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 Interpretation
In applicants claims 1-2, 4-5, 7-8, and 10-13, applicants provide for various limitations and then follow the limitation with a preferable range. Claim 1 for example states the DP of the oligomers being 30 or less, then state a preferable range such as “preferably 20 or less”. In all of these instances where applicants define a limitation, and then state a preferable further limitation, the preferable portion is not being considered as a limitation and is not necessary. The claims are examined in the broadest reasonable interpretation, and applicants stating X and then a narrower range such as preferably Y, the claim will be construed broadly as X and the art would not need to meet the limitations of the smaller preferable range to read on the claim..
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 5, 8, 13, and 15-18 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 5 is indefinite wherein the claim provides that the oligomers of claim 3 have the formula 1, 2, and/or 3. It is unclear how they could have the formulas of 1, 2, and 3. Changing the “and/or” to “or” would overcome this rejection.
Claim 8 is indefinite wherein the claim provides that the oligomers of claim 7 have the formula 1, 2, and/or 3. It is unclear how they could have the formulas of 1, 2, and 3. Changing the “and/or” to “or” would overcome this rejection.
Claim 13 is confusing as it depends on the compounds of claim 1, but provides the oligomers are a mixture of oligomers that differ in length and/or structure. This is not the proper way to limit a compound claim and seems akin to a composition claim wherein changing the claim to read “a compositions comprising the chitosan oligomers of claim 1…” would be a proper and favorable way to embrace the mixture of oligomers claimed.
Claims 15 and 16 are indefinite wherein the claims are drawn to the use of a composition as a plant biostimulant or antimicrobial agent or biopesticide, however, the claims do not contain any steps to be used in a method. If applicants are intended to claim methods, they should be drafted as “a method of…” and include an active step.
Claim 15 is indefinite wherein the claim is drawn to the “use of a composition comprising the chitosan oligomers of claim 3 or of a composition comprising said oligomers”. What is the difference between “a composition comprising the chitosan oligomers of claim 3” and “or a composition comprising said oligomers” of claim 3? This seems redundant and is confusing.
Claim 16 is indefinite wherein the claim is drawn to the “use of a composition comprising the chitosan oligomers of claim 6 or of a composition comprising said oligomers”. What is the difference between “a composition comprising the chitosan oligomers of claim 6” and “or a composition comprising said oligomers” of claim 6? This seems redundant and is confusing.
Claim 17 is indefinite wherein the claim is drawn to “a composition comprising the chitosan oligomers of claim 6 or a composition comprising said oligomers”. What is the difference between “a composition comprising the chitosan oligomers of claim 6” and “or a composition comprising said oligomers” of claim 6? This seems redundant and is confusing.
Claim 18 is indefinite wherein the claim is drawn to “a composition comprising the chitosan oligomers of claim 6 or a composition comprising said oligomers”. What is the difference between “a composition comprising the chitosan oligomers of claim 6” and “or a composition comprising said oligomers” of claim 6? This seems redundant and is confusing.
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, 3-5 and 12-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thadathil et al. (Recent Developments in chitosanase research and its biotechnological applications: A review”, Food chemistry, 150, 2014, pp 392-399).
Thadathil discloses chitosanases (EC 3.2.1.132) which cleaves the β-1,4 linkages between GlcN residues (D as used in the present claims, and also reads on X) and Fig 2 shows cleavage between motif GlcNAc-GlcN and GlcN-GlcN - reading on motif [X]XD | D[X] of present claim 4 and providing sequences as in claim 5. The oligomers produced are between 2 and 10. The oligos are taught to be used in biomedical industries and food industries. The compositions can be used for the claimed purpose, so meet the limitations of claim 15.
Claim(s) 1-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US2010/0310633.
‘633 discloses various chitosan oligomers having various DP’s of 2-15 which were produced by enzymatic depolymerization of chitin with chitinases (named chitin in ‘633 – see [0009]-[0016]) or chitosanases (named chitos). ‘633 teaches their chitinases cleave between AA (wherein A is N-acetyl glucosamine – see [0004]) and some between “AD” or “DA” (where D is glucosamine – see [0004]). Cleaving between AA would at least meet the limitations of present claim 7, part (3), and also (1) and (2) where X is glucosamine. Likewise, the oligomers produced by chitinase had structures such as DDDA, ADA, ADDA, etc. which would read on claim 8 (see [0010]-[0012]). The chitosan polymers which were depolymerized had various degrees of acetylation of 10 and 30% and a DP of above 60 (see figures 4a-b).
‘633 also states that chitosanases cleave between “DD” and some additionally between “DA” or “AD” (see [0009]) reading on present claim 4. The oligomers produced by the chitosanases would read on at least (3) of claim 5 which is [X]nDX – see DDDA in [0014].
‘633 also states a new enzyme named chitinosanases (called chitinos – see [0017]-[0019]) cleave “AD” and produced oligos having a DP of 2-5 (see [0018]). When looking at the oligo’s produced, it was shown that DDDA DAA were produced, thus the enzyme cleaved between the DA of DDDA and DA of DAA as set forth in claim 10. Likewise, the oligo DDDA would meet the limitation of claim 11 where n is 0 and m is 2.
‘633 also teaches to use their oligomers in various applications and compositions which could be used in the same manner claimed herein, and thus meet the limitations of claims 14-18 herein.
Conclusion
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TRAVISS C. MCINTOSH III
Primary Examiner
Art Unit 1693
/TRAVISS C MCINTOSH III/ Primary Examiner, Art Unit 1693
Prosecution Insights