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 .
Examination Note.
It is noted that the present Application was filed with a Certification Of Micro Entity Status on 05/26/23. Said fact, and the fact that no separate Applicant is listed, with only a single Inventor, indicates that the Present Application is a “pro se” type Application.
It is also noted that Applicant did not file any Information Disclosure Statement.
Specification
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
Content of Specification
(a) TITLE OF THE INVENTION: See 37 CFR 1.72(a) and MPEP § 606. The title of the invention should be placed at the top of the first page of the specification unless the title is provided in an application data sheet. The title of the invention should be brief but technically accurate and descriptive, preferably from two to seven words. It may not contain more than 500 characters.
(b) CROSS-REFERENCES TO RELATED APPLICATIONS: See 37 CFR 1.78 and MPEP § 211 et seq.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT: See MPEP § 310.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT. See 37 CFR 1.71(g).
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM: The specification is required to include an incorporation-by-reference of electronic documents that are to become part of the permanent United States Patent and Trademark Office records in the file of a patent application. See 37 CFR 1.77(b)(5) and MPEP § 608.05. See also the Legal Framework for Patent Electronic System posted on the USPTO website (https://www.uspto.gov/sites/default/files/documents/2019LegalFrameworkPES.pdf) and MPEP § 502.05
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR. See 35 U.S.C. 102(b) and 37 CFR 1.77.
(g) BACKGROUND OF THE INVENTION: See MPEP § 608.01(c). The specification should set forth the Background of the Invention in two parts:
(1) Field of the Invention: A statement of the field of art to which the invention pertains. This statement may include a paraphrasing of the applicable U.S. patent classification definitions of the subject matter of the claimed invention. This item may also be titled “Technical Field.”
(2) Description of the Related Art including information disclosed under 37 CFR 1.97 and 37 CFR 1.98: A description of the related art known to the applicant and including, if applicable, references to specific related art and problems involved in the prior art which are solved by the applicant’s invention. This item may also be titled “Background Art.”
(h) BRIEF SUMMARY OF THE INVENTION: See MPEP § 608.01(d). A brief summary or general statement of the invention as set forth in 37 CFR 1.73. The summary is separate and distinct from the abstract and is directed toward the invention rather than the disclosure as a whole. The summary may point out the advantages of the invention or how it solves problems previously existent in the prior art (and preferably indicated in the Background of the Invention). In chemical cases it should point out in general terms the utility of the invention. If possible, the nature and gist of the invention or the inventive concept should be set forth. Objects of the invention should be treated briefly and only to the extent that they contribute to an understanding of the invention.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S): See MPEP § 608.01(f). A reference to and brief description of the drawing(s) as set forth in 37 CFR 1.74.
(j) DETAILED DESCRIPTION OF THE INVENTION: See MPEP § 608.01(g). A description of the preferred embodiment(s) of the invention as required in 37 CFR 1.71. The description should be as short and specific as is necessary to describe the invention adequately and accurately. Where elements or groups of elements, compounds, and processes, which are conventional and generally widely known in the field of the invention described, and their exact nature or type is not necessary for an understanding and use of the invention by a person skilled in the art, they should not be described in detail. However, where particularly complicated subject matter is involved or where the elements, compounds, or processes may not be commonly or widely known in the field, the specification should refer to another patent or readily available publication which adequately describes the subject matter.
(k) CLAIM OR CLAIMS: See 37 CFR 1.75 and MPEP § 608.01(m). The claim or claims must commence on a separate sheet or electronic page (37 CFR 1.52(b)(3)). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i) - (p).
(l) ABSTRACT OF THE DISCLOSURE: See 37 CFR 1.72 (b) and MPEP § 608.01(b). The abstract is a brief narrative of the disclosure as a whole, as concise as the disclosure permits, in a single paragraph preferably not exceeding 150 words, commencing on a separate sheet following the claims. In an international application which has entered the national stage (37 CFR 1.491(b)), the applicant need not submit an abstract commencing on a separate sheet if an abstract was published with the international application under PCT Article 21. The abstract that appears on the cover page of the pamphlet published by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) is the abstract that will be used by the USPTO. See MPEP § 1893.03(e).
