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 .
Claims 57-76 are pending and examined on the merits.
Election/Restrictions
Applicant’s election without traverse of the azuki peptide species of amino acid SEQ ID NO: 1 in the telephonic election of 9/22/26, conveyed by Michael Miller, applicant’s representative, is acknowledged. Claim 59 is withdrawn as being drawn to a non-elected species.
Species Election
Restriction is required under 35 U.S.C. 121.
This application contains claims directed to the following patentably distinct classes of species, for which a single species election is required of each:
A fully defined azuki bean peptide fragment (e.g. SEQ ID NO: 1).
There is a search and/or examination burden for the patentably distinct species as set forth above because at least one or more of the following reason(s) apply:
The species are independent or distinct because as disclosed the different species have mutually exclusive characteristics for each identified species;
The species have acquired a separate status in the art due to their recognized divergent subject matter; and/or
The prior art on one species would not render obvious another, e.g. the species are not obvious variants of each other based on the current record, absent evidence to the contrary.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, the independent claims are generic.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or a grouping of patentably indistinct species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
Applicant is advised that the reply to this requirement to be complete must include an election of the invention to be examined even though the requirement be traversed (37 CRF 1.143).
Applicant is reminded that upon cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a petition under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Claim Rejections - 35 USC § 101 – Judicial Exception, Naturally Occurring Product
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 57-58, 60-69 and 71 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claim(s) recite(s) the elected azuki bean 12mer peptide fragment SEQ ID NO: 1 (VAEQEQEQAKRQ). This judicial exception is not integrated into a practical application because no further elements have been applied to and/or combined with the naturally occurring peptide fragment. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the fragment is claimed as it exists in nature, even if part of a larger peptide. Instant claims 60-69 are equally treated as naturally occurring as no further elements are mentioned relevanto to the hydrolysate other than naturally occurring elements and/or the product by process of arriving at such which is equally rejected as still being the product itself.
See e.g. Junaid et al. "Evolutionary insights into 3D genome organization and epigenetic landscape of Vigna mungo." Life. Sci Alliance 7:e202302074-e202302074(2023).
PNG
media_image1.png
145
641
media_image1.png
Greyscale
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.
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.
Claim(s) 57-58 and 60-76 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burham (U.S. Patent Publication No. 20160367676) in view of Junaid et al. "Evolutionary insights into 3D genome organization and epigenetic landscape of Vigna mungo." Life. Sci Alliance 7:e202302074-e202302074(2023).
Burham teach azuki beans for use in cosmetics (para 19), but does not expressly teach that the azuki bean comprises the elected peptide SEQ ID NO: 1.
Junaid provides the azuki bean protein comprising the elected peptide fragment SEQ ID NO: 1.
PNG
media_image1.png
145
641
media_image1.png
Greyscale
Further Junaid teaches the isolation of the protein from azuki beans comprising the elected peptide fragment of SEQ ID NO: 1. But does not teach use of subtilisin A to produce such into hydrolysate form from a bean source.
Dambmann fills this gap by teaching the use of the latter to isolate proteins from beans to form hydrolysates (see process described and claim 7).
Thus it would have been prima facie obvious to employ an azuki bean as contemplated by Burham for use in a cosmetic comprising the protein of Junaid which in turn comprises the elected peptide fragment SEQ ID NO: 1 for use in the cosmetic of Burham, and further the process of making such in view of Dambmann.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAURY AUDET whose telephone number is (571)272-0960. The examiner can normally be reached on M-Th. 7AM-5:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lianko Garyu can be reached on 571-270-7367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/MAURY A AUDET/Primary Examiner, Art Unit 1654
