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 .
Priority
This application claims benefit of priority to People’s Republic of China Application No. CN202110281294.X filed 03/16/2021. This application is also a 371 of PCT/CN2022/081079 filed 03/16/2022. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. However, an English translation of the foreign patent documents was not provided. Therefore, for the purposes of applying prior art, the effective filing date of the claimed invention is the filing date of the PCT, 03/16/2022.
Information Disclosure Statement
The Information Disclosures Statement filed 11/03/2023 has been acknowledged and considered.
Drawings
The Drawings filed 09/15/2023 are accepted by the Examiner.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-4, in the reply filed on 02/06/2026 is acknowledged. Applicant’s further election of species of Lactobacillus delbrueckii without traverse is acknowledged.
Amendments and Claim Status
In the reply filed 02/06/2026, Applicant amended claims 1-5. As discussed above, Applicant elected Group I, which encompasses claims 1-4. Additionally, Applicant elected Lactobacillus delbrueckii as the species of Lactobacillus of the instant invention. Therefore claim 4 is withdrawn as it is not encompassed by the species election and claim 5 is withdrawn as it is not encompassed by the elected group.
Claims 1-5 are currently pending.
Claim 4-5 are withdrawn.
Claims 1-3 are under examination.
Specification Objections
The disclosure is objected to because of the following informalities: The Specification is objected to because Bangia fusco-purpure, Lactobacillus delbrueckii and Lactobacillus plantarum are recited throughout without being italicized. Appropriate correction is required.
Claim Objections
Claim 3 is objected to because of the following informalities: Claim 3 recites “Lactobacillu” in line 8 of the claim. 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 1-3 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 1 recites “mixing Bangia fusco-purpure with water in a mass/volume ratio of 4.45% - 5% to obtain a Bangia fusco-purpure suspension” in lines 6-8 of the claim. The ratio is unclear. It is unclear if the Bangia fusco-purpure makes up 4.45% - 5% of the suspension, the water makes up 4.45% - 5% of the suspension or if the combination of the Bangia fusco-purpure and water make up 4.45% - 5% of the suspension. Thus, it is generally unclear what component within the suspension the ratio of 4.45% - 5% is intended to limit. Therefore, claim 1, and all claims dependent upon claim 1, are indefinite.
Claim 1 recites the limitation "removing algal residues" in line 20. There is insufficient antecedent basis for this limitation in the claim. ‘Algal residues’ is not previously recited in the claim. Additionally, the recitation of "removing algal residues" renders the claim indefinite because it is unclear if Bangia fusco-purpure residues are being removed or if there are other algal residues present in the mixed fermentation broth that are being removed. Thus, there is insufficient antecedent basis for this limitation and this limitation renders the claim indefinite. It is suggested to amend the claim to recite “removing Bangia fusco-purpure residues.”
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.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jiang et al. (CN 113647638 A, 11/16/2021) (Translation provided).
Regarding claims 1-3, Jiang et al. disclose a method comprising preparing a laver solution from laver and Bangia fusco-purpurea, adding Lactobacillus delbrueckii or Lactobacillus plantarum, fermenting the liquid to obtain a fermentation liquid, centrifuging, filtering and drying to obtain fermentation solids (See entire document, Abstract).
It is noted claims 1-3 are drawn to a product, more specifically, a product-by-process. The claims do not structurally define the product, rather, the claims provide a broad, general method that results in the claimed product. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113.
The steps recited in instant claims 1-3 are very broad, the claims recite grinding Bangia fusco-purpure, mixing the Bangia fusco-purpure and water, adding glucose to the Bangia fusco-purpure and water mixture, adding L. delbrueckii to the glucose, Bangia fusco-purpure and water mixture, fermenting, and centrifuging. At the end of the first step, all you have is water and Bangia fusco-purpure. After the second step, all you have is water, Bangia fusco-purpure and glucose. After step three, water, Bangia fusco-purpure, glucose and L. delbrueckii. After step 4, water, Bangia fusco-purpure, L. delbrueckii, the products of fermentation and you may or may not have glucose as the L. delbrueckii could completely consume the glucose. After step five, you essentially have the same components as step four because centrifuging is very broad, the centrifugation could be performed for 10 seconds and essentially leave the same product as contained in step four. While step five states the algal residues and Lactobacillus thalli are removed, there is actually no removal step because centrifuging does not remove the algal residues and Lactobacillus thalli from the liquid, rather, it would result in the solids being collected in a pellet at the bottom of the tube the process was taking place in, but still in the tube with the liquid, or supernatant.
