DETAILED ACTION
Claims 1-6 are pending and being examined on the merits in this office 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 .
Priority
The filing receipt dated provides the following information:
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Specification
Please note, the specification has not been checked to the extent necessary to determine the presence of all possible error. Applicant's cooperation is required in correcting any errors of which applicant may become aware in the specification. MPEP § 608.01.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “Present invention teaches,” etc. In addition, the abstract presently recites incomplete sentences.
The use of the term Tween 20, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks. See as-filed specification at paras [0091] and [0096].
Claim Objections
Claims 1-6 are objected to because of the following informalities:
Claims 1 and 4 should be amended to recite “a)[[.]] preparing
Claims 1 and 4 should further be amended to recite “specification wherein
Dependent claims 2, 3, 5, and 6 should be amended to recite “of claim X, wherein”.
Claims 3 and 5 should be amended to recite “diluted at a .
Appropriate correction is required.
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 1-6 are rejected as being indefinite because claims 1 and 4 are drawn to a method of using a keratin hydrolysis peptide (KHP) solution to control cabbage black spot disease .., comprising steps a-d. However, steps a-c recite the process of making KHP solution. As such, claims are ambiguous because steps a-c are not directed to a method of using KHP but rather to a method of producing/making a KHP solution. That is, the preamble of the claim is directed to a method of using (applying) while the body of claims are directed to a method of making a KHP solution. Therefore, the claims are rendered indefinite.
Claims 1-6 are rejected as being indefinite because Step a in instant claims 1 and 4 recite “preparing the KHP solution by mixing … kg of feathers whose content is 50% water and 44 [or 40] Kg of water in a sealed container”. However, it has not been clearly established whether the phrase “50% water” refers to the amount of water present in the sealed container in addition to the feathers or whether the phrase refers to the percentage of water present or retained by the feathers.
Independent claims 1 and 4 recite "solution contains at least 253 peptides as listed in the specification". However, it is improper to import claim limitations from the specification, per MPEP 2111.01 (II).
Furthermore, as indicated in MPEP 2173.05(s), 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). As such, recitation of "at least 253 peptides as listed in the specification" makes the claim incomplete.
It is further noted that the specification/Sequence listing is limited to teaching 253 peptides. The term at least further renders the claims indefinite because the skilled artisan is not apprised of the identity of peptides beyond the 253 peptides disclosed in the specification.
To overcome this rejection, the term “at least” should be removed from the claim. The claims should further be amended to incorporate the peptide and SEQ ID NOs; e.g. KHP solution comprises 253 peptides.
Claims 1-6 are rejected as being indefinite because Step c in instant claims 1 and 4 recite “contain at least 253 peptides… with their molecular masses between 500 and 4000 Dalton”. This is indefinite because it is not clear if the molecular mass is for each peptide or the total number of peptides present.
Claims 1 and 4 recite the limitations “"the mixture” and "the container” at step b. There is insufficient antecedent basis for this limitation in the claim. Amend claims 1 and 4, step b to recite “the sealed container” for consistency with step a.
Claims 1 and 4 recite the limitation "the combination”, “the range”, and “the concentration” at step c. There is insufficient antecedent basis for this limitation in the claim.
Further regarding “the mixture” of step c, it is unclear whether 'mixture' recited in step 'b' is interchangeable with 'KHP solution' in line 4 of the instant claim or whether a mixture is distinct from a solution. For prior art purpose, Examiner interprets solution to be interchangeable with mixture generated in step 'b', that is infused into the soil.
Claims 1 and 4, at Step D recite “the soil”. Amend claims 1 and 4 to recite “to [[the]] soil containing cabbage plants”.
Claims 1 and 4 recite “the solution” at steps c and d. Claims 2, 3, 5, and 6 also recite the limitation "the solution”. There is insufficient antecedent basis for this limitation in the claims. Amend claims 1-6 to recite “the KHP solution”.
Independent claims 1 and 4 recite at step C, "the concentration is in the range of 2.0 x10⁵ ~ 4.5 x10⁵ ppm". However, it is not clear whether the concentration range is for the presence of 253 peptides in the KHP solution or whether each individual peptide has a concentration range of 2.0 x10⁵ 4.5 x10⁵ ppm. Clarification is required. It is further noted that the claims lack antecedent support for the term “the range”.
