DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The status of the claims stands as follows:
Pending claims: 1-14
Withdrawn claims: None
Cancelled claims: 15-20
Claims currently under consideration: 1-14
Currently rejected claims: 1-14
Allowed claims: None
Election/Restrictions
Applicant’s election of Group I (claims 1-14) in the reply filed on 12/30/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Objections
Claims 1, 8, and 14 are objected to because of the following informalities:
In claims 1 and 8, “wherein the medium is 100 percent soluble in water after lyophilizing at ambient temperatures and pressures” should be read as “wherein the medium is 100 percent soluble in water at ambient temperatures and pressures after lyophilizing the medium”.
In claims 1 and 8, “wherein the medium is further comprised of a lyophilizing buffer and a food source, wherein the food source includes at least one of amino acids and vitamins” should be read as “wherein the medium is further comprised of a lyophilizing buffer and a food source, and wherein the food source includes at least one of amino acids and vitamins”.
In claim 14, “cane sugar” and “sugar cane” should be read as “sugar” due to claim 10 reciting “sugar”.
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.
Claims 5 and 7-14 are rejected under 35 U.S.C. 112(b) 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 5 recites “a pH increasing solution”. However, it is not clear what components are encompassed by this term as: (1) “increasing” is a relative term and the claim does not provide a base pH level from which to determine that “a pH increasing solution” actually increases the pH; (2) the claim does not require the pH of the composition to be increased to any degree; or (3) recite any specific component as being “a pH increasing solution”. Therefore, the claim is indefinite.
For the purpose of this examination, “a pH increasing solution” will be interpreted as any solution having a pH greater than 0.
Claim 7 recites “between 5 percent and 10 percent”. However, there is no unit of measurement associated with this percentage range (e.g., weight percent, volume percent, weight per volume percent). Therefore the claim is indefinite.
For the purpose of this examination, the percentage will be interpreted as meaning weight percent.
Claim 8 does not recite any steps for the claimed method as the phrase “wherein the medium is 100 percent soluble in water after lyophilizing at ambient temperatures and pressures” does not actually require the medium to be lyophilized.
For the purpose of this examination, the claim will be interpreted as a method comprising any steps to arrive at lyophilized microbes in a medium.
Claim 9 recites that “the microbes are grown by using the food source”. However, claim 8, from which claim 9 depends, recites that the method is for lyophilizing methods. Although claim 8 does not recite method steps, claim 8 is interpreted as at least requiring that microbes be lyophilized. Therefore, it is unclear as to how the microbes are supposed to be using the food source as recited in claim 9 while being lyophilized as interpreted in claim 8. As such, claim 9 is indefinite.
For the purpose of this examination, claim 9 will be interpreted as merely requiring the food source be completely water soluble.
Claim 14 recites the limitation "the microbe brew" in line 3. There is insufficient antecedent basis for this limitation in the claim.
For the purpose of this examination, “the microbe brew” is interpreted as the microbes.
Claims 10-13 are rejected by reason of dependency from claim 8.
Claim Rejections - 35 USC § 102
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.
Claims 1-3, 7-10, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cadenel (US 2014/0220663 A1) as evidenced by Eurasyp (“What is yeast extract?”, 2026, Yeast Extract, https://www.yeastextract.info/about-yeast-extract/yeast-extract-at-a-glance/).
Regarding claims 1 and 2, Cadenel teaches a composition comprising microbes suspended in a medium (corresponding to a microorganism-containing suspension or concentrate) [0001] as recited in present claim 1, wherein the medium comprises a disaccharide in the form of sucrose [0009], [0034]. Cadenel teaches that sucrose is known as a food source and/or a lyophilizing buffer [0052]-[0053], [0089]. Therefore, Cadenel teaches that the medium contains a lyophilizing buffer as recited in present claim 1. Cadenel teaches that the medium may further comprise yeast extract [0089]. Yeast extract contains proteins, amino acids, and vitamins as evidenced by Eurasyp (page 1, under “Natural components from the yeast cell). Therefore, yeast extract qualifies as the claimed food source including at least one of amino acids and vitamins as recited in present claim 1. Furthermore, amino acids and proteins are water soluble so that the food source (corresponding to yeast extract) comprises a plurality of components which are all soluble in water as recited in present claim 2.
Cadenel teaches that the composition comprising the microbes and medium is lyophilized [0073]-[0074], [0087]-[0088]. Therefore, the composition comprises lyophilized microbes suspended in a lyophilized medium. Since the medium comprises sucrose and yeast extract, the medium is considered to be 100% soluble in water at ambient temperatures and pressures as recited in present claim 1. Although Cadenel teaches that the medium is lyophilized, it is noted that claim 1 does not actually require the medium be lyophilized.
