Application/Control Number: 09/769,076
`Art Unit: 3643
`
`Page 5
`
`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. 5,766,312 to Furhmann 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; 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 is silent on explicitly teaching said dye indicates to a user by changing
`
`colors moisture content of the soil where said mulch is place. However, Furhmann
`
`teaches the old and notoriously well-known general knowledge of dyes that are
`
`moisture indicators (Furhmann Col. 2 line 10-29). Thus, Furhmann teaches a moisture
`
`indicator dye that indicates moisture content, acidity, and chemical content
`
`(water/moisture can be taken to satisfy the broad term chemical). It would have been
`
`obvious to one of ordinary skill in the art to modify the teachings of Holton with the
`
`teachings of Furhmann at the time of the invention for the known advantage of the
`
`known indicator properties of the dye. The modification is merely the simple substitution
`
`of one known dye for another to obtain predictable results.
`
`Claims 26, 27, 28, 30, 38 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.
`
`US 8,474,183 File History
`Page 835
`
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`IPR2014-01110
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`
`

`
`Application/Control Number: 09/769,076
`Art Unit: 3643
`
`Page 6
`
`Regarding Claim 26, 28, 30, Alternatively, 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; 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 moisture conditions of the soil where said mulch is placed; the dye indicates to a
`
`user the acidity of said soil; or the dye indicates to a user the chemical content of said
`
`soil.
`
`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). The main constituent of urine is water, averaging around 95% of
`
`the composition of urine, thus when indicating urine it indicates moisture too.
`
`Regarding Claim 27, Holton as modified teaches the mulch comprising; nitrogen,
`
`phosphorous, and potassium fortifiers (Holton Claim 8).
`
`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).
`
`US 8,474,183 File History
`Page 836
`
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`IPR2014-01110
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`
`

`
`Application/Control Number: 09/769,076
`Art Unit: 3643
`
`Page 7
`
`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 tor
`
`the advantage of enabling sate night time agricultural operations as taught by Skelty
`
`(Skelty Col. 1 line 1-26).
`
`Claim 26, 27, 28, 30, 38, 47 and 54 are 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 26, 27, 28, 30, 38, 47 and 54, 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; 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 is silent on explicitly teaching the dye
`
`indicates to a user by changing colors the moisture content of the soil where the mulch
`
`is placed. However, Lombard et al teaches a dye indicator i.e. a pH indicating dye tor
`
`US 8,474,183 File History
`Page 837
`
`Encap Exhibit 2001
`IPR2014-01110
`The Scotts Company, LLC v. Encap, LLC
`
`

`
`Application/Control Number: 09/769,076
`Art Unit: 3643
`
`Page 8
`
`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 Thomas 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. The main constituent of urine is water, averaging around
`
`95% of the composition of urine, thus when indicating urine it indicates moisture too.
`
`Claim 32 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
`
`as applied to claim 26 above, and further in view of U.S. Patent No. 5,734, 167 to Skelty.
`
`Regarding Claim 32, Thomas 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 Thomas 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. 1 line 1-26).
`
`Response to Arguments
`
`Applicant's arguments filed 25 July 2011 have been fully considered but they are
`
`not persuasive.
`
`US 8,474,183 File History
`Page 838
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`
`

`
`Application/Control Number: 09/769,076
`Art Unit: 3643
`
`Page 9
`
`Applicant references page 15 of the specification for support for the new
`
`limitations of claim 55 that the mulch changes its color back to its initial color. However,
`
`page 15 of the specification merely states that the dye changes color or becomes
`
`visible. The specification does not state that the dye changes back it its initial color.
`
`The specification only references a one way change in color, not a round trip. The
`
`examiner does not find applicant's arguments convincing and maintains the rejection as
`
`set forth in the above paragraphs.
`
`The issue at hand here is not what Mr. Holton intended by his dye in '598, but
`
`would one of ordinary skill in the art be motivated to make such a
`
`substitution/combination. Mr. Holton merely teaches it is preferred dying the mulch an
`
`aesthetically acceptable color of green . Thomas teaches merely dying the mulch a
`
`pleasing color and cites green as an example, but does not limit the color to green
`
`(Thomas abstract). Thomas further states selecting a dye that is merely an eye
`
`appealing color (Thomas Col. 2 line 51-52).
`
`Both primary references, Thomas and Holton, teach the basic known concept of
`
`coloring mulch utilizing a dye i.e. general knowledge of one of ordinary skill in the art to
`
`dye mulch a desired color. Merely selecting an alternate color to produce a desired
`
`aesthetic effect and/or to utilize known properties of a dye as intended does not teach
`
`away from the teachings of Holton and Thomas. One of ordinary skill in the art would
`
`be motivated to select an alternate dye such as indicator dye for the known indicator
`
`properties taught by Furhmann and Lombard.
`
`US 8,474,183 File History
`Page 839
`
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`IPR2014-01110
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`
`

