/M.G/Supervisory Patent Examiner, Art Unit 1651 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 .
Applicant’s response to restriction letter of 11/11/25 is acknowledged. Applicant elected Group I (claims 1, 4, 12-14, 30-31, 33-35, 40, 42-45, 50-52, 54, drawn to a saccharomyces yeast strains Y1912, 1913, 1914, 1919, 1923, 1927 and methods of making and using said products, without traverse.
Claims 2-3, 5-11, 15-17, 19-29, 32, 36-39, 41, 46-49 and 53 have been canceled.
Claims 1, 4, 12, 13-14 (due to applicant’s election), 18, 40, 42-45, have been withdrawn as drawn to non-elected subject matter.
DETAILED ACTION
Claims 1, 4, 12, 30-31, 33-35, 50-52, 54 are under examination on the merits. The elected invention will only be examined to the extent that reads on the elected invention.
Claim Objections
Claims 1, 4, 30, 50 are objected to because of the following informalities: said claims recite non-elected subject matter , namely “derivatives thereof”. Applicant is advised to delete subject matter from claims 1, 4, 30 and 50. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4, 12, 30-31, 33-35, 50-52, 54 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. It is noted that claim 1, 4, 30 and 50 applicants have recited deposited the organisms (or methods of use thereof) but there is not adequate indication in the specification as to the public availability. Since the deposit was made under the terms of the Budapest Treaty, then an affidavit or declaration by applicants, or a statement by an attorney of record over his or her signature and registration number, stating that the specific strains have been deposited under the Budapest Treaty and that the strain will be irrevocably and without restriction or condition released to the public upon the issuance of the patent, would satisfy the deposit requirement made herein.
Claims 12, 31, 33-35 (depending on claim 1) , 51-52 and 54 (depending on claim 50) are merely rejected for depending from rejected base claims.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 31 and 51 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. In claims 31 and 51, it is unknown what the difference between “sorghum” and “sweet sorghum” is. Applicant is also reminded that in case the former term is a genus and the latter phrase is a species, to avoid referring to genus and species in alternative, in the same claim.
Claims 34 is 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. In dependent claim 34, it is unknown what is the relationship between “substrate” recited in base claim 30 and “a sugar” or “a starch” recited in claim 34. In other words, it is unclear if “a sugar” or “a starch” were added to the “substrate” or whether the substrate in claim 30 is “a sugar” or “a starch” .
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARYAM MONSHIPOURI whose telephone number is (571)272-0932. The examiner can normally be reached full-flex.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melenie L Gordon can be reached at 571-272-8037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARYAM MONSHIPOURI/Primary Examiner, Art Unit 1651