DETAILED ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-6 are pending and represent all claims currently under consideration.
Response to Amendment
The amendment filed 06/03/2026 has been entered.
Claims 1-6 were amended. No new material was added.
Applicant’s amendments have overcome the previous objections to the claims and specification.
The rejections of claims 1-6 under 35 U.S.C. 112(b) have been modified to address the amendments and maintained.
The terminal disclaimer filed on 06/03/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Application No. 18/645,307 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant's arguments filed 06/03/2026 have been fully considered but they are not persuasive.
The Declaration under 37 CFR 1.132 filed 06/03/2026 is insufficient to overcome the rejection of claims 1-6 based under 35 U.S.C. 112 as set forth in the last Office action.
Applicant argues that the claim language of “peptides as listed in the specification” means the 253 peptides and not any other peptides, and that it would make sense to a person of ordinary skill in the art without spelling out the 253 peptides in the claims (Declaration, item 3; Remarks, page 2). This argument is not persuasive, because the claim recites “at least 253 peptides as listed in the specification”, and therefore it would not be clear that the only 253 peptides of the sequence listing are being referred to. The Examiner suggests amending the claim language to instead recite, for example, “contain peptide sequences of SEQ ID Nos: 1-253” in order to explicitly claim the peptides of the sequence listing.
Applicant argues that the description of molecular masses refers to all the peptides present in the KHP solution, not the individual peptide, and states that this would be easily understood by a person of ordinary skill in the art (Declaration, item 4; Remarks, page 2). This argument is not persuasive, because as evidenced by Bachem (Peptide Calculator), a peptide of SEQ ID NO: 1 (FGLSGL) has a molecular mass of approximately 593 Da, which falls within the claimed range. Taking into consideration the Applicant’s assertion from above that the claims are intended to refer to a solution containing the 253 peptides of the sequence listing file, it does not appear to be possible that the molecular masses could refer to all of the peptides present rather than each individual peptide, as the 253 peptides appear to be of similar sizes (i.e., ~593 Da each) and this would result in a total molecular mass exceeding the claimed range. Therefore, this limitation is not clearly stated in a way which could be easily understood by a person of ordinary skill in the art.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Claims 1-6 are considered to have an effective filing date of 04/24/2024.
Modified/Maintained 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 and 4 recite the limitation “to confirm peptides combination”. It is unclear whether this limitation is intended to refer to a confirmation that a solution contains of peptides or a confirmation that peptides combined chemically, and in either case, it is unclear what peptides are being referred to.
Also regarding claims 1 and 4, the claims refer to “at least 253 peptides as listed in the specification”. It is unclear if this limitation is intended to be exemplary, to refer a solution containing any 253 peptides, or to a combination of the specific 253 peptides listed in “Table I (in Sequence Listing XML format)”. MPEP 2173.05(s) states: Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table “is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience.” Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993) (citations omitted). Appropriate correction is required. The recitation of “at least” is also unclear, because “Table I” lists only 253 peptides, while “at least” suggests more than 253 peptides could be present. For purposes of examination claims 1 and 4 are examined as requiring the 253 peptides of table I to be present in the solution of claim 1, step c.
Also regarding claims 1 and 4, the phrase “where their molecular masses are between 500 and 4,000 Daltons, and in a concentration range of…” renders the claim indefinite, because it is not clear if each peptide is intended to have a mass and concentration within the claimed ranges or if this is a total mass and a total concentration of the peptides present in the solution.
Regarding claims 2-3, each claim is dependent on the rejected claim 1 and does not cure its deficiencies, and therefore is deficient for the same reasons as above.
Regarding claims 5-6, each claim is dependent on the rejected claim 4 and does not cure its deficiencies, and therefore is deficient for the same reasons as above.
Closest Prior Art
Claims 1-6 appear to be free of the prior art, but are rejected over 35 U.S.C. 112(b) and double patenting as described above. The closest prior art is Yin (Biomacromolecules, 2007) and Nurdiawati (International Journal of Recycling Organic Waste in Agriculture, 2019).
Yin teaches a method of hydrolysis of keratin in water by placing feathers and water in a sealed pressure cell (i.e., a sealed container, step “a”) with a temperature window of 180-220 °C (Yin, page 801, “Method Used”, 1st paragraph), for a time of 20-120 minutes (Yin, page 801, table 1), with resulting peptides (i.e., a keratin hydrolysis peptide solution) of from ~930 to 1846 Daltons, which lie within the claimed range, as determined by MALDI-TOF (i.e., using a mass spectrometer). Yin does not teach the claimed amounts of feathers and water, the claimed pressure, the claimed at least 253 peptides as listed in Table 1 (in Sequence Listing XML format) produced at the claimed concentration, the claimed dilution step, or the claimed step of applying the solution to lettuce.
Nurdiawati teaches the application of a hydrothermal treated protein hydrolysate to improve crop productivity (Nurdiawati, abstract), in crops such as lettuce (Nurdiawati, page 229, 2nd paragraph). Nurdiawati teaches heating feathers and water in a biomass:water ratio of 1:3, in a reactor (i.e., a sealed container; Nurdiawati, page 223, “Preparation of liquid products”), but does not teach the claimed amounts of feathers and water, the claimed temperature or pressure, the claimed at least 253 peptides produced at the claimed concentration, or the claimed dilution step.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/C.P.J./Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
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