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 Election/Restriction filed on May 1, 2026 is acknowledged.
Claims 1-10 are pending in this application.
Restriction
Applicant’s election of Group 1 (claims 1-6) in the reply filed on May 1, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). The restriction is deemed to be proper and is made FINAL in this office action. Claims 7-10 are withdrawn from consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Claims 1-6 are examined on the merits in this office action.
Objections
5. The abstract is objected to for the following minor informality:
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. It is important that the abstract not exceed 150 words in length since the space provided for the abstract on the computer tape used by the printer is limited. The form and legal phraseology often used in patent claims, such as "means" and "said," should be avoided. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, "The disclosure concerns," "The disclosure defined by this invention," "The disclosure describes," etc.
In the instant case, the abstract recites, “The present invention discloses ...” at line 1 of the abstract. Applicant should correct these informalities. See MPEP 608.01(b). For example, the abstract may be amended to recite, “Biodegradable glass based on an amino acid…is described.”
6. The drawings are objected to because some of the figures are missing the X- and/or Y-axis labels (see for example, Fig. 2, Fig. 5, Fig. 8). Additionally, some of the figures appear to have shadings that make the figures hard to see (see for example, Fig. 9, Fig. 10). 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.
7, The specification is objected to for the following minor informalities: Paragraphs [0048] and [0051] appear to have missing information. Paragraph [0048] discloses:
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; paragraph [0051] discloses:
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. Applicant is required to correct these errors.
Please note, the specification has not been checked to the extent necessary to determine the presence of all possible error. Applicant's cooperation is required in correcting any errors of which applicant may become aware in the specification. MPEP § 608.01.
Rejections
U.S.C. 112(b)
8. 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.
9. Claims 1-6 are 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.
10. Regarding claims 1 and 5-6, the phrase "preferably" renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Because claims 2-4 depend from indefinite claim 1 without clarifying the point of confusion, these claims are also rejected under 35 U.S.C. 112(b).
11. Claims 1-6 recite a product a method of making the product. A claim can only recite one invention. The metes and bounds of the claims are unclear because it is unclear if the claims are drawn to a product or a method invention. Because the preamble recites “Amino acid-based glass”, the claims are interpreted as being a product invention.
12. Claim 1 recites, “…the peptide is a molecule formed by condensation of n above-mentioned amino acids via peptide bonds, where n
≥
2, preferably 2
≤
n<10…” It is unclear what “n” is referring to when the claim recites, “…formed by condensation of n above-mentioned amino acids…” Because claims 2-6 depend from indefinite claim 1 without clarifying the point of confusion, these claims are also rejected under 35 U.S.C. 112(b).
13. Claim 1 recites, “…the protecting group on the amino group P1 is any one or more selected from…” and “…the protecting group on the carboxyl group P2 is any one or more selected from…” The metes and bounds of the claim is unclear. The amino acid and/or peptide has 1 N-terminal group and 1 C-terminal group. Therefore, it is unclear what is being referred to when the claim recites, “…the protecting on the amino group P1 is any one or more selected from…” and “…the protecting on the carboxyl group P2 is any one or more selected from…” Because claims 2-6 depend from indefinite claim 1 without clarifying the point of confusion, these claims are also rejected under 35 U.S.C. 112(b).
U.S.C. 102
14. 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.
15. 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.
16. Claim(s) 1-3 and 5-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Knight reference (US 2007/0087024).
17. Knight reference teaches a matrix made from a glassy protein, that includes serine (see abstract, for example). Knight reference teaches the 8 residue peptide sequence SSNTDSNS (SEQ ID NO: 1) that meets the limitation of a peptide made up of between 2 to 10 residue amino acids of instant claims 1-3. In regards to instant claims 5-6, because Knight reference teaches a glassy protein matrix material made up of amino acids/peptides, the glassy protein matrix material would inherently have all of the activity and functionality as instant amino acid-based glass. The MPEP § 2112 states: “Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the Examiner presents evidence or reasoning tending to show inherency, the burden shifts to the Applicant to show an unobvious difference ‘[t]he PTO can require an Applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)).”
