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 .
Claims 1-4 are pending in this application.
35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph
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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
(1) Independent claim 1 recites “at least 253 peptides as listed in the specification.” There are two issues here. First, the 253 or more peptides are not listed in the specification. It appears that such peptides are listed in the Drawings, pages 1-7, not the specification. Second, even if the specification did list the at least 253 peptides, MPEP 2173.05(s) states that “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 table into the claim. To date, Applicant has not met the burden of showing that the incorporation is necessary, as required.
(2) Part a of claim 1 recites “66 kg of feathers whose content is …” (emphasis added). This is grammatically incorrect because “whose” is meant for people or animals. To things like feathers, “which” should be used.
(3) Also in part a of claim 1, “feathers whose content is 50% water” (emphasis added) is confusing because content of water in feathers is most certainly not 50%. It cannot be understood what is meant by this feature.
35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph
For these reasons, the metes and bounds of the claims cannot be determined, and the claims are deemed indefinite. Dependent claims are included here because they do not cure the deficiency of their base claim.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The basis for this ground of rejection is that without knowing which specific bird feather to use for hydrolysis (e.g., duck, chicken, pigeon, starling, sparrow, turkey, geese, parrot, hawk, owl, etc.), one skilled in the art would not be able to obtain a solution as described in step c of claim 1 (must contain ≥ 253 specific peptides) without undue experimentation.
The claims are drawn to a method of using a solution, where the solution is confirmed to contain at least 253 specific peptides (see above discussion as to indefiniteness). It shall be assumed for the purpose of this ground of rejection that the claim-recited peptides are the ones disclosed on pages 1-7 of the drawings.
The state of the art is that feathers of different birds are known to contain different proteins. Harrap et al. disclose that feathers from six species of birds are “distinctly dissimilar in amino acid composition ….” Alphine et al. disclose amino acid content of broiler chicken and Kuttanad duck feathers (page 151, Table 1). Percentage of aspartic acid, glutamic acid, serine, histidine, arginine, lysine, proline, and asparagine were significantly different (id.). Therefore, hydrolysis of feathers from different birds would obtain different peptides because the protein source would be different.
The level of one of ordinary skill in the art is high, but so is the level of unpredictability in matching all 253 specific peptides without any guidance as to the source of the feather.
The specification does not disclose the feather source that would provide the 253 peptides. Even if it did provide the source, the claims are not limited thereto.
There is no working example that shows the source of the feather that provided the 253 peptides.
Therefore, the quantity of experimentation needed to make and use the invention based on the content of the disclosure would be undue.
For these reasons, the claims fail to find adequate enabling support from the disclosure.
Double Patenting
U.S. Patent No. 12,527,269, and copending application 18/418,259 were reviewed for potential double patenting issues. Because the claims of this application have been determined as lacking enablement, non-statutory double patenting ground of rejection will not be applied.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JOHN PAK/Primary Examiner, Art Unit 1699
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