DETAILED ACTION
Status of the Application
Claims 1-6 are pending.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
A preliminary amendment filed on 01/07/2026 amending claim 4 is acknowledged.
A preliminary amendment filed on 01/07/2026 amending paragraph [0021] of the specification is acknowledged.
Applicant’s election with traverse of Group I, claims 1-3, drawn to a method of using keratin hydrolysis peptide solution for the enhancement of the tea leaves’ flavor, as submitted in a communication filed on 01/07/2026 is acknowledged.
Applicant's traverse is on the grounds that there was an error in claim 4 and that claim 4 as amended refers to a method of using a keratin hydrolysis peptide solution for enhancement of tea leaves' flavors. Upon further consideration, the restriction requirement mailed on 12/11/2025 is hereby withdrawn in view of the fact that the subject matter of amended claims 4-6 is that of the elected invention.
Priority
Acknowledgement is made of the applicant’s claim to foreign priority under U.S.C. 119 (a)-(d) to Application No. TW112136374, filed on 09/22/2023; which papers have been made of record in the file.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification
The specification is objected for not complying with sequence rules. While Table 1 displays sequences, neither the drawings nor the Brief Description of the Drawings indicate the corresponding sequence identifiers. Applicant is required to insert the corresponding sequence identifiers in the Brief Description of the Drawings or amend the drawings to include the sequence identifiers in front of each sequence. See particularly 37 CFR 1.821(d). Appropriate correction is required.
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. Examples of some unclear, inexact or verbose terms used in the specification are:
Paragraph [0013]
Objected to in the recitation of “prior researches”. Research is an uncountable noun. To improve clarity, the term should be amended to “prior research”. Appropriate correction is required.
Objected to for not following SI conventions. A space should be between numbers and the percentage symbol. A space is needed between “nitrogen,1.6”. To improve clarity, the terms should be amended to “91 % keratin”, “15 % organic nitrogen”, “2 % organic sulfur” and “nitrogen, 1.6”. Appropriate correction is required.
Paragraph [0017]
Objected to for not following SI conventions. A space should be between a number and percentage symbol. In the recitation of “50%”, the term should be amended to “50 %”. Appropriate correction is required.
Objected to in the recitation of “embodiment of present invention”. To improve clarity, the term should be amended to “embodiment of the present invention”. Appropriate correction is required.
Paragraph [0022]
Objected in the recitation of “uses mixes”. To improve clarity, the term should be amended to remove “uses” and read “A second embodiment mixes”. Appropriate correction is required.
Paragraph [0032]
Objected in the recitation of “where the weight ratio whereby the weight ratio”. To improve clarity, the term should be amended to “whereby the weight ratio”. Appropriate correction is required.
Paragraph [0033]
Objected to for not following SI conventions. A space should be between a number and percentage symbol. In the recitation of “50%”, the term should be amended to “50 %”. Appropriate correction is required.
Objected to for not following SI conventions. A space should be between a number and degrees symbol. In the recitation of “185°C”, the term should be amended to “185 °C”. Appropriate corrections are required.
Paragraph [0036]
Objected to in the recitation of “sprayed to the tea leaves’ surface”. To improve clarity, the term should be amended to “sprayed on the tea leaves’ surface”. Appropriate corrections are required.
Paragraph [0038]
Objected to in the recitation of “solution of present invention”. To improve clarity, the term should be amended to “solution of the present invention”. Appropriate corrections are required.
Objected to for not following SI conventions. A space should be between a number and units. In the recitation of “66kg”, the term should be amended to “66 kg”. Appropriate corrections are required.
Paragraph [0039]
Objected to for not following SI conventions. A space should be between a number and percentage symbol. In the recitation of “50%”, the term should be amended to “50 %”. Appropriate correction is required.
Objected to for not following SI conventions. A space should be between a number and degrees symbol. In the recitation of “195°C”, the term should be amended to “195 °C”. Appropriate corrections are required.
Paragraph [0043]
Objected to in the recitation of “inventors of present”. To improve clarity, the term should be amended to “inventors of the present”. Appropriate corrections are required.
Paragraph [0044]
Objected to in the recitation of “CK” and “(CHK)”. To improve clarity the terms should be amended to match. Appropriate corrections are required.
Paragraph [0047]
Objected to for not following SI conventions. A space should be between a number and degrees symbol. In the recitation of “70°C”, the term should be amended to “70 °C”. Appropriate corrections are required.
Objected to for not following SI conventions. A space should be between a number and percentage symbol. In the recitation of “3%”, the term should be amended to “3 %”. Appropriate correction is required.
