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 .
Applicant’s election, without traverse, of Group I claims 1-7 and 16-28 directed to a method for making a biomaterial is acknowledged.
Examiner acknowledges amended claims 1, 16, 18, 20.
Examiner acknowledges cancelled claims 8-15.
Examiner acknowledges newly added claims 21-28.
Claim Objections
Claim 20 is objected to because of the following informalities: The status identifier for claim 20 should read “Currently amended”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 2, 6 and 17-28 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.
Claim 2 is rendered indefinite because it is unclear if the hydrated orb-weaving spider aciniform is present in the amount of approximately 1% to 99% or at least 5% by weight. For purposes of examination, Examiner is interpreting the claim to refer to approximately 1% to 99%.
Claim 6 is rendered indefinite because it is unclear if the orb-weaving spider aciniform prey-wrapping silk alpha helices present in the amount of 5% to 99% OR at least about 85% or more” For purposes of examination, Examiner is interpreting the claims to refer to approximately 5% to 99%.
Claim 6 is rendered indefinite because of the phrase “at least about 85% or more”. The term “about” can include 84% or 85%. The claim is unclear as to whether the orb-weaving spider aciniform prey-wrapping silk alpha helices present in the amount of a numerical value very close to 85%.
Claim 17 is rendered indefinite because it is unclear if the hydration or solvation occurs is done for 10 minutes to 10 hours OR for about 2 hours. For purposes of examination, Examiner is interpreting the claim to refer to 10 minutes to hours.
Claim 18 is rendered indefinite because it is unclear if the claim refers to drying for about an hour and 5 days OR for about 2 days. For purposes of examination, Examiner is interpreting the claim to refer to drying for about 1 hour and 5 days. Claim 28 is rendered indefinite because it depends on indefinite claim 18.
Claim 19 is rendered indefinite because it is unclear if approximately 10 to 90% OR 15 to 85% OR 20 to 80% OR at least about 90% OR at least about 91% OR at least about 92% OR at least about 93% OR at least about 94% OR at least about 95% OR at least about 96% OR at least about 97% OR at least about 98% OR at least about 99% OR more. For purposes of examination, Examiner is interpreting the claim to refer to approximately 10% to 90%.
Claim 19 is rendered indefinite because of the phrase “at least about”. The term “about” can include 89%., 90.5%, 91.5%, 92.5%, 93.5%, 94.5%, 95.5%, 96.5%, 97.5%, 98.5%, 99.5.5%. The phrase “at least about” makes the claim vague and unclear.
Claim 20 is rendered indefinite because it is unclear if the solvent comes from (a), (b), (c), (d) OR a mixture of (a), (b), (c) or (d). For purposes of examination, Examiner is interpreting the claim to refer to an acid or an acid solution. Claims 21-23 are rendered indefinite because the claims depend upon indefinite claim 20.
Claim 27 is rendered indefinite because it is unclear if the weight of the hydrated orb-weaving spider aciniform has a weight of “at east about 15%, 20% OR 55% “by weight. For purposes of Examination, Examiner is interpreting the claim to refer to at least 15% by weight.
Claim 27 is rendered indefinite because of the phrase “at least about”. The term “about” can include 14.5%, 15.5%, 19.5%, 20.5%, 54.5%, 55.5%. The claim is vague and unclear.
Claim Rejections - 35 USC § 103
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.
Claims 1-7, 16, 20-22 and 24-27 are rejected under 35 U.S.C. 102(a)(1) & (a)(2) as being anticipated by Leimer et al., U.S. Pre Grant Publication 2012/0252294.
Regarding claims 1-4, 7, 16, 20-22, 24-27, Leimer discloses a silk polypeptide and a solvent [0014]. Paragraph 0047 discloses immersing at least one silk polypeptide solution for a period of 0.1 sec to 10 minutes in a solution and then dried. Paragraph 0053 discloses that the silk polypeptide can include an orb-weaving aciniform spider silk. Paragraph 0056 discloses silk polypeptides and solvent. It is disclosed in paragraph 0160 that the solvent can include water, hexafluoroisopropanol or formic acid [water-miscible protonic solvent]. Paragraph 0159 discloses that the silk polypeptide is present in the amount of 30 wt%. Applicant’s claim 1 requires either (i) partially or substantially hydrating the orb-weaving spider aciniform OR (ii) substantially converting silk alpha helices into silk beta-sheet aggregates. Leimer satisfies (i) by immersing the silk polypeptide [orb-weaving aciniform spider silk] in a solvent forming a solution. Claims 5-6 and 19 are all dependent upon claim 1 which merely requires either (i) partially or substantially hydrating the orb-weaving spider aciniform OR (ii) substantially converting silk alpha helices into silk beta-sheet aggregates which Leimer satisfies requirement (ii). Leimer discloses the same method as required by Applicant.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAMIE S THOMPSON whose telephone number is (571)272-1530. The examiner can normally be reached 8:30 am - 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Boyd, can be reached at 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CAMIE S THOMPSON/Primary Examiner, Art Unit 1786
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