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 .
Claim Status
Claims 1-5 are pending and under current examination.
Information Disclosure Statements
Information Disclosure Statement (IDS) filed on 02/08/2024, 01/29/2025 and 09/17/2025 have been considered by the Examiner. A signed copy of the IDS is included with the present Office Action.
All references have been considered except for those that were lined through because no English translation has been provided.
The information disclosure statement references that are lined out fail to comply with 37 CFR 1.98(a)(3)(i) because they do not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. They have been placed in the application file, but the information referred to therein has not been considered. (See MPEPP 609.04(a)).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon without significantly more.
In accordance with MPEP § 2106, claims found to recite statutory subject matter (Step 1: YES) are then analyzed to determine if the claims recite any concepts that equate to an abstract idea, law of nature, or natural phenomenon (Step 2A, Prong One). In the instant application, the claims recite the following limitations:
Claim 1 is to an antiviral composition, comprising: an inorganic compound having an antiviral property and a porous structure. Claim 2 recites that the inorganic compound is made from Shirasu. Claim 3 recites that at least one of a curing agent, a plasticizer, a pigment, a reinforcing agent, a lubricant, an antioxidant, an adhesion imparting agent, or a bonding agent is added to the inorganic compound. Claim 4 recites the particle size of the inorganic compound. Claim 5 recites an antiviral member having a base material and antiviral composition installed on the base material.
The claims are directed to a judicial exception such as a natural phenomenon (e.g., product of nature) as the only compositional requirement set forth in the instant claims is that the antiviral composition comprises a naturally occurring inorganic compound with a base material. Notably the base material is not defined and can thus constitute any naturally occurring material.
As evidenced by Takachiho Shirasu Corporation, Shirasu is a natural inorganic porous ceramic material that comes from volcanic ash. It has inherent deodorization and sterilization properties, see pages 1-3. As evidenced by Yoshida Shirasu, Shirasu sizes are 30-40 microns when mined and can be sorted to the desired size ranges, see page 4. As evidenced by NIH, Vitamin C is naturally present in some foods including citrus fruits, see introduction. Iwakawa Toru (JP2013155369) teaches a Shirasu soap product having a soap base material wherein the Shirasu is volcanic ash having a particulate size of 10 microns or less and is porous. The composition contains green tea which contains Vitamin C (antioxidant). The base material comprises coconut oil, volcanic ash, Shirasu and materials such as tocopherol and propolis. As evidenced by Nutrition source, coconut oil is natural and comes from coconut meat, see pages 4-5.
As evidenced by EWG, tocopherols are naturally occurring chemical compound related to vitamin E, see page 2. As evidenced by Martinotti et al. (Propolis: A Natural Substance with Multifaceted Properties and Activities), propolis is a natural resinous exudate manufactured by honey bees, see abstract. Thus, Iwakawa Toru teaches that the natural Shirasu is combinable with base materials that are naturally occurring materials.
Therefore, the claims encompass a composition made of naturally occurring compounds incorporated with natural base materials.
MPEP 2106.04(c) states that the markedly different characteristics analysis is part of Step 2A Prong One: “Where the claim is to a nature-based product produced by combining multiple components (e.g., a claim to "a probiotic composition comprising a mixture of Lactobacillus and milk"), the markedly different characteristics analysis should be applied to the resultant nature-based combination, rather than its component parts. For instance, for the probiotic composition example, the mixture of Lactobacillus and milk should be analyzed for markedly different characteristics, rather than the Lactobacillus separately and the milk separately. See subsection II, below, for further guidance on the markedly different characteristic analysis.”
Further, from MPEP 2106.04(c): “The markedly different characteristics analysis compares the nature-based product limitation to its naturally occurring counterpart in its natural state. Markedly different characteristics can be expressed as the product’s structure, function, and/or other properties, and are evaluated based on what is recited in the claim on a case-by-case basis. If the analysis indicates that a nature-based product limitation does not exhibit markedly different characteristics, then that limitation is a product of nature exception. If the analysis indicates that a nature-based product limitation does have markedly different characteristics, then that limitation is not a product of nature exception.”
The guidelines for performing the markedly different characteristics analysis, include (a) selecting the appropriate naturally occurring counterpart(s) to the nature-based product limitation, (b) identifying appropriate characteristics for analysis, and (c) evaluating characteristics to determine whether they are "markedly different".
Regarding (a), MPEP 2106.04(c) recites: “When the nature-based product is a combination produced from multiple components, the closest counterpart may be the individual nature-based components of the combination. For example, assume that applicant claims an inoculant comprising a mixture of bacteria from different species, e.g., some bacteria of species E and some bacteria of species F. Because there is no counterpart mixture in nature, the closest counterparts to the claimed mixture are the individual components of the mixture, i.e., each naturally occurring species by itself. See, e.g., Funk Bros., 333 U.S. at 130, 76 USPQ at 281 (comparing claimed mixture of bacterial species to each species as it occurs in nature); Ambry Genetics, 774 F.3d at 760, 113 USPQ2d at 1244 (although claimed as a pair, individual primer molecules were compared to corresponding segments of naturally occurring gene sequence); In re Bhagat, 726 Fed. Appx. 772, 778-79 (Fed. Cir. 2018) (non-precedential) (comparing claimed mixture of lipids with particular lipid profile to "naturally occurring lipid profiles of walnut oil and olive oil").”
