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 .
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d) for Taiwanese Application No. TW112134952, filed on 09/13/2023; which papers have been placed of record in the file. Please note that application is in a foreign language and thus cannot be verified.
Claim Status
Claims 1-5 were originally filed on 12/07/2023.
The amendment filed on 02/04/2026 amended claims 1-5.
Response to Arguments
1. Applicants’ arguments, see Remarks, filed 02/04/2026, with respect to the Objection to the Disclosure, have been fully considered and are persuasive. The objection to the disclosure has been withdrawn.
2. Applicants’ arguments, see Remarks, filed 02/04/2026, with respect to the objections to claims 1-5 for grammatical issues, have been fully considered and are persuasive. The objection to claims 1-5 have been withdrawn.
3. Applicants’ arguments, see Remarks, filed 02/04/2026, with respect to the 35 U.S.C. 112(b) rejection of claims 1-5 (i.e., preamble recites method of using, however, body of claim recites method of making), have been fully considered but are not persuasive. The 35 U.S.C. 112(b) rejection of claims 1-5, has been maintained.
4. Applicants’ arguments, see Remarks, filed 02/04/2026, with respect to the 35 U.S.C. 112(b) rejection of claims 1-5 (i.e., percent water recited in step a), have been fully considered and are persuasive. The 35 U.S.C. 112(b) rejection of claims 1-5, has been withdrawn.
5. Applicants’ arguments, see Remarks, filed 02/04/2026, with respect to the 35 U.S.C. 112(b) rejection of claims 1-5 (i.e., concentration range recited in step c), have been fully considered and are persuasive. The 35 U.S.C. 112(b) rejection of claims 1-5, has been withdrawn.
6. Applicants’ arguments, see Remarks, filed 02/04/2026, with respect to the 35 U.S.C. 103 rejection of claims 1-5, have been considered but are not persuasive. The 35 U.S.C. 103 rejection of claims 1-5 has been maintained.
7. Applicants’ arguments, see Remarks, filed 02/04/2026, with respect to the nonstatutory double patenting, have been considered and are persuasive. The nonstatutory double patenting rejections have been withdrawn.
New Objections
Claim Objections
1. Claim 1 is objected to because of the following informalities: grammar and punctuation.
Step a in claim 1 recites: “Preparing the KHP solution by preparing and putting 70kg of feathers whose content is 46% water in a sealed container;” Adding a comma (,) after “feathers” and “water” would help the reader understand that 46% water pertains to the feathers and not the container.
Similarly, step c in claim 1 recites: “[…] 4,000 Daltons, and the concentration is in the range of 2.0 x105 ~ 4.5 x105 ppm;”. The claim would read better if the last sentence fragment is amended to include the words “wherein” and “KHP solution” as follows: “[…] 4,000 Daltons, and wherein the concentration of the KHP solution is in the range of 2.0 x105 ~ 4.5 x105 ppm;” Appropriate correction is required.
Maintained/Modified Rejections in light of Amendment
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.
2. 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 is drawn to a method of using a keratin hydrolysis peptide(KHP) solution on coffee plants for the enhancement of the fruiting weight and yield, comprising steps a-d. However steps a-c recite the process by which the KHP is made. As such, claim 1 is ambiguous because steps a-c are not directed to a method of using KHP but rather to a method of producing/making a KHP solution. As such, the preamble of the claim creates confusion because in order to apply/use the solution on a coffee plant (i.e., step e), the solution must first be made as recited in steps a-c. Therefore, the body of claim 1 is directed to a method of making a KHP solution, while the preamble of the claim is directed to a method of using a KHP solution.
In other words, the claim limitations recited in instant steps a-c are drawn to a method of making a KHP under specific conditions, and step c. directed to using the KHP solution under specific conditions. However, it is not clear whether the instantly claimed invention is directed to one or to two single and specific methods (i.e., a method of making by performing a-c; or a method of using by performing step d), because the body of the claim recites steps a-c which are not related to a method of using a KHP. The only step in the claimed method that coincides with a method of using a KHP solution on coffee plants for the enhancement of the fruiting weight and yield is step d. applying the solution to the leaf surface of the coffee plant. Thus, the claim directs an ordinary skilled artisan looking to use KHP solution on coffee plants for the enhancement of the fruiting weight and yield to first prepare/make a KHP (i.e., follow steps a-c) prior to using it (i.e., applying the solution on the leaf surface of the coffee plant). Additionally, it has not been clearly stablished whether step d. necessarily includes the solution prepared in steps a-c. In order to overcome the rejection, the preamble (i.e., method of using a KHP) of the claim and the steps required to perform the method should be coincide. If the method of making KHP and the method of using a KHP are as equally important, the preamble should encompass details pertaining to making a KHP. This rejection can be overcome by amending the claim to recite “A method of making and using a keratin hydrolysis peptide [….] comprising the steps of: […]; and d. applying the solution prepared in steps a-c to the leaf surface of coffee plants.”
