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 .
Election/Restrictions and Claim Status
Applicant's election with traverse of the peptides of SEQ ID NO:1, SEQ ID NO:2 and SEQ ID NO:3 and the further agents of honeysuckle, menthol, Natural Indigo, boric acid, glycerin and water in the reply filed on 3/9/26 and 3/10/26 is acknowledged. The traversal is on the ground(s) that there is not a serious search burden. This is not found persuasive because each of the components elected has to be considered under 102, 103 and 101 for example . A search of particular combinations of components is not the same as a search of a single component.
The requirement is still deemed proper and is therefore made FINAL.
All claims read on, overlap with or include the combination of elected species.
Claims 1-16 are being examined.
Priority
The priority information is found in the filing receipt of 10/6/23.
It is noted that the filing receipt refers to foreign document 202110034714.4. The priority document provided 11/6/23 (which is not in English) refers to document number 2021100347144 which is not the same as what is listed on the filing receipt.
Specification
The disclosure is objected to because of the following informalities:
37 CFR 1.831(c) states that each occurrence of a sequence should include the corresponding sequence identifier. In the instant case, Table 2 on page 5 of the specification does not include the sequence identifiers with each sequence.
Appropriate correction is required.
Claim Objections
Claims 10 and 14-16 are objected to because of the following informalities:
Claims 10 and 14-16 are dependent claims and recite ‘A peptide disinfectant’. All other dependent claims (2-5, 7-9 and 11-13) recite ‘The peptide disinfectant’. For consistency, claims 10 and 14-16 should recite ‘The peptide disinfectant’ instead of ‘A peptide disinfectant’.
Appropriate correction is required.
Claim Interpretation
Claim 5 recites further comprises ‘honeysuckle, menthol, Natural Indigo, boric acid, glycerin and water’. Since the word ‘and’ is used, the claim is interpreted as requiring all of the additional agents.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/12/23 have been considered by the examiner.
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 1-16 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.
Claims 1 and 6 recite ‘preventing coronaviruses’. The meaning of this phrase is unclear because it appears to be incomplete. Preventing coronavirus replication is not necessarily the same as preventing coronavirus infection. None of the dependent claims clarify the claim scope. Although unclear, the phrase ‘for preventing coronaviruses’ has been interpreted as an intended use.
Claim 6 refers to a ‘first peptide’ and a ‘third peptide’ and recites SEQ ID NO:1 and SEQ ID NO:3. It is unclear if 3 peptides are required. Referring to ‘third peptide’ implies that 3 peptides are required, but the claim only recites 2 sequence identifiers. None of the dependent claims clarify the claim scope. Although unclear, claim 6 has been interpreted as requiring at least SEQ ID NO:1 and SEQ ID NO:3 in the recited concentrations.
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 1-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon (product of nature) without significantly more. The claim(s) recite(s) peptides/compositions which correspond to products of nature (fragments of natural protein as discussed in detail below). This judicial exception is not integrated into a practical application because there is no additional elements that apply or use the judicial exception. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception as discussed below.
This 101 rejection is consistent with the most recent training provided by the office which will be referred to as 'guidance' (MPEP 2106).
In comparison to the subject matter eligibility test as set forth in the guidance, the claims are drawn to compounds/compositions. Thus the answer to step 1 is yes.
BLAST search of SEQ ID NO:1 (retrieved from https://blast.ncbi.nlm.nih.gov/Blast.cgi on 4/9/26, 29 pages) reveals that SEQ ID NO:1 corresponds to residues of numerous natural proteins including a phosphocarrier (page 9), an ankyrin (page 10), etc.. Thus SEQ ID NO:1 corresponds to a fragment of a known protein.
BLAST search of SEQ ID NO:2 (retrieved from https://blast.ncbi.nlm.nih.gov/Blast.cgi on 4/9/26, 36 pages) reveals that SEQ ID NO:2 corresponds to residues of numerous natural proteins including a hydrolase (page 8), a polycystin (page 9), etc.. Thus SEQ ID NO:2 corresponds to a fragment of a known protein.
BLAST search of SEQ ID NO:3 (retrieved from https://blast.ncbi.nlm.nih.gov/Blast.cgi on 4/9/26, 35 pages) reveals that SEQ ID NO:3 corresponds to residues of numerous natural proteins including an oxidoreductase (page 10), a phosphatase (page 12), etc.. Thus SEQ ID NO: 3 corresponds to a fragment of a known protein.
In relation to prong one of step 2a of the guidance the answer is yes because the peptides correspond to domains of natural proteins (i.e. products of nature which are a natural phenomenon).
In relation to prong two of step 2a, the instant claims are product claims and do not require any additional elements that apply the judicial exception in a manner that imposes a meaningful limit on the judicial exception. Thus the answer to prong two of step 2a is no.
