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 .
This office action is in response to applicant’s amendments claims filed October 20, 2025.
Claims 1,2,7 and 11 are pending. Claims 3-6 and 8-10 have been cancelled. Claims 1 and 11 have been amended.
All prior rejections are withdrawn in view of applicant’s amendments to the claims.
For examination purposes the examiner interpreted the term “sturdy” to be any warp faced textile in which a weft passes under two or more warp threads.
Claim Objections
Claim 1 is objected to because of the following informalities: in the last line the “)” between “an” and “fungi” should be removed. Appropriate correction is required.
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 1,2,7 and 11 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. 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. Claim 1 recites about 120 degree Fahrenheit, applicant has basis for the limitation “in the range of 120 Fahrenheit” in paragraph 0021. In “the range of” is not identical in scope to “about”. Claims 2,7 and 11 are also rejected for being dependent upon claim 1 and inheriting the same deficiency.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1,2,7 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over toothpicknations (LDF19: Biodesign Here Now at Open Cell, https://www.toothpicnations.co.uk/blog/?p=37557) in view of Yang (WO 2007/008228), University of Pennsylvania-Denimaize Biodesign Challenge (https://www.youtube.com/watch?v=vhWuK9XA30E), Jackson-Tiems (Smut Diseases of Corn https://extensionpubs.unl.edu/publication/g2223/na/html/view), Costa (Utilization of montmorillonite in biostoning process as a strategy for effluent reuse. J Chem Technol Biotechnol. April 2021; Vol 96: Issue 4: pgs 890-898), and Hasan (Discover All About Denim-All the good things you need to know. https://n2nsourcing.com/all-about-denim/).
The toothpicknations website teaches Denimaize uses biodesign to redesign denim by taking waste and diseased corn husks and processing to extract the cellulose fibers, spinning the fibers with flax, weaving a fabric, dyeing it with microbial dye and relaxing with cellulase enzymes (page 29/30).
Toothpicknations does not teach Ustilago maydis fungus smut infection, retting at about 120°F, rinsing and drying, biostoning using cellulase and recycling a post-processing enzyme after biostoning
Yang teaches that corn husk fibers are extracted by retting the dried corn husks in a aqueous alkali solution at about 60°C (140F) to about 100°C (212F) and preferably a temperature below 100°C containing sodium hydroxide (contains hot water), neutralizing with 10-30% acetic acid, rinsing, drying and separating the fibers (pages 9-11).
University of Pennsylvania-Denimaize Biodesign Challenge teaches using smut infected corn husks to prepare denim fibers wherein the fibers are spun using a hand loom and post processed by making into a denim garment (video). Stonewashed denim jeans can be seen in the first frames of the video.
Jackson-Tiems teaches that the most common form of smut found on corn is caused by the fungus Ustilago maydis and can develop on any plant part of the corn plant (page 1/6, last 2 paragraphs).
Costa teaches biostoning using cellulase is traditional in the stone washing of denim for controlled removal of dye and the effluent that contains still active cellulase can be reused (recycled) in future cycles of biostoning (abstract; page 891, left column, page 896, left column, reuse of effluent section).
