DETAILED ACTION
Claim Objections
Claims 6-9 are objected to because of the following informalities:
Claim 1 recites “…comprising the steps of; a. Preparing the KHP solution…”. The ‘P’ of preparing should be lower case, not capitalized.
Claim 1, step d recites “…applying the KHP solution by infusing to the soil containing the young seedlings of soybean at germination stage.” The “to the” between ‘infusing’ and soil’ appears unnecessary; and including a “the” between the “at” and “germination stage” would help improve the structure.
Claim 2 is missing a comma (“,”) between “claim 1” and “wherein”.
Claim 3 is missing a comma (“,”) between “claim 2” and “wherein”.
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.
Claims 1-3 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed had possession of the claimed invention.
Claim 1, step c recites “… the solution to contain at least 253 peptides as listed in the specification…” However, the specification provides exactly 253 peptides and so ‘at least 253 peptides as listed in the specification’ as recited by claim 1, step c lacks proper written description as the specification fails to demonstrate possession of such.
Claims 2 and 3 are rejected for being dependent from a rejected claim.
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.
Claims 1 and 3 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1, step a recites, “…Preparing the KHP solution my mixing 50 kg or feather whose content is 50% by water and 40 kg of water in a sealed container”. This limitation is unclear for two reasons. First, does the 50% water refer to a) the solution or b) the feathers? Second, the claim is silent with respect to how the % is measured, e.g. by mass, by volume, etc.
Claim 1, step c recites, “…using a mass spectrometer to confirm the combination of peptides in the solution to contain at least 253 peptides as listed in the specification where their molecular masses are between 500 and 4,000 Daltons, and the concentration is in the range of 2.0×105 ~ 4.5×105 ppm…” This limitation is unclear for three reasons. First, are the molecular masses of between 500 and 4,000 a limitation to a) the sum of the peptides or b) the range for each of the individual peptides in the mixture? Second, it is not clear if the concentration of 2.0×105 ~ 4.5×105 ppm is limiting the peptides in solution as a whole or the concentration of individual peptides within the mixture (or something else altogether). Third, the limitation to the ’at least 253 peptides as listed in the specification’ should be clarified by amending to recite “…253 peptides as listed in the specification as Seq. ID. 1 to Seq. ID 253…” (or something more specific) as a simple reference to specification within proper identification is unclear.
Claim 1, step d recites, “…applying the KHP solution by infusing to the soil containing the young seedlings of soybean at germination stage.” The reference to “the young seedlings” lacks antecedent basis as no “young seedling” is mentioned prior. This limitation therefore lacks antecedent basis.
Additionally, claim 1, step d is a bit confusing in its sentence structure. Although not required, amending to read “infusing the KHP solution to soil containing young soybean seedlings at the germination stage” or “applying the KHP solution to soil containing germinating soybean seedlings” (or something similar) would help improve overall clarity.
Claim 3 recites “wherein the solution is further with water…”. There is no verb between “further” and “with” rendering the claim unclear. It is presumed the missing action here is ‘diluted’. Still, clarification is required.
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 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 12527269.
Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims in all applications are drawn to overlapping subject matter.
Instant claim 1 recites “[A] method of using a keratin hydrolysis peptide (KHP) solution to promote the soybean's tolerance and growth under stress of flooding, comprising the steps of: a. Preparing the KHP solution by mixing 50 kg of feathers whose content is 50% water and 40 kg of water in a sealed container; b. hydrolyzing the mixture in the container with a temperature and pressure setting of 185° C. and 12 kg/cm2 for a duration of 80 minutes; c. using a mass spectrometer to confirm the combination of peptides in the solution to contain at least 253 peptides as listed in the specification where their molecular masses are between 500 and 4,000 Daltons, and the concentration is in the range of 2.0×105~ 4.5×105 ppm; and d. applying the KHP solution by infusing to the soil containing the young seedlings of soybean at germination stage.”
Claim 1 of US 12527269 is directed to “ [A] method of using a keratin hydrolysis peptide (KHP) solution to increase the fertilizer use efficiency for soybean plants, comprising the steps of: a. Preparing the KHP solution by mixing 66 kg of feathers whose content is 50% water and 44 kg of water in a sealed container; b. hydrolyzing the mixture in the container with a temperature and pressure setting of 195° C. and 16 kg/cm2 for a duration of 40 minutes; c. using a mass spectrometer to confirm the combination of peptides in the solution to contain at least 253 peptides as listed in the specification where their molecular masses are between 500 and 4,000 Daltons, and the concentration is in the range of 2.0×105~4.5×105 ppm; and d. applying the solution to the fertilized soil in which the soybean seeds are planted.
The scope of the claims in the cited applications are overlapping and the differences are considered to be obvious over each other. The major difference between the instant application and reference patent is amount of feathers and water used, the temperature and pressure in producing the KHP solution and the soil possessing a fertilizer. However, the instant specification provides that the soybean soil may possess fertilizer. All other limitations are essentially identical. Thus, the claims of US 1252726 are not patentably distinct over the instantly claimed subject matter.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/658834; claims 1-7 of copending Application No. 18/643756; claims 1-3 of copending Application No. 18/639950; claims 1-9 of copending Application No. 18/639751; and claims 1-5 of copending Application No. 18/408245.
Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims in all applications are drawn to overlapping subject matter.
Instant claim 1 is provided above.
The scope of the claims in the cited applications are overlapping and the differences are considered to be obvious over the present claims. The major difference between the instant application and reference applications are the mass of feathers and water used in preparing the KHP solution, the temperature and pressure applied in preparing the KHP solution and the soil possessing a fertilizer. The mass of feathers, water and the pressure and temperature applied by the reference applications are all sufficiently close to expect similar outcomes. Moreover, the instant specification provides that the soybean soil may possess fertilizer. All other limitations between the instant claims and pending claims of reference applications are essentially identical.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 18/827519; claims 1-8 of copending Application No. 18/642487; claims 1-6 of copending Application No. 18/778049; claims 1-6 of copending Application No. 18/774885; claims 1-4 of copending Application No. 18/642445; claims 1-3 of copending Application No. 18/642007; claims 1-3 of copending Application No. 18/409792; claims 1-4 of copending Application No. 18/412611; claims 1-3 of copending Application No. 18/418259; claims 1-3 of copending Application No. 18/409790; and claims 1-8 of copending Application No. 18/537395 in view of Hoff et al. (ID P202207467) and Jaurez et al. (WO 2023/001946).
Instant claim 1 is provided above.
Reference claims of the copending applications are to methods of treating various crops, all applying the same KHP solution derived from feathers using similar pressures and temperatures. The major difference between the copending applications and the instant claims are the type of plant being treated, e.g. corn, cotton, melon, etc.
Hoff is directed to the application of hydrolyzed keratin solutions to crop seeds for benefit during the germination phase. The applied solution is said to provide drought and salinity resistance to the seedling and resulting plant (see page 1). The solution is applicable to field crops and vegetables such as soybeans, cotton, corn, cabbage, watermelon and so on (see page 3). Juarez is similarly directed to keratin hydrolysates and their application in agriculture. Jaurez teaches that the hydrolysates may be applied as seed treatments or as soil amendments during farming. The present claims are therefore not patentably distinct from the copending applications in view of Hoff and Juarez as the combinations would suggest a method such as that sought.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE A PURDY whose telephone number is (571)270-3504. The examiner can normally be reached from 9AM to 5PM.
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/KYLE A PURDY/Primary Examiner, Art Unit 1611