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 .
Status of the Claims
Claims 1-5 as filed 1/3/2024 are pending and under current examination.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1-3 are objected to because of the following informalities: claim 1 includes an incorrectly capitalized word, “Preparing”, in line 3; claim 2 awkwardly recites “at early growth stage” without an article for grammatical clarity; claim 3 awkwardly recites “is sprayed to leaf surface” without an article for grammatical clarity; claim 3 utilizes a tilde symbol which, although it may be a symbol for informal approximation, as written between numerical endpoints of a range is not grammatically correct in a sentence in English. 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 1-5 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.
Claim 1 recites the limitation "at least 253 peptides as listed in the specification" in line 8. There is insufficient antecedent basis for this limitation, specifically “as listed in the specification”, in the claim. Limitations are not imported from the specification into the claim.
Claim 1 recites “the concentration is in the range of 2.0 x 10^5 ~ 4.5 x 10^5 ppm” in line 10. There is insufficient antecedent basis for “the concentration”. It is unclear what are the parts and the whole being referenced by this term? What or which combination of peptides constitutes a numerator and is the denominator a KHP solution?
Claim 4 recites “at the early growth stage” in line 3. When does this growth stage start and end and what are the bounds of “early”?
Appropriate clarification is required. Claims 1 and 4 recite problematic language as outlined above; claims 2, 3, and 5 are rejected here since they depend from and therefore require all limitations of a rejected base claim.
Double Patenting
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-5 provisionally are rejected on the ground of nonstatutory double patenting as being unpatentable over claims (“B” in Table below) as listed in the table below in copending Application Numbers (“A” in Table below) as listed in the table below(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims pertain to a method of using a keratin hydrolysis peptide (KHP) solution by preparing a solution from mixing feathers and water in a sealed container, hydrolyzing said mixture according to specific time, pressure, and duration parameters, and using a mass spectrometer to confirm peptide content, and administering the solution to soil and/or to leaf surfaces of specified plants (“C” in Table below).
The instant claims differ from the copending claims in that (1) both claim sets have slightly different but still qualitatively similar numerical amounts with regard to mass of feathers, water content percentage, and hydrolysis temperature, pressure, and duration terms and (2) the instantly claimed method applies the solution to soil around cucumber plants at early growth stage or to their leaf surface, whereas the copending claims are drawn to methods of applying the solution to the soil and/or leaves of the plants, specified particularly in the table below.
It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to adjust the hydrolysis conditions as part of routine optimization procedure as is customary in the art, with a reasonable expectation of success. One would have been motivated to do so to achieve the desired degree of hydrolysis reaction efficacy in a method of preparing a peptide solution from feathers in aqueous solution based on the copending claims’ suggestions of hydrolysis reactions for preparing keratin hydrolysis peptide solutions for enhancing crop yields and quality. Further, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to substitute one for the other, the cucumber crop instantly claimed for and/or in place of the crops of the copending claims as detailed in the Table above, with a reasonable expectation of success. One would have been motivated to apply the prepared solution to soil and/or leaves of alternate food or cash crops to achieve similar end results of enhanced production yield and quality of said food or cash crops.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claim is allowed at this time.
Following is near-art which may be applicable upon resolution of issues detailed above:
KR20060053360A teaches mass spectrometry characterization of peptide products from hydrolyzed feathers;
DE60015807T2 discloses the state of the art of peptides derived from keratin. The peptides are disclosed to be useful in wound healing applications and include peptides having a molecular weight around 850 Daltons; and
JP2006124341 teaches hydrolysis of horse keratin from overlapping ranges of hydrolysis parameters including 3-12 bar pressure; 4-25 minutes process duration; and 160 to 205 degrees Celsius temperature range to produce a peptide of 500 Daltons.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDREA B CONIGLIO whose telephone number is (571)270-1336. The examiner can normally be reached Monday - Thursday 7:00 a.m. - 5:30 p.m..
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/AUDREA B CONIGLIO/ Primary Examiner, Art Unit 1617