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 .
Claim Objections
Claim 1 is objected to because of the following informalities: in the first instance of mentioning the claimed microbes, the Applicant should put the ascension number of all deposited microbes. Appropriate correction is required.
Claims 6 and 7 are objected to because of the following informalities: the superscript “carrots” do not need to be included in the exponent; it is currently written “10^9,” but should be “109”. Appropriate correction is required.
Claims 7-9 are objected to because of the following informalities: Bacteroidaceae and Lachnospiraceae are both “families” and do not need to be italicized. 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 1-9 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 1-9 all provide for a “use” of a composition. However, since “use” is interpreted as a method, and there are no method steps that follow, it is unclear how to perform the claimed “use.” See MPEP 2173.05(q).
Claims 1, 3-5 and 7 provide for the “R in a circle” trademark symbol, which contains the trademark/trade name PLBK®. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe specifically deposited microbial strains and, accordingly, the identification/description is indefinite.
Claims 7-9 are indefinite because it is unclear how to interpret the limitations drawn to “Bacteroidaceae Bacteroides and/or Lachnospiraceae Ruminococcus.” First, with respect to “Bacteroidaceae Bacteroides,” it is noted that Bacteroides is a genus found in the family Bacteroidaceae. Generally, if the Applicant wants the whole genus Bacteroides, there is no need to claim the family too, as such, it is unclear why the family is claimed as well. Claiming the family then a genus that falls in the family, without any further distinction suggest that the claim provides for a broad limitation followed by a narrowing limitation. See MPEP 2173.05(c). Second, with respect to “Lachnospiraceae Ruminococcus,” it is noted that the genus Ruminococcus falls in the Oscillospiraceae family, and not the Lachnospiraceae family. As such, it is unclear why Ruminococcus would be listed with the wrong family. If the Applicant wants just the genus Ruminoccocus, there is no need to list its family. If the Applicant is trying the claim the entire Lachnospiraceae family, commas should be placed in the appropriate locations.
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 lacks patentable utility. All of the cited claims provide for a “use” of a composition, wherein a “use” is interpreted as a method. However, none of these “use” claims provide for any method steps. A method with no method steps has no utility and is not compliant under 35 USC 101. See MPEP 2173.05(q).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID W BERKE-SCHLESSEL whose telephone number is (571)270-3643. The examiner can normally be reached M-F 8AM-5:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melenie Gordon can be reached at 571-272-8037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID W BERKE-SCHLESSEL/ Primary Examiner, Art Unit 1651
Prosecution Insights