Claim 2 recites "wherein the solution is diluted... " which is not clear if it is a further method step or is limiting the usage of the KHP solution in step d of claim 1, or is it intended use of the KHP made. All solutions produced are capable of being diluted.
Claim 5 is similarly rejected as set forth for claim 2.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Juarez et al (WO 2023/001946- earliest effective filing date 7/21/2022, in view of Szoeke et al (US 8,617,282), as evidenced by CN 109650946 (hereinafter “CN’946”- English translation provided), in further view of Cheng et al. (Bioresource Technology 99:3337-3341 (2008)), and Yin et al (Biomacromolecules 8:800-806 (2007)).
Regarding claims 1 and 4, Juarez et al teach a process for converting keratin into a liquid mixture comprising peptides and/or amino acids (see Abstract); thereby constituting a keratin hydrolysis peptide (KHP) solution. Juarez’s invention is suitable to be used in several technical fields such as, e.g., agriculture, for example as a bio-stimulant or fertilizer (see pg. 1, lines 4-5, claim 10). Juarez et al teach that the liquid mixture may be used to improve and/or stimulate one or more of germination, rooting, growth, flowering, curdling and maturation of plants and fruits (see pg. 11, lines 6-10). Furthermore, Juarez et al teach that advantageously, the liquid mixture including peptides and/or amino acids obtained through the process of the invention, can be applied in its different variants to any type of plant, at any stage of plant development, on any soil and form of cultivation, and is also potentially usable in organic farming (see pg. 3, lines 10-14). Thereby constituting a method of using a KHP solution on cabbage plants for the promotion of plant growth and crop yield.
With respect to step a, Juarez et al teach Example 1 where 10000 g of keratin deriving from milled pig hair was processed (see pg. 12, lines 2-4). The keratin with a humidity between 40-60% was introduced into a solid-state bioreactor (see pg. 12, line 11).
Regarding step b, Juarez et al disclose that the decomposed keratin, i.e., the said decomposed keratin containing material is subsequently treated by steam explosion, which is a process in which biomass is treated with hot steam at a temperature from 110 °C to 160°C, under pressure from 1 to 5 bar, that results in a rupture of the keratin fibrous structure. (See pg. 6, lines 22-27).
Regarding the molecular mass and concentration of the peptides in claims 1 and 5, Juarez et al disclose that the said liquid mixture comprises from 1% to 10% by weight of free amino acids, from 15% to 30% by weight of peptides having a molecular weight >10000 Da, from 25% to 40% by weight of peptides having a molecular weight of 10000 Da to 400 Da, and 35% to 50% by weight of peptides having a molecular weight <400Da (See pg. 3, line 30 to pg. 4, line 4 and pg. 10, lines 15-21).
Regarding claims 2, 5 and 8, Juarez et al teach that the decomposed keratin containing material is milled into small pieces (microns) that are then diluted into water in a proportion of 15%-40% w/v, preferably 20% w/v (reading on diluted in ratios of 1:50-500 and applied to soil).
Juarez et al do not teach or suggest a method comprising mixing 66 kg or 50 Kg of feathers and water, as recited in instant step a of claims 1 and 4 respectively. This is taught by Szoeke et al. Juarez et al also do not expressly teach or suggest hydrolyzing the mixture in the container with a temperature and pressure setting of 195°C and 16 kg/cm2 (in claim 1) or 185°C and 12 kg/cm2 (in claim 4) for a duration of 40 or 80 minutes as recited in instant step b. This is taught by Cheng et al.
