under that mulch is in a stage of fertil ization since
`
`fertilizer is present in the mulch and over time with be absorbed into the soil. The mulch
`
`can also container seeds (Thomas Col. 1 line 15), so when the mulch with is placed in
`
`position and has seeds present it indicates to the under that the "environmental
`
`condition" of that soil area is "planted". Applicant has not patentably distinguished over
`
`the prior art of record. It can also be argued that Thomas is silent on the dye indicates
`
`to a user the environmental conditions of the soil where the mulch is place. However,
`
`Lombard et al teaches a dye indicator i.e. a pH indicating dye for application to
`
`cellulosic material such as paper (Lombard Col. 2 line 1-5 and Col. 2 line 11-15; Col. 2
`
`line 60-67). It would have been obvious to one of ordinary skill in the art to modify the
`
`teachings of Stevens with the teach ings of Lombard at the time of the invention since
`
`the modification is merely an engineering design choice involving the selection of a
`
`known alternate dye selected for the known advantage of monitoring pH levels as
`
`taught by Lombard.
`
`Claim 50 is rejected under 35 U.S.C. 103(a) as being unpatentable over U.S.
`
`Patent No. 6,324,781 to Stevens in view of U.S. Patent No. 5,697,984 to Swatzina et al.
`
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`Application/Control Number: 09/769,076
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`
`Page 7
`
`Regarding Claim 50, Stevens teaches a colored mulch product wherein the color,
`
`but is silent on the mulch product fades or disappears in response to a lack of fertilizer
`
`in the mulch. Stevens teaches the mulch product is made up of fertilizer (Stevens
`
`abstract last sentence), mulch plus fertilizer makes a mulch product. Swatzina teaches
`
`it is old and notoriously well-known to color fertilizer (e.g. red fertilizer Swatzina; Col. 2
`
`line 31-33 and Example 4 ). One of ordinary skill in the art would be motivated to modify
`
`the teachings of Stevens with the teachings of Swatzina at the time of the invention for a
`
`desired aesthetic design. Stevens as modified by Swatzina, i.e. the selection of red
`
`fertilizer, would inherently teach that as the red disappears or fades from the mulch the
`
`fertilizer is disappearing too.
`
`Claim 50 is rejected under 35 U.S.C. 103(a) as being unpatentable over U.S.
`
`Patent No. 6,021,598 to Holton in view of U.S. Patent No. 5,697,984 to Swatzina et al.
`
`Regarding Claim 50, Holton teaches a colored mulch product wherein the color,
`
`but is silent on the mulch product fades or disappears in response to a lack of fertilizer
`
`in the mulch. Holton teaches the mulch product is made up of fertilizer (Holton Claim 8),
`
`mulch plus fertilizer makes a mulch product. Swatzina teaches it is old and notoriously
`
`well-known to color fertilizer (e.g. red fertilizer Swatzina; Col. 2 line 31-33 and Example
`
`4 ). One of ordinary skill in the art would be motivated to modify the teachings of Holton
`
`with the teachings of Swatzina at the time of the invention for a desired aesthetic
`
`design. Holton as modified by Swatzina, i.e. the selection of red fertilizer, would
`
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`Page 8
`
`inherently teach that as the red disappears or fades from the mulch the fertilizer is
`
`disappearing too.
`
`Response to Arguments
`
`Applicant's arguments filed 08 April 201 O have been fully considered but they are
`
`not persuasive.
`
`The declaration by Mr. Holton filed 08 April 2010 is insufficient to overcome the
`
`rejection of claims as set forth in the last Office action because:
`
`First, regarding claims 26, 27, and 38, the claim language is very broad in nature.
`
`It merely states that "said dye indicates to a user environmental conditions of the soil
`
`where the mulch is placed". Applicant hasn't claimed specific environmental conditions.
`
`The mere fact that the area is mulched the environmental condition of the soil can
`
`merely be the soil has been mulched. Alternatively, the fact that the mulch is mixed with
`
`seeds and fertilizers the dye indicates that area is mulched and thus the environmental
`
`condition of the soil is seeded and fertilized. Even though Mr. Holton didn't intend for
`
`his invention to be an indicator, it inherently is an indicator. The green mulch of Mr.
`
`Holton indicates that the soil has been mulched, seeded and fertilized. The fact that Mr.