Hasan teaches denim is conventionally woven into fabric from sturdy cotton warp-faced textile in which the weft that runs across, passes under two or more warp threads (page 2/10, first paragraph).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of toothpicknations website by separating the fibers using a retting process involving treating with heated aqueous sodium hydroxide solution, neutralizing with 20% acetic acid, rinsing and drying the retted fibers and separating the fibers as Yang teaches this is an effective way to extract cellulose fibers from corn husk and toothpicknations invites the inclusion of extracting cellulose fibers from corn husks. Using a known effective method for achieving the desired cellulose fiber extraction from corn husks is obvious. Regarding the temperature of about 120F claimed, Yang teaches controlling the temperature during alkali treatment and exemplifies about 60°C (140F) but also teaches a preferred range of any temperature below 100°C (212F). The term “about” is not an absolute value but is a range, applicant’s about 120F reads on the about 60°C (140F) of Yang. The word “about” permits some tolerance. At least about 10% was held to be anticipated by a teaching of a content not to exceed about 8%, see In re Ayers, 154 F 2d 182,69 USPQ 109 (CCPA 1946). A pressure limitation of 2-15 pounds per square inch was held to be readable on a reference which taught a pressure of the order of about 15 pounds per square inch, see In re Erickson, 343 F 2d 778, 145 USPQ 207 (CCPA 1965). A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties, see Titanium Metals Corp. of America v. Banner, 778F.2d 775,227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.051. Further using any temperatures below 100°C (212F) in Yang would be obvious as temperatures below 100°C are taught by Yang to be a preferred embodiment.. Applicant has not demonstrated the criticality of 120F, Both about 120F of the claimed invention and about 60°C (140F) of Yang could read on 130F. It is further expected that these temperatures would produce similar results as they are similar. All disclosures of the prior art, including non-preferred embodiment, must be considered. See In re Lamberti and Konort, 192 USPQ 278 (CCPA 1967); In re Snow 176 USPQ, 328, 329 (CCPA 1973).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of toothpicknations website by using smut infected corn husks and spinning the fibers using hand loom and post processing into a denim garment after dyeing as University of Pennsylvania-Denimaize Biodesign Challenge smut infected corn husks can be effectively treated to extract the cellulose fibers which are subsequently spun into fibers using a hand loom, dyed with a microbial dye and processed into garments such as denims to provide an ecofriendly method for denim fabrication.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of Toothpicknations by using corn husks infected with smut from the fungus Ustilago maydis as Jackson-Tiems teaches this fungus is the most common type of smut found on corn and develops on all parts of the plant. Toothpicknations invites the inclusion of using diseased corn husks and University of Pennsylvania-Denimaize Biodesign specifically invites the inclusion of smut infected corn husks to prepare the fibers. Using the most common fungus infection that produces smut on corn is obvious. Further, using the most abundant source of corn smut husks would be obvious as it would be easiest to obtain.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods of Toothpicknations by using cellulase enzymes to produce biostoning effects as Costa teaches biostoning using cellulase is traditional in the biostoning of denim for controlled removal of dye and University of Pennsylvania-Denimaize Biodesign invites the inclusion of producing stonewashed denim from the corn smut husk based fibers dyed with microbial dye. Further toothpicknations invites the inclusion of treating with cellulases. The origin of the cellulase of claim 1, “cellulase derived from an fungi”, is a product by process limitation, and the examiner has found the same enzyme cellulase. Any difference imparted by the product by process limitations would have been obvious to one having ordinary skill in the art at the time the invention was made because where the examiner has found a substantially similar product as in the applied prior art, the burden of proof is shifted to the applicant to establish that their product is patentably distinct, not the examiner to show the same process of making, see In re Brown, 173 USPQ 685 and In re Fessmann, 180 USPQ 324. Burden is on applicants to show product differences in product by process claims, see In re Thorpe, 227 USPQ 964 (Fed. Cir. 1985); In re Best, 195 USPQ 430 (CCPA 1977); In re Fessman, 180 USPQ 324 (CCPA 1974); In re Brown, 173 USPQ 685 (CCPA 1972).
Reusing the effluent in the methods of Toothpicknations, Yang and University of Pennsylvania-Denimaize Biodesign would be obvious as Costa teaches the effluent that contains still active cellulase can be reused (recycled) in future cycles of biostoning for a more ecofriendly and cost effective process.
It would have been obvious to modify the methods of Toothpicknations by making the denim from a sturdy warp-faced textile in which a weft passes under two warps threads as Hasan teaches this is how denim is conventionally fabricated and Toothpicknations, University of Pennsylvania-Denimaize Biodesign Challenge and Costa are all directed to preparing and treating denim. Using the most common method of weaving the denim into a fabric as taught by Hasan is obvious in other methods inviting the use and treatment of denim.
Claims 1,2,7 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over toothpicknations (LDF19: Biodesign Here Now at Open Cell, https://www.toothpicnations.co.uk/blog/?p=37557) in view of Yang (Wo 2007/008228), University of Pennsylvania-Denimaize Biodesign Challenge (https://www.youtube.com/watch?v=vhWuK9XA30E), Jackson-Tiems (Smut Diseases of Corn https://extensionpubs.unl.edu/publication/g2223/na/html/view), Costa (Utilization of montmorillonite in biostoning process as a strategy for effluent reuse. J Chem Technol Biotechnol. April 2021; Vol 96: Issue 4: pgs 890-898), Zhang et al. Predominance of Trichoderma and Penicillium in cellulolytic aerobic filamentous fungi from subtropical and tropical forests in China, and their use in finding highly efficient β-glucosidase. Biotechnol Biofuels 7, 107 (2014)) and Hasan (Discover All About Denim-All the good things you need to know. https://n2nsourcing.com/all-about-denim/).and further in view of Zhang et al. Predominance of Trichoderma and Penicillium in cellulolytic aerobic filamentous fungi from subtropical and tropical forests in China, and their use in finding highly efficient β-glucosidase. Biotechnol Biofuels 7, 107 (2014)).