Jiang et al. utilize a similar method. Jiang et al. disclose a method comprising preparing a laver solution from laver and Bangia fusco-purpurea, adding Lactobacillus delbrueckii or Lactobacillus plantarum, fermenting the liquid to obtain a fermentation liquid, centrifuging, filtering and drying to obtain fermentation solids (See entire document, Abstract). The fermentation liquid after centrifuging, and potentially after filtering, would necessarily contain the same components as the claimed fermented supernatant as it was produced via fermenting Bangia fusco-purpurea with Lactobacillus delbrueckii.
As such, there appears to be little material difference in the product of the instant claims and the product of the prior art disclosed by Jiang et al. If there are differences, they are not claimed. Therefore, the fermented supernatant of the instant claims does not appear to be patentably distinct from the fermented supernatant of the prior art.
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.
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.
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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Huang (CN 108517343 A, 09/11/2018) (Translation Provided) in view of Jiang et al. (Japan Society for Bioscience, Biotechnology and Agrochemistry, 2019) (Of Record).
The analysis of the product-by-process is discussed above.
Regarding claims 1-3, Huang discloses a method of fermenting Porphyra yezoensis with Lactobacillus and collecting the supernatant (See entire document, Abstract). Huang states that by utilizing Lactobacillus fermentation a product can be prepared with no bitterness and with a good fermentation flavor, improving the palatability of the product (Abstract). Porphyra yezoensis is an edible sea algae that is rich in nutrition with a high protein content (Page 2, Paragraph 2). Additionally, the main active substance in Porphyra yezoensis is capable of modulating multiple immune and physiological functions, including functioning as an α-glucosidase inhibitor (Page 2, Paragraphs 2-3). The method of Huang comprises crushing Porphyra yezoensis and mixing it with water to obtain an extract, inoculating Lactobacillus into the extract to create a fermentation wherein the Lactobacillus makes up 1-3% of the fermentation, the fermentation proceeds at 35-40°C for 20-36 hours, enzymolysis is performed, followed by centrifugation and collection of supernatant (Bottom of Page 3 – Top of Page 4). In one embodiment, Huang utilized Lactobacillus bulgaricus as the specific species of Lactobacillus in the fermentation step (Page 7, Paragraph 3). Lactobacillus bulgaricus is a subspecies of Lactobacillus delbrueckii.
Regarding the limitation of claim 2 wherein the Bangia fusco-purpure is ground with liquid nitrogen before mixing, the step of Huang of crushing the algae before mixing it with the water reads on this step. At the end of the step, all you are left with is crushed, reading on ground, algae and water. Additionally, the limitations regarding the process steps of claim 3 are encompassed within the analysis of the process as discussed above.
Huang does not disclose the use of Bangia fusco-purpure.
However, Jiang et al. disclose Bangia fusco-purpurea, a commercially important edible red alga that is superior to Porphyra sp. in terms of nutritional value and taste (Page 2065, Right Column, Paragraph 2). Additionally, B. fusco-purpurea can reduce the risks of cardiovascular diseases and chronic metabolic diseases (Page 2065, Right Column, Paragraph 2) as well as produces a polysaccharide that inhibits α-amylase and α-glucosidase (Page 2069, Right Column, Paragraph 1).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized Bangia fusco-purpurea in the method of Huang motivated by the desire to produce a product with superior taste and nutritional value that also has α-glucosidase activity as taught by Jiang et al. It would have been obvious to utilize Bangia fusco-purpurea in the method of Huang because the method is directed to providing a more palatable product and Jiang et al. specifically state Bangia fusco-purpurea is superior to Porphyra sp. in terms of nutritional value and taste.
It is reiterated that claims 1-3 are directed to a product, not a method. As the combined method of Huang and Jiang et al. utilized a similar process, including Lactobacillus bulgaricus, reading on a subspecies of Lactobacillus delbrueckii, and Bangia fusco-purpurea, it appears the method would necessarily produce a product, being a fermented supernatant, that would be patentably indistinct from the instantly claimed product because the instantly claimed product is not defined by it’s structural limitations, but rather, by the very broad method that produces the product. If there are differences, they are not claimed. Therefore, the fermented supernatant of the instant claims does not appear to be patentably distinct from the fermented supernatant of the prior art.
Conclusion
Claims 1-3 are rejected.
No claims are allowed.
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/A.T.W./Examiner, Art Unit 1653
/SHARMILA G LANDAU/Supervisory Patent Examiner, Art Unit 1653
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