Regarding claims 3 and 7, Cadenel teaches the invention as described above in claim 1, including the lyophilizing buffer is sucrose, which is also known as “sugar” [0052]-[0053], [0089] as recited in present claim 7. Sucrose is known in the art to be soluble in water so that Cadenel discloses that the lyophilizing buffer is comprised of components that are soluble in water as recited in present claim 3. Cadenel teaches that the sugar is mixed with water and the microbes to form a solution [0003], [0073]-[0074], [0087]-[0088], wherein the concentration of sugar in the solution is 1-12 wt.%, such as 5-8 wt.% [0040]. This sugar concentration falls within the claimed sugar concentration recited in present claim 7.
Regarding claims 8 and 9, Cadenel teaches a composition comprising microbes suspended in a medium (corresponding to a microorganism-containing suspension or concentrate) [0001] as recited in present claim 8, wherein the medium comprises a disaccharide in the form of sucrose [0009], [0034]. Cadenel teaches that sucrose is known as a food source and/or a lyophilizing buffer [0052]-[0053], [0089]. Therefore, Cadenel teaches that the medium contains a lyophilizing buffer as recited in present claim 8. Cadenel teaches that the medium may further comprise yeast extract [0089]. Yeast extract contains proteins, amino acids, and vitamins as evidenced by Eurasyp (page 1, under “Natural components from the yeast cell). Therefore, yeast extract qualifies as the claimed food source including at least one of amino acids and vitamins as recited in present claim 8.
Cadenel teaches that the composition comprising the microbes and medium is lyophilized [0073]-[0074], [0087]-[0088] so that Cadenel teaches a method of lyophilizing microbes in a medium as recited in the preamble of present claim 8. Therefore, the method comprises lyophilizing microbes in a medium. Since the medium comprises sucrose and yeast extract, the medium and the food source are considered to be 100% soluble in water at ambient temperatures and pressures as recited in present claim 8. Although Cadenel teaches that the microbes are lyophilized, it is noted that claim 8 does not actually require the microbes be lyophilized as present claim 8 does not explicitly recite any method steps.
Regarding claims 10 and 14, Cadenel teaches the invention as described above in claim 8, including the lyophilizing buffer is sucrose, which is also known as “sugar” [0052]-[0053], [0089] as recited in present claim 10. Cadenel teaches that the sugar is mixed with water and the microbes to form a solution [0003], [0073]-[0074], [0087]-[0088], wherein the concentration of sugar in the solution is 1-12 wt.%, such as 5-8 wt.% [0040]. This sugar concentration falls within the claimed sugar concentration recited in present claim 14.
Claims 1-2, 5, and 8-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vesey (US 2005/0032192 A1) as evidenced by Eurasyp (“What is yeast extract?”, 2026, Yeast Extract, https://www.yeastextract.info/about-yeast-extract/yeast-extract-at-a-glance/) and Dadant (“Which Acids Are Present in Honey?”, 2026, Dadant, https://www.dadant.com/learn/which-acids-are-present-in-honey/).
Regarding claims 1 and 2, Vesey teaches a composition comprising microbes suspended in a medium (corresponding to a product containing a quantum of microorganisms and a cryogenic fluid) [0001], [0048]-[0049] as recited in present claim 1, wherein the medium may comprise yeast extract [0045] and honey [0074]. Yeast extract contains proteins, amino acids, and vitamins as evidenced by Eurasyp (page 1, under “Natural components from the yeast cell). Therefore, yeast extract qualifies as the claimed food source including at least one of amino acids and vitamins as recited in present claim 1. Vesey teaches that honey is a lyophilizing buffer (corresponding to protective agent) [0074]. Therefore, the composition of Vesey comprises a lyophilizing buffer as recited in present claim 1. Honey also contains amino acids and vitamins as evidenced by Dadant (page 1, 2nd paragraph). Therefore, honey may also be considered as a food source as recited in present claim 1. Furthermore, amino acids and proteins are water soluble so that the food source (corresponding to yeast extract and honey) comprises a plurality of components which are all soluble in water as recited in present claim 2.
Vesey teaches that the composition comprising the microbes and medium is lyophilized [0050]. Therefore, the composition comprises lyophilized microbes suspended in a lyophilized medium. Since the medium may comprise yeast extract and honey, the medium is considered to be 100% soluble in water at ambient temperatures and pressures as recited in present claim 1. Although Vesey teaches that the medium is lyophilized, it is noted that claim 1 does not actually require the medium be lyophilized.
Regarding claim 5, Vesey teaches the invention as described above in claim 1, including the medium may comprise honey [0074]. Honey has a pH greater than 0 as evidenced by Dadant (page 1, 2nd paragraph under “How Acidic is Honey?”). Therefore, honey qualifies as a pH increasing solution that is soluble in water as recited in present claim 5.
