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
Although applicant had requested to USPTO to retrieve the Foreign Priority
Document on May 7, 2023 with the DAS Code (Access Code) B4C5, somehow the PTO file does not show the Foreign Priority Document. The filing receipt sent by the USPTO mailed to applicant on July 7, 2023 states that the USPTO will attempt to electronically retrieve these priority documents. The examiner does not think that such statement is guarantee for the retrieval of the priority documents. Note that it would be applicant’s ultimate responsibility to make sure that the PTO file has the Foreign Priority Document.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 15 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Machine translated JP 2005506389 A (March 3, 2005).
Rejection is maintained for reason of the record.
RESPONSE TO ARGUMENTS
Applicant’s arguments (i.e., a ratio of liquid to solid and presence of water in a liquid state) directed to a process, not a product. The recited process of claim 9 includes “drying the biopolymer product” which would yield the solid biopolymer product inherently and claim 15 is silent as to any properties of the biopolymer product obtained. Thus, a carrageenan taught by JP would meet the instant biopolymer product.
Since PTO does not have equipment to conduct the test, it is fair to require applicant to shoulder the burden of proving that his material differs from those of JP. See In re Best, 195 USPQ 430, 433 (CCPA 1977). Charles Pfizer & Co. v. FTC, 401 F.2d 574, 579 (6th Cir. 1968). Inherent anticipation does not require that a person of ordinary skill in the art would have recognized the inherent disclosure, Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2002). See MPEP 2112.01.
REASONS FOR ALLOWANCE
Process claims 1-14 and 16-17 are allowed since applicant’s arguments regarding the ratio of liquid to solid and presence of water in a liquid state are found persuasive.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAE H YOON whose telephone number is (571)272-1128. The examiner can normally be reached Mon-Fri.
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, Robert Jones can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAE H YOON/Primary Examiner, Art Unit 1762
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