DETAILED ACTION
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 .
Priority
Acknowledgment is made of Applicant's claim for foreign priority based on an application filed in People’s Republic of China on 07/05/2021. It is noted, however, that applicant has not filed a certified copy of the CN202110754981.9 application as required by 37 CFR 1.55.
This application is also a 371 of PCT/CN2022/082791 filed on 03/24/2022. Therefore, for the purposes of applying prior art, the effective filing date of the claimed invention is 03/24/2022.
Information Disclosure Statement
The Information Disclosure Statement filed on 11/24/2022 has been acknowledged and considered.
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because the drawings are not clear. The drawings of the instant applicant are blurry and it is hard to read the bacterial genus and species. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Election/Restrictions
Applicant’s election of Group II, claims 2-3, in the reply filed on 09/18/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). More specifically, Applicant did not specify whether the election was made with or without traverse. Therefore, the election is being treated as an election without traverse.
Amendment and Claim Status
As discussed above, Applicant elected Group II, claims 2-3, in the reply filed on 09/18/2025. Therefore, claim 1 is withdrawn by the Examiner as it is not encompassed by the election.
Claims 1-3 are currently pending.
Claim 1 is withdrawn.
Claims 2-3 are under examination.
Claim Objections
Claims 2-3 are objected to because of the following informalities: Bacillus velezensis is not italicized. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: In line 3 of the claim, ‘an LB liquid culture medium’ is recited. The specific name of the culture medium needs to be recited before the abbreviation. Appropriate correction is required.
Claims 2 is objected to because of the following informalities: The claim has improper English throughout, making it hard to determine exactly what is being claimed. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 2-3 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 2 recites “a strain of Bacillus velezensis HL-5” in line 1 of the claim. It is unclear exactly what Bacillus velezensis HL-5 is because Bacillus velezensis HL-5 is not a well-known bacterial species in the prior art. Additionally, it is unclear if there are multiple strains of Bacillus velezensis HL-5 and a specific strain is claimed as the claim specifically recites ‘a strain of Bacillus velezensis HL-5.’ It is further unclear if a deposited strain is being claimed. It is unclear exactly what Bacillus velezensis HL-5 is, even in light of the instant Specification. The instant Specification states Bacillus velezensis HL-5 can produce lipase and protease (Specification, Paragraph [0009]) and was separated from soil samples (Specification, Paragraph [0013]). Those are the only identifying characteristics of the claimed strain. Thus, it unclear exactly what strain of Bacillus velezensis is being claimed, rendering claim 2 indefinite. For the purposes of applying prior art, Bacillus velezensis HL-5 is being interpreted as any Bacillus velezensis strain that can produce lipase and protease.
Claim 2 recites the limitation "collecting a whole meat after shelling the shellfish" in line 6. There is insufficient antecedent basis for this limitation in the claim. The claim does not recite “shelling the shellfish” anywhere prior to said limitation in the claim.
Claim 2 recites “for extracting heparin from shellfish” in the preamble and further recites “and taking supernatant as a raw material for subsequently extracting and purifying heparin” in the last two lines of the claim. It is unclear whether these phrases are actual limitations of the claim or simply intended uses. As-written, these statements are being interpreted as mere intended use statements because there are no positively-recited method steps within the claim that positively instruct extraction or purification of heparin. Therefore, both statements are interpreted as a recitation of what could be done with the supernatant produced from the method.
Claim 2 recites “homogenizing the shellfish meat with sterile water according to that a mass ratio of the shellfish meat to the sterile water is 1:0.5~1:10” in lines 6-8 of the claim. It is unclear what else is present in the ratio as three numerical values/ranges are given, the first value is 1, the second being a range of 0.5~1 and the third being 10. Only two components are mentioned regarding this ratio, the shellfish meat and the sterile water. Thus, claim 2 is indefinite. For the purposes of applying prior art, as it unclear what other component is part of the ratio, any amount of shellfish meat to water reads on 1:0.5~1:10.
Claim 2 recites the limitation "resuspend to a volume of an ‘original seed solution’" in line 13 of the claim. There is insufficient antecedent basis for this limitation in the claim. ‘Original seed solution’ is not previously recited in the claim. Thus, ‘original seed solution’ lacks antecedent basis.