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.
103 - KSR Examples of 'Rationales' Supporting a Conclusion of Obviousness
(Consistent with the "Functional Approach" of Graham)
Further regarding 35 USC 103(a) rejections, the Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007) (KSR) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.
Also, a reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976).
3. Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over WO2023/001946A1 International Publication Date: January 26th 2023 (herein after “Juarez”), in view of US 8,617,282 B2 Date of Patent: December 31st 2013 (herein after “Szoeke”), Chen et al. Bioresource Technology, Volume 99, Issue 9, June 2008, Pages 3337-3341 (here in after “Chen”) and Yin et al. Biomacromolecules, 2007, 8, pp. 800-806 (herein after “Yin”).
Regarding claim 1, Juarez teaches a process for converting keratin into a liquid mixture comprising peptides and/or amino acids (see Abstract); thereby constituting a keratin hydrolysis peptide (KHP) solution, as recited in instant claim 1. Juarez’s invention is suitable to be used in several technical fields such as, e.g., agriculture, for example as a bio-stimulant (see pg. 1, lines 4-5). Juarez teaches that the liquid mixture may be used to improve and/or stimulate one or more of germination, rooting, growth, flowering, curdling and maturation of plants and fruits (see pg. 11, lines 6-10). Furthermore, Juarez teaches that advantageously, the liquid mixture including peptides and/or amino acids obtained through the process of the invention, can be applied in its different variants to any type of plant, at any stage of plant development, on any soil and form of cultivation, and is also potentially usable in organic farming (see pg. 3, lines 10-14). Thereby constituting a method of using a KHP solution on coffee plants for the enhancement of fruiting weight and yield, as recited in instant claim 1.
With respect to step a., Juarez teaches Example 1 where 10000 g of keratin deriving from milled pig hair was processed (see pg. 12, lines 2-4). The keratin with a humidity between 40-60% was introduced into a solid state bioreactor (see pg. 12, line 11). Thereby constituting 46% water, i.e., % water content in the feathers/humidity, as interpreted by the Examiner in the 112b rejection to claim 1 above, and also constituting a sealed container. However, Juarez does not teach or suggest 70 kg of feathers, as recited in instant step a.
Szoeke teaches a method of preparing a fertilizer by processing feathers (see Abstract). Szoeke describes a production method with a high amount of organic substances with a stimulative and alternative melioration effect, with use of an additive containing keratin and swine dung (see column 2, lines 3-6). The production process itself is a separation of liquid swine dung with help of a phase separation into two parts—a solid part and a liquid part (see column 2, lines 6-7). The solid part of dung is mixed with substances including keratin, hair, or horns (see column 2, lines 7-8). The basic material, originating from Szoeke’s process, contains 5-50% of keratin substance (see column 2, lines 9-11). Szoeke teaches the production process as follows: substances containing keratin (i.e., feathers) are intermixed with hydrate of lime, and during a permanent mixing in an autoclave, the feathers undergo a process of a heat treatment under concomitant pressure change (see column 2, second paragraph). Szoeke adds that feathers pressed out of water, a step standardly done in poultry processing plant, with a humidity in a range from 25% to 29% (see column 3, lines 59-61). Therefore, out of 300 kg of moist feathers delivered from a poultry processing plant it is possible to obtain about 107 kg of dry feathers (300:2.8 ~107), meaning that in 300 kg of moist feathers there is about 193 liters of water (see column 3, lines 61-65). Szoeke also teaches that water, up to an amount of 1000 liters, is added into a container with a mixture under preparation that is a basis of a fertilizer (see column 5, lines 3-5); and that 1000 liters of keratin fertilizer with an additive of humic acids in a colloid form thus may contain 107 kg of feathers (see column 5, lines 12-13).