Toothpicknations, Yang, University of Pennsylvania-Denimaize Biodesign, Jackson-Tiems, Costa and Hasan are relied upon as set forth above.
Toothpicknations, Yang, University of Pennsylvania-Denimaize Biodesign, Jackson-Tiems, Costa and Hasan do not specify cellulase derived from an aerobic cellulolytic fungi.
Zhang teaches aerobic fungi are the most common source of commercial cellulase.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the methods Toothpicknations, Yang, University of Pennsylvania-Denimaize Biodesign, Jackson-Tiems, Costa and Hasan by using cellulase derived from an aerobic cellulolytic fungi because Zhang teaches this is the most common source of commercial cellulase. Using the most common commercially available cellulase would be advantageous for it would be easiest to purchase as it is abundant in the market.
Response to Arguments
Applicant's arguments filed with respect to previously cited references Toothpicknations, Yang, University of Pennsylvania-Denimaize Biodesign, Jackson-Tiems, Costa and Zhang as they apply to the new rejections above have been fully considered but they are not persuasive. Applicant’s arguments regarding Yang are unpersuasive as they have not been supported by factual evidence in the form of experimental data commensurate in scope with the claims that retting of healthy agricultural by-products would be procedurally different from infected or diseased material. Conclusory statements not supported by factual evidence, see In re Lindner, 457 F.2d 506, 173 USPQ 356 (CCPA 1972). Nothing unobvious is seen in using existing techniques to extract cellulosic fibers from corn husks whether they are healthy or diseased. Yang demonstrates that similar temperatures in the range of 120F are used to process healthy corn husks to obtain cellulose fibers and using established methods would be obvious to try to achieve the same result absent a demonstration of criticality. All references are in analogous art of corn husk processing into denim or reasonably pertinent to the art as they all relate to corn husk materials. Toothpicknations recognizes the use of diseased corn husks to extract cellulose for preparing textiles and Yang teaches an effective method for extracting cellulose from corn husks, which would be an obvious motivation to combine references.
The Denimaize design taught in both toothpicknations and University of Pennsylvania-Denimaize Biodesign teaches a sequential biological treatment with microbial dyeing and cellulase treatment which is the claimed continuous eco-process. The prior art in combination teaches all applicant’s claimed processing steps are known and conventional in the art and performed in the same sequence as applicant. It is known to use cellulases for biostoning and stonewashing dyed denim as taught by Costa. Zhang teaches bacterial sources of cellulase are the most common available so would be the easiest to obtain. The prior also teach recycling a post-processing enzyme after biostoning as taught by Costa. It is the examiner’s central position that Denimaize is already employing applicant’s invention and has disclosed most of applicant’s claimed inventive steps to the public as shown in both the toothpicknations article and University of Pennsylvania-Denimaize Biodesign document, particularly using smut infected corn husks to manufacture denim. Since the most common smut is Ustilago maydis fungus smut infection as taught by Jackson-Tiems, nothing unobvious is seen as arriving at using corn husks infected with Ustilago maydis as this would be the most abundant and least rare starting material. The other steps are conventional steps performed in standard corn husk processing through denim manufacture and stonewashing. All the prior art references are in analogous art or are reasonably pertinent to the art and one of ordinary skill in the art at the time the invention was made would have certainly been able to effectively combine the teachings to arrive at applicant’s claimed invention. Applicant’s again have not provided experimental data commensurate in scope with the claims and comparing to the closest prior art of record in the form of a declaration to demonstrate the criticality of the invention. Conclusory arguments alone are not sufficient to demonstrate criticality.
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 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 AMINA S KHAN whose telephone number is (571)272-5573. The examiner can normally be reached Monday-Friday, 9am-5:30pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AMINA S KHAN/
Primary Examiner, Art Unit 1761