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.
Claim Status
Claims 1-15 are currently pending.
Priority
The instant application claims foreign priority to KR10-2023-0192743 filed on 12/27/2023 and KR10-2024-0196892 filed on 12/26/2024 as reflected in the filing receipt dated on 02/05/2025. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant's election without traverse of Group I, claims 1-7 in the reply filed on 07/01/2026 is acknowledged. Claims 1-15 are pending in the application. Claims 8-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/01/2026. Accordingly, claims 1-7 are being examined on the merits herein.
Claim Objections
Claims 1 and 5-7 are objected to because of the following informalities:
Claim 1 recites the term “acid solution” while claims 5-7 recite the term “acidic solution”. For consistency and clarity, the claims should all recite “acid” or should all recite “acidic”.
Appropriate correction is required.
Nucleotide and/or Amino Acid Sequence Disclosures
REQUIREMENTS FOR PATENT APPLICATIONS CONTAINING NUCLEOTIDE AND/OR AMINO ACID SEQUENCE DISCLOSURES
Items 1) and 2) provide general guidance related to requirements for sequence disclosures.
37 CFR 1.821(c) requires that patent applications which contain disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.821(a) must contain a "Sequence Listing," as a separate part of the disclosure, which presents the nucleotide and/or amino acid sequences and associated information using the symbols and format in accordance with the requirements of 37 CFR 1.821 - 1.825. This "Sequence Listing" part of the disclosure may be submitted:
In accordance with 37 CFR 1.821(c)(1) via the USPTO patent electronic filing system (see Section I.1 of the Legal Framework for Patent Electronic System (https://www.uspto.gov/PatentLegalFramework), hereinafter "Legal Framework") as an ASCII text file, together with an incorporation-by-reference of the material in the ASCII text file in a separate paragraph of the specification as required by 37 CFR 1.823(b)(1) identifying:
the name of the ASCII text file;
ii) the date of creation; and
iii) the size of the ASCII text file in bytes;
In accordance with 37 CFR 1.821(c)(1) on read-only optical disc(s) as permitted by 37 CFR 1.52(e)(1)(ii), labeled according to 37 CFR 1.52(e)(5), with an incorporation-by-reference of the material in the ASCII text file according to 37 CFR 1.52(e)(8) and 37 CFR 1.823(b)(1) in a separate paragraph of the specification identifying:
the name of the ASCII text file;
the date of creation; and
the size of the ASCII text file in bytes;
In accordance with 37 CFR 1.821(c)(2) via the USPTO patent electronic filing system as a PDF file (not recommended); or
In accordance with 37 CFR 1.821(c)(3) on physical sheets of paper (not recommended).
When a “Sequence Listing” has been submitted as a PDF file as in 1(c) above (37 CFR 1.821(c)(2)) or on physical sheets of paper as in 1(d) above (37 CFR 1.821(c)(3)), 37 CFR 1.821(e)(1) requires a computer readable form (CRF) of the “Sequence Listing” in accordance with the requirements of 37 CFR 1.824.
If the "Sequence Listing" required by 37 CFR 1.821(c) is filed via the USPTO patent electronic filing system as a PDF, then 37 CFR 1.821(e)(1)(ii) or 1.821(e)(2)(ii) requires submission of a statement that the "Sequence Listing" content of the PDF copy and the CRF copy (the ASCII text file copy) are identical.
If the "Sequence Listing" required by 37 CFR 1.821(c) is filed on paper or read-only optical disc, then 37 CFR 1.821(e)(1)(ii) or 1.821(e)(2)(ii) requires submission of a statement that the "Sequence Listing" content of the paper or read-only optical disc copy and the CRF are identical.
Specific deficiencies and the required response to this Office Action are as follows:
Specific deficiency - This application fails to comply with the requirements of 37 CFR 1.821 - 1.825 because the application does not contain a statement that the CRF is identical to the "Sequence Listing" part of the disclosure, as described above in item 1), as required by 37 CFR 1.821(e)(1)(ii) or 1.821(e)(2)(ii).
Required response - Applicant must provide such statement.
Specific deficiency - This application contains sequence disclosures in accordance with the definitions for nucleotide and/or amino acid sequences set forth in 37 CFR 1.821(a)(1) and (a)(2). However, this application fails to comply with the requirements of 37 CFR 1.821 - 1.825.
The sequence disclosures are located in Paragraph 0071 (four sequences).
Required response – Applicant must provide:
A "Sequence Listing" part of the disclosure, as described above in item 1); as well as
An amendment specifically directing entry of the "Sequence Listing" part of the disclosure into the application in accordance with 1.825(b)(2);
A statement that the "Sequence Listing" includes no new matter in accordance with 1.825(b)(5); and
A statement that indicates support for the amendment in the application, as filed, as required by 37 CFR 1.825(b)(4).
If the "Sequence Listing" part of the disclosure is submitted according to item 1) a) or b) above, Applicant must also provide:
A substitute specification in compliance with 37 CFR 1.52, 1.121(b)(3) and 1.125 inserting the required incorporation-by-reference paragraph, consisting of:
A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
A copy of the amended specification without markings (clean version); and
A statement that the substitute specification contains no new matter;
If the "Sequence Listing" part of the disclosure is submitted according to item 1) b), c), or d) above, Applicant must also provide:
A replacement CRF in accordance with 1.825(b)(6); and
Statement according to item 2) a) or b) above.