Pursuant to MPEP 2144.05 (I), a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metal Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held a proper rejection of a claim directed toward an alloy of having "0.8% nickel, 0.3% molybdenum, 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.) Therefore, the claimed 70kg of feathers would have been suggested to one skilled in the art.
From the teachings of the references, the Examiner recognizes that it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the process for converting keratin into a liquid mixture comprising peptides and/or amino acids as taught by Juarez, with the teachings of Szoeke in order to arrive at the claimed method of using a KHP solution, comprising instant step a.
One of ordinary skill in the art at before the effective filing date of the claimed invention would have been motivated to do so because a method of preparing a fertilizer by processing feathers under permanent mixing conditions, heat treatment and concomitant pressure change was known to contain 5-50% of keratin substance. One of ordinary skill in the art before the effective filing date of the claimed invention would have had a reasonable expectation of success given that Juarez’s process for converting keratin into a liquid mixture comprising peptides and/or amino acids is suitable to be used in the agricultural field as a bio-stimulant; given that the liquid mixture improves and/or stimulates germination, rooting, growth, flowering, curdling and maturation of plants and fruits and can be applied to any type of plant and at any stage of plant development. Also, one of ordinary skill in the art would have had a reasonable expectation of success given that Szoeke’s method of preparing a fertilizer by processing feathers yields 1000 liters of keratin fertilizer that may contain 107 kg of processed feathers. Therefore, modifying Juarez’s process for converting keratin into a liquid mixture comprising peptides and/or amino acids by increasing the amount of feathers to be processed to 107 kg as taught by Szoeke would support the claimed method of using a KHP solution, comprising step a; by constituting some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention, pursuant to KSR.
With respect to step b., Juarez’s method includes a steam explosion step, where the decomposed partially soluble keratin is treated in a continuous process, where the mixture reached a pressure of 2 bar and at a temperature of 120°C, and is kept at this pressure and temperature for 20 minutes (see pg. 12, lines 28-31). Juarez’s steam explosion treatment leads to a solubilization of the proteins, and modification of keratin protein structure (see pg. 13, lines 3-4). The solubilization of the protein material is evident, and this process leads to a mixture containing products that are more-bioavailable with respect to keratin (see pg. 13, lines 5-6). Juarez adds that steam explosion is a process in which biomass is treated with hot steam at a temperature from 110 °C to 160°C, under pressure from 1 to 5 bar, that results in a rupture of the keratin fibrous structure (see pg. 6, lines 24-27). However, Juarez does not expressly teach or suggest hydrolyzing the mixture in the container with a temperature and pressure setting of 180°C and 13 kg/cm2 for a duration of 40 minutes as recited in instant step b.
Chen teaches hydrolysis of biomass waste (such as feathers) to produce amino acids in sub-critical water (i.e., high-temperature and high-pressure water) with reaction temperatures from 180 to 320°C (see pg. 3337, Abstract). Chen’s results show that the controlling of reaction atmosphere, pressure, temperature and time of hydrolysis is very important to obtain high yield of amino acid (see pg. 3337, Abstract). Chen also reports amino acid yield in dependency on reaction temperature and time; in particular that the effect of reaction temperature and time was investigated for reaction time ranging from 1–50 min at a temperature range from 180 to 320°C (see pg. 3338, right column, second to last paragraph). Chen adds that at first the yield of amino acids increases with extension of reaction time, then decreases with continued extension of reaction time when time is extended to a certain value and suggests operation of the system at short reaction time and mild temperature condition (see pg. 3339, left column, paragraph 1). Moreover, the amino acid yield in dependency on reaction pressure was also investigated at a range of 3-30MPa, and it was determined that the reaction pressure can be adjusted by the relationship between reaction pressure and V/V0, where V is the volume of feed injected into vessel and V0 is the volume of vessel (see pg. 3339, left column, last paragraph).
It would have been obvious to one of ordinary skill in the art to optimize the hydrolyzation parameters (i.e., temperature, pressure and duration) as recited in instant step b. because as taught by Chen, controlling of reaction atmosphere, pressure, temperature and time is very important to obtain high yield of amino acids during the hydrolysis of biomass waste such as feathers. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ. Therefore, it would have been customary for an artisan of ordinary skill to determine the optimal temperature, pressure and time needed to achieve the desired KHP solution. Thus, an ordinary skilled artisan would have been motivated to modify the temperature, pressure and time taught by Juarez to solubilize the proteins, and modify the keratin protein structure thereby resulting in a liquid mixture comprising peptides and/or amino acids. An ordinary skilled artisan would have been able to utilize the teachings of Chen to obtain various hydrolysis parameters with a reasonable expectation of success. Thus, absent some demonstration of unexpected results from the claimed parameters (i.e., 180°, 13kg/cm2, and a duration of 40 minutes), the optimization of the hydrolysis step as recited in instant step b would have been obvious before the effective filing date of Applicant's invention.
