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 .
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.
Election/Restrictions
Applicant's election without traverse of Group I, claims 1-10 and 12-17, in the reply filed on 05/18/2026 is acknowledged.
Claim 11 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 1-10 and 12-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural composition of matter without significantly more.
Claims 1 and 4 claim artificial fibroin as the only recited component. Claims 2 and 5 recite that the artificial fibroin contains artificial spider silk fibroin. Claims 3, 6, and 12-13 recite that the material is in the form of a fiber. Claims 7-10 and 14-17 are drawn to articles with the artificial spider silk fibroin as the only recited component.
These instantly claimed limitations are drawn to a product of nature, namely naturally occurring spider silk fibroin. The instant specification states that the artificial fibroin of the instant invention may be fibroin having an amino acid sequence different from or identical to an amino acid sequence of naturally derived fibroin [0030]. Therefore, there is nothing differentiating the “artificial fibroin” of the instant claims from naturally occurring fibroin. Spiders naturally produce silk fibroin in the form of a fiber (see, The Journal of Experimental Biology 202, 1999, 3295–3303; abstract). Thus, the instantly claimed spider silk fibroin in the form of a fiber does not include additional elements that are sufficient to amount to significantly more than the judicial exception, because no additional components are recited which makes the claimed product ‘markedly different’ from the naturally-occurring component.
The claims are drawn to a naturally occurring product. Therefore, the claims are drawn to judicial exceptions. There are no limitations in claims 1-10 and 12-17 in addition to the naturally occurring spider silk fibroin.
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.
Claims 1-10 and 12-17 are rejected under 35 U.S.C. 102 as being as being anticipated by Torigoe et al. (WO 2020/067553 A1 with a foreign translation provided by US 2021/0388537 A1).
Examiner’s note: “A deodorant material” and “for imparting deodorant properties” are interpreted as an intended use of the fibroin and do not carry patentable weight.
Claims 1-6 and 12-13 are anticipated because Torigoe discloses artificial spider silk fibroin fibers (production example at [0219]-[0237]).
Claims 7-8 and 14-15 are anticipated because Torigoe discloses the artificial spider silk fibroin fibers are formed into an article (a spun yarn) [0236]-[0237].
Claims 9-10 and 16-17 are anticipated because the artificial spider silk fibroin is included at a concentration of 24 mass % and the fibers are formed into a spun yarn without the addition of dilutants [0231]-[0237]. Thus, the total amount of the spider silk fibroin is more than 3 mass % with respect to the total weight of the article.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-10 and 12-17 are rejected under 35 U.S.C. 103 as being as being obvious over Torigoe et al. (WO 2020/067553 A1 with a foreign translation provided by US 2021/0388537 A1) in view of Morita et al. (WO 2020/145363 A1 with a foreign translation provided by US 2022/0119463 A1).
The 35 U.S.C. 102 rejection over Torigoe was previously discussed.
As discussed above, the limitations of “a deodorant material” and “for imparting deodorant properties” are interpreted as an intended use of the fibroin and do not carry patentable weight.
However, in the interest of completeness of prosecution, purely arguendo, and for the purposes of this ground of rejection only, Torigoe will be interpreted as if it is not anticipatory.
In that case, Torigoe could be construed as not clearly and unequivocally disclosing the claimed invention or directing those skilled in the art to the claimed invention because Torigoe does not disclose that the fibroin is for imparting deodorant properties.
Nevertheless, Morita teaches that silk proteins, such as spider silk proteins, have excellent deodorizing properties [0002]-[0004].
Since Torigoe generally teaches spider silk proteins, it would have been prima facie obvious to one of ordinary skill in the art to use the spider silk fibroin of Torigoe as “a deodorant material” and “for imparting deodorant properties” because Morita teaches that silk proteins, such as spider silk proteins, have excellent deodorizing properties [0002]-[0004].
Claims 1-6 and 12-13 are rendered prima facie obvious because Torigoe discloses artificial spider silk fibroin fibers (production example at [0219]-[0237]).
Claims 7-8 and 14-15 are rendered prima facie obvious because Torigoe discloses the artificial spider silk fibroin fibers are formed into an article (a spun yarn) [0236]-[0237].
Claims 9-10 and 16-17 are rendered prima facie obvious because the artificial spider silk fibroin is included at a concentration of 24 mass % and the fibers are formed into a spun yarn without the addition of dilutants [0231]-[0237]. Thus, the total amount of the spider silk fibroin is reasonably expected to be present in an amount of more than 3 mass % with respect to the total weight of the article. In the alternative, Morita discloses an artificially modified fibroin composition with fibroin in an amount of 30 to 100 % by mass [0121]-[0122]. Morita teaches that the fibroin silk proteins have excellent mechanical properties, hygroscopic properties, and deodorizing properties [0002]-[0004]. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II)(A). In this case, the general condition of the amount of artificial fibroin has by the prior art (Morita); as such, it would not have been inventive for the skilled artisan to have discovered the optimum amount via routine experimentation to achieve the desired characteristics (i.e., mechanical, hygroscopic, and deodorizing properties as taught by Moira [0002]-[0004]).
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 1-10 and 12-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 and 15-18 of U.S. Patent Application No. 17/044,436 (notice of allowance mailed 03/04/2026).
Although the claims at issue are not identical, they are not patentably distinct from each other. The claims recite all of the features instantly recited for the composition including an artificial spider silk fibroin in the form of a fiber (claims 1 and 4), incorporated into an article (claims 1 and 6), in an amount of more than 3 mass % (claim 3). The species (composition) recited in the claims of the granted patent falls within the genus (composition) recited in the claims of the instant application, and thus reads on the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ashlee E Wertz whose telephone number is (571)270-7663. The examiner can normally be reached Monday - Friday, 8 AM - 5 PM.
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/ASHLEE E WERTZ/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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