`
`Holton has recognized another advantage/another intended use, i.e. increased
`
`aesthetic appeal of green mulch, does not patentably distinguish applicant's invention.
`
`The fact that applicant has recognized another advantage which would flow
`
`naturally from following the suggestion of the prior art cannot be the basis for
`
`patentability when the differences would otherwise be obvious. See Ex parte
`
`Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
`
`US 8,474,183 File History
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`Application/Control Number: 09/769,076
`Art Unit: 3643
`
`Page 9
`
`The examiner maintains that the teachings of cited prior art Holton satisfies each
`
`and every limitation of the broadly worded claim. In addition, Holton even identifies
`
`how the mulch effects the environmental conditions of the soil (Holton Col. 2 line 34-38).
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`When the user sees the green color i.e. the dye the user knows that the soil is under
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`these current environmental conditions.
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`Second, regarding claims 26, 27, 28, 29, 30, 38, and 50, the examiner made a
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`typographical error in the text of the rejection of Holton in view of Lombard by typing
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`"Stevens." This typographical error should have been "Holton", it was clear from the
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`dialogue of the rejection that the examiner intended Holton. The examiner maintains
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`the combination of Holton modified by Lombard. The modification is merely an obvious
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`modification for one or ordinary skill in the art, not Mr. Holton. There is motivation
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`found in the teachings of Lombard to modify the teachings of Holton. Holton teaches
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`that the dye is an aesthetic feature. Changes in an aesthetic/ornamental design feature
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`is an obvious modification for one of ordinary skill in the art [In re Seid, 161 F.2d 229,
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`231, 73 USPQ 431, 433 (CCPA 1947)]. Lombard teaches the advantage of a dye that
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`monitors pH levels. The modification of Holton by Lombard is an obvious modification
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`for one of ordinary skill in the art for the known advantage taught by Lombard i.e. the
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`simple substitution of one known element (dye) for another to obtain predictable results.
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`Lombard is reasonably pertinent to the particular problem with which applicant
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`was concerned i.e. a means of providing a dye to a paper substrate. Holton even
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`discusses how an area that animal has urinated on has a higher urea content (Holton
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`Col. 2 line 15 and Col. 2 line 24 ).
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`US 8,474,183 File History
`Page 775
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`IPR2014-01110
`The Scotts Company, LLC v. Encap, LLC
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`Application/Control Number: 09/769,076
`Art Unit: 3643
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`Page 10
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`Lombard teaches an environmentally safe dye for application to fiber cellulosic
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`base material. Lombard teaches the dye can change from a blue to red (Lombard
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`abstract) which could be considered an aesthetic effect too. It can also be argued that
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`Holton teaches a fertilizer application and animal urine is an old and notoriously well-
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`known fertilizer component that is particularly desirable for application around plants
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`that have a high nitrogen requirement. It can be argued that the motivation to combine
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`the reference could also be to tell where an animal has urinated to identify the
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`environmental condition of fertilization. In other words, it would have been obvious to
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`modify/substitute the colored dye taught by Holton with the dye of Lombard in order to
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`identify animal urination as taught by Lombard to known an area has received nitrogen
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`fertilization. Again, the fact that applicant has recognized another advantage which
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`would flow naturally from following the suggestion of the prior art cannot be the basis for
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`patentability when the differences would otherwise be obvious. See Ex parte Obiaya,
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`227 USPQ 58, 60 (Bd . Pat. App. & Inter. 1985).
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`Third, regarding claim 52, the examiner is combining the teaching of Holton
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`modified by Lombard and further modified by Yanmar. Holton teaches placing a dyed
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`mulch on the soil. It is modified by the alternate dye of Lombard that changes color.
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`Yanmar is a teaching of general knowledge in the art that when a noticeable change in
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`pH has occurred it is desirable to add fertilizer. Therefore, the examiner is not going
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`against the teachings of Mr. Holton. Again, merely modifying an aesthetic effect does
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`not present a patentably distinct limitation over the prior art of record. The modification
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`US 8,474,183 File History
`Page 776
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`IPR2014-01110
`The Scotts Company, LLC v. Encap, LLC
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`

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`Application/Control Number: 09/769,076
`Art Unit: 3643
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`Page 11
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`of the teachings of Lombard is merely a modification to the aesthetic effect of Holton for
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`the known advantage taught by Lombard.