Szoeke teaches a method of preparing a fertilizer by processing feathers (see Abstract). Szoeke describes a production method with a high amount of organic substances with a stimulative and alternative melioration effect, with use of an additive containing keratin and swine dung (see column 2, lines 3-6). The production process itself is a separation of liquid swine dung with help of a phase separation into two parts—a solid part and a liquid part (see column 2, lines 6-7). The solid part of dung is mixed with substances including keratin, hair, or horns (see column 2, lines 7-8). The basic material, originating from Szoeke’s process, contains 5-50% of keratin substance (see column 2, lines 9-11). Szoeke teaches the production process as follows: substances containing keratin (i.e., feathers) are intermixed with hydrate of lime, and during a permanent mixing in an autoclave, the feathers undergo a process of a heat treatment under concomitant pressure change (see column 2, second paragraph). Szoeke adds that feathers pressed out of water, a step standardly done in poultry processing plant, with a humidity in a range from 25% to 29% (see column 3, lines 59-61). Therefore, out of 300 kg of moist feathers delivered from a poultry processing plant it is possible to obtain about 107 kg of dry feathers (300:2.8 ~107), and about 193 liters of water (see column 3, lines 61-65). Szoeke also teaches that water, up to an amount of 1000 liters, is added into a container with a mixture under preparation that is a basis of a fertilizer (see column 5, lines 3-5); and that 1000 liters of keratin fertilizer with an additive of humic acids in a colloid form thus may contain 107 kg of feathers (see column 5, lines 12-13).
As evidenced by CN’946, an amino acid liquid fertilizer derived from poultry feathers functions in regulating and stimulating the growth and development of crops (promoting the germination and growth of seeds, promoting the growth of root systems, regulating the form of the root systems, promoting the growth of leaves, improving the green content of the leaves and the like), improving the quality of the crops, increasing the yield of the crops, and improving the disease resistance [reads on controlling disease caused by the pathogen Alternaria brassicicola] and the stress resistance of the crops (p. 2).
Pursuant to MPEP 2144.05 (I), a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metal Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Therefore, the claimed 66 Kg or 50 kg of feathers would have been suggested to one skilled in the art.
From the teachings of the references, the Examiner recognizes that it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the process for converting keratin into a liquid mixture comprising peptides and/or amino acids as taught by Juarez, with the teachings of Szoeke in order to arrive at the claimed method of using a KHP solution, comprising instant step a.
One of ordinary skill in the art at before the effective filing date of the claimed invention would have been motivated to do so because a method of preparing a fertilizer by processing feathers under permanent mixing conditions, heat treatment and concomitant pressure change was known to contain 5-50% of keratin substance. One of ordinary skill in the art before the effective filing date of the claimed invention would have had a reasonable expectation of success given that Juarez’s process for converting keratin into a liquid mixture comprising peptides and/or amino acids is suitable to be used in the agricultural field as a bio-stimulant; given that the liquid mixture improves and/or stimulates germination, rooting, growth, flowering, curdling and maturation of plants and fruits and can be applied to any type of plant and at any stage of plant development. Also, one of ordinary skill in the art would have had a reasonable expectation of success given that Szoeke’s method of preparing a fertilizer by processing feathers yields 1000 liters of keratin fertilizer that may contain 107 kg of processed feathers. Therefore, modifying Juarez’s process for converting keratin into a liquid mixture comprising peptides and/or amino acids by increasing the amount of feathers to be processed to 107 kg as taught by Szoeke would support the claimed method of using a KHP solution, comprising step a; by constituting some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention, pursuant to KSR.
Furthermore, one of ordinary skill in the art can prepare a KHP solution from any amounts of feathers as taught by the references. It is the ratio of feather to added water that results in the desired solution, which one of ordinary skill in the art can adjust.
With respect to step b, Juarez’s method includes a steam explosion step, where the decomposed partially soluble keratin is treated in a continuous process, where the mixture reached a pressure of 2 bar and at a temperature of 120°C, and is kept at this pressure and temperature for 20 minutes (see pg. 12, lines 28-31). Juarez’s steam explosion treatment leads to a solubilization of the proteins, and modification of keratin protein structure (see pg. 13, lines 3-4). The solubilization of the protein material is evident, and this process leads to a mixture containing products that are more- bioavailable with respect to keratin (see pg. 13, lines 5-6). Juarez adds that steam explosion is a process in which biomass is treated with hot steam at a temperature from 110 °C to 160°C, under pressure from 1 to 5 bar, that results in a rupture of the keratin fibrous structure (see pg. 6, lines 24-27).
