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 .
Response to Amendment
The amendment filed on 7/15/2026 has been entered.
Claim Rejections - 35 USC § 112
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 1-3 and 5-7 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 1 has been amended to require 0.3% to 1% by weight of a keratin rich plant matter and claims 5 and 6 have also been amended similarly. Keratin is a family of fibrous structural proteins synthesized only by vertebrate epithelial cells and it is what makes up hair, wool, nails, claws, hooves, horns, feathers, and scales. Plants don't have the genes for it and don't make it. Plant structural rigidity instead comes from cellulose, hemicellulose, lignin, pectin, and plant-specific proteins, none of which are keratin. Therefore, the specification does not enable a person having ordinary skill in the art to make or use the full scope of the claimed invention without undue experimentation.
Applying the factors of In re Wands, 858 F.2d 731 (Fed. Cir. 1988):(1) Breadth of the claim: The claim is not limited to any particular species, genus, extraction method, or plant tissue, and expressly reads on any "keratin rich" plant matter, including the entire Poaceae family.(2) State of the prior art/nature of the invention: It is well established in the biochemical and botanical literature that keratin is an intermediate-filament protein family expressed exclusively by vertebrate epithelial tissue (forming hair, nails, horns, hooves, feathers, and scales) and is not synthesized by any plant. Plant cell walls and structural tissues instead derive their rigidity from cellulose, hemicellulose, lignin, pectin, and plant-specific proteins, none of which is keratin.(3) Predictability of the art: Because keratin biosynthesis is a well-characterized, taxonomically restricted (vertebrate) pathway, a PHOSITA would have no reasonable expectation that any plant, let alone Poaceae specifically, produces keratin or a "keratin rich" tissue.(4) Direction, guidance, and working examples: The specification provides no extraction protocol, assay, analytical data, or working example demonstrating that Poaceae, or any plant, contains keratin in any quantity, let alone in a "rich" concentration.(5) Quantity of experimentation required: Because the premise of the limitation is contrary to the art-recognized biology of keratin, practicing the claim over its full scope as literally recited would require not routine experimentation but the discovery of a previously unreported plant-derived keratin — an undue, speculative undertaking rather than a predictable extension of the disclosed animal-hair embodiment.
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 1-3 and 5-7 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 1, the claim is indefinite because the specification, read in light of the claim language, fails to inform those skilled in the art about the scope of the invention with reasonable certainty. "Keratin rich" is a relative term of degree, and the specification provides no objective standard, threshold, weight percentage, comparative baseline, or test method by which a skilled artisan could determine what concentration of keratin would qualify plant matter as "rich" versus merely containing a trace amount, versus containing none. This ambiguity is compounded by the fact that keratin is, as discussed above, absent from plant tissue as a matter of established biochemistry, leaving a skilled artisan unable to determine whether the applicant intended (i) an as-yet-uncharacterized plant protein with some structural resemblance to keratin, (ii) a misnomer for a different, art-recognized plant component for which Poaceae are in fact known (e.g., silica-based phytoliths, lignin, or hydroxyproline-rich glycoproteins), or (iii) something else entirely. Absent a workable definition, the metes and bounds of "keratin rich" cannot be ascertained. Same applies to claims 5 and 6.
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.
Claims 1-3 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 4,229,222 to Schneider in view of USPAP 2011/0074069 to Hamamchyan and USPAP 2003/0230217 to Elsaesser.
Claims 1, 5 and 6, Schneider discloses a biofiber composite comprising: regolith and a mortar, wherein the mortar comprises a liquid and hemp fibers (see entire document including column 2, line 22 through column 4, line 63 and the Examples).
Schneider does not explicitly mention the mortar comprising amylopectin (although Schneider does disclose newspaper and magazines and books (column 2, lines 41-49 and Example 1) which do conventionally comprise amylopectin) but Hamamchyan discloses that it is known in the art to include a 0.8 to 1 wt% starch binding addition agent in an earth-based building construction material (see entire document including [0001], [0008], and claim 1). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to include 0.8 to 1 wt% starch in the mortar of Schneider, to provide improved binding. The examiner takes official notice that starch is about 70-80% amylopectin by mass (higher for some varieties such as potato starch).
Schneider does not explicitly mention the mortar comprising hair or a keratin rich plant matter but Elsaesser discloses that it is known in the art to include a fibrous additive, such as hair (inherently keratin rich), in an amount of up to about 5 wt% (see entire document including [0013], [0021] and [0036]). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the composition with up to 5 wt% fibrous additive, such as hair, because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics.
