DETAILED ACTION
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 . 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 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.
Information Disclosure Statement
The Examiner notes that no information disclosure statement has been filed in this application. Applicant is reminded that in nonprovisional applications, applicants and other individuals substantively involved with the preparation and/or prosecution of the application have a duty to submit to the Office information which is material to patentability as defined in 37 CFR 1.56.
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-3) and the species of alginic acid in the reply filed on 06 May 2026 is acknowledged. The traversal is on the ground(s) that there should be no undue search burden. This is not found persuasive because there is such a burden, for the reasons put forth in the restriction requirement. The requirement is still deemed proper and is therefore made FINAL. Claims 4 and 5 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112 - Indefiniteness
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 1-3 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 regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “macromolecule”, and the claim also recites “polymer” in parentheses which is the narrower statement of the limitation. The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al. (Bioeng. Transl. Med., 2023, 8(5), pages 1-13; published 08 August 2022).
Chen et al. discloses the preparation of an edible gel comprising thiolated alginate (abstract). The resultant alginate can be used as a barrier to block nutrient absorption on small intestine for weight control (id.).
Instant claim 1 further recites that the polymer gel can be used for aiding weight loss, managing diabetes, and addressing metabolic syndrome. And instant claim 3 recites that steps for how the thiolated polymer gel is subsequently treated and stored. While Chen et al. discloses using the thiolated alginate edible gel for weight control, all the uses are not taught therein. However, the claims are drawn to a composition of matter, and the body of the claim recites a structurally complete invention. Furthermore, the intended uses do not appear to result in a structural difference between the claimed invention and the prior art. As such, the preamble is not considered to further limit the claim and only states only an intended use. See MPEP 2111.02(II).
Instant claim 2 recites steps for the preparation of the thiolated polymer gel. While Chen et al. teaches thiolating the alginate using thioglycolic acid, the specific steps are not necessarily taught. However, the patent-ability of a product does not depend on its method of production, and 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. See MPEP 2113.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brian Gulledge whose telephone number is (571) 270-5756. The examiner can normally be reached Monday - Friday 7am - 4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at (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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/Brian Gulledge/Primary Examiner, Art Unit 1699
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