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 .
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 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 1-6 are drawn to a use of a separation process to obtain a product composition comprising at least one sophorolipid having certain properties, wherein the separation process comprises removing a protein component from a starting composition to obtain the product composition, wherein the starting composition achieves a positive result under the h-CLAT assay and the separation process does not comprise a step of washing with a hydrocarbon solvent. As such, the examiner is unsure of what is being claimed based on this “use of” language. The examiner is interpreting claims 1-6 as process claims.
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) 1-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR20210068195A (hereinafter ‘195) – Foreign Patent No. 7 from applicant’s IDS filed 12/21/23.
‘195 discloses methods of separating sophorolipids from a culture medium composition containing sugars, proteins, and impurities such as pigments as metabolites using ultrafiltration wherein ultrafiltration is taught to have a pore size of 10-100nm (equivalent to 0.01-0.1μm as set forth in the present claims) see [0013]-[0017]. [0012] states that the use of organic solvents such as hexane (a hydrocarbon solvent) the purity is low and the solvents are toxic to the human body which may have limitations in its use if residues remain. The process steps taught are the same as those required herein which comprise separating the proteins from the starting extract composition via ultrafiltration using membranes having the same pore size. The protein concentration was taught to be 20.5% before filtration and ultimately 0.1% after filtration (see [0069]). It is noted that the compositions produced could be used in the manner as claimed herein – as a personal care or home care formulation, and thus meet the limitations of the claims.
Regarding the limitations of the properties of the products produced such as the Gardner color of at most 5 and the h-CLAT assay showing a negative result – the examiner notes that the products of the art would be expected to have these same properties since they are produced in the same manner. Because the art did not measure these features as applicants did, does not mean they are not present therein. Moreover, since the Office does not have the facilities for preparing the claimed materials and comparing them with prior art inventions, the burden is on Applicant to show a novel or unobvious difference between the claimed product and the product of the prior art. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald et al., 619 F.2d 67, 205 USPQ 594 (CCPA 1980).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRAVISS C MCINTOSH III whose telephone number is (571)272-0657. The examiner can normally be reached Monday-Friday 9AM-5:30PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TRAVISS C MCINTOSH III/Primary Examiner, Art Unit 1693
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