Drawings
The drawings are objected to because 37 CFR 1.84(u)(1) (see MPEP 507(e)) states: Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. In the instant case, the partial views “Fig. 5a and Fig. 5b” are identified using lower case letters.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112(b)
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 1-7 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.
Claim 1 recites the term “golden seasilk fiber”. It is unclear whether the seasilk fiber is golden in color or made of gold, etc. If the seasilk fiber is golden in color, it is further unclear what colors or shades or reflected wavelengths, etc. are encompassed by the term. For instance, are all variations of yellow, orange, red, or brown considered “golden”? Because one of ordinary skill in the art could not readily ascertain the metes and bounds of the claimed invention, the claim is indefinite. Claims 2-7 are rejected by virtue of their dependency on claim 1, as they fail to resolve the ambiguity in question.
Claim 3 recites the limitation “golden structural color”. In addition to the ambiguity of the term “golden” as discussed above in relation to claim 1, it is further unclear what is meant by the term “structural color”. Is “structural color” simply referring to the appearance of the sea silk fiber structure, or is golden “structural color” chemically or structurally distinct from the term “golden” used to describe the seasilk fiber produced in claim 1? Accordingly, the scope of the claim is indefinite.
Claim 4 recites the limitation “a structural color”. In addition to the ambiguity of the term “structural color” as discussed above in relation to claim 3, it is further unclear whether “a structural color” requires an additional color that is chemically or structurally distinct from the “golden” seasilk fiber produced in claim 1. Accordingly, the scope of the claim is indefinite.
Claim 6 recites the term “citron juice” followed by the term “sugar citron juice”. Because citron juice comprises natural sugars, it is unclear if these two solutions are meant to be chemically distinct. Therefore, the scope of the claim is indefinite.
Claim 7 recites the limitation “wherein the seasilk fiber derived from Atrina sp. byssus and the acidic solution are treated”. However, claim 7 depends from claim 1, wherein only the seasilk fiber is treated. It is unclear if there is an additional unrecited method step wherein the acidic solution is also treated with something. Are they each individually treated at this ratio relative to the weight of another unrecited substance, or is the claim meant to indicate that when the seasilk fiber treated with acidic solution, the weight ratio of seasilk fiber to the acidic solution is 1:1000 to 1000:1? Therefore, the scope of the claim is indefinite.
Claim 7 recites the parenthetical limitation “w/w”. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by the parenthetical language is an example or a required feature of the claims. The Examiner suggests removing the parenthetical language to overcome the rejections.
Claim Interpretation
The term “seasilk fiber” recited in the instant claims is interpreted as being interchangeable with the term “byssus fiber” in the prior art, as is consistent with Applicant’s instant specification, which teaches that both the seasilk fibers directly separated from Atrina sp. byssus and the native byssus itself can be used as a seasilk fiber [0034-0035].
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Pasche (Dissertation, pg. 1-148; published: 08/26/2019; PTO-892).
Pasche teaches that Pinna nobilis is an endangered and protected species, and the tradition of sea silk generation from P. nobilis byssus is likely to become extinct [pg. 80, third para.]. To better understand the processing of -P. nobilis byssus fibers into sea silk, Pasche compares the properties of byssal threads produced by various treatments, including treatment of P. nobilis byssus fibers with citric acid solution or lemon juice solution, which produced fibers having golden color [pg. 2, second para.; pg. 85, sec. 7.3-7.4; pg. 86-89, sec. 7.5.1 and fig. 39-41].
Pasche further teaches that byssus fibers from the evolutionarily-related species Atrina pectinata exhibit similar biochemical composition and mechanical properties to those derived from P. nobilis byssus [fig. 24-25; pg. 56, first para.; pg. 57, first para.; pg. 78, first para.]. Additionally, the reference suggests other byssus wastes from the pearl and food industries could be processed in a similar manner to P. nobilis as cheap and ecological way to produce fine-tunable materials with precise mechanical properties and appearances [para. spanning pg. 119-120].
Regarding claim 1: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Pasche’s process for producing golden sea silk fibers by substituting the P. nobilis byssus fibers with byssus fibers derived from Atrina pectinata. One of ordinary skill in the art would have been motivated to substitute one known byssus fiber for another in order to provide an alternative process for producing golden sea silk fibers having similar properties and appearance that is both cheap and ecological without relying on the endangered and protected species P. nobilis. Adapting the method of Pasche to other byssus waste products is expressly suggested by the prior art reference. Because Pasche discloses the high degree of biochemical and structural similarities between the byssus fibers of the two species, one of ordinarily skill in the art would reasonably expect that acid-treating byssus fibers derived from Atrina pectinata would produce sea silk fibers with similar golden coloration to that of P. nobilis.
Regarding claims 2-4: The “wherein” clauses recited in the claims flow naturally from treating a sea silk fiber derived from Atrina sp. byssus with acid as claimed. This is supported by instant claim 3, wherein the golden structural color is “induced by acid treatment”, and by Applicant’s own specification and drawings wherein sea silk fibers derived from byssus of the same species as the prior art (e.g., Atrina pectinata) and treated with the same acid as used in the prior art process (e.g., lemon juice or citrate) comprise photonic crystal proteins consisting of the amino acids sequences as set forth in SEQ ID NO: 1 and 2 [0044; 0071; 00109; fig. 2], have a golden structural color [0036; fig. 5], and are stabilized through sugar-lectin interactions [fig. 4].
Regarding claim 5: The citric acid solution disclosed in the method of Pasche meets the claim limitation.
