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 .
This application is in response to restriction filed on 11/12/2025.
Claims 1-20 are presently pending in this application. Applicant has elected Group I, claims 1-5 without traverse and claims 6-20 have been withdrawn as non-elected groups II-III. Claims 1-5 are under examination.
Election/Restrictions
Applicant's election without traverse of Group I, claims 1-5 in the reply filed on 11/12/2025 is acknowledged.
Claims 6-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Groups II-III, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/12/2025.
Specification
Currently, the abstract is less than 50 words in length. It is suggested to have the abstract within the range of 50 to 150 words in length.
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
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.
7. The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1-5 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.
Regarding claim 1, the phrase "and analogs thereof" renders the claim indefinite because the claim includes elements not actually disclosed (those encompassed by "and analogs thereof"), thereby rendering the scope of the claim unascertainable. See MPEP § 2173.05(d). Clarification is requested.
Regarding dependent claims 2-5, this claim does not remedy the deficiencies of parent claim 3 as noted above and are rejected for the same rationale.
Claims 3-4 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 3 recites “biosurfactant is sophorolipid” does not further limit from claim 2 as claim 2 recites biosurfactant is a glycolipid, lipopeptide or phospholipid.
Regarding dependent claim 4, this claim does not remedy the deficiencies of parent claim 3 as noted above and are rejected for the same rationale.
Claim Objections
Claim 5 is objected to because of the following informalities:
In order to ensure proper antecedent basis and to provide clarity in the claim, it is suggested to amend "the composition" to "the decadmiation composition" in claim 5 lines 1-2.
Appropriate correction is required.
Double Patenting
11. 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
12. Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 13-15 of co-pending Application No. 17/521,290.
Co-pending application (‘290) teaches decadmiation composition substantially similar to applicant’s presently claimed invention which includes a decadmiation composition comprising a sophorolipid biosurfactant (i.e., example of glycolipid biosurfactant, reads on claim 2 limitation), an acid, a pH adjuster (reads on claim 1 limitation) wherein the sophorolipd is a linear sophorolipid or a derivative of a liner sophorolipid (reads on claims 3-4 limitation), wherein the acid is selected from acetic acid, citric acid, lactic acid, butyric acid, sorbic acid, benzoic acid, formic acid, fumaric acid, propionic acid, ascorbic acid, glyoxylic acid, malonic acid, pyruvic acid, oxalic acid, uric acid, malic acid, tartaric acid, sulfuric acid, nitric acid, phosphoric acid, hydrochloric acid, boric acid and analogs thereof (reads on claim 1) and wherein the pH adjuster is present in the composition at a concentration that stabilizes the pH between 2-5 (reads on claim 5 limitation).
This is a provisional non-statutory double patenting rejection.
Claim Rejections - 35 USC § 103
13. 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.
14. Claims 1-5 are rejected under 35 U.S.C. 103 as obvious over Benredjem et al. (NPL: “Coupling of electrodialysis and leaching process for removing of cadmium from phosphate ore, Sep. Sci. Tech. 2016, 51(4), 718-726) in view of Qi et al (NPL: “Removal of Cadmium and Lead from Contaminated Soils Using Sophorolipids from Fermentation Culture of Starmerella bombicola CGMCC 1576 Fermentation”, Internation Journal of Environment Research and Public Health, pages 1-12, 2018).
Regarding clams 1-3, Benredjem teaches extracting an impurity from phosphate ore (removing cadmium from phosphate ore, see title- reads on claimed limitation of a decadmiation) comprising a composition comprising an acetic acid solution (reads on acid, p. 719, column 1, paragraph 6) and adjustment of the pH of the solution was carried out with NaOH; p. 719, column 1-Reagents, reads on pH adjuster).
Benredjem also teaches the addition of different organic extracting agents to the mixtures (p. 720, column 2) to aid in the extraction efficiency of cadmium from the phosphate ore. Benredjem does not explicitly disclose or suggest the composition comprising a biosurfactant.
However, Qi discloses removing cadmium from contaminated soil using sophorolipids wherein sophorolipid (SL) is type of extracellular glycolipid biosurfactant (pages 1-2 and abstract, reads on claims 1-3 limitation of biosurfactant is glycolipid, sophorolipid).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to use a sophorolipid as extracting agent of Qi in the composition of Benredjem which is more efficient and environment friendly and further provide good surface activity, biodegradability, biocompatibility, low toxicity, high productivity as taught by Qi (see page 2- lines 5-15).
Regarding claim 4, Qi discloses sophorolipd (SL) is linear sophorolipid or a derivative of a liner sophorolipid (i.e., lactonic SLs, acidic SLs, see section 2.3 on page 3).
Regarding claim 5, Benredjem discloses pH adjuster is present in the composition at a concentration that stabilizes the pH of the composition at pH 4 (fig. 9 and page 723-col.2, paragraph 1, encompassed claimed range of pH between 2-5). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Conclusion
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SMITA S PATEL whose telephone number is (571)270-5837. The examiner can normally be reached on 9AM-5PM EST M-W.
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/SMITA S PATEL/Primary Examiner, Art Unit 1732 02/04/2026