`
`Application/Control Number: 09/769,076
`Art Unit: 3643
`
`Page 10
`
`In response to applicant's arguments against the references individually, one
`
`cannot show nonobviousness by attacking references individually where the rejections
`
`are based on combinations of references. See In re Keller, 642 F.2d 413, 208
`
`USPQ 871 (CCPA 1981 ); In re Merck & Co. , 800 F.2d 1091 , 231 USPQ 375 (Fed. Cir.
`
`1986).
`
`In response to applicant's argument that there is no teaching, suggestion, or
`
`motivation to combine the references, the examiner recognizes that obviousness may
`
`be established by combining or modifying the teachings of the prior art to produce the
`
`claimed invention where there is some teaching, suggestion, or motivation to do so
`
`found either in the references themselves or in the knowledge generally available to one
`
`of ordinary skill in the art. See In re Fine, 837 F.2d 1071 , 5 USPQ2d 1596 (Fed. Cir.
`
`1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR
`
`International Co. v. Teleflex, Inc. , 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case,
`
`obviousness is established by combining or modifying the teachings of the prior art to
`
`produce the claimed invention where there is some teaching, suggestion, or motivation
`
`to do so found either in the references themselves or in the knowledge generally
`
`available to one of ordinary skill in the art. The motivation found in the teachings of
`
`Furhmann is the selection of a dye that is a moisture indicator (Furhmann Col. 2 line 9-
`
`29) and the motivation found in Lombard is a visual pH indicator for a cellulose based
`
`material. Both Furhmann and Lombard teach known dyes. The modification to Holton
`
`and/or Thomas is merely the selection of a known alternate dye for an alternate
`
`desired/pleasing aesthetic effect and for the known indicator properties. This
`
`US 8,474,183 File History
`Page 840
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`

`
`Application/Control Number: 09/769,076
`Art Unit: 3643
`
`Page 11
`
`combination use motivation found both in the references themselves and in knowledge
`
`generally available to one of ordinary skill in the art.
`
`Furthermore, aesthetic changes do not present patentably distinct limitation over
`
`the prior art of record [In re Seid, 161 F.2d 229, 231 , 73 USPQ 431 , 433 (CCPA 1947)].
`
`Both Holton and Thomas teach that the dye is an aesthetic feature. Therefore, merely
`
`changing the aesthetic feature utilizing an alternate known dye does not present a
`
`patentably distinct limitation and does not teach away.
`
`The examiner reiterates that since the main constituent of urine is water,
`
`averaging around 95% of the composition of urine, thus when indicating urine it
`
`indicates moisture too. The examiner maintains that combination of Holton/Thomas
`
`with the teachings of Lombard as presented in the above paragraphs.
`
`Skelty explicitly teaches the advantage of enabling safe night time agricultural
`
`operations (Skelty Col. 1 line 1-26).
`
`Examiner maintains that applicant has not patentably distinguished over the
`
`teachings of the cited prior art of record.
`
`Conclusion
`
`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
`
`US 8,474,183 File History
`Page 841
`
`Encap Exhibit 2001
`IPR2014-01110
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`
`

`
`Application/Control Number: 09/769,076
`Art Unit: 3643
`
`Page 12
`
`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
`
`extension fee 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 date of this final action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ANDREA VALENTI whose telephone number is
`
`(571 )272-6895 . The examiner can normally be reached on 8:00am-6:30pm Mon ..
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Peter M. Poon can be reached on 571-272-6891 . The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/Andrea M. Valenti/
`
`US 8,474,183 File History
`Page 842
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`
`

`
`Application/Control Number: 09/769,076
`Art Unit: 3643
`
`Page 13
`
`Primary Examiner, Art Unit 3643
`
`11 October 2011
`
`US 8,474,183 File History
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`

