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
Election/Restrictions
Claims 1-16 are pending.
Applicant's election with traverse of Group I, claims 1-12, in the reply filed on 8/17/26 is acknowledged. The traversal is on the ground(s) that searching for all the invention groups is not a burden. This is not found persuasive because as indicated in the previous office action, the inventions of Group I-III are three distinct inventions for the reason of the record. They have different electronic resources and search queries, and searing for one subject matter will not necessarily lead to another. Applicant is reminded of the extensive literature search in biotechnology which is not co-extensive. Regarding the rest of the argument, the special technical feature is based on the broadest claim 1, other description or features which applicant relies are not recited in claim 1. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. Claims 10-12 are free of art, and method claims with the same scope could be rejoined after claim amendment.
Claims 13-16 are withdrawn.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-12 are examined on the merits.
Claim Objections
Claims 10-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 1-9 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.
First, the claimed invention must be to one of the four statutory categories. 35 U.S.C. 101 defines the four categories of invention that Congress deemed to be the appropriate subject matter of a patent: processes, machines, manufactures and compositions of matter. The latter three categories define "things" or "products" while the first category defines "actions" (i.e., inventions that consist of a series of steps or acts to be performed). See 35 U.S.C. 100(b) ("The term ‘process’ means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material."). See MPEP § 2106.03 for detailed information on the four categories.
Second, the claimed invention also must qualify as patent-eligible subject matter, i.e., the claim must not be directed to a judicial exception unless the claim as a whole includes additional limitations amounting to significantly more than the exception. The judicial exceptions (also called "judicially recognized exceptions" or simply "exceptions") are subject matter that the courts have found to be outside of, or exceptions to, the four statutory categories of invention, and are limited to abstract ideas, laws of nature and natural phenomena (including products of nature). Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 216, 110 USPQ2d 1976, 1980 (2014) (citing Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589, 106 USPQ2d 1972, 1979 (2013). See MPEP § 2106.04 for detailed information on the judicial exceptions.
Claim(s) 1-9 is/are directed to a dried biological composition comprising at least one silica, mixture of polysaccharides and glycoproteins, at least one sugar or sugar alcohol, at least one microbe and at least one resin.
Analysis of the flowchart:
Step 1, is the claim directed to a process, machine, manufacture or composition of matter?
Yes. The claim is directed to a composition of matter.
Step 2A. Prong one: Is the claim directed to a law of nature, a natural phenomenon (product of nature), or an abstract idea?
Yes, the claims are directed to nature based components, silica, mixture of polysaccharides and glycoproteins, sugar, microbe and resin all exist abundantly in nature, there.is no indication that the combination of the claimed components has caused the components of nature that comprise the claimed compositions to have any characteristics that are different from the naturally occurring components. Regarding claim 6, shellac exists in nature as an organic resin. Female lac bugs (Kerria lacca) secrete it onto tree branches in the forests of India and Thailand to form a hard, protective cocoon-like shell.
Step 2A. Prong two: Does the claims recite additional elements that amount to significantly more than the judicial exception?
No. The claim(s) of 1-9 does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Regarding claims 1, and 3-8, since there is no absolute amounts of the active ingredients are claimed as compared to the whole composition, the claimed composition encompasses embodiments where the active ingredients are in such small amounts that none of them impart any characteristic or markedly different characteristic. Also, this is a product claim and since there are no claimed method steps, there are no additional elements that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception themselves. Therefore, the claims do not recite something significantly more than a judicial exception and are thus deemed patent ineligible subject matter.
Claims 2 and 9 require certain amounts of components being present in the composition. However, there is no indication that the amounts claimed in the compositions result in a markedly different characteristic for the composition as compared to the components that occur in the nature.
Step 2B. If additional elements of the claim provide an inventive concept (Step 2B) (also called "significantly more" than the recited judicial exception).
No, no non-nature based components were recited in the claims.
For the reasons described above, the claimed compositions are not markedly different from their closest naturally occurring counterparts and thus are product of nature judicial exceptions.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not recite any additional elements beyond the claimed compositions themselves. Also, this is a product claim and since there are no claimed method steps, there are no additional elements that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception themselves. Therefore, the claims do not recite something significantly more than a judicial exception and are thus deemed patent ineligible subject matter.
Claim Rejections –35 USC § 112, 2nd
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.
Claim 3 is rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 3 recites “BET surface” at lines 2-3, and it is not clear what it stands for. If that is an abbreviation, Applicant is required to spell out the full time the first time it appears in the claim.
Regarding claim 3, the phrase "preferably" at lines 2-3 renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Therefore, the metes and bounds of claims are rendered vague and indefinite. The lack of clarity renders the claims very confusing and ambiguous since the resulting claims do not clearly set forth the metes and bounds of the patent protection desired.
All other cited claims depend directly or indirectly from rejected claims and are, therefore, also, rejected under U.S.C. 112, second paragraph for the reasons set forth above.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, and 7 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Proulx et al (WO 2020/104612 A1).
Proulx et al teach a dried storage stable biological composition (thus a dried biological composition) comprising: silica (thus the claimed silica) (Sipernat ⁵⁰⁰) 32 %, gum arabic 28 % (thus the claimed mixture of polysaccharides and glycoproteins, see Spec, page 2, last paragraph), trehalose 20% (thus the claimed sugar) (thus claim 7 is met), Pseudomonas fluorescence (thus the microbe) 20% (see p. 30-31, ex. 24-25) (thus claim 4 is met). Proulx et al also teach 2% PVA (thus the claimed resin) is added in spore suspension and
sprayed onto SIPERNAT® 22 silica (see Table 5).
Proulx et al teach composition I or any of 1.1-1.17, wherein said composition comprises a
precipitated silica (thus claim 2 is met) having a BET surface area of about 50-200 m2/g (thus claim 3 is met), preferably, about 180 m2/g and said composition has a total moisture content of about 5 wt.% to about 8 wt. % (page 4, 1.18)
Therefore, the reference is deemed to anticipate the instant claim above.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to QIUWEN MI whose telephone number is (571)272-5984. The examiner can normally be reached on Monday-Friday 9:00 am to 5:00 pm.
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/Qiuwen Mi/
Primary Examiner, Art Unit 1655
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