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
Application status
In response to the previous Office action, a non-Final rejection (mailed on 10/17/2025), Applicants filed a response and amendment received on 01/14/2026. Said amendment canceled Claims 7, 9-10 and 15-16, and amended Claims 1, 8 and 13. Thus, Claims 1-6, 8 and 11-14 are at issue and present for examination.
Declaration of Deposit under 37 CFR 1.801-1.809
The declaration of deposit made by the attorney of record, Peter Corless, filed on 09/25/2025 is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/14/2022 is acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 is objected to in the recitation of “Pseudonumas” because it’s misspelled. The Examiner suggests correcting it to ---Pseudomonas---.
Appropriate correction is required.
Claim Rejections - 35 USC § 101 - MAINTAINED
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-6, 8 and 11-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a natural phenomenon) without significantly more.
Analysis of subject-matter eligibility under 35 U.S.C. § 101 requires consideration of the following steps:
(1) whether the claim is directed to one of the four categories recited in §101 (process, machine, manufacture or composition of matter);
(Revised 2A - Prong 1) do the claims recite an abstract idea (mathematical concepts, mental processes or method of organizing human activity), law of nature or natural phenomenon;
(Revised 2A - Prong 2) do the claims recite additional elements that integrate the judicial exception into a practical application; and
(2B) whether the claim as a whole recites something that amounts to significantly more than the judicial exception. (See 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG))
Question 1: Yes; the claims are directed to a composition of matter and a process of using said composition.
Question 2A – Prong 1: Yes, the claims recite a natural phenomenon, namely, a composition comprising a naturally occurring bacterial strain Pseudomonas migulae strain JNU 01, wherein the strain is derived from a medium containing polystyrene as a sole carbon source; and a plastic.
Question 2A – Prong 2: No, the claims do not recite anything additional which integrate the naturally occurring product/protein into a practical application. It is noted that Pseudomonas migulae strain JNU 01 is isolated from soil containing plastic. There is nothing in the claims which differentiates this naturally occurring Pseudomonas migulae strain in terms of structure and/or function other than a plastic which also occurs naturally in soil (see page 6, lines 7-11 of the instant specification). The Examiner also notes that the instant specification discloses lack of ‘hand of man’, i.e., a modification of a naturally occurring bacterial strain by recombinant techniques introducing a heterologous polynucleotide into said bacterial strain. Thus, there is ultimately nothing in the claims which amounts to significantly more or significantly different from that found in nature.
Question 2B: As noted in answering that of 2A – Prong 2 above, there is nothing in the claims which amounts to significantly more in terms of structure and/or function and the claims read on naturally occurring Pseudomonas migulae and the methods of using said Pseudomonas migulae with a plastic which is also naturally occurs in nature. Thus, the claims are drawn to a judicial exception, namely, a naturally occurring product/process.
Applicants’ Arguments:
Applicants argue that the incorporation of claims 1 and 10 into independent claims renders the instant rejection moot.
Examiner’s Explanations:
Applicants’ arguments have been fully considered but are not deemed persuasive for the following reasons. As explained above, there is nothing in the specification or the claim language of claims 1 and 10 that shows ‘hand of man’ in the naturally occurring Pseudomonas migulae strain JNU01 isolated from soil containing plastic. For the reasons provided herein and in the previous office action, the instant rejection is maintained.
Conclusion
Claims 1-6, 8 and 11-14 are rejected for the reasons as stated above. Applicants must respond to the objections/rejections in this Office action to be fully responsive in prosecution.
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 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAE W LEE whose telephone number is (571)272-9949. The examiner can normally be reached on M-F between 9:00-6:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Manjunath Rao can be reached on (571)272-0939. 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.
/JAE W LEE/
Examiner, Art Unit 1656
/MANJUNATH N RAO/Supervisory Patent Examiner, Art Unit 1656