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so because it was well-known that hydrolysis of biomass waste, such as feathers in high-temperature and high-pressure water (i.e., sub-critical water) breaks down keratin and produces amino acids. One of ordinary skill in the art before the effective filing date of the claimed invention would have had a reasonable expectation of success given that hydrolysis parameters such as temperature, pressure and time/duration of the reaction were known to influence the yield of the target products (i.e., amino acids) as taught by Chen. Also, one of ordinary skill in the art would have had a reasonable expectation of success given that Juarez’s method includes a steam explosion step, which leads to solubilization of the proteins and modification of the keratin protein structure. Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because the combined teachings of the prior art are fairly suggestive of the claimed invention, by constituting some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention, pursuant to KSR.
With respect to step c. Juarez teaches that the liquid fraction of the keratin hydrolysate comprises peptides having a molecular weight comprised between 150 Da and 10.000 Da and/or free amino acids (see pg. 3, lines 29-31). MPEP 2144.05(I) states that "[i]n the case where the claimed ranges "overlap or lie inside ranges discloses by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Therefore, the claimed molecular mass range would have been obvious to one of ordinary skill in the art since the prior art range (i.e., 150 Da and 10.000 Da) lies within the claimed range (i.e., 500 and 4000 Da). However, Juarez does not expressly teach or suggest using a mass spectrometer to confirm the combination of peptides in the solution, as recited in instant step c.
Yin explores the hydrolysis of keratin in water under specific pressure-temperature conditions where the hydrolysis through scission of the protein chain yields oligopeptides (see pg. 800, abstract). Yin shows Fig. 1, depicting MALDI-ToF analysis of the solutions which indicates the presence of peptide sequences (see pg. 803, left column, bottom paragraph). Thereby constituting using a mass spectrometer to confirm the combination of peptides in the solution as recited in step c. Assuming an average of molecular weight of 100 for each amino acid, the obtained peptides are between a sequence of 10 to 18 amino acids in length, suggesting that on hydrolysis a considerable proportion of the amino acid sequence is conserved (see pg. 803, left column, bottom paragraph). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Juarez by incorporating MALDI-ToF analysis of Yin, in order to arrive at the instantly claimed method, comprising step c. One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so because it was well known that MALDI-ToF analysis is a technique used to indicate the presence of peptide sequences. One of ordinary skill in the art would have had a reasonable expectation of success given that Yin explored the hydrolysis of keratin in water under specific pressure-temperature conditions. Thereby modifying the method of Juarez with the teachings of Yin would support the claimed method of using a KHP solution, wherein a mass spectrometer is used to confirm the combination of peptides in the solution by constituting some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention, pursuant to KSR.
With respect to step d. Juarez teaches that the liquid mixture including peptides and/or amino acids obtained, can be applied through different methods such as: foliar application (see pg. 3, lines 10-12 and 15); thereby constituting the claim limitations recited in instant step d. applying the solution to the leaf surface of the coffee plant.
Regarding claims 2-3, Juarez teaches the liquid mixture including peptides and/or amino acids obtained through the process that can be applied in its different variants to any type of plant, at any stage of plant development (see pg. 3, lines 10-13). Thereby constituting where the solution is applied to the leaf surface of the coffee plant at the growth stage of early budding, as recited in instant claim 2. Additionally, the liquid mixture is advantageously effective in promoting germination, rooting, growth, flowering, fruit setting and maturation of plants and their fruits (see pg. 3, lines 8-10); thereby constituting where the solution is applied to the leaf surface of the coffee plant at the growth stage of fruiting, as recited in instant claim 3.
Regarding claims 4-5, Juarez does not expressly teach or suggest where the solution is diluted with water by volume to the ratio of 1:250-1000.
As previously mentioned, Szoeke teaches adding water, up to an amount of 1000 liters, into a container with a mixture under preparation that is a basis of a fertilizer (see column 5, lines 3-5); and that 1000 liters of keratin fertilizer with an additive of humic acids in a colloid form thus may contain 107 kg of feathers (see column 5, lines 12-13). As such, the combined teachings of Juarez and Szoeke suggest the claim limitations as recited in instant claims 4-5, where the solution is diluted with water by volume at the ratio of 1:250-1000.