In the instant case, the closest counterparts to the claimed mixture are the individual components of the mixture: of Shirasu and a base matrix which is inclusive of any natural product.
Regarding (b), MPEP 2106.04(c) recites: “Appropriate characteristics must be possessed by the claimed product, because it is the claim that must define the invention to be patented. Cf. Roslin, 750 F.3d at 1338, 110 USPQ2d at 1673 (unclaimed characteristics could not contribute to eligibility). Examiners can identify the characteristics possessed by the claimed product by looking at what is recited in the claim language and encompassed within the broadest reasonable interpretation of the nature-based product. In some claims, a characteristic may be explicitly recited.”
In the instant case, there are no characteristics in the instant claims that could contribute to eligibility. The fact that the composition can be antiviral does not impart characteristics that take the composition from its naturally occurring counterpart as a composition and its properties are inseparable. Per the teachings of Iwakawa Toru, Shirasu can be added to compositions that are antiviral in combination with aloe vera.
Claim 5 merely recites a base material without anything more. Base materials encompass naturally occurring products as shown by the JP2013155369 document( Iwakawa Toru).
Regarding (c), MPEP 2106.04(c)recites: “The final step in the markedly different characteristics analysis is to compare the characteristics of the claimed nature-based product to its naturally occurring counterpart in its natural state, in order to determine whether the characteristics of the claimed product are markedly different. The courts have emphasized that to show a marked difference, a characteristic must be changed as compared to nature, and cannot be an inherent or innate characteristic of the naturally occurring counterpart or an incidental change in a characteristic of the naturally occurring counterpart. Myriad, 569 U.S. at 580, 106 USPQ2d at 1974-75. Thus, in order to be markedly different, the inventor must have caused the claimed product to possess at least one characteristic that is different from that of the counterpart. If there is no change in any characteristic, the claimed product lacks markedly different characteristics, and is a product of nature exception. If there is a change in at least one characteristic as compared to the counterpart, and the change came about or was produced by the inventor’s efforts or influences, then the change will generally be considered a markedly different characteristic such that the claimed product is not a product of nature exception.” Here, the claims do not encompass any change in characteristic of the naturally occurring product. Consequently, the claimed composition lacks markedly different characteristics and is a product of nature exception (Step 2A, Prong 1: YES).
Claims found to recite a judicial exception under Step 2A, Prong 1 are then further analyzed to determine if the claims as a whole integrate the recited judicial exception into a practical application or not (Step 2A, Prong 2).
This judicial exception is not integrated into a practical application because there are no additional elements recited in the claims beyond the judicial exception. From MPEP 2106.04(d): “Because a judicial exception alone is not eligible subject matter, if there are no additional claim elements besides the judicial exception, or if the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application.” (Step 2A, Prong 2: NO).
Claims found to be directed to a judicial exception are then further evaluated to determine if the claims recite an inventive concept that provides significantly more than the judicial exception itself (Step 2B). As noted above, there are no additional elements recited in the claims beyond the judicial exception, and a judicial exception alone is not eligible subject matter (Step 2B: NO). The claims do not recite anything else, compositionally or structurally, which provides an inventive concept that departs from merely reciting a composition containing all naturally occurring components including Shirasu and vitamins.
Therefore, simply combining the two natural products claimed would not provide significantly more than the judicial exception.
Therefore, the claims are not patent eligible subject matter under 35 USC § 101.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Iwakawa Toru (JP2013155369) as evidenced by Takachino Shirasu Corporation (Shirasu walls a description).
Iwakawa Toru discloses a Shirasu soap product having a soap base material wherein the Shirasu is volcanic ash (inorganic material) having a particulate size of 10 microns or less and is porous, see abstract and page 5. The composition contains green tea which contains Vitamin C. The base material (i.e. soap base) contains the Shirasu and tocopherol which has antioxidant action, see abstract and page 2. Thus, the composition further contains antioxidant materials and a base material. The composition contains aloe vera which is a known to impart antiviral properties, thus the composition is capable of being antiviral, see abstract and pages 3 and 5. From MPEP 2111.02, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963). Here, the preamble does not structurally limit the claimed composition and as the composition of Iwakawa Toru is capable of being antiviral it meets the claim. As evidenced by Tackachio Shirasu Corporation, Shirasu inherently has a shape, see figure at page 3.
Accordingly, claims 1-5 are anticipated by the teachings of Iwakawa Toru.
Conclusion
Currently, no claims are allowed and all claims are rejected.
Correspondence
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/SARAH ALAWADI/Primary Examiner, Art Unit 1619