Paragraph [0048]
Objected in the recitation of “Fig.1B respectively”. To improve clarity, the term should be amended to “Fig.1B, respectively”. Appropriate correction is required.
Paragraph [0049]
Objected to for not following SI conventions. A space should be between a number and percentage symbol. In the recitation of “70%”, “10%” and “7.5%, the terms should be amended to “70 %”, “10 %” and “7.5 %”. Appropriate correction is required.
Objected to for not following SI conventions. A space should be between a number and degrees symbol. In the recitation of “70°C”, the term should be amended to “70 °C”. Appropriate corrections are required.
Claim Objections
Claims 1-6 are objected to because of the following informalities:
Claim 1 is objected to in the recitation of “50%” and “185°C”. Following SI conventions, the terms should be amended to “50 %” and “185 °C. Appropriate corrections are required.
Claim 1 is objected in the recitation of “using a keratin hydrolysis peptide (KHP) solution to a tea plant”. To improve clarity, the term should be amended to using a keratin hydrolysis peptide (KHP) solution on a tea plant”. Appropriate corrections are required.
Claim 2 is objected to in the recitation of “claim1 where”. To improve clarity and be consistent with commonly used claim language, the term should be amended to “claim 1, wherein”. Appropriate corrections are required.
Claim 2 is objected to in the recitation of “sprayed to the tea”. To improve clarity, the term should be amended to “sprayed on the tea”. Appropriate corrections are required.
Claim 3 is objected to in the recitation of “claim1 where”. To improve clarity and be consistent with commonly used claim language, the term should be amended to “claim 1, wherein”. Appropriate corrections are required.
Claim 4 is objected in the recitation of “using a keratin hydrolysis peptide (KHP) solution to a tea plant”. To improve clarity, the term should be amended to “using a keratin hydrolysis peptide (KHP) solution on a tea plant”. Appropriate corrections are required.
Claim 4 is objected to in the recitation of “50%” and “195°C”. Following SI conventions, the terms should be amended to “50 %” and “195 °C. Appropriate corrections are required.
Claim 5 is objected to in the recitation of “claim 4 where”. To improve clarity and be consistent with commonly used claim language, the term should be amended to “claim 4, wherein”. Appropriate corrections are required.
Claim 5 is objected to in the recitation of “sprayed to the tea”. To improve clarity, the term should be amended to “sprayed on the tea”. Appropriate corrections are required.
Claim 6 is objected to in the recitation of “claim 4 where”. To improve clarity and be consistent with commonly used claim language, the term should be amended to “claim 4, wherein”. Appropriate corrections are required.
Claim Rejections - 35 USC § 112(b)
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.
Claim 1-6 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.
Claims 1 and 4 (claims 2-3, 5-6 dependent thereon) are rejected as being indefinite in the recitation of “contain at least 253 peptides… where their molecular masses are between 500 and 4,000 Daltons” for the following reason. It is unclear if the molecular mass is for each peptide or the total number of peptides present in the solution. Correction is required.
Claims 1 and 4 (claims 2-3, 5-6 dependent thereon) are rejected as being indefinite in the recitation of “at least 253 peptides as listed in the specification” for the following reasons. The term “as listed in the specification” can be interpreted as exemplary language (i.e., such as). Therefore, it is unclear if the 253 peptides are necessarily those in Table 1. In addition, as set forth in MPEP § 2173.05(s), where possible, claims are to be complete in themselves and incorporation by reference to a section of the specification such as a Figure or a Table is permitted only in exceptional circumstances where there is no practical way to define the invention. If the intended peptides have a sequence identifier provided in the sequence listing, it is suggested the claim be amended to refer to specific sequence identifiers associated with the desired peptides. For examination purposes, no patentable weight will be given to the term “using a mass spectrometer …molecular masses are between…Daltons…concentration range of 2.0 x 105 ~ 4.5 x 105 ppm”. Correction is required.
Claims 1 and 4 (claims 2-3, 5-6 dependent thereon) are indefinite in the recitation of “concentration is in the range of 2.0 x 105 ~ 4.5 x 105 ppm” for the following reasons. As written, it is unclear as to which is the compound that should have the recited concentration of “2.0 x 105 ~ 4.5 x 105 ppm” in the peptide solution. Moreover, in view of the fact that claims 1 and 4 refer to a combination of “at least 253 peptides”, even if one assumes that the “2.0 x 105 ~ 4.5 x 105 ppm” concentration recited refers to peptides, it is unclear if the “2.0 x 105 ~ 4.5 x 105 ppm” refers solely to the 253 peptides or any peptide in the solution. Correction is required.
