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 .
DETAILED ACTION
Claims 1-16 are pending. Claims 1-6 are examined on the merits.
Election/Restrictions
Applicant’s election without traverse of Group I (Claims 1-6) in the reply filed on Oct. 9, 2025 is acknowledged.
Claims 7-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on Oct. 9, 2025.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/31/25, 9/30/24 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claim(s) 1-6 are directed to a composition comprising natural products. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
MPEP § 2106 sets forth the Subject Matter Eligibility Test to determine if a claim is directed to patent eligible subject matter. Step 1 asks if a claim is directed to a statutory category of invention. Applicant’s claims are directed to a product; thus, the answer to Step 1 is Yes.
Step 2A, Prong One, asks if a claim recites to a product of nature. In this case, applicant’s claims recite keratin protein isolated from feather and hair. Thus, the claims do recite products of nature. MPEP § 2106.04(b) states that “When a claim recites a nature-based product limitation, examiners should use the markedly different characteristics analysis discussed in MPEP § 2106.04(c) to evaluate the nature-based product limitation and determine the answer to Step 2A.”
MPEP § 2106.04(c)(I) states that “if the nature-based product limitation is not naturally occurring, for example due to some human intervention, then the markedly different characteristics analysis must be performed to determine whether the claimed product limitation is a product of nature exception…”. To perform the markedly different characteristic analysis, MPEP § 2106.04(c)(II) states “The markedly different characteristics analysis compares the nature-based product limitation to its naturally occurring counterpart in its natural state. Markedly different characteristics can be expressed as the product’s structure, function, and/or other properties…”.
In this case, keratin protein isolated from feather and hair do not have different characteristics. In the form of a slurry is still a keratin protein, the same protein from nature does not have markedly different characteristics. Therefore, the answer to Step 2A, Prong One, is Yes.
Thus, the analysis must move to Step 2A, Prong Two, which asks if the claim recites additional elements that integrate the judicial exception into a practical application. As discussed in MPEP § 2106.04(d)(2) this evaluation is performed by identifying whether there are additional elements recited in the claim beyond the judicial exception and evaluating these additional elements to determine whether the claim as a whole integrates the exception into a practical application. In this case, the isolated keratin does not integrate the judicial exception into a practical application. Thus, the answer to Step 2A, Prong Two, is No.
The analysis must then move to Step 2B which asks if claims recite additional elements that amount to significantly more than the judicial exception. MPEP § 2106.05 states that this evaluation is performed by “Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself.” In this case, the isolated keratin from different sources of keratin is a well understood, routine, and conventional method of making a product for agricultural use (see Pomeh et al., Ru 2016106063 A). Thus, the answer to Step 2B is No. Therefore, the claims are not directed to patent eligible subject matter.
Claim Rejections - 35 USC § 102
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) 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pomeh et al. (Ru 2016106063 A).
Pomeh et al. teaches a keratin product obtained by digesting feather, hair in the presence of water (Claim 1). The keratin-containing material in water is partially insoluble (Claim 8), which is a slurry. The feather and hair would contain total nitrogen content of from about 0.5-5.0% w/w nitrogen because the same starting material would contain the same amount of nitrogen content. Water is a carrier. The keratin-containing material when dried will be feather meal (Claim 23). As for Claim 5, the product would have the same inherent characteristics.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 10 of copending Application No. US 20230292760 A1. Although the claims at issue are not identical, they are not patentably distinct from each other because feather is not taught.
US 20230292760 A1 teaches:
1. An agricultural composition comprising: at least one keratin protein comprising: from about 5.0% w/w to about 20.0% w/w nitrogen; from about 0.01% w/w to about 5.0% w/w phosphorus; and from about 0.1% w/w to about 10.0% w/w potassium; and at least one carrier.
2. The agricultural composition of claim 1, wherein the keratin protein is isolated from human hair.
3. The agricultural composition of claim 1, wherein the carrier comprises water.
4. The agricultural composition of claim 1, comprising: from about 5.0% w/w to about 25.0% w/w of the at least one keratin protein; and from about 75% w/w to about 95% w/w of the at least one carrier.
5. The agricultural composition of claim 4, wherein the at least one keratin protein comprises from about 10% w/w to about 20% w/w nitrogen.
6. The agricultural composition of claim 1, wherein upon application to a plant, the plant growth is increased by at least about 15%.
7. An agricultural device comprising: an agricultural composition comprising: at least one keratin protein comprising: from about 5% w/w to about 20% nitrogen; from about 0.01% w/w to about 5.0% w/w phosphorus; and from about 0.1% w/w potassium to about 10.0% w/w potassium; and at least one carrier; and a multi-function horticultural device comprising a plurality of individual natural fibers intertwined such that the multi-function horticultural device has a density from generally about 0.02 to generally about 3 grams of the individual natural fibers per cubic inch, wherein the multi-function horticultural device is capable of holding and retaining from generally about 0.02 to generally about 15 grams of liquid per cubic inch and wherein the multi-function horticultural device is generally homogeneous.
8. The agricultural device of claim 7, wherein the multi-function horticultural device includes at least one natural fiber from the group including human hair, animal hair, coconut fiber, seaweed, kelp, cotton, corn silk and peat moss.
10. The agricultural device of claim 7, wherein the agricultural composition comprises: from about 5.0% w/w to about 25.0% w/w of the at least one keratin protein; and from about 75% w/w to about 95% w/w of the at least one carrier.
The feather source for keratin is not taught.
Although US 20230292760 A1 does not explicitly teach the composition in the form of a feather source, since feather are a keratin product source, it would clearly have been a natural and obvious choice for feather to be included in a form of the reference composition.
Accordingly, It would have been obvious to one of ordinary skill in the art at the time the claimed invention was made to use the composition as beneficially taught by US 20230292760 A1 as a food in addition to a medicine. The adjustment of particular conventional working conditions (e.g., determining suitable formulations and/or which anticancer compositions to combine with the composition and/or appropriate labeling of the food product) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claim is allowed.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERYNE CHEN whose telephone number is (571)272-9947. The examiner can normally be reached on Monday-Friday 9-5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Terry McKelvey can be reached on 571-272-0775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Catheryne Chen Examiner Art Unit 1655
/TERRY A MCKELVEY/Supervisory Patent Examiner, Art Unit 1655