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 .
DETAILED ACTION
Applicant filed a claim amendment on 13 May 2026. Claims 15, 21, and 28 are amended. Claims 1-8, 13, 15-25 and 28 are pending. Claims 1-8,13 and 23-24 remain withdrawn. Claims 15-22, 25, and 28 are under examination.
Claim Objections
Claim 15 is objected to because of the following informalities: the limitation “c. drying the exudated biomass to a moisture level of at least 5wt% to a moisture level of at most 40wt% to obtain a dried, exudated biomass” contains redundant phrasing that can be more succinctly written as “c. drying the exudated biomass to a moisture level of 5wt% to 40wt% to obtain a dried, exudated biomass”.
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.
(New necessitated by amendment) Claims 15-22, 25, and 28 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 enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
As stated in the MPEP §2164.01(a), there are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue”.
In re Wands, 8 USPQ2d 1400 (1988), provided factors to be considered in determining whether a disclosure meets the enablement requirement of 35 U.S.C. 112 (a) or 35 U.S.C. 112 (pre-AIA ), first paragraph. They are:
The nature of the invention
The state of the prior art
The predictability or lack thereof in the art
The amount of direction or guidance present
The presence or absence of working examples
The breadth of the claims
The quantity of experimentation needed, and
The level of skill in the art
It is noted that all of the Wands factors have been considered with regard to the instant claims, with the most relevant factors discussed below.
It is noted that the values for dried solids content (DS) and moisture level content (ML) are inversely related. The specification states that “dried solids” is the difference between the total weight of a sample containing solids and the weight of the moisture or water content in the sample (specification [0071]). Thus: DS wt.% = 100 wt.% - ML wt.%, and inversely: ML wt.% = 100 wt.% - DS wt.%. For example, a biomass with a DS content of 90 wt.% would have a ML content of 10 wt.%. It is also noted that moisture content is equivalent to water content.
The breadth of the claims and nature of the invention: Claim 15 step a recites that the seaweed biomass comprises a dry solids content of 30-85 wt%, which equates to 15-70 wt% moisture content when using the conversion calculation discussed above. Claim 15 step b recites that the seaweed biomass is subjected to a natural exudation process whereby 5-50 wt% of the water inside the seaweed is extracted, and that the natural exudation process is performed in an exudation environment comprising at least 90 wt% moisture. Claim 21 further limits the exudation environment to comprise at least 95 wt% moisture. The BRI of the exudation environment limitations means that the exudation environment contains at minimum 90 wt% water and up to 100 wt% moisture/water, which would be an exudation environment made entirely of pure water.
Osmosis is the net movement of water across a semipermeable membrane from an area of lower solute concentration to an area of higher solute concentration, as evidenced by pg. 1 para. 3 of Khan Academy (Osmosis and Tonicity, https://www.khanacademy.org/science/ap-biology/cell-structure-and-function/mechanisms-of-transport-tonicity-and-osmoregulation/a/osmosis, accessed 30 July 2026). In the context of biological systems, such as the instant seaweed exudation process, the concept is referred to as tonicity, with a hypotonic solution being where the net flow of water is into the cell because the environment surrounding the cell contains less solutes than inside the cell (Khan Academy pg. 3-4 sec. Tonicity).
The seaweed biomass that is being subjected to a natural exudation process in step b contains only 15-70 wt% water, meaning that the remaining 30-85 wt% are solutes. However, the exudation process environment contains at minimum 90 wt% water, meaning that the remaining at most 10 wt% are solutes. Therefore, the exudation environment is hypotonic relative to the seaweed biomass undergoing the exudation, so there would be a net movement of water into, not out of, the biomass’ seaweed cells due to this osmotic imbalance.
However, the claimed process is against the principle of osmosis because the claims recite that the seaweed biomass with 15-70 wt% water undergoes an exudation process that extracts 5-50 wt% water from inside the seaweed when performed in an environment containing at least 90 wt% water. As discussed above, this is contrary to the natural process of osmosis because the water in the surrounding environment would actually flow into the biomass’ seaweed cells, thus the claimed exudation process would be physically unable to extract 5-50 wt% water from the seaweed cells as claimed. With this knowledge in mind, one of ordinary skill in the art would be required to consult the specification for guidance on how this claimed exudation process is performed in such a highly hypotonic environment, so that they would be able to practice the invention commensurate in scope with the claims.
The amount of guidance present and absence of working examples: The specification provides a general guideline in [84] which describes different options for the exudation environment’s water content, but this paragraph does not provide any guidance that shows one of ordinary skill in the art how the exudation process is possible in an environment containing 90 wt% water.
The specification provides several working examples where an exudation process is performed on a seaweed biomass (Specification [127]-[136], Examples 1-4). In Example 1, fresh harvested seaweed is rinsed in seawater to make a biomass that is then spread onto a table, covered with transparent tarpaulin, and placed in a sunny location. This exudation process caused the temperature under the tarpaulin (the exudation’s environment) to reach about 60°C and a humidity over 90% (Specification [127]). The specification never states what type of humidity this measurement was, be it specific, relative, or absolute humidity. Relative humidity is often measured in the art, so for purposes of the following discussion, the 90% humidity will be treated as 90% relative humidity (RH).