Regarding claims 8 and 9, Vesey teaches a composition comprising microbes suspended in a medium (corresponding to a product containing a quantum of microorganisms and a cryogenic fluid) [0001], [0048]-[0049] as recited in present claim 8, wherein the medium may comprise yeast extract [0045] and honey [0074]. Yeast extract contains proteins, amino acids, and vitamins as evidenced by Eurasyp (page 1, under “Natural components from the yeast cell). Therefore, yeast extract qualifies as the claimed food source including at least one of amino acids and vitamins as recited in present claim 8. Vesey teaches that honey is a lyophilizing buffer (corresponding to protective agent) [0074]. Therefore, the composition of Vesey comprises a lyophilizing buffer as recited in present claim 8. Honey also contains amino acids and vitamins as evidenced by Dadant (page 1, 2nd paragraph). Therefore, honey may also be considered as a food source as recited in present claim 8.
Vesey teaches that the composition comprising the microbes and medium is lyophilized [0050]. Therefore, the composition comprises lyophilized microbes suspended in a lyophilized medium. Since the medium may comprise yeast extract and honey, the medium and the food source are considered to be 100% soluble in water at ambient temperatures and pressures as recited in present claims 8 and 9. Although Vesey teaches that the microbes are lyophilized, it is noted that claim 8 does not actually require the microbes be lyophilized as present claim 8 does not explicitly recite any method steps.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 4 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Vesey (US 2005/0032192 A1) as evidenced by Eurasyp (“What is yeast extract?”, 2026, Yeast Extract, https://www.yeastextract.info/about-yeast-extract/yeast-extract-at-a-glance/) and Dadant (“Which Acids Are Present in Honey?”, 2026, Dadant, https://www.dadant.com/learn/which-acids-are-present-in-honey/) as applied to claims 2 and 9, in view of Garbutt (Garbutt, T., “What are the steps involved in processing honey for packaging?” 2020, Quora, https://www.quora.com/What-are-the-steps-involved-in-processing-honey-for-packaging).
Regarding claims 4 and 11, Vesey teaches the invention as described above in claims 2 and 9, including the medium may comprise honey and a yeast source (corresponding to yeast extract) [0074] as recited in present claims 4 and 11. Vesey does not teach that the honey is processed to have its wax component removed as recited in present claims 4 and 11.
However, Garbutt teaches that honey is filtered to remove the wax component after the honey is extracted from the honeycomb (page 1, steps 2-3). Therefore, Garbutt teaches that honey is processed to have its wax component removed.
It would have been obvious for a person of ordinary skill in the art to have modified the honey used in the medium of Vesey to have its wax component removed as taught by Garbutt. Since Garbutt teaches that wax removal is a common step used in producing honey for a consumer (page 1, 2nd paragraph), a skilled practitioner would have readily recognized that the honey for the medium would have had its wax removed prior to being provided to the practitioner as this is a common practice in honey production. Therefore, honey having its wax component removed as recited in present claims 4 and 11 is rendered obvious.
It is noted that claim 4 is a product-by-process claim and “even though product-by-process claims are limited by and defined by the process, determination of patentability is based upon the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113.I.
Regarding claim 12, Vesey teaches the invention as described above in claim 11, including the yeast source is yeast extract [0045].
Claims 6 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Vesey (US 2005/0032192 A1) as evidenced by Eurasyp (“What is yeast extract?”, 2026, Yeast Extract, https://www.yeastextract.info/about-yeast-extract/yeast-extract-at-a-glance/) and Dadant (“Which Acids Are Present in Honey?”, 2026, Dadant, https://www.dadant.com/learn/which-acids-are-present-in-honey/) as applied to claims 2 and 9.
Regarding claims 6 and 13, Vesey teaches the invention as described above in claims 2 and 9, including the medium may comprise yeast extract [0045] and honey [0074]. Yeast extract contains proteins, amino acids, and vitamins as evidenced by Eurasyp (page 1, under “Natural components from the yeast cell). Therefore, yeast extract qualifies as the claimed food source. Honey also contains amino acids and vitamins as evidenced by Dadant (page 1, 2nd paragraph). Therefore, honey may also be considered as a food source.
Vesey teaches that the medium may contain the honey in an amount of about 1-30 v/v% [0074]; and exemplifies an amount of 1 w/v% for yeast extract in the medium [0122]. These amounts of honey and yeast extract provide amounts wherein the yeast source comprises more than 20 wt.% of the food source, thereby providing a range of values which at least overlap the range recited in present claims 6 and 13.
It would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.I.
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 1-2, 6-10, and 13-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-12, 15-17 and 19 of co-pending Application No. 18/465,229 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because co-pending claims 11, 12, and 19 require the same features as instant claims 1, 2, 6, 8, 9, and 13, except for the yeast source to comprise more than 20 wt.% of the food source. However, the co-pending claims do not recite a concentration of the yeast source in the food source; therefore, the concentration of yeast source in the food source of the co-pending claims may be from greater than 0 wt.% to less than 100 wt.%, which overlaps the concentration recited in instant claims 7 and 13. The selection of a value within the overlapping range renders the co-pending claims obvious. MPEP 2113.I.
The instant claims are not patentably distinct from each other because co-pending claims 15, 16, and 17 require the same features as instant claims 7, 10, and 14.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/KELLY P KERSHAW/Examiner, Art Unit 1791