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 1-4 are pending.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Objections
Claims 1-4 are objected to because of the following informalities:
Claim 1 lists steps as “a. … b. … c. … d. ….” As per MPEP 608.01(m), “[e]ach claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations.” It is suggested the listing elements be amended as, for example “(a) … (b) … (c) … (d)…” or similar.
In claim 1, line 3, “Preparing” should not be capitalized.
In claim 1, “~” in step (c) should be a dash or the word “to”.
In claim 1, to put the claims in better form, in step (d), “the soil around corn crops” should be “the soil around the corn crops” as it appears the limitation is referring back to the “corn crops” first recited in the preamble of the claim.
In claims 2-4 the full phrase “keratin hydrolysis peptide (KHP) solution” is unnecessary as the acronym KHP was defined in claim 1. In claims 2-4 the following is suggested: “The method of using a KHP solution of Claim 1”
In claims 3 and 4, it appears that a space is missing between “claim 1” and “where” in line 1 of each 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 1-4 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 pre-AIA the applicant regards as the invention.
With regards to Claim 1, because of the inconsistent use of “KHP solution”, “mixture” and “solution” throughout the body of the claim, and without recitation of what the solution/mixture is called after a particular step is done, it is unclear what the actual composition is that is ultimately applied in step (d). Furthermore, because of the inconsistent usage of the term “KHP solution”, “mixture” and “solution”, it is unclear if each have antecedent basis, and/or if the terms are referring to the same thing.
Step (a) recites “preparing the KHP solution by mixing 66 kg of feathers … and 44 kg of water in a sealed container.” Step (b) recites hydrolyzing the mixture (referring to the mixture of feathers and water in step (a)?), but as currently written, it is unclear if the product resulting from the hydrolyzing step (b) is also the “KHP solution” or something else.
Step (c) recites “using a mass spectrometer to confirm the combination of peptides in the solution”, but as currently written, it is unclear if “the solution” is referring to “the KHP solution” recited in step (a) or the hydrolyzed solution in step (b).
Step (d) recites “applying the solution”, but as currently written, it is unclear if it is referring to “the KHP solution” of step (a) or the hydrolyzed solution of step (b).
For improved clarity, Examiner suggests, for example, amending steps (a) and (b) to recite: “(a) Preparing a mixture by mixing 66 kg of feathers … and 44 kg of water…; (b) hydrolyzing the mixture … for a duration of 40 minutes to form the KHP solution ….” (or the like).
Further, for improved clarity, Examiner suggests, for example, amending step (c) to recite: “(c) using a mass spectrometer to confirm the combination of peptides in the KHP solution ….” (or the like).
Claims 2-4 are rejected as depending from and not clarifying claim 1.
Further regarding Claim 1, the claim is indefinite as it recites “…contain at least 253 peptides as listed in the specification…” in step (c). As per MPEP 2173.05(s), “Where possible, claims are to be complete in themselves.” Incorporation by reference to a specific table “is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is by a necessity doctrine, not for applicant’s convenience.” In the present case, the peptides may be recited in the claims directly as, for example, “amino acid sequences of SEQ ID Nos.: 1-253”. Furthermore, the limitation is indefinite because the list of peptides incorporated by the specification appears to only include 253 peptides. However, the phrase “at least” means additional peptides may be included. It is unclear if the limitation is intended to mean (i) that the solution contains at least 253 peptides, and if there more than 253 peptides that 253 of the peptides included must be those of SEQ ID Nos. 1-253; (ii) the solution contains at least 253 peptides and must contain at least one of those listed in SEQ ID Nos. 1-253; or (iii) the peptides in the solution are only limited to those explicitly recited in the specification (in which case it is unclear where else in the specification beyond the 253 peptides explicitly listed are).
Claims 2-4 are rejected as depending from and not clarifying claim 1.
Further regarding Claim 1, “their molecular masses are between 500 and 4,000 Daltons” in step (c) is indefinite because it is unclear if the limitation is referring to the mass of each individual peptide or the mass of the combination of all “at least 253” peptides.
Claims 2-4 are rejected as depending from and not clarifying claim 1.
Further regarding Claim 1, “the concentration is in the range of 2.0 x 105 ~ 4.5 x 105” in step (c) is indefinite because it is unclear if the limitation is referring to the concentration of each individual peptide or the concentration of the combination of all “at least 253” peptides.
Claims 2-4 are rejected as depending from and not clarifying claim 1.
Regarding Claims 2-4, the term “early” is a relative term which renders the claim indefinite. The phrase “early growth stage” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what time frame in the growth of the corn crops would be considered the “early growth stage”.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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.
