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
Claims 1, 3-6, 8-9 are pending and examined on the merits.
Election/Restrictions
Applicant’s election of Honda DREAMO strain, adrenergic receptor alpha 1B, in the reply filed on 4/15/2026 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)).
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 2/6/2026, 7/11/2025, 1/13/2025, 1/24/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claims 1, 3-6, and 8-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claim(s) 1, 3-6, and 8-9 are directed to a composition comprising natural products. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
MPEP § 2106 sets forth the Subject Matter Eligibility Test to determine if a claim is directed to patent eligible subject matter. Step 1 asks if a claim is directed to a statutory category of invention. Applicant’s claims are directed to a product; thus, the answer to Step 1 is Yes.
Step 2A, Prong One, asks if a claim recites to a product of nature. In this case, applicant’s claims recite a green alga Chlamydomonas reinhardtii and an extract of Chlamydomonas reinhardtii. Thus, the claims do recite products of nature. MPEP § 2106.04(b) states that “When a claim recites a nature-based product limitation, examiners should use the markedly different characteristics analysis discussed in MPEP § 2106.04(c) to evaluate the nature-based product limitation and determine the answer to Step 2A.”
MPEP § 2106.04(c)(I) states that “if the nature-based product limitation is not naturally occurring, for example due to some human intervention, then the markedly different characteristics analysis must be performed to determine whether the claimed product limitation is a product of nature exception…”. To perform the markedly different characteristic analysis, MPEP § 2106.04(c)(II) states “The markedly different characteristics analysis compares the nature-based product limitation to its naturally occurring counterpart in its natural state. Markedly different characteristics can be expressed as the product’s structure, function, and/or other properties…”.
In this case, Chlamydomonas reinhardtii itself and its extracts are not markedly different from the organism or extract, which can be found in nature. Therefore, the answer to Step 2A, Prong One, is Yes.
Thus, the analysis must move to Step 2A, Prong Two, which asks if the claim recites additional elements that integrate the judicial exception into a practical application. As discussed in MPEP § 2106.04(d)(2) this evaluation is performed by identifying whether there are additional elements recited in the claim beyond the judicial exception and evaluating these additional elements to determine whether the claim as a whole integrates the exception into a practical application. In this case, Claim 9, extraction in dimethyl sulfoxide would extract ingredients that are present in the Chlamydomonas reinhardtii. Thus, the answer to Step 2A, Prong Two, is No.
The analysis must then move to Step 2B which asks if claims recite additional elements that amount to significantly more than the judicial exception. MPEP § 2106.05 states that this evaluation is performed by “Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself.” In this case, extraction or isolation of an organism is a well understood, routine, and conventional method of making a product for health (from IDS, Shiobara et al., WO 2017217116 A1). Thus, the answer to Step 2B is No. Therefore, the claims are not directed to patent eligible subject matter.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3-5, and 8 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Shiobara et al. (from IDS, WO 2017217116 A1).
Shiobara et al. teaches a composition of microalgae Chlamydomonas, including Honda DREAMO strain (Accession No. FERM BP 22306) (page 2, DESCRIPTION-OF-EMBODIMENTS, paragraph 2). A microalga belonging to the genus Chlamydomonas sp., which is a mutant strain that has an ability to produce ethyl alcohol under dark anaerobic conditions and has acquired the ability to grow while aggregating (Claim 1). This would be an extract of Chlamydomonas, including Honda DREAMO strain (Accession No. FERM BP 22306). The composition would inherently have all the functions of Claims 4-6 because the same extract or organism would have the same chemical activities.
Claim(s) 1, 4-6, and 9 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Park et al. (2009, Biosci, Biotechnol, Biochem, 73: 2803-2805).
Park et al. teaches a composition of Chlamydomonas cell disruptant containing dimethyl sulfoxide (Abstract). The cell disruptant of the unicellular green alga Chlamydomonas reinhardtii (page 2803, left column, paragraph 1, last line). The composition would inherently have all the functions of Claims 4-6 because the same extract or organism would have the same chemical activities.
Conclusion
No claim is allowed.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERYNE CHEN whose telephone number is (571)272-9947. The examiner can normally be reached on Monday-Friday 9-5:30 PM.
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Catheryne Chen Examiner Art Unit 1655
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
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