Since Knight reference teaches ALL of the active components, the Knight reference anticipates instant claims 1-3 and 5-6.
U.S.C. 103
18. 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.
19. 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.
20. 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.
21. 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.
22. Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Knight reference (US 2007/0087024) in view of Xu reference (CN 107673599, filed with IDS, Google patent English translation used and enclosed herein, pp. 1-5, 02/09/2018).
23. Knight reference teaches a matrix made from a glassy protein, that includes serine (see abstract, for example). Knight reference teaches the 8 residue peptide sequence SSNTDSNS (SEQ ID NO: 1) that meets the limitation of a peptide made up of between 2 to 10 residue amino acids of instant claims 1-3. In regards to instant claims 5-6, because Knight reference teaches a glassy protein matrix material made up of amino acids/peptides, the glassy protein matrix material would inherently have all of the activity and functionality as instant amino acid-based glass. The MPEP § 2112 states: “Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the Examiner presents evidence or reasoning tending to show inherency, the burden shifts to the Applicant to show an unobvious difference ‘[t]he PTO can require an Applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)).”
Since Knight reference teaches ALL of the active components, the Knight reference anticipates instant claims 1-3 and 5-6.
The difference between the Knight reference and the instant claims is that the Knight reference does not teach additional raw materials such as clarifiers, fluxes, opacifiers and colorants.
24. However, Xu reference teaches non-lead glass, lead-free glass mainly comprises nitrate, clarifier silicon, dioxide, amino acid and nanometer zinc oxide…the amino acid accounts for 17-19 parts of overall component (see abstract and claim 1). Xu reference further teach other components such as decolorizing agent (see claim 5) and fluorescent brightening agent (see claim 7). Xu reference teaches:
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25. Therefore, it would have been obvious to one of ordinary skill in the art to combine the teachings of Knight and Xu to arrive at amino acid based glass having additional raw material such as colorants and clarifiers because both references teach peptide based glass. One of ordinary skill in the art would be motivated to combine with a reasonable expectation of success, since Xu reference teaches that colored glaze add quality and glitter and translucent, bright and glittering changes to the glass, and that color and clarifiers can be added to enhance amino acid based glass. Therefore, the combined art is prima facie obvious over instant claims 1-6.
Art of Interest
26. Xing et al (Science Advances, March 17, 2023, 9: 1-12) teach biomolecular glass with amino acid and peptide nanoarchitectonics (see for example, Title). Xing et al teach family of eco-friendly glasses of biological origin fabricated using biologically derived amino acids or peptides through the classic heating-quenching procedure. Amino acids and peptides with chemical modifications at their ends are found able to form a supercooled liquid before decomposition and eventually glass upon quenching. These developed glasses exhibit excellent glass-forming ability and optical characteristics and are amenable to three-dimensional-printed additive manufacturing and mold casting. Crucially, the glasses show biocompatibility, biodegradability, and biorecyclability (see abstract). Instant application has inventors Xuehai YAN, Ruirui XING, and Chengqian YUAN. The reference has authors Ruirui Xing, Chengqian Yuan, WeiFan, Xiaokang Ren and Xuehai Yan. The reference has a publication date of March 17, 2023. Therefore, this is not a prior art document.
27. Yan et al (US 2025/0011369) teach
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(see claim 1, for example). Yan et al has an effective filing date of 11/05/2021 and share the same Inventors. Instant application has an effective filing date of 09/29/2021. Therefore, Yan et al is not a prior art document.
CONCLUSION
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIE HA whose telephone number is (571)272-5982. The examiner can normally be reached Monday-Thursday 5:00 am- 6:30 pm EST.
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, LIANKO GARYU can be reached at 571-270-7367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JULIE HA/Primary Examiner, Art Unit 1654
5/26/2026
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