In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 USC 103. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references discussed above.
Response to Arguments
Applicant's arguments filed 02/04/2026 have been fully considered but they are not persuasive for the following reasons:
Regarding Applicants’ arguments with respect to the 35 U.S.C. 112(b) rejection of claims 1-5 (i.e., preamble recites method of using, however, body of claim recites method of making), have been fully considered but are not persuasive.
Applicants attest that the method claimed in instant claim 1, is not ambiguous because the claim and the specification are narrowly directed to a specific method of application (i.e., leaf spraying) and based only on a particularized type of KHP solution (see Remarks, filed 02/04/2026, pg. 3). Applicants also argue that the instant claim do NOT encompass any KHP solutions which can be made from many different keratin-based materials, via different process with addition of different chemicals (see Remarks, filed 02/04/2026, pg. 3, second paragraph).
However, the scope of the claimed method remains ambiguous regardless if it includes details pertaining to a method of making a KHP solution (i.e., manner, timing and concentration of the solution usage as disclosed in the claim). Moreover, pursuant to MPEP 2111.03 (I), the transitional phrase “comprising” which is synonymous with “including,” containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004). As such, Applicants have fail to particularly point out and distinctly claim the subject matter which the inventors regards as the invention because, the preamble and the body of the claim are drawn to two distinct inventions, a method of use comprising step d; and a method of making comprising steps a-c. Thus the claim as it is drawn can be interpreted more broadly than justified because the claim is drawn to two different and specific methods. As such, an ordinary skilled artisan would not be able to ascertain the metes and bounds of the claimed invention, because it has not been clearly established whether the claim is drawn to a method of using a KHP comprising applying the solution to the leaf surface of the coffee plant (i.e., step d) or to a method of making a KHP solution comprising steps a-c.
Accordingly, claims 1-5 are rejected under 35 U.S.C. 112(b).
Regarding Applicants’ arguments, with respect to the 35 U.S.C 103 rejection, have been fully considered and are not persuasive for the following reasons:
Applicants argue that there is no factual basis to show any teaching, suggesting or motivation that the cited prior art can be combined or viewed together in the same context as the inventive substance introduced in the present application (see Remarks, pg. 6, second to last paragraph). Applicants’ argument is found unpersuasive.
It is acknowledged that there is not a single reference that teaches and/or suggests every claim limitation recited in instant claims 1 and the dependent claims 2-5. However, Applicants are respectfully reminded that the rejections supra are based on obviousness. Pursuant to MPEP 2142, 35 USC 103 authorizes a rejection where, to meet the claim, it is necessary to modify a single reference or to combine it with one or more other references (emphasis added). Since the rejection is based on obviousness, it is unnecessary for every claim limitation to be taught and/or suggested by a single reference. Additionally, the Examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In the instant case, as discussed above in the 35 U.S.C 103 rejection, the combined teachings of Juarez, Szoeke, Chen and Yin are suggestive of the claim limitations as recited in instant claims 1-5. Juarez expressly teaches a process for converting keratin into a liquid mixture comprising peptides and/or amino acids. Wherein the liquid mixture including peptides and/or amino acids obtained through the process of Juarez’s the invention, can be applied in its different variants to any type of plant, at any stage of plant development, on any soil and form of cultivation, and is also potentially usable in organic farming. Juarez’s process also teaches that the keratin sample comprises 40-60% humidity (i.e., water content).
Szoeke teaches a method of preparing a fertilizer by processing feathers, wherein the amount of feathers processed may be 107 kg of feathers.
Chen teaches hydrolyzing parameters such as temperature, time and pressure which can be optimized in order to arrive at the claimed step b.
Yin teaches the hydrolysis of keratin in water under specific pressure-temperature conditions where the hydrolysis through scission of the protein chain yields oligopeptides, thus confirming the presence of the peptides via MALDI-ToF analysis.
As such, the question is (1) whether a person of ordinary skill in the art would be motivated and/or expected that the liquid mixture including peptides and/or amino acids obtained through the process of Juarez’s invention would enhance the fruiting weight and yield of coffee plants; and (2) whether a person of ordinary skill in the art would be motivated and/or expected to apply the liquid mixture including peptides and/or amino acids obtained through the process of Juarez’s invention to the leaf surface of the coffee plant.