Claim 2 recites “step (3), measuring the seed solution of the Bacillus velezensis HL-5 that has been prepared in the step (1) according to that a volume ratio of the seed solution to the shellfish homogenate in the triangular flask is 5%-15%” in lines 10-12 of the claim. It is unclear exactly what this step is claiming. It is unclear if something within the seed solution is being measured or if the amount of seed solution in the flask is being measured. It is further unclear what the volume ratio is considering only one numerical range is given. It is unclear if the seed solution is 5%-15% of the total volume or if the range 5%-15% of seed solution is that percent of what the volume of shellfish homogenate is. Typically, when given a ratio, two numbers, or numerical ranges, are given, not just one. Thus, it is unclear exactly what the range of 5%-15% is drawn to. For the purposes of applying prior art, this limitation is being interpreted as the seed solution is 5%-15% of the total volume of entirety of what is in the flask.
Claim 2 recites “performing centrifugation and collecting a bacteria, and adding distilled water to resuspend to a volume of an original seed solution, and then performing centrifugation and collecting the bacteria again, and inoculating the bacteria that has been collected for a second time into the triangular flask that has been added with the shellfish homogenate in the step (2)” in lines 11-15 of the claim. It is unclear which bacteria is being collected since only ‘a bacteria’ is claimed. It is unclear if the bacteria being collected is a different bacteria than the Bacillus velezensis HL-5 or if ‘a bacteria’ is referring to the Bacillus velezensis HL-5. As stated above, it is unclear what the original seed solution volume is, thus it is unclear what the volume being claimed here is. It is further unclear if Applicant means only the bacteria that was collected the second time was inoculated into the flask as that is what is claimed as-written. Additionally, it is unclear the steps of this process as the last line of the claim recites adding the bacteria that has been collected the second time into the shellfish homogenate from step (2) yet the beginning of the claim is directed to a volume of seed solution to shellfish homogenate, indicating the two have already been mixed. Thus, the steps and the order in which they are performed is unclear.
Claim 2 further recites “step (4), culturing the triangular flask that has been inoculated for 4~12 hours in conditions of the temperature of 15°C and the shaking speed of 150 r/min, and then adding glucose into the triangular flask to continue culturing for 30~40 h, wherein a mass of the glucose that been added is 0.2~0.5% of a mass of the shellfish homogenate” in lines 17-20 of the claim. First, it is unclear how to culture a flask. One can culture the contents contained within the flask, but not the flask itself. It is further unclear whether the 4~12 hours the flask has been inoculated is part of the culturing or this is a process that occurred before the culturing. It is further unclear how much glucose would be added to represent 0.2~0.5% of the mass of the shellfish homogenate because the amount of shellfish homogenate utilized was not claimed.
Claim 2 recites the limitation "after the fermentation is finished" in line 21. There is insufficient antecedent basis for this limitation in the claim. None of the preceding steps recite ‘fermentation.’ The steps recite ‘culturing,’ but not fermenting or ‘fermentation.’ Thus, ‘fermentation’ lacks antecedent basis.
The term “improve” in claim 3 is a relative term which renders the claim indefinite. The term “improve” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear exactly how the Bacillus velezensis HL-5 improves the extraction rate of heparin and what the rate is being compared to in order to determine the rate was ‘improved.’ Thus, it is overall unclear what would read on the extraction rate being improved, what would not read on the extraction being improved and what is being compared to show an improvement.
Due to the indefiniteness throughout the claim, it is suggested to rewrite the claim and more clearly and specifically state the method of the invention. If Applicant believes the Examiner could be of assistance in drafting a more clear claim, please request an interview.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
As-claimed, claim 3 does not further limit claim 2, the claim from which it depends. Claim 3 states “wherein the Bacillus velezensis HL-5 is used to improve an extraction rate of the heparin from the shellfish.” It appears this claim is simply an intended use of the bacteria. Claim 3 does not recite any additional method steps nor does it further limit the previously recited method steps from claim 2. Thus, claim 3 fails to limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Hong et al. (CN 105624250 A, 06/01/2016) (English Translation Provided) in view of Zhang et al. (CN 111893056 A, 11/06/2020) (English Translation Provided) and Zhong et al. (CN 109438589 A, 03/08/2019) (IDS Reference of 11/24/2022, 12 Pages) (English Translation Provided).