Claims 1 and 4 (claims 2-3, 5-6 dependent thereon) are indefinite in the recitation of “Preparing the KHP solution by mixing 50 kg of feathers whose content is 50% water and 40 kg of water in a sealed container” for the following reasons. It is unclear whether the phrase “50% water” refers to the amount of water present in the sealed container in addition to the feathers or whether the phrase refers to the percentage of water present or retained by the feathers. The claims are silent with the respect to how the % is measured, e.g. by mass, by volume, etc. Correction is required.
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 1-6 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/758,140 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons.
Claims 1-3 of the instant application as interpreted are directed in part to a method of using a keratin hydrolysis peptide (KHP) solution on a tea plant for the enhancement of the tea leaves’ flavors comprising the steps of (a) preparing the KHP solution by mixing 50 kg of feathers whose content is 50 % water and 40 kg of water in a sealed container; (b) hydrolyzing the mixture in the container with a temperature and pressure setting of 185 °C and 12 kg/cm2 for a duration of 80 minutes; (c) using a mass spectrometer to confirm the combination of peptides in the solution to contain (d) and applying the KHP solution to tea plants at leaf sprouting stage, wherein the solution is diluted with water by volume at the ratio of 1: 200 – 1,000 and is sprayed on the tea leaves’ surface or wherein the solution is diluted with water by volume at the ratio of 1: 100 – 1,000 and is infused to the soil around the tea plant.
Claims 6-10 of copending Application No. 18/758,140 are directed in part to a method of using a keratin hydrolysis peptide (KHP) to enhance the yield and quality of tea leaves comprising the steps of (a) preparing the KHP solution by mixing 50 kg of feathers whose content is 50 % water and 40 kg of water in a sealed container; (b) hydrolyzing the mixture in the container with a temperature and pressure setting of 185 °C and 12 kg/cm2 for a duration of 80 minutes; (c) using a mass spectrometer to confirm the combination of peptides in the solution to contain (d) applying the KHP solution by either soil infusion or leaf spray, wherein the solution is diluted with water by volume at the ratio of 1: 50 – 500 and soil infusion application of the solution is done one week after initial harvesting or wherein the solution is diluted with water by volume at the ratio of 1: 50 – 500 and leaf spray application of the solution is done at the one-bud-with-one-leaf and one-bud-with-two leaf stages. One of skill in the art would understand that enhancing the yield and quality of tea leaves would enhance tea leaves’ flavor. Therefore, the method of claims 1-3 of the instant application is anticipated by the method of claims 6-10 of copending Application No. 18/758,140 as written/interpreted.
Claims 4-6 of the instant application as interpreted are directed in part to a method of using a keratin hydrolysis peptide (KHP) solution on a tea plant for the enhancement of the tea leaves’ flavors comprising the steps of (a) preparing the KHP solution by mixing 66 kg of feathers whose water 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 (d) and applying the KHP solution to tea plants at leaf sprouting stage, wherein the solution is diluted with water by volume at the ratio of 1: 200 – 1,000 and is sprayed on the tea leaves’ surface or wherein the solution is diluted with water by volume at the ratio of 1: 100 – 1,000 and is infused to the soil around the tea plant.
Claims 1-5 of copending Application No. 18/758,140 are directed in part to a method of using a keratin hydrolysis peptide (KHP) to enhance the yield and quality of tea leaves comprising the steps of (a) preparing the 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 (d) applying the KHP solution by either soil infusion or leaf spray, wherein the solution is diluted with water by volume at the ratio of 1: 50 – 500 and soil infusion application of the solution is done one week after initial harvesting or wherein the solution is diluted with water by volume at the ratio of 1: 50 – 500 and leaf spray application of the solution is done at the one-bud-with-one-leaf and one-bud-with-two leaf stages. One of skill in the art would understand that enhancing the yield and quality of tea leaves would enhance the tea leaves’ flavor. Therefore, the method of claims 4-6 of the instant application is anticipated by the method of claims 1-5 of copending Application No. 18/758,140 as written/interpreted.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed at this time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DALTON EDWARD KIEFER whose telephone number is (571)272-1235. The examiner can normally be reached M-F 7:30-5 EST.
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/DALTON EDWARD KIEFER/Examiner, Art Unit 1652
/DELIA M RAMIREZ/Primary Examiner, Art Unit 1652