(m) SEQUENCE LISTING: See 37 CFR 1.821 - 1.825 and MPEP §§ 2421 - 2431. The requirement for a sequence listing applies to all sequences disclosed in a given application, whether the sequences are claimed or not. See MPEP § 2422.01.
Claim Objections
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
The non-numbered singular filed claim has been renumbered as claim 1.
Drawings
The substitute drawings filed 07/14/23 are objected to for the following reasons: 1) Applicant’s has filed four (4) sheets of drawings, as such, at the very top of the first drawing sheet Applicant needs to insert --1/4--; at the very top of the second drawing sheet Applicant needs to insert --2/4--; at the very top of the third drawing sheet Applicant needs to insert --3/4--; and at the very top of the forth drawing sheet Applicant needs to insert --4/4--.
2) Every drawing/figure itself needs to be properly labeled in sequential order. It is noted that on the third (3rd) drawing sheet, the figure has NO labeling at all. It is held that the figure needs to be labeled as FIG. 4., so as to conform with Applicant’s brief description of the drawing, as set forth on page 3 of the specification.
3) Furthermore, the figure on the third (3rd) drawing sheet is NOT clearly presented because: A) the font size is way too small to be easily read, and it is too light in color (i.e. needs to be made darker), and B) applicant has the labeling of: “page 2” at the bottom right conner of the page. This is not only improper but it is also confusing, as such, this “page 2” labeling needs to be deleted.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 101
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.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Independent claim 1 (only claim in the Application) reads as followed: “The application of research science in order to create architectural radiation shielding for rigid structures in order to protect humans and sensitive equipment from radiation.”.
Said claim does not fall within at least one of the four categories of patent eligible subject matter because the claim’s preamble namely: “The application of research science . . .”, is rather directed towards a mental process of trying to implement an abstract idea on how to create architectural radiation shielding for rigid structures.
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.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for certain modular FORT shields made up of a carbon fibre supporting structure (e.g. trays), wherein said trays contain a biofilm or a malt extract agar as nutrient source(s) for growing fungi layers to create a thick layer of mycelium which produces indestructible melanin as a radiation absorber when covered with a protective transparent film, (see pages 1-2 of specification and Figures 1-6), does not reasonably provide enablement for the claimed non-statutory subject matter directed towards a mental process of trying to implement an abstract idea on how to create architectural radiation shielding for rigid structures. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use or make the invention commensurate in scope with these claims.
The scope of enablement has been determined in accordance with the appropriate factors set forth in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
Everything within the scope of the claim is not enabled by the specification; the non-statutory claim is vastly broader than the specification. Furthermore, features taught as critical in the specification (e.g., modular FORT shields made up of a carbon fibre supporting structure (e.g. trays), wherein said trays contain a biofilm or a malt extract agar as nutrient source(s) for growing fungi layers to create a thick layer of mycelium which produces indestructible melanin as a radiation absorber when covered with a protective transparent film) are not recited in the claim, see pages 1-2 of specification and Figures 1-6. See MPEP 2164.08.
The inventor has not provided a sufficient amount of direction for one of ordinary skill in the art to make and use the claimed invention without undue experimentation. Specifically, the specification discloses a few specific certain modular FORT shields made up of a carbon fibre supporting structure (e.g. trays), wherein said trays contain a biofilm or a malt extract agar as nutrient source(s) for growing fungi layers to create a thick layer of mycelium which produces indestructible melanin as a radiation absorber when covered with a protective transparent film, see pages 1-2 of specification and Figures 1-6.
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.
Claim 1 is 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.
Independent claim 1 does not set forth any concrete steps or concrete structural features that are involved in delimiting how the research science is applied. The claim is therefore indefinite as to what constitutes and “application of the research science”. In response to the Present Office Action and if Applicant wants to claim modular FORT shield(s), Applicant will need to clearly and positively set for the actual structure(s) of this/these shield(s), see pages 1-2 of specification and Figures 1-6.
Claim Free or Prior-Art Rejections
Claim 1 is presently free of any prior-art rejection even though it is drawn to non-statutory subject matter, its scope exceeds the enabled disclosure and is indefinite. Once Applicant responds to the Present Office Action and submits a claim that is drawn to statutory subject matter, is enabled in its full scope and is clear and concrete, the Examiner will reevaluate said new/amended claim over the prior-art.
