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 .
According to paper filed on May 26, 2026, the applicants have elected group VII for further prosecution. The applicants have also canceled claims 1-10 and furthermore, have added new claims 11-20.
Claims 11-20 are pending in the application. Claims 11-15 are withdrawn from further consideration as being directed to non-elected subject matter.
Response to Arguments
Applicant's arguments filed May 26, 2026 have been fully considered but they are not persuasive regarding restriction requirement. The examiner does not agree with applicant’s arguments that there is unity between all claims. The instant claims 11-15 are directed to a new bacterial strain and its isolation while claims 16-20 are directed to crystalline form of Scytonemin, methods of using it and preparing it. Therefore, there is nothing common between instant claims 11-15 and claims 16-20. Thus, restriction requirement as indicated is proper and thereby made final.
Claim Rejections - 35 USC § 112
5. 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 16-20 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. There is no written description for preparing any derivative of crystalline Scytonemin and methods of using them in the specification. The only written description is for preparing crystalline Scytonemin.
8. 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 16-20 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 independent claim 16, the term - - derivatives thereof - - is vague and indefinite since its actual intent is not clear. Also, the term - - - characterized in - - is vague and indefinite since its actual intent is not clear.
In independent claim 16, tables 4 to 7 are mentioned. However, these tables are not present in the claim.
In independent claim 16, figures 8a-8d are mentioned to represent structural model based on XRD analysis. However, according to description of these figures, these figures represent graphic models of Scytonemin structure obtained by mercury software (see page 7, lines 32-33).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: Claims 16-20 are allowable over the prior art since the instant crystalline Scytonemin, its preparation and its use is neither disclosed not obvious over the prior art. In the prior art, Gao (Marine Drugs, cited on applicant’s form 1449) discloses production of the sunscreen pigment Scytonemin in cyanobacteria which is related to instant claims. However, there is no teaching, suggestion or motivation in this reference for preparing instant crystalline Scytonemin.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARANJIT AULAKH whose telephone number is (571)272-0678. The examiner can normally be reached Monday-Friday 7:00-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton A Brooks can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARANJIT AULAKH/ Primary Examiner, Art Unit 1621
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