Claims 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 12,527,269 in view of Wei et al. (US 2016/0095314 A1)
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and the patented claims recite a method of using a KHP solution comprising the steps of:
a. preparing a KHP solution by mixing 66 kg of feathers whose content is 50% water and 44 kg of water in a sealed container;
b. hydrolyzing the mixture in the container with a temperature and pressure setting of 195° C. and 16 kg/cm2 for a duration of 40 minutes;
c. using a mass spectrometer to confirm the combination of peptides in the solution to contain at least 253 peptides as listed in the specification where their molecular masses are between 500 and 4,000 Daltons, and the concentration is in the range of 2.0×105 to 4.5×105 ppm; and
d. applying the solution to the fertilized soil comprising a plant.
The difference is that the patented claims require application to fertilized soil in which soybean seeds are planted and the instant claims require application to the soil around corn crops at seedling stage.
However, Wei et al. teach that peptide compositions are known to treat plants or plant seeds for example, when it is known that harvested cuttings or fruit or vegetables are intended to be shipped great distances or stored for long periods of time post-harvest. Peptide compositions are known to modulate plant biochemical signaling, impart disease resistance to plants, enhance plant growth, impart tolerance to biotic and abiotic stresses, impart post-harvest disease resistance to fruit or vegetable, and enhance the longevity of fruit or vegetable ripeness (abstract; para. 0498, 0500). Among the plants suitable for treatment include, for example, corn and soybean (e.g. paragraph 0501). Therefore, it would have been obvious before the effective filing date of the instant invention to use the method of the patented claims and choose application to corn from the limited number of plants disclosed by Wei as a design choice, with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to do so as Wei specifically indicated that peptide compositions are effecting at enhancing plant yield and providing other benefits to a vast array of plants, including corn.
Claims 1-4 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over the following claims and copending applications:
Claims Copending Application No.
1-12 18/389,780
1-5 18/403,246
1-4 18/408,257
1-3 18/409,790
1-4 18/409,792
1-4 18/412,611
1-4 18/412,615
1-3 18/418,259
1-8 18/428,193
1-8 18/527,787
1-5 18/531,687
1-6 18/533,181
1-8 18/534,628
9-16 18/536,211
1-6 18/536,214
1-8 18/537,395
4-9 18/639,751
1-3 18/639,950
1-3 18/642,007
1-4 18/642,445
1-8 18/642,487
1-6 18/643,738
1-7 18/643,756
1-6 18/645,293
1-6 18/645,307
1-3 18/645,354
1-8 18/656,153
1-6 18/658,824
1-8 18/658,834
1-6 18/668,598
1-4 18/671,837
1-6 18/671,848
1-10 18/748,493
1-10 18/758,140
1-8 18/758,198
1-6 18/774,885
1-6 18/778,049
1-3 18/827,519
1-9 18/898,195
1-4 18/902,317
in view of Wei et al. (US 2016/0095314 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and the patented claims recite a method of using a KHP solution comprising the steps of:
a. preparing a KHP solution by mixing feathers and water in a sealed container;
b. hydrolyzing the mixture in the container with a temperature and pressure setting for a duration of 40 minutes;
c. using a mass spectrometer to confirm the combination of peptides in the solution to contain at least 253 peptides as listed in the specification where their molecular masses are between 500 and 4,000 Daltons, and the concentration is in the range of 2.0×105 to 4.5×105 ppm; and
d. applying the solution to the soil comprising a plant.
The difference is that the copending claims require application to different crops including coffee, tea, grape, cucumber, wheat, cotton, soybean, asparagus, lettuce, tomato, melon, cabbage, rice, and farming plants and the instant claims require application to the soil around corn crops at seedling stage.
However, Wei et al. teach that peptide compositions are known to treat plants or plant seeds for example, when it is known that harvested cuttings or fruit or vegetables are intended to be shipped great distances or stored for long periods of time post-harvest. Peptide compositions are known to modulate plant biochemical signaling, impart disease resistance to plants, enhance plant growth, impart tolerance to biotic and abiotic stresses, impart post-harvest disease resistance to fruit or vegetable, and enhance the longevity of fruit or vegetable ripeness (abstract; para. 0498, 0500). Among the plants suitable for treatment include, for example, asparagus, cabbage, grapes, coffee, corn, cotton, cucumber, lettuce, melon, rice, soybean, tea, tomato, watermelon, and wheat (e.g. paragraph 0501). Therefore, it would have been obvious before the effective filing date of the instant invention to use the method of the copending claims and choose application to corn from the limited number of plants disclosed by Wei as a design choice, with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to do so as Wei specifically indicated that peptide compositions are effecting at enhancing plant yield and providing other benefits to a vast array of plants, including corn.
This is a provisional nonstatutory double patenting rejection.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned above applications, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached on 571-272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619
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