An environment comprising 90%RH is not equivalent to an environment with 90wt% moisture. RH is the amount of water vapor in the air compared to the maximum amount of water the air can hold at that specific temperature, expressed as a percentage, so RH does not directly measure the mass of water in a given mass of air. However, the weight percent of water in a given sample of air can be calculated using temperature and RH. The NOAA Air Resources Laboratory provides a calculator that determines the absolute humidity using temperature and RH values (NOAA Air Resources Laboratory, Moisture Calculator, https://www.ready.noaa.gov/READYmoistcal.php, accessed 30 July 2026). Inputting 60°C and 90%RH generates an absolute humidity of 115.3 g water/m3 of air. The mass of water in a mass of air can then be determined by dividing the absolute humidity by the density of the air at 60°C and 90%RH, which can be calculated using Dalton’s law for partial pressures. Calctool provides a calculator that uses Dalton’s law to calculate the air density at a given air pressure, temperature, and %RH (Calctool, Air Density Calculator, https://www.calctool.org/atmospheric-thermodynamics/air-density, accessed 30 July 2026). Inputting standard atmospheric pressure 101,325 Pa, 60°C, and 90%RH generates an air density of 988.6 g air/m3. Dividing the absolute humidity of 115.3g water/m3 by the 988.6 g air/m3 results in 0.1166 g water/g air. A weight percentage of water can then be calculated by dividing the mass of water by the sum of the mass of air and mass of water then multiplying by 100%, 0.1166g water / (1g air + 0.1166g water) = 0.1044 * 100% = 10.44wt% water. Therefore, Example 1’s exudation process was performed in an environment containing only about 10wt% water, significantly lower than the claimed 90wt% water environment. Examples 2-4 all performed the same exudation process of Example 1, so those examples do not provide any guidance either. Due to the lack of guidance or working examples in the specification showing that the claimed exudation process is possible in such a highly hypotonic environment of 90wt% water, one of ordinary skill in the art would still not be able to understand how the claimed exudation process is able to defy the well understood natural process of osmosis by being able to extract 5-50wt% water from inside a seaweed in a biomass with 15-70wt% water when performed in an environment containing at least 90wt% water. One of ordinary skill in the art would then be required to consult the prior art for guidance on how this claimed exudation process is possible so that they would be able to practice the invention commensurate in scope with the claims.
The state of the prior art, lack of predictability, and quantity of experimentation: The art recognizes that osmosis is the net movement of water across a semipermeable membrane from an area of lower solute concentration to an area of higher solute concentration, as evidenced by pg. 1 para. 3 of Khan Academy. A hypotonic environment around a cell would create a net flow of water into the cell; a hypertonic environment around a cell would create a net flow of water out of the cell; and an isotonic environment around a cell would result in no net flow of water (Khan Academy pg. 3-4 sec. Tonicity).
The concept of osmosis has been experimentally demonstrated by Reed et al. (The Effects of Salinity upon Cellular Volume of the Marine Red Alga Porphyra purpurea (Roth) C.Ag., Journal of Experimental Botany, Vol. 31, No. 125, pp. 1521-1537, December 1980). Reed experiments with osmosis on living seaweed biomass cells, subjected to hypotonic, isotonic, and hypertonic environments, with a salinity of 1x being isotonic, a salinity of 1/16x being hypotonic, and a salinity of 2x and 3x being hypertonic (Reed Fig. 2). As show in the figure, it is clear that the water content of the seaweed tissue is decreasing in relation to increasing concentration of solutes in the surrounding environment, indicating that there is a net flow of water out of the cell when the environment contains more solutes that the inside of the cells, just as the concept of osmosis states it would. Reed also shows how hypotonic environments of 1/16x and 1/4x actually increase the water content of the seaweed cells, causing cell swelling (Reed Plate 1 panels A and D, and pgs. 1533-1534 bridging sentence).
It can be seen that the art conceptually and experimentally agrees that osmosis dictates the flow of water into and out of cells in a biomass. One of ordinary skill in the art would understand in light of this that the claimed seaweed exudation process contradicts the principles of osmosis because the claimed 90wt% water environment is hypotonic compared to the seaweed biomass, so water should be flowing into the cells, not out of the cells as is claimed. Both the instant specification and the prior art lack any guidance, direction, or evidence that contradicts the well-understood physical concept of osmosis, thus one of ordinary skill in the art would find it highly unpredictable that the exudation process as claimed is possible to practice. The lack of guidance in the disclosure and the art, combined with the significant lack of predictability of contradicting the well-understood concept of osmosis, one of ordinary skill in the art would be subject to undue experimentation in order to practice the invention commensurate in scope with the claims. Thus, one of ordinary skill in the art would not be able to use the invention commensurate in scope with the claims.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
(New necessitated by amendment) Claims 15-22, 25, and 28 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 15 recites “subjecting the biomass to a natural exudation process”. It is unclear what qualifies as a "natural exudation process" in the context of the claims. The specification vaguely defines the term "natural process" in [83] as an active physiological process by which the plant cells transport components internally to the plant, mainly water, from inside to the surface of the seaweed as an exudate juice. The definition merely describes the movements of water from inside to outside of the seaweed and vice versa, but does not clarify what aspects of the movement of water are limited to being natural, nor what characteristics would classify a given exudation process as a natural one. Thus, one of ordinary skill in the art would not be able to understand what exudation process qualifies as natural in the context of the instant invention.
Claim 15 step d recites rehydrating the dried, exudated biomass by the addition of water before cooking to a DS content of between 40-60 wt% to obtain a rehydrated, exudated biomass. It is unclear if the rehydration step requires the addition of water to the dried, exudated biomass, followed by then cooking the water and biomass to a DS content of 40-60 wt%, or if the addition of water alone before cooking in step e is what rehydrates the dried, exudated biomass to 40-60 wt% DS.
Claims 16-22, 25, and 28 are dependent on claim 15, so are indefinite for the same reasons.
Response to Arguments
Applicant’s arguments with respect to claims 15-22, 25, and 28 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 Alexander M Duryee whose telephone number is (571)272-9377. The examiner can normally be reached Monday - Friday 9:00 am - 5:00 pm.
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/Alexander M Duryee/Examiner, Art Unit 1657
/LOUISE W HUMPHREY/Supervisory Patent Examiner, Art Unit 1657
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