Regarding the claimed weight percentages, Hamamchyan discloses 0.8 to 1 wt% starch (amylopectin) binding addition agent, Elsaesser discloses hair in an amount up to 5 wt%, Schneider discloses that the cellulose components (e.g. hemp) may be present in an amount of about 0.5 to about 20 wt% based on the desired strength and insulation (paragraph bridging columns 2 and 3), and Schneider further discloses that the amount of water is variable based on the composition being pourable into molds or forms (column 4, lines 43-63). Further, Schneider uses the composite as a building material (abstract) which is substantially identical to the specification disclosed use. Therefore, the claimed amounts appear to be taught with sufficient specificity or at a minimum it would have been obvious to one having ordinary skill in the art to vary the amount of each component, such as claimed, because it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art.
Claims 2 and 3, Schneider discloses the use of water (column 4, lines 43-63) but does not appear to specifically mention the use of urine. Considering that urine is about 95% water, it would have been obvious to one having ordinary skill in the art at the time the invention was made to use any suitable source of water, such as urine, based on availability and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics.
Claim 7, Schneider does not appear to mention the regolith size but Elsaesser discloses that it is known in the art to use particles with a size of less than 1000 microns (1 mm) to avoid degrading the finish and workability of the composition [0038]. Therefore, it would have been obvious to one having ordinary skill in the art to limit the regolith to a size of less than 1 mm in diameter to avoid degrading the finish and workability of the composition.
Response to Arguments
Applicant's arguments filed 7/15/2026 have been fully considered but are either moot in view of the new grounds of rejection or are not persuasive.
Regarding claim 1, the applicant asserts that the applied prior art fails to teach or suggest keratin rich plant matter. As explained above, keratin is a family of fibrous structural proteins synthesized only by vertebrate epithelial cells and it is what makes up hair, wool, nails, claws, hooves, horns, feathers, and scales. Plants don't have the genes for it and don't make it. Plant structural rigidity instead comes from cellulose, hemicellulose, lignin, pectin, and plant-specific proteins, none of which are keratin. Therefore, the specification does not enable a person having ordinary skill in the art to make or use the full scope of the claimed invention without undue experimentation.
Further, as stated above, "keratin rich" is a relative term of degree, and the specification provides no objective standard, threshold, weight percentage, comparative baseline, or test method by which a skilled artisan could determine what concentration of keratin would qualify plant matter as "rich" versus merely containing a trace amount, versus containing none. This ambiguity is compounded by the fact that keratin is, as discussed above, absent from plant tissue as a matter of established biochemistry, leaving a skilled artisan unable to determine whether the applicant intended (i) an as-yet-uncharacterized plant protein with some structural resemblance to keratin, (ii) a misnomer for a different, art-recognized plant component for which Poaceae are in fact known (e.g., silica-based phytoliths, lignin, or hydroxyproline-rich glycoproteins), or (iii) something else entirely. Absent a workable definition, the metes and bounds of "keratin rich" cannot be ascertained.
Regarding claim 1, the applicant also asserts that the applied prior art fails to teach or suggest the claimed weight percentages. The examiner respectfully disagrees. Hamamchyan discloses 0.8 to 1% by weight starch (amylopectin) binding addition agent, Elsaesser discloses hair in an amount up to 5 wt%, Schneider discloses that the cellulose components (e.g. hemp) may be present in an amount of about 0.5 to about 20 wt% based on the desired strength and insulation (paragraph bridging columns 2 and 3), and Schneider further discloses that the amount of water is variable based on the composition being pourable into molds or forms (column 4, lines 43-63). Further, Schneider uses the composite as a building material (abstract) which is substantially identical to the specification disclosed use. Therefore, the claimed amounts appear to be taught with sufficient specificity or at a minimum it would have been obvious to one having ordinary skill in the art to vary the amount of each component, such as claimed, because it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art.
Regarding claim 3, the applicant asserts that Schneider teaches away from the use of urine as a water source because urine is acidic. Applicant’s argument is not persuasive because urine at worst urine only slightly acidic around 6.0 while 7.0 is neutral. Plus, Schneider adjusts the pH as desired (column 3, lines 21-41).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW T PIZIALI whose telephone number is (571)272-1541. The examiner can normally be reached Monday-Thursday 7am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW T PIZIALI/Primary Examiner, Art Unit 1789
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