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 .
Response to Amendment
The amendment filed 16 February 2026 has been entered. Claims 1-24 and 26 are currently pending in the application. Claims 1-13, 16-24 and 26 are withdrawn. The rejections of record from the office action dated 15 September 2025 not repeated herein have been withdrawn.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Xu (Machine Translation of CN 110670385 A).
Regarding claims 14-15, Xu discloses a composition comprising a dye and a dying auxiliary agent, wherein the dying auxiliary agent may comprise a dispersing agent, a leveling agent which may comprise sophorolipid, and water (i.e. an ink composition comprising a biological amphiphilic molecule, a colorant and a carrier, wherein the colorant is a dye, wherein the carrier is water, and the biological amphiphilic molecule is a biosurfactant; further comprising one or more selected from dispersants) (abstract, claims 1-3, page 11/para 11). It would have been obvious to one of ordinary skill in the art to use any materials disclosed including those claimed and thereby arrive at the claimed invention.
Although Xu does not specifically disclose that the biosurfactant is produced by fermentation of Starmerella bombicola as claimed, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed produced by fermentation of Starmerella bombicola and given that Xu meets the requirements of the claimed composition, Xu clearly meets the requirements of the present claims.
Response to Arguments
Applicant's arguments filed 16 February 2026 have been fully considered but they are not persuasive.
Applicant argues that the biological amphiphilic molecule of claim 1 is different from the sophorolipid disclosed by Xu because the instantly claimed biological amphiphilic molecule is produced by fermentation of Starmerella bombicola.
As set forth above, although Xu does not specifically disclose that the biosurfactant is produced by fermentation of Starmerella bombicola as claimed, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed produced by fermentation of Starmerella bombicola and given that Xu meets the requirements of the claimed composition, Xu clearly meets the requirements of the present claims.
Applicant argues that the biological amphiphilic molecule of claim 1 is functionally distinct and points to the instant specification at [0043].
Applicant’s argument is unpersuasive given that the instant specification at [0043] appears to be referring to the advantage of sophorolipids and does not provide any evidence that sophorolipids produced by fermentation of Starmerella bombicola are different structurally from the sophorolipid disclosed by Xu.
Applicant argues that sophorolipids produced by fermentation of Starmerella bombicola have low CMC, multifunctionality, biodegradability and compatibility with fibers as a direct consequence of the defined amphiphilic molecular geometry of Starmerella bombicola produced sophorolipids and this is different from the sophorolipid of Xu.
However, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) (MPEP 716.01(c)(II)). It is the examiner’s position that the arguments provided by the applicant regarding whether sophorolipids produced by fermentation of Starmerella bombicola have low CMC, multifunctionality, biodegradability and compatibility with fibers as a direct consequence of the defined amphiphilic molecular geometry of Starmerella bombicola produced sophorolipids and this is different from the sophorolipid of Xu must be supported by a declaration or affidavit.
Conclusion
THIS ACTION IS MADE FINAL. 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 JAMES C YAGER whose telephone number is (571)270-3880. The examiner can normally be reached 9-6 EST M-F.
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, Aaron Austin can be reached at (571) 272-8935. 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.
/JAMES C YAGER/Primary Examiner, Art Unit 1782