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 .
The examiner acknowledges receipt of preliminary amendment filed 07/17/2024 and IDS filed 12/20/2023.
Claims 1-2, 4, 12, 18-19, 21, 23-28, 30-31 and 24-25 and 34-35 are amended.
Claims 3, 5-12, 14-17. 20 and 22 are canceled.
Claims 1-2, 4, 13, 18-19, 21 and 23-35 are pending.
Priority
This application is a 371 of PCT/EP2022/066931 filed 06/21/2022 and which claims benefit of EP application 21180714.4 filed 06/21/2021.
Information Disclosure Statement
The IDS filed 12/20/2023 has been considered by the examiner.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Page 27, lines 4-5 disclose embedded hyperlink.
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.
Claims 4, 13, 21, 23, 25, 27, 30 and 32-35 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 27 depends on claim 26 which depends on claim 1. “Glutamate” in line 1 of claim 27 is the first occurrence in claim 27. Claims 26 and 1 do not teach glutamate.
Claim 27 recites the limitation "the glutamate" in line 1. Therefore, there is insufficient antecedent basis for this limitation in the claim.
Claims 23, 25, 30 and 34 are use claims. These claims are attempting to claim a process without setting forth specific steps of how the process is accomplished.
Claims 4, 13, 21, 27, 30, 32, 33 use the term “preferably” is several lines of these claims in an attempt to narrow broader limitation within the same claim. Thus these claims use narrower numerical ranges that fall within broader ranges in the same claim rendering these claims indefinite leading to confusion over the intended scope of the claims. The narrower ranges may be set forth in another dependent or independent claim to overcome the rejections.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with language of “preferably” to define narrower ranges.
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 23, 25, 30 and 34 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because claims 23. 25, 30 and 34 fail to comply with 35 USC 101 because these claims do not purport to claim a process, machine, manufacture or composition of matter.
Other Matters:
Claim 21 has used the terms, “IMP/GMP” without an initial statement of what these abbreviations stand for.
It is suggested that inosine monophosphate be clearly designated with “IMP” enclosed within parenthesis and guanine monophosphate be clearly designated with “GMP” enclosed in parenthesis.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 26, 28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matassa et al. “Microbial protein: future sustainable food supply route with low environmental footprint” in Microbial Biotechnology (2016) 9(5), 568-575.
Claim 26 is a product by process claim. The product is a biomass.
While product-by-process claims are limited by and defined by the process, “determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Furthermore, “[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes.” Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1370 n. 14, 92 USPQ2d 1289, 1312, n. 14 (Fed. Cir. 2009). See also Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334, 2020 USPQ2d 11129 (Fed. Cir. 2020).
Matassa discloses biomass that is rich is protein and has utility as a feed or food additives and single cell protein (SCP)-microbial protein (MP) (SCP-MP) (see the whole document with emphasis on the summary, left column of page 569, lines 4-13; page 570, left and right columns). The biomass meets claim 26 and the single cell protein meets claim 28.
Matassa teaches the product of claims 26 and 28.
Claim(s) 31-33 and 35 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Des Soye et al. “Establishing a High-Yielding Cell-Free Protein Synthesis Platform Derived from Vibrio natriegens” in Synthetic Biology, 2018, 7:2245-2255, submitted by applicant in 1449.
Claims 31-33 and 35 are product-by-process claim. The product is a lysate amino acids and peptides and nucleotides.
While product-by-process claims are limited by and defined by the process, “determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Furthermore, “[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes.” Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1370 n. 14, 92 USPQ2d 1289, 1312, n. 14 (Fed. Cir. 2009). See also Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334, 2020 USPQ2d 11129 (Fed. Cir. 2020).
Soye discloses lysates (see the whole document with emphasis on the abstract) meeting claim 31. The lysate contains mRNA which are nucleotides (left column of page 2252, lines 18 and 19 from the bottom) meeting claim 32 and obtained by separation is a process of separating the nucleotide. The lysate also contains amino acids and peptides (right column of page 2249, 2nd and 3rd full paragraphs, abstract, first full paragraph of page 2251). The presence of DNA (Figure 1) meets claim 35.
Soye teaches all the elements of claims 31-33 and 35.
Claim(s) 26, 28 and 29 is/are rejected under 35 U.S.C. 102(a)(1) and102(A)(2) as being anticipated by Sporleder et al. (US 20030044951 A1).
Claims 36, 28 and 29 are product-by-process claim. The product is biomass.
While product-by-process claims are limited by and defined by the process, “determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Furthermore, “[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes.” Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1370 n. 14, 92 USPQ2d 1289, 1312, n. 14 (Fed. Cir. 2009). See also Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334, 2020 USPQ2d 11129 (Fed. Cir. 2020).
Sporleder teaches single cell protein biomass (paragraph [0089]) meeting claims 26 and 28; and the single cell protein material undergoes heat treatment (paragraph [0090]) meeting claim 29.
Therefore Sporleder teaches all the elements of claims 26, 28 and 29.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over NOORDAM et al. (EP 1 587 947 B1, cited in 1449).
Claims 18 and 19 are product by process claims. The product is a composition comprising nucleotide and protein or amino acids and peptides.
While product-by-process claims are limited by and defined by the process, “determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Furthermore, “[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes.” Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1370 n. 14, 92 USPQ2d 1289, 1312, n. 14 (Fed. Cir. 2009). See also Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334, 2020 USPQ2d 11129 (Fed. Cir. 2020).
NOORDAM discloses composition comprising nucleotide, protein and amino acid and peptides (See paragraphs [0001]-[[0003], [0036] Table 1 and paragraph [0056]) for food or feed. In table 1, the nucleotide is present in amounts that vary depending on the fraction. Glutamic acid amount is also varying based on the fraction.
NOORDAM differs from claims 18 and 19 by not teaching the amounts of protein and nucleotide in the compositions in claims 18 and 19.
However, based on the teachings of NOORDAM, the artisan would be led to a composition comprising nucleotide and proteins in amounts that would be expected to provide desired nourishment in the food or feed.
NOORDAM renders claims 18 and 19 prima facie obvious.
Allowable Subject Matter
The closest prior art, NOORDAM does not teach claims 1 and 2.
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Conclusion
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/BLESSING M FUBARA/ Primary Examiner, Art Unit 1613