`
`Search Notes
`
`II 111 II II II II Ill II
`
`Application/Control No.
`
`09769076
`
`Examiner
`
`ANDREA M VALENTI
`
`Applicant(s)/Patent Under
`Reexamination
`
`KRYSIAK ET AL.
`
`Art Unit
`
`3643
`
`SEARCHED
`
`Subclass
`
`Class
`Updated
`Updated
`Updated
`Updated
`Updated
`Updated
`
`Search
`Search
`Search
`Search
`Search
`Search
`
`SEARCH NOTES
`
`Search Notes
`
`Class
`
`I
`I
`
`INTERFERENCE SEARCH
`
`Subclass
`
`Date
`7/10/2008
`2/9/2009
`10/5/2009
`6/21 /2010
`1/20/2011
`10/11 /201 1
`
`Examiner
`AMV
`AMV
`AMV
`AMV
`AMV
`AMV
`
`I
`I
`
`I
`I
`
`Date
`
`I Examiner
`I
`
`Date
`
`I Examiner
`I
`
`/ANDREA M VALENTI/
`Primary Examiner.Art Unit 3643
`
`U.S. Patent and Trademark O ffice
`
`US 8,474,183 File History
`Part ol Paper No. :
`Page 844
`
`Encap Exhibit 2001
`IPR2014-01110
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`
`

`
`Index of Claims
`
`111 II Ill II II II II
`
`II
`
`Application/Control No.
`
`09769076
`
`Examiner
`
`ANDREA M VALENTI
`
`Applicant(s)/Patent Under
`Reexamination
`
`KRYSIAK ET AL.
`
`Art Unit
`
`3643
`
`Rejected
`
`Allowed
`
`--
`
`Cancelled
`
`N Non-Elected
`
`Restricted
`
`Interference
`
`A
`
`0
`
`Appeal
`
`Objected
`
`0 Claims renumbered in the same order as presented by applicant
`
`0 CPA
`
`0 T.D.
`
`0 R.1.47
`
`CLAIM
`Final
`Original
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`2 1
`22
`23
`24
`25
`26
`27
`28
`29
`30
`31
`32
`33
`34
`35
`36
`
`DATE
`07/10/2008 02/09/2009 10/05/2009 06/21/2010 01/20/2011 10/ 11 /201 1
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`N
`v'
`./
`./
`./
`./
`./
`
`v'
`
`./
`
`./
`
`v'
`.
`v'
`.
`.
`.
`N
`
`v'
`
`v'
`
`./
`
`v'
`.
`./
`.
`.
`.
`N
`
`v'
`
`v'
`
`./
`
`v'
`.
`v'
`.
`.
`.
`N
`
`v'
`
`v'
`
`v'
`
`v'
`.
`./
`.
`.
`.
`N
`
`v'
`
`./
`.
`v'
`.
`./
`.
`.
`.
`N
`
`v'
`
`./
`.
`v'
`.
`v'
`.
`.
`.
`N
`
`U.S. Patent and Trademark Oflice
`
`Part of Paper No. :
`
`US 8,474,183 File History
`Page 845
`
`Encap Exhibit 2001
`IPR2014-01110
`The Scotts Company, LLC v. Encap, LLC
`
`

`
`Index of Claims
`
`111 II Ill II II II II
`
`II
`
`Application/Control No.
`
`09769076
`
`Examiner
`
`ANDREA M VALENTI
`
`Applicant(s)/Patent Under
`Reexamination
`
`KRYSIAK ET AL.
`
`Art Unit
`
`3643
`
`Rejected
`
`Cancelled
`
`N Non-Elected
`
`=
`
`Allowed
`
`Restricted
`
`Interference
`
`A
`
`0
`
`Appeal
`
`Objected
`
`0 Claims renumbered in the same order as presented by applicant
`
`0 CPA
`
`0 T.D.
`
`0 R.1.47
`
`CLAIM
`Final
`Original
`37
`38
`39
`40
`41
`42
`43
`44
`45
`46
`47
`48
`49
`50
`51
`52
`53
`54
`55
`
`DATE
`07/10/2008 02/09/2009 10/05/2009 06/21/2010 01/20/2011 10/ 11 /201 1
`N
`N
`N
`N
`N
`N
`,/
`,/
`,/
`,/
`,/
`,/
`
`N
`N
`N
`N
`-
`-
`N
`N
`,/
`
`N
`N
`,/
`
`N
`,/
`
`N
`
`N
`N
`N
`N
`-
`-
`N
`N
`,/
`
`N
`N
`,/
`
`N
`,/
`
`N
`
`N
`N
`N
`N
`-
`-
`N
`N
`,/
`
`N
`N
`,/
`
`N
`,/
`
`N
`
`N
`N
`N
`N
`-
`-
`N
`N
`,/
`
`N
`N
`,/
`
`N
`,/
`
`N
`
`N
`N
`N
`N
`-
`-
`N
`N
`,/
`
`N
`N
`-
`N
`-
`N
`,/
`
`,/
`
`N
`N
`N
`N
`-
`-
`N
`N
`,/
`
`N
`N
`-
`N
`-
`N
`,/
`
`,/
`
`U.S. Patent and Trademark Oflice
`
`Part of Paper No. :
`
`US 8,474,183 File History
`Page 846
`
`Encap Exhibit 2001
`IPR2014-01110
`The Scotts Company, LLC v. Encap, LLC
`
`