The Examiner maintains that the answers to these questions are yes in light of the teachings of Juarez, Szoeke, Chen and Yin for questions one and two.
Additionally, pursuant to MPEP 2143.02(II), obviousness does not require absolute predictability, however, at least some degree of predictability is required. Evidence showing there was no reasonable expectation of success may support a conclusion of nonobviousness. In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976). As discussed in the rejection above, Juarez expressly teaches that the liquid mixture can be applied in its different variants to any type of plant, at any stage of plant development, on any soil and form of cultivation, and is also potentially usable in organic farming. Thus, a person of ordinary skill in the art would recognize that Juarez’s invention would enhance the plant’s development, including fruiting weight and yield. Therefore, contrary to Applicants’ argument, the Examiner maintains that a person of ordinary skill in the art would be motivated with reasonable expectation of success to combine the prior art teachings in order to arrive at the claimed invention.
In response to Applicants’ argument that the Examiner failed to consider each of the prior arts as a whole and that the selection of the prior art is exactly what is not allowed” to “pick and choose from a reference only so much of it as it will support a conclusion of obviousness to the exclusion of other parts necessary to a full appreciation of what the reference fairly suggest (see Remarks, filed 02/04/2026, pg. 6, last paragraph). Applicants’ argument is found unpersuasive.
It is the Examiner’s understanding that Applicant is suggesting that the Examiner’s position fails to establish a prima facie case of obviousness because the prior art does not lead an artisan to the instant invention. If Applicant means to suggest that the Examiner arrived at the instantly claimed invention via the use of improper hindsight, this is not persuasive because any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Here, Applicant fails to identify a single aspect of the claimed invention that was not taught, disclosed, or suggested by the prior art relied upon by the Examiner.
With respect to Applicants’ argument that the cited prior art is non-analogous and counter-teaching (see Remarks, filed 02/04/2026, pg. 7, last paragraph), has been considered but it is not persuasive.
Pursuant to MPEP 2141.01 (a)(I), [i]n order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103 , the reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Note that "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art. See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212. In the instant case, the cited prior art (i.e., Juarez, Szoeke, Chen and Yin) are from the same field of endeavor as the claimed invention (i.e., keratin hydrolysis) and are reasonably pertinent to the problem faced by the inventor (i.e., method of using and/or method of making a keratin hydrolysis peptide solution). Therefore, even if the cited prior art teaches different hydrolysis methods that include unrecited elements and/or details not recited in the instant claims (i.e., use of an enzyme, use of various chemical compounds, different processing parameters, or different peptide characteristics/conditions); the cited prior art is analogous and thus appropriate for establishing an obviousness rejection.
In response to Applicant’s argument, i.e., the 35 U.S.C 103 rejection failed both the Graham v. Deere (MPEP 2141) and the KSR test because of the counter-teaching prior arts selected (see Remarks, filed 02/04/2026, pg. 7, last paragraph), it is found unpersuasive.
Pursuant to MPEP 2123 (II), “[d]isclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Furthermore, "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
In the instant case, the instantly claimed method comprises steps a-d which do not exclude any additional unrecited elements or methods steps as those taught by Juarez (i.e., an enzyme); Szoeke (i.e., chemical compounds such as KOH, H3PO4, MgSO4, FeSO4, etc.); Chen (i.e., biomass waste and temperature ranges); and Yin (i.e., self-assembled oligopeptides). The cited prior art does teach different examples/embodiments but that is not a teaching away. Teaching away would require a reference to require a structural limitation that either (1) is not encompassed by the instant composition (not the case here since the scope of claims 1 is comprising), or (2) is required and reference expressly teaches the claimed function/use would not result. Thus, contrary to Applicants’ arguments, the combined cited references do not teach away from the instant invention given that the combined cited references suggest the claimed solution’s structural limitations.
Accordingly, claims 1-5 stain rejected under 35 U.S.C. 103.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL.
Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLAUDIA E ESPINOSA whose telephone number is (703)756-4550. The examiner can normally be reached Monday-Friday 9:30-5:30 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, LIANKO GARYU can be reached at (571) 270-7367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CLAUDIA ESPINOSA/Patent Examiner, Art Unit 1654
/LIANKO G GARYU/Supervisory Patent Examiner, Art Unit 1654