The instant claims recite SEQ ID NO:1 which is a fragment of a known protein. Further, instant claim 1 recites ‘comprising a first peptide’ which is open language and does not necessarily limit the peptide to a particular length. The Myriad Supreme Court decision (Association for Molecular Pathology v. Myriad Genetics, 569 U.S. 12-398 (2013)) stated: “Myriad’s claims are not saved by the fact that isolating DNA from the human genome severs the chemical bonds that bind gene molecules together” (page 2 and 14). In the instant case, applicants’ claims are not saved by the fact that the peptides of the instant claims can correspond to fragments (the protein with severed bonds).
In relation to step 2b, claim 5 recites additional components. The compositions of claim 5 can correspond to the peptide with other naturally occurring components. The PubChem entry for menthol (retrieved from https://pubchem.ncbi.nlm.nih.gov/compound/Menthol on 4/15/26, 131 pages) teach that menthol is a natural product (page 37). The PubChem entry for glycerol (retrieved from https://pubchem.ncbi.nlm.nih.gov/compound/753 on 4/15/26, 168 pages) teach that glycerol occurs in nature (page 112). The PubChem entry for boric acid (retrieved from https://pubchem.ncbi.nlm.nih.gov/compound/7628 on 4/15/26, 136 pages) teach that boric acid occurs in nature (page 12). As the name implies, natural indigo is a natural product. Honeysuckle is from a plant and is thus a natural product. Water exists in nature. Thus, claim 5 can correspond to a combination of naturally occurring components. The instantly claimed compositions are like the novel bacterial mixture of Funk Brothers which contained multiple naturally occurring components, which was held ineligible because each species of bacteria in the mixture (like each component in the peptide composition) continued to have “the same effect it always had”, i.e., it lacked markedly different characteristics. Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 131 (1948), discussed in Myriad Genetics, 133 S. Ct. at 2117 (explaining that the bacterial mixture of Funk Brothers “was not patent eligible because the patent holder did not alter the bacteria in any way”). The claims do not require any additional features that add significantly more to the exceptions.
Further, there is no evidence of any markedly different characteristic. MPEP 2106.04(c) II C recognizes that a change cannot be an inherent or innate characteristic on the naturally occurring counterpart or an incidental change in a characteristic of the naturally occurring counterpart. Thus the answer to step 2b is no because there is not adequate evidence to conclude that the claims include significantly more than the judicial exception.
Claim Rejections - 35 USC § 102
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.
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.
Claim(s) 1-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN112741893 (2021-05-04; as cited with IDS 7/12/23).
CN112741893 is not in the English language. The document provided with the IDS of 7/12/23 includes a translation of the abstract. A translation of the full document was obtained (Translation of CN112741893 2021-05-04, retrieved from https://patents.google.com/patent/CN112741893A/en?oq=cn112741893 on 4/13/26, 10 pages; ‘CN112741893translation’) and a copy is provided and all references will be to the translated version unless otherwise stated.
The first page of the translation provided with the IDS of 7/12/23 lists inventor ‘ZENG ZIYAN’ and does not include ‘Chimeng Tzeng’ so no grace period exception applies (see MPEP 2153.01(a)).
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
CN112741893translation teach peptide12 at 21.38 uM, peptide13 at 25.3 uM and peptide21 at 36.82 uM in a composition with honeysuckle, menthol, natural indigo, boric acid, glycerol and water (example 3 page 6) where the sequences of the peptides are set forth in Table 2 on page 4.
CN112741893translation teach peptide12 at 21.38 uM, and peptide21 at 36.82 uM in a composition with honeysuckle, menthol, natural indigo, boric acid, glycerol and water (example 4 page 6) where the sequences of the peptides are set forth in Table 2 on page 4.
In relation to claims 1-5 and 11-13, CN112741893translation teach peptide12 (instant SEQ ID NO:1) at 21.38 uM, peptide13 (instant SEQ ID NO:2) at 25.3 uM and peptide21 (instant SEQ ID NO:3) at 36.82 uM in a composition with honeysuckle, menthol, natural indigo, boric acid, glycerol and water (example 3 page 6) where the sequences of the peptides are set forth in Table 2 on page 4.
In relation to claims 6-10 and 14-16, CN112741893translation teach peptide12 (instant SEQ ID NO:1) at 21.38 uM, and peptide21 (instant SEQ ID NO:3) at 36.82 uM in a composition with honeysuckle, menthol, natural indigo, boric acid, glycerol and water (example 4 page 6) where the sequences of the peptides are set forth in Table 2 on page 4.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONALD T NIEBAUER whose telephone number is (571)270-3059. The examiner can normally be reached M - F 6:30 - 2:30 EST.
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RONALD T. NIEBAUER
Primary Examiner
Art Unit 1658
/RONALD T NIEBAUER/Examiner, Art Unit 1658
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