`
`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
`
`121141201 1
`
`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
`
`12/14/2011
`
`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)
`
`US 8,474,183 File History
`Page 847
`
`Encap Exhibit 2001
`IPR2014-01110
`The Scotts Company, LLC v. Encap, LLC
`
`

`
`Applicant-Initiated Interview Summary
`
`Application No.
`
`Applicant(s}
`
`09/769,076
`
`Examiner
`
`ANDREA VALENTI
`
`KRYSIAK ET AL.
`
`Art Unit
`
`3643
`
`All participants (applicant, applicant's representative, PTO personnel):
`
`(1) ANDREA VALENTI.
`
`(2) Philip M. Weiss.
`
`(3)Michael D. Krysiak.
`
`(4) __ .
`
`Date of Interview: 08 December 2011 .
`0 Telephonic 0 Video Conference
`~Personal [copy given to: 0 applicant
`
`Type:
`
`0 applicant's representative]
`
`Exhibit shown or demonstration conducted: ~Yes
`If Yes, brief description: See Continuation Sheet.
`
`0No.
`
`Issues Discussed 0 101 0112 0102 ~103 OOthers
`(For each of the checked box( es) above. please describe below lhe issue and detailed description of lhe discussion)
`
`Claim(s) discussed: 26-28,30,32,38A7.54 and 55.
`
`Identification of prior art discussed: U.S. Patent No. 4,067140: U.S. Patent No. 6,021,598 U.S. Patent No.
`5,766,312:U.S. Patent No. 5]34, 167: U.S. Patent No. 6,019,062.
`
`Substance of Interview
`(For each issue discussed, provide a detailed description and indicate if agreement was reached. Some topics may include: identifical'ion or clarification of a
`reference or a portion thereof, claim interprctarion, proposed amendments, arguments of any applied references etc ... )
`
`See Continuation Sheet.
`
`Applicant recordation instructions: The formal written reply to the last Office action must include the substance of the interview. (See MPEP
`section 713.04). If a reply to the last Office action has already been filed, applicant is given a non·extendable period of the longer of one month or
`thirty days from this interview date, or the mailing date of this interview summary form, whichever is later, to file a statement of the substance of the
`interview
`
`Examiner recordation instructions: Examiners must summarize the substance of any interview of record. A complete and proper recordation of
`the substance of an interview should include the items listed in MPEP 713.04 for complete and proper recordation including the identification of the
`general thrust of each argument or issue discussed, a general indication of any other pertinent matters discussed regarding patentability and the
`general results or outcome of the interview, to include an indication as to whether or not agreement was reached on the issues raised.
`0 Attachment
`/Andrea M. Valenti/
`Primary Examiner, Art Unit 3643
`
`U .S. Patent and Trademark Ott1ce
`PTOL-413 (Rev. 8/ 11/2010)
`
`Interview Summary
`
`Paper No. 20111211
`US 8,474,183 File History
`Page 848
`
`Encap Exhibit 2001
`IPR2014-01110
`The Scotts Company, LLC v. Encap, LLC
`
`