Regarding claim 2, see multiple 112b rejections above. Moreover, it is reiterated that the intended use, ‘for extracting and purifying heparin,’ is merely a statement of what Applicant intends to do with the supernatant, but does not recite any method steps for extracting or purifying the heparin. This is evidenced by the last two lines of the claim which state ‘taking supernatant as a raw material for subsequently extracting and purifying the heparin.’ Therefore, as there are no positively-recited method steps for extracting or purifying, this phrase is being interpreted simply as an intended use statement. Hong et al. disclose a combination reaction of enzymolysis and fermentation utilizing Bacillus methylotrophicus HL-4 for preparing an aquatic protein active peptide (See entire document, also, Abstract). The small peptides produced by protein enzymatic hydrolysis are not only easy to digest and absorb, but also have anti-hypertensive, anti-cholesterol and anti-thrombosis effects (Page 2, Sentence 4). It is noted heparin is an anticoagulant used for the prevention and treatment of thrombotic events. One advantage of this combination of enzymolysis and fermentation method is no additional protease is needed because the endogenous enzymes of the bacteria are used (Page 3, Sentence 6). Hong et al. further disclose the method comprises:
Insert the thermostable facultative anaerobic bacterium Bacillus methylotrophicus HL-4 that can produce protease preserved on the slant into the LB liquid medium that was sterilized and cooled. Min cultured for 12 hours, prepared into Bacillus methylotrophicus HL-4 seed solution for later use;
Grind the fresh aquatic protein for later use;
Put the minced aquatic protein prepared in step (2) into an enzymolysis tank, add water and nutrients into the enzymolysis tank, and mix well to obtain a fermentation medium;
Add the Bacillus methylotrophicus HL-4 seed solution prepared in step (1) to the fermentation culture obtain in step (3);
Control of the enzymolysis-fermentation process: the fermentation broth obtained in step (5) is filtered to remove precipitates to obtain a supernatant; liquid; the permeated liquid is then filtered through a nanofiltration membrane with a molecular weight cut-off of 200 Daltons to obtain a concentrated liquid” (Bottom of Page 2).
Further, the aquatic protein in step (2) taught includes multiple types shellfish, including Antarctic krill, shrimp head and scallop skirt (Page 3, Sentence 1). The amount of aquatic protein added in step (3) is 10% to 30% based on the mass percentage of the added aquatic protein in the total mass of the fermentation medium (Page 3, Sentence 2). The nutrient in step (3) includes glucose wherein the glucose is 0.01% to 5% glucose, overlapping the claimed range of glucose, based on a total mass of the fermentation medium (Page 3, Sentence 3). The inoculum amount of the Bacillus methylotrophicus HL-4 seed solution in step (4) is 1% to 8% as a percentage of the total mass of the fermentation medium (Page 3, Sentence 4). Hong et al. further disclose a specific example utilizing fresh shucked oysters, reading on shellfish, wherein the seed solution is cultured for 12 hours at 55°C at 150 r/min, the amount of minced oyster added to the enzymolysis tank is 22 kg and the amount of water is 100kg, and the fermentation and enzymolysis process once the Bacillus methylotrophicus HL-4 has been added to the oyster and water in the enzymolysis tank proceeds at 53°C, a shaking speed of 90 rpm and the fermentation time is 45 hours (Page 3, Last Paragraph). It is noted Hong et al. do not disclose the use of a flask, but rather the use of an enzymolysis tank. However, it would have been obvious to one of ordinary skill in the art to utilize a flask in the method of Hong et al. instead of an enzymolysis tank for small scale extraction.
Hong et al. do not disclose the bacteria used is Bacillus velezensis HL-5, specific variables including fermentation temperature, shaking speed or fermentation time, performing centrifugation or inactivating the enzyme for 10 minutes in a boiling water bath after the fermentation, cooling, centrifuging and taking the supernatant.
