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
The amendment received on 11/25/2025 is acknowledged. Claims 1, 7-9, and 14 have been amended.
In light of applicant perfecting deposit of strain KCTC 14345BP, the rejection of claims 112(a) is withdrawn.
In light of the amendment to the claims, the rejection of claims 1-14 under 35 U.S.C. 101 is withdrawn. The claims are now drawn to a mutated strain and product comprising the strain.
Due to amendment to the claims, the double patenting rejection over 18708179 is withdrawn. No arguments regarding the remaining double patenting rejections have been presented and are thus maintained.
Applicant’s arguments regarding the rejection of claims 7 and 8 under 35 U.S.C. 102/103 have been fully considered and are persuasive. The biomass claimed now comprises the claimed strain. While products of other strains may be similar, the current claims require the strain KCTC 14345BP.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18023252 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ’252 discloses compositions and biomass comprising cells of microalgae claims 1-14 which can be Schizochytrium (claim 7). The specification of ‘252 exemplifies the method using CD01-5004 (Accession No.: KCTC14345BP), and thus biomass made from this strain as well as cells of the strain fall within the scope of the claims of ‘252. This renders obvious the instant claim 1-8. Further claims 9-14 are claimed at such a high level that they encompass the process used to produce the product and thus these claims are rendered obvious by the claims of ‘252, as the steps required to produce the products and method of ‘252 result in the practicing of the instant claims, including the production of a bio-oil as these components will be present in the biomass produced that is collected.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2, 4-17 of copending Application No. 18023256 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘256 claims a method of preparing a microalgae biomass and the biomass prepared (Claim 1-2, 4-17) and teaches that the microalgae that is prepared may be Schizochytrium (Claim 7). ‘256 exemplifies the method in the specification using CD01-5004 (Accession No.: KCTC14345BP, Example 2), and thus this strain falls within the scope of the claims. The steps of preparing the biomass will result in the biomass having bio-oil fatty acid being recovered as the biomass is recovered.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18833735 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘735 claims a method of preparing a microalgae biomass and the biomass produced from strain D01-5004 (Accession No.: KCTC14345BP, and the biomass prepared (Claim 1-19). The steps of preparing the biomass will result in the biomass having bio-oil fatty acid that is recovered as the biomass is recovered as well as cell lysis occurs in the growth and preparation of the biomass.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claim is allowed.
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 CHARLES Z CONSTANTINE whose telephone number is (571)270-5533. The examiner can normally be reached Mon-Fri 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Louise Humphrey can be reached at 571-272-5543. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARLES Z CONSTANTINE/Examiner, Art Unit 1657
/LOUISE W HUMPHREY/Supervisory Patent Examiner, Art Unit 1657