Cheng et al teach hydrolysis of biomass waste (such as feathers) to produce amino acids in sub- critical water (i.e., high-temperature and high-pressure water) with reaction temperatures from 180 to 320°C (see pg. 3337, Abstract). Cheng’s results show that the controlling of reaction atmosphere, pressure, temperature and time of hydrolysis is very important to obtain high yield of amino acid (see pg. 3337, Abstract). Cheng also reports amino acid yield in dependency on reaction temperature and time; in particular that the effect of reaction temperature and time was investigated for reaction time ranging from 1-50 min at a temperature range from 180 to 320°C (see pg. 3338, right column, second to last paragraph). Cheng adds that at first the yield of amino acids increases with extension of reaction time, then decreases with continued extension of reaction time when time is extended to a certain value and suggests operation of the system at short reaction time and mild temperature condition (see pg. 3339, left column, paragraph 1). Moreover, the amino acid yield in dependency on reaction pressure was also investigated at a range of 3-30MPa, and it was determined that the reaction pressure can be adjusted by the relationship between reaction pressure and V/Vo, where V is the volume of feed injected into vessel and Vo is the volume of vessel (see pg. 3339, left column, last paragraph).
It would have been obvious to one of ordinary skill in the art to optimize the hydrolyzation parameters (i.e., temperature, pressure and duration) as recited in instant step b. because as taught by Cheng et al, controlling of reaction atmosphere, pressure, temperature and time is very important to obtain high yield of amino acids during the hydrolysis of biomass waste such as feathers. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ. Therefore, it would have been customary for an artisan of ordinary skill to determine the optimal temperature, pressure and time needed to achieve the desired KHP solution. Thus, an ordinary skilled artisan would have been motivated to modify the temperature, pressure and time taught by Juarez to solubilize the proteins, and modify the keratin protein structure thereby resulting in a liquid mixture comprising peptides and/or amino acids. An ordinary skilled artisan would have been able to utilize the teachings of Cheng to obtain various hydrolysis parameters with a reasonable expectation of success. Thus, absent some demonstration of unexpected results from the claimed parameters (i.e., 180°, 13kg/cm2, and a duration of 40 minutes), the optimization of the hydrolysis step as recited in instant step b would have been obvious before the effective filing date of Applicant's invention.
One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so because it was well-known that hydrolysis of biomass waste, such as feathers in high-temperature and high-pressure water (i.e., sub-critical water) breaks down keratin and produces amino acids. One of ordinary skill in the art before the effective filing date of the claimed invention would have had a reasonable expectation of success given that hydrolysis parameters such as temperature, pressure and time/duration of the reaction were known to influence the yield of the target products (i.e., amino acids) as taught by Cheng et al. Also, one of ordinary skill in the art would have had a reasonable expectation of success given that Juarez’s method includes a steam explosion step, which leads to solubilization of the proteins and modification of the keratin protein structure. Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because the combined teachings of the prior art are fairly suggestive of the claimed invention, by constituting some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention, pursuant to KSR.
With respect to step c. Juarez teaches that the liquid fraction of the keratin hydrolysate comprises peptides having a molecular weight comprised between 150 Da and 10.000 Da and/or free amino acids (see pg. 3, lines 29-31). MPEP 2144.05(1) states that "[i]n the case where the claimed ranges “overlap or lie inside ranges discloses by the prior art" a prima facie case of obviousness exists. /n re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Therefore, the claimed molecular mass range would have been obvious to one of ordinary skill in the art since the prior art range (i.e., 150 Da and 10.000 Da) lies within the claimed range (i.e., 500 and 4000 Da). However, Juarez does not expressly teach or suggest using a mass spectrometer to confirm the combination of peptides in the solution, as recited in instant step c.
Yin et al explore the hydrolysis of keratin in water under specific pressure-temperature conditions where the hydrolysis through scission of the protein chain yields oligopeptides (see pg. 800, abstract). Yin shows Fig. 1, depicting MALDI-ToF analysis of the solutions which indicates the presence of peptide sequences (see pg. 803, left column, bottom paragraph). Thereby constituting using a mass spectrometer to confirm the combination of peptides in the solution as recited in step c. Assuming an average of molecular weight of 100 for each amino acid, the obtained peptides are between a sequence of 10 to 18 amino acids in length, suggesting that on hydrolysis a considerable proportion of the amino acid sequence is conserved (see pg. 803, left column, bottom paragraph). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Juarez by incorporating MALDI-ToF analysis of Yin, in order to arrive at the instantly claimed method, comprising step c.