However, Zhang et al. disclose Bacillus velezensis KY01 can degrade starch, protein, fat and cellulose in kitchen waste (See entire document, specifically, Abstract). Further, the Bacillus velezensis KY01 strain has amylase, protease, lipase and cellulase activity (Page 2, Sentence 7).
Additionally, Zhong et al. disclose a preparation method for extracting heparin from shellfish (See entire document, Specifically, Abstract). Zhong et al. further disclose deactivating the enzyme after the shellfish has been enzymatically hydrolyzed via a 5 to 15 minute boiling water bath, then centrifuging and taking the supernatant (Page 2, Bottom of Page, Step 4 (S4)). Zhong et al. further disclose centrifugation for removing insoluble matter (Page 4, Sentence 9, Step 6 (S6)).
Thus, it would have been obvious to one of ordinary skill in the art to before the effective filing date of the claimed invention to utilize the Bacillus velezensis KY01 strain disclosed by Zhang et al. in the method of Hong et al. to degrade the aquatic protein with a reasonable expectation of success because Hong et al. disclose the ability of the Bacillus methylotrophicus HL-4 to enzymatically hydrolyze the aquatic protein is via the endogenous enzymes, being protease, of the microorganism and Zhang et al. disclose the Bacillus velezensis KY01 strain also has endogenous enzymes, including protease, that can degrade starch, protein, fat and cellulose, as it amounts to simple substitution of one known species for another to obtain predictable results. Therefore, it would have been obvious to utilize Bacillus velezensis KY01 in the method of Hong et al. as it is an obvious variant of the strain used in the method, being Bacillus methylotrophicus HL-4, as both strains produce endogenous proteases and both strains perform the same function, degrading protein. Examples of rationales that may support a conclusion of obviousness include simple substitution of one known element for another to obtain predictable results. See MPEP 2143(I)(B).
It would have been further obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate known steps and techniques of extracting heparin from shellfish into the method of Hong et al., including steps disclosed by Zhong et al. in their method for extracting heparin from shellfish. Additionally, it would have been obvious to determine all operable and optimal temperatures, shaking speeds and fermentation times because they are all result-effective variables. Therefore, the temperature, shaking speed and fermentation time would have been routinely and predictable optimized to provide the appropriate environment for the desired bacteria to thrive or to achieve the desired level of enzymolysis. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges through routine experimentation.” In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 21440.5.
Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have placed the remaining liquid in a boiling water bath for 5 to 15 minutes, overlapping the claimed range, after step (5) of Hong et al. to deactivate the enzymes as that is a known step after enzymatically hydrolyzing shellfish as taught by Zhong et al.
While Hong et al. do not disclose centrifugation, they do disclose nanofiltration to remove the particles over a certain size and collection of the supernatant. Additionally, as discussed above, Zhong et al. disclose centrifugation for removing insoluble matter and centrifugation then collecting the supernatant. Thus, it would have been obvious to one of ordinary skill in the art that centrifugation could be performed in the method of Hong et al. in place of the nanofiltration as both processes are geared toward removing insoluble matter and Zhong et al., who are also recovering heparin from shellfish, utilize centrifugation for removing insoluble matter from their liquid and collecting the resultant supernatant. Additionally, it would have been obvious to one of ordinary skill in the art to perform centrifugation more than once to optimize the separation of liquids and solids so only the desired components remain.
Thus, the combination of Hong et al., Zhang et al. and Zhong et al. render the instant method obvious.
Regarding claim 3, see 112b and 112d above. Moreover, it is reiterated the claim does not further limit the method of claim 2 since it merely sets forth the purpose of the bacteria.
.
Conclusion
Claims 2-3 are rejected.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASHLEY T WHITE whose telephone number is (571)272-0683. The examiner can normally be reached Monday - Friday 8:30 - 5:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sharmila Landau can be reached at (571)272-0614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.T.W./Examiner, Art Unit 1653
/SHARMILA G LANDAU/Supervisory Patent Examiner, Art Unit 1653