In the examination process for the Present Office Action, the Examiner examined a hypothetical claim, using Applicant’s specification as guidance. Said hypothetical claim was basically drawn to radiation shields made up of carbon fibre supporting structure (e.g. trays), wherein said trays contain a biofilm or a malt extract agar as nutrient source(s) for growing fungi layers to create a thick layer of mycelium which produces indestructible melanin as a radiation absorber substance when covered with a protective transparent film (see pages 1-2 of specification and Figures 1-6).
The closest prior-art reference that the Examiner found was Cordero et al. U.S. Patent Application Publication No.: 2022/0042056 A1 which discloses methods including cell wall-associated melanin extraction and extracting melanin from microbes producing extracellular vesicles comprising melanin. Further described are composition comprising melanin, melanin coated articles and methods of coating an article. Uses of melanin in methods of heat generation and microwave radiation protection are also described, see abstract.
Cordero et al.’s FIGS 6A-6F disclose the following: “FIGS. 6A-6F illustrate the microwave shielding capacity of fungal melanin. Equal masses of ultrapure water, melanized (mel+) and non-melanized (mel−) C. neoformans yeasts, frozen (FIG. 6A), wet (FIG. 6B), or dried (or bioflakes) (FIG. 6C), were irradiated for various seconds inside a microwave oven (12 cm wavelength, 2450 MHz, 800 Watts) and imaged using an infrared camera. FIG. 6D shows images and graphs of coating aluminum foil with a fungal melanized biofilm dampening heating following 30 second irradiation inside a microwave oven. Bars graphs represent mean apparent temperature ±min/max counts. The thermal shielding capacity of melanized yeast cells (FIG. 6E) and isolated melanin (FIG. 6F) was confirmed using a directed radiated source (Biotage® Initiator).” [Emphasis added].
Cordero et al.’s melanized biofilms are disclosed as being useful to coat multiple kinds of surfaces for protection against different types of radiation (e.g. UV, visible and infrared) and can be applied to such surfaces as solar thermal technologies and spacecrafts surfaces, see paragraphs [0075]-[0076] and [0079].
Cordero et al. discloses a number of different types of fungi useful to generate biofilm mats which subsequently produce melanin which in turns function as a radiation absorbing substance, see claims 10, 14 and 23.
It should be noted that Cordero et al. seems to disclose Cyptococcus Neoformans as a most preferred fungi because said fungi was used in their Examples 1-2 to generate the biofilm. Cordero et al.’s said disclosure is in direct contrast to Applicant’s disclosure of: “The proposed fungi to use is Aspergillus Niger as they are highly resistant to stressors (radiation, extreme temperatures, vacuum) and can be melanised quickly, moreover, it is way less harmful to humans than the other candidate, Cryptococcus neoformans.” [Emphasis added], as set forth on page 1, lines 21-23 of Applicant’s specification.
The Examiner’s hypothetical claim is patentable distinct over Cordero et al.’s disclosure in a number of important ways such as: 1) there is no disclosure of any kind in Cordero et al. of making radiation shields from carbon fibre/fibers as the supporting structure, and 2) there is no disclosure to use a transparent film to cover the produced fungi biofilms. Cordero et al.’s fungi biofilms, in contrast, do not seem to have any coverings and are just applied to different types of surfaces.
Finally, mention should be made to Gulacsi U.S. Patent Application Publication No.: 2024/0395429 A1 which, although NOT prior-art, has the same Inventor as the Present Application. Gulasci’s claim 1 (only claim in application) reads as followed: ““The application of research science in order to create architectural radiation shielding for flexible structures in order to protect humans and sensitive equipment from radiation.” [Emphasis added]. Said co-pending claim is thus directed towards a mental process of trying to implement an abstract idea on how to create architectural radiation shielding for flexible structures. No provisional obvious type double patenting rejection is warranted over said co-pending application at least because applicant’s pending claim is directed towards “rigid structures” whereas the co-pending claim is drawn to “flexible structures”. Applicant’s “rigid structures” are produced using carbon fibre/fibers whereas the co-pending “flexible structures” do no use carbon fibre/fibers. In fact, carbon fibre/fibers are not disclosed in the co-pending application’s specification.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
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, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH D ANTHONY/ Primary Examiner, Art Unit 1764