With respect to step d. Juarez teaches that the liquid mixture including peptides and/or amino acids obtained, can be applied through different methods such as: soil application (see pg. 3, lines 10-15); thereby constituting the claim limitations recited in instant step d. applying the solution to the soil of the cabbage plant.
Regarding claims 2, 3, 5, and 6, Juarez et al disclose diluting the mixture with water in a proportion of 15 to 40% by volume. Additionally, Szoeke et al teach adding water, up to an amount of 1000 liters, into a container with a mixture under preparation that is a basis of a fertilizer (see column 5, lines 3-5); and that 1000 liters of keratin fertilizer with an additive of humic acids in a colloid form thus may contain 107 kg of feathers (see column 5, lines 12-13). As such, the combined teachings of Juarez et al and Szoeke et al suggest the claim limitations as recited in instant claims 2-3 and 5-6, where the solution is diluted with water by volume at the ratio of 1:100-500 or 1:100.
Accordingly, claims 1-6 are rendered obvious in view of the teachings of the cited references.
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 claim 1-3 of copending Application No. 18827519 (hereinafter “the ‘519 application”). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1, claim 1 of the ‘519 application teaches a method of using a KHP solution comprising preparing a KHP solution by mixing the feathers in water at a temperature of 185 °C and pressure 12 kg/cm2; solution containing at least 253 peptides of molecular mass between 500 and 4000 Da, and applying the solution to soil containing cabbage plants. Examiner notes that the reference does not teach 66 kg feather and 44 kg water, 195 °C and pressure 16 kg/cm2 . Generally, differences in concentration, temperature, or pressure will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding the claim limitation ‘to control cabbage black spot disease caused…A brassicicola, Examiner interprets the limitation as intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention's limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children's Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (see MPEP § 2111. 02 (II)).
Regarding claims 2 and 3, claims 2-3 of the ‘519 application teach dilution of the KHP solution.
Regarding claim 4, claim 1 of the ‘519 application teaches a method of using a KHP solution comprising preparing a KHP solution by mixing 50g feathers and 40kg water at a temperature of 185 °C and pressure 12 kg/cm2; solution containing at least 253 peptides of molecular mass between 500 and 4000 Da, and applying the solution to soil containing cabbage plants.
Regarding the claim limitation ‘to control cabbage black spot disease caused…A brassicicola, Examiner interprets the limitation as intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention's limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children's Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (see MPEP § 2111. 02 (II)).
Regarding claims 5 and 6, claims 2-3 of the ‘519 application teach dilution of the KHP solution.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-4 of copending Application No. 18902317 (hereinafter “the ‘317 application”). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1, claim 1 of the ‘317 application teaches a method of using a KHP solution to promote the growth of farming plants under acidity stress comprising preparing a KHP solution by mixing 66g feathers and 44 kg water at a temperature of 195 °C and pressure 16 kg/cm2; solution containing at least 253 peptides of molecular mass between 500 and 4000 Da, and applying the solution to soil containing farm plants.
Regarding the claim limitation ‘to control cabbage black spot disease caused…A brassicicola, Examiner interprets the limitation as intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention's limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children's Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (see MPEP § 2111. 02 (II)).
Regarding claims 2 and 3, claims 2-3 of the ‘317 application teach dilution of the KHP solution.
Regarding claim 4, claim 1 of the ‘317 application teaches a method of using a KHP solution to promote the growth of farming plants under acidity stress comprising preparing a KHP solution by mixing 66g feathers and 44 kg water at a temperature of 195 °C and pressure 16 kg/cm2; solution containing at least 253 peptides of molecular mass between 500 and 4000 Da, and applying the solution to soil containing farm plants. Examiner notes that the reference does not teach 50 kg feather and 40 kg water, 185 °C and pressure 12 kg/cm2 . Generally, differences in concentration, temperature, or pressure will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding the claim limitation ‘to control cabbage black spot disease caused…A brassicicola, Examiner interprets the limitation as intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention's limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children's Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (see MPEP § 2111. 02 (II)).