`
`Summary of Record of Interview Requirements
`
`Manual of Patent Examining Procedure (MPEP), Section 713.04, Substance of Interview Must be Made of Record
`A complete written statement as to the substance of any face·to-face, video conference. or telephone interview with regard to an application must be made of record in the
`application whether or not an agreement with the examiner was reached at the interview.
`
`Title 37 Code of Federal Regulations (CFR) § 1.133 Interviews
`Paragraph (b)
`
`In every instance where reconsideration is requested in view of an interview with an examiner, a complete w ri11en statement of the reasons presented at 1he interview as
`warranting favorable action must be tiled by1he applicant. An interview does not remove the necessity tor reply 1o Office action as specified in §§ 1.111 , 1.135. (35 U.S.C. 132)
`
`37 CFR §1.2 Business to be transacted in writing.
`All business with the Patent or Trademark Office should be transacted in writing. The personal attendance of applicants or t heir attorneys or agents at the Patent and
`Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to
`any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.
`
`The action of the Patent and Trademark Office cannot be based exclusively on the written record in the Office if that record is itself
`incomplete through the failure to record the substance of interviews.
`It is the responsibility of the applicant or the attorney or agent to make the substance of an interview of record in the application file, unless
`the examiner indicates he or she will do so. It is the examiner's responsibility to see that such a record is made and to correct material inaccuracies
`which bear directly on the question of patentability.
`
`Examiners must complete an Interview Summary Form for each interview held where a matter of substance has been discussed during the
`interview by checking the appropriate boxes and filling in the blanks. Discussions regarding only procedural matters, directed solely to restriction
`requirements for which interview recordation is otherwise provided for in Section 812.01 of the Manual of Patent Examining Procedure, or pointing
`out typographical errors or unreadable script in Office actions or the like, are excluded from the interview recordation procedures below. Where the
`substance of an interview is completely recorded in an Examiners Amendment, no separate Interview Summary Record is required.
`
`The Interview Summary Form shall be given an appropriate Paper No., placed in the right hand portion of the file, and listed on the
`"Contents" section of the file wrapper. In a personal interview, a duplicate of the Form is given to the applicant (or attorney or agent) at the
`conclusion of the interview. In the case of a telephone or video-conference interview, the copy is mailed to the applicant's correspondence address
`either with or prior to the next official communication. If additional correspondence from the examiner is not likely before an allowance or if other
`circumstances dictate, the Form should be mailed promptly after the interview rather than with the next official communication.
`
`The Form provides for recordation of the following information :
`- Application Number (Series Code and Serial Number)
`- Name of applicant
`- Name of examiner
`- Date of interview
`- Type of interview (telephonic, video-conference, or personal)
`- Name of participant(s) (applicant, attorney or agent, examiner, other PTO personnel, etc.)
`- An indication whether or not an exhibit was shown or a demonstration conducted
`- An identification of the specific prior art discussed
`-
`An indication whether an agreement was reached and if so, a description of the general nature of the agreement (may be by
`attachment of a copy of amendments or claims agreed as being allowable). Note: Agreement as to allowability is tentative and does
`not restrict further action by the examiner to the contrary.
`- The signature of the examiner who conducted the interview (if Form is not an attachment to a signed Office action)
`
`It is desirable that the examiner orally remind the applicant of his or her obligation to record the substance of the interview of each case. It
`should be noted, however, that the Interview Summary Form will not normally be considered a complete and proper recordation of the interview
`unless it includes, or is supplemented by the applicant or the examiner to include, all of the applicable items required below concerning the
`substance of the interview.
`A complete and proper recordation of the substance of any interview should include at least the following applicable items:
`1) A brief description of the nature of any exhibit shown or any demonstration conducted,
`2) an identification of the claims discussed,
`3) an identification of the specific prior art discussed,
`4) an identification of the principal proposed amendments of a substantive nature discussed, unless these are already described on the
`Interview Summary Form completed by the Examiner,
`5) a brief identification of the general thrust of the principal arguments presented to the examiner,
`(The identification of arguments need not be lengthy or elaborate. A verbatim or highly detailed description of the arguments is not
`required. The identification of the arguments is sufficient if the general nature or thrust of the principal arguments made to the
`examiner can be understood in the context of the application file. Of course, the applicant may desire to emphasize and fully
`describe those arguments which he or she feels were or might be persuasive to the examiner.)
`6) a general indication of any other pertinent matters discussed, and
`7) if appropriate, the general results or outcome of the interview unless already described in the Interview Summary Form completed by
`the examiner.
`Examiners are expected to carefully review the applicant's record of the substance of an interview. If the record is not complete and
`accurate, the examiner will give the applicant an extendable one month time period to correct the record.
`
`Examiner to Check for Accuracy
`
`If the claims are allowable for other reasons of record, the examiner should send a letter setting forth the examiner's version of the
`statement attributed to him or her. If the record is complete and accurate, the examiner should place the indication, "Interview Record OK" on the
`paper recording the substance of the interview along with the date and the examiner's initials.
`
`US 8,474,183 File History
`Page 849
`
`Encap Exhibit 2001
`IPR2014-01110
`The Scotts Company, LLC v. Encap, LLC
`
`