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`The examiner maintains that Holton teaches a cellulosic fiber base with a dye
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`that gives it color; Lombard is cited as general knowledge in the art of a known alternate
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`environmentally friendly dye that is well received by a cellulosic fiber base. It has been
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`discussed in the above paragraphs that there is motivation found in the art to combine
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`the teachings for the colored red/blue aesthetic effect taught by Lombard along with the
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`ability to determine if an animal has urinated in a certain region i.e. released nitrogen
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`components into an environmental region. Holton is concerned with promoting plant
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`growth and providing fertilizer. Yanmar teaches general knowledge in the art that
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`healthy plant growth requires monitoring the pH to know when more fertilizer is
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`necessary. The combination is merely the application of a known technique to a known
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`device ready for improvement to yield predictable results.
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`Fourth, regarding claim 32, the examiner maintains the combination of Holton as
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`modified by Lombard and Skelty. Merely modifying an aesthetic effect does not present
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`a patentably distinct limitation over the prior art of record. The modification of the
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`teachings of Skelty is merely a modification to the aesthetic effect of Holton for the
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`known advantage taught by Skelty.
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`Fifth, regarding claim 47, the examiner has not changed the claim language of
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`the claims. It is an apparatus claim, not a method claim. Applicant has merely claimed
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`"said dye indicates to a user environmental conditions of the soil where the mulch is
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`place". The claim language merely presents a result a functional result of the dye. The
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`US 8,474,183 File History
`Page 777
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`IPR2014-01110
`The Scotts Company, LLC v. Encap, LLC
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`Application/Control Number: 09/769,076
`Art Unit: 3643
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`Page 12
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`dye of Holton is capable of satisfying the broad nature of the claimed functional result.
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`The applicant has not claimed a specific type or special dye; applicant has not claimed
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`what environmental conditions; applicant has not claimed how the dye works. Applicant
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`has merely claimed a dye. The color from the dye is capable of indicating to the user
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`that the mulch has been placed on a desired surface and that the environmental
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`condition of the soil under that mulch is in a stage of fertilization since fertilizer is
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`present in the mulch and over time with be absorbed into the soil. The mulch can also
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`container seeds (Thomas Col. 1 line 15), so when the mulch with is placed in position
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`and has seeds present it indicates to the under that the "environmental condition" of that
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`soil area is "planted".
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`Sixth, regarding claim 50, Stevens in view of Swatzina, it is the examiner's
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`position that Steven teaches a mulch mat with fertilizer added to it. The teachings of
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`Swatzina are only provided to teach the general knowledge in the art that it is known to
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`color fertilizers. Together the mulch and fertilizer make up the mulch product. Thus,
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`Swatzina is cited to provide a colored fertilizer that acts as a visual indicator and is not
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`cited to teach dying the mulch taught by Stevens another color. Furthermore, Stevens
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`Col. 6 line 35-37 merely states that color "may be" i.e. can be added to the mulch and
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`just one example of a color that can be selected is green. Stevens does not teach that
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`the mulch product has to be a green and only green color.
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`Seventh, regarding claim 50 Holton in view of Swatzina, Holton teaches a
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`colored mulch product. Holton teaches that the mulch product is dyed green. Holton
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`teaches that the fertilizer and seed are added to the dyed mulch product onsite i.e. at a
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`US 8,474,183 File History
`Page 778
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`Encap Exhibit 2001
`IPR2014-01110
`The Scotts Company, LLC v. Encap, LLC
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`

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`Application/Control Number: 09/769,076
`Art Unit: 3643
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`Page 13
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`later time (Holton Col. 5 line 40-50 and Col. 5 line 24-25). Holton doesn't teach that the
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`fertilizer has to be green in color too. Therefore, there is no reason why one of ordinary
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`skill in the art wouldn't look to the teachings of Swatzina for a known form of fertilizer to
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`add to the green mulch product of Holton.
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`Examiner maintains that applicant has not patentably distinguished over the
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`teachings of the cited prior art of record.
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`Conclusion
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
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`policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action. In the event a first reply is filed within
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`TWO MONTHS of the mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action. In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the mailing date of this final action.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to ANDREA M. VALENTI whose telephone number is
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`(571 )272-6895. The examiner can normally be reached on 6:00am-4:30pm M-Th.
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`US 8,474,183 File History
`Page