Regarding claims 5 and 6, claims 2-3 of the ‘317 application teach dilution of the KHP solution.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims (“B” in Table below) as listed in the table below in copending Application Numbers (“A” in Table below) as listed in the table below(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims pertain to a method of using a keratin hydrolysis peptide (KHP) solution by preparing a solution from mixing feathers and water in a sealed container, hydrolyzing said mixture according to specific time, pressure, and duration parameters, and using a mass spectrometer to confirm peptide content, and administering the solution to soil and/or to leaf surfaces of specified plants (“C” in Table below).
The instant claims differ from the copending claims in that (1) both claim sets have slightly different but still qualitatively similar numerical amounts with regard to mass of feathers, water content percentage, and hydrolysis temperature, pressure, and duration terms and (2) the instantly claimed method applies the solution to soil around cabbage plants by infusion to the soil and/or an intended spray to plant leaf surfaces, whereas the copending claims are drawn to methods of applying the solution to the soil and/or leaves of the plants, specified particularly in the table below.
18428193 1-8 tomato
18898195 1-9 rice
18536214 1-6 coffee
* Issue fee has been paid, but patent not yet issued
It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to adjust the hydrolysis conditions as part of routine optimization procedure as is customary in the art, with a reasonable expectation of success. One would have been motivated to do so to achieve the desired degree of hydrolysis reaction efficacy in a method of preparing a peptide solution from feathers in aqueous solution based on the copending claims’ suggestions of hydrolysis reactions for preparing keratin hydrolysis peptide solutions for enhancing crop yields and quality. Further, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to substitute one for the other, the cabbage crop instantly claimed for and/or in place of the crops of the copending claims as detailed in the Table above, with a reasonable expectation of success. One would have been motivated to apply the prepared solution to soil and/or leaves of alternate food or cash crops to achieve similar end results of enhanced production yield and quality of said food or cash crops.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No 12721339 (hereinafter “the ‘339 patent). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons.
Claims 1-6 of the ‘339 patent pertain to a method of using a keratin hydrolysis peptide (KHP) solution to mitigate dames to cotton plants caused by herbicides, comprising preparing a solution from mixing 50g feathers and 40kg water in a sealed container, hydrolyzing said mixture according to specific time, pressure, and duration parameters, and using a mass spectrometer to confirm peptide content, and administering the solution to soil and/or to leaf surfaces of cotton plants.
The instant claims differ from the copending claims in that (1) both claim sets have slightly different but still qualitatively similar numerical amounts with regard to mass of feathers, water content percentage, and hydrolysis temperature, pressure, and duration terms and (2) the instantly claimed method applies the solution to soil around cabbage plants by infusion to the soil and/or an intended spray to plant leaf surfaces, whereas the copending claims are drawn to methods of applying the solution to the soil and/or leaves of the plants.
It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to adjust the hydrolysis conditions as part of routine optimization procedure as is customary in the art, with a reasonable expectation of success. One would have been motivated to do so to achieve the desired degree of hydrolysis reaction efficacy in a method of preparing a peptide solution from feathers in aqueous solution based on the copending claims’ suggestions of hydrolysis reactions for preparing keratin hydrolysis peptide solutions for enhancing crop yields and quality. Further, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to substitute one for the other, the cabbage crop instantly claimed for and/or in place of the crops of the copending claims as detailed in the Table above, with a reasonable expectation of success. One would have been motivated to apply the prepared solution to soil and/or leaves of alternate food or cash crops to achieve similar end results of enhanced production yield and quality of said food or cash crops.
Accordingly, claims 1 and 4 are rendered obvious. Regarding claims 2, 3, 5 and 6, claims 3 and 6 of the ‘339 patent teach dilution of the KHP solution.
Claims 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No 12527269 (hereinafter “the ‘269 patent). Although the claims at issue are not identical, they are not patentably distinct from each other. the claims of the ‘269 patent are drawn to a method of using a KHP solution to increase the fertilizer use efficiency of soybean plants.
The instant claims are rejected over the ‘269 patent claims for the same reasons as set forth in the ‘339 patent ODP rejection.
Conclusion
No claims are allowed.
Claims 1-6 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTINA M HELLMAN whose telephone number is (571)272-2836. The examiner can normally be reached M-F 9:00 am-5:30 pm.
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/KRISTINA M HELLMAN/Examiner, Art Unit 1654