`
`Continuation Sheet (PTOL-413)
`
`Application No. 09/769,076
`
`Continuation of Exhibit shown or demonstration conducted, If Yes, brief description: Applicant provided four samples
`of colored product. Two of the samples were dry and the other two samples were wet. Applicant provided an
`additional two samples of a product on the market that had no dye, but changed color when wet. Finally, applicant
`provided four more samples of a dyed product that didn't change color when wet..
`
`Continuation of Substance of Interview including description of the general nature of what was agreed to if an
`agreement was reached , or any other comments: Applicant provided a summary of technologies in the industry that
`are copying the claimed invention (Scotts EZSeed; Schultz, Vigoro, Pennington). Applicant provided a background
`description of how the product works and the importance of the product in grass production. Grass seed needs water
`and moisture to germinate. The use of this "water me technology" motivates the user on how to productively care for
`the grass seed. The mulch that is mixed with grass seed acts as a water indicator that indicates to the user the
`moisture content of the surface soil. Therefore, by looking at the color of the mulch the user can determine if he needs
`to add more water or not. Applicant discussed the importance of production of the product by agglomeration and that
`the Thomas references teaches away from agglomeration. Applicant proposed a method claim such as a method of
`determining the moisture content of the soil comprising: placing mulch product on soil; said soil containing
`seeds/plants; determining moisture content of the soil by color of the mulch; said mulch color intensity changes with
`presence of moisture; adjusting mositure level of soil in response to color of mulch; agglomeration. The examiner
`indicated the concern that the claim language may read on the inherent properties of clay/coir mulches. Applicant
`indicated that it is a new use for an old method. The mulch absorbs and releases the water. The significant aspect is
`the relationship of the mulch mositure level and that of the soil and seed moisture level. Further determinations on the
`application is pending an updated search. The examiner indicated that she would discuss the application with her
`supervisor Peter Poon. Applicant provided samples of how their product changes color when wet.
`
`US 8,474,183 File History
`Page 850
`
`Encap Exhibit 2001
`IPR2014-01110
`The Scotts Company, LLC v. Encap, LLC
`
`

`
`\
`
`.;
`
`~ :.0
`'' _: ~c'C 1.11\\\\ _.
`,. vi.
`PTO/SB/122 (11·08)
`.,,
`!l.J
`Approved for use through 11/30/2011. OMB 0651-0035
`~
`~~~
`U.S. Patent and Trademarlc Office; U.S. DEPARTMENT OF COMMERCE
`~ I.kW the Papeiwork Redudion Ad of 1995, no persons are required to respond to a collection of informatlon unless it displays a valid OMB control number.
`,,,.,
`~~"~
`091769•076 r
`-
`1/25/01
`
`CHANGE OF
`CORRESPONDENCE ADDRESS
`Application
`
`Address to:
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Aoolication Number
`
`FilinQ Date
`
`First Named Inventor
`
`Art Unit
`
`Examiner Name
`
`M. Krysiak
`
`3643
`
`A. Valenti
`
`Attorney Docket Number
`
`. P/35-4 GIP - . ·
`
`Please change the Correspondence Address for the above-identified patent applica'i10n tO: -
`
`._ ,
`
`··1· ·· . -
`
`...
`
`..
`
`.. ~ ·.
`
`D
`
`The address associated with
`Customer Number:
`
`OR
`""1 Firm or
`Individual Name Philip M. Weiss, WEISS & WEISS
`L!..J
`
`410 Jericho Turnpike
`d
`A dress Suite 105
`
`City
`
`Jericho
`Country us
`
`Telephone
`_
`516
`739
`
`_
`1500
`
`I Zip 11753
`
`NY
`
`I State
`I Email
`
`This form cannot be used to change the data associated with a Customer Number. To change the
`data associated with an existing Customer Number use "Request for Customer Number Data Change• (PTO/SB/124).
`
`I am the:
`
`D ApplicanUlnventor
`D Assignee of record of the entire interest.
`
`Statement under 37 CFR 3.73(b) is enclosed. (Form PTO/SB/96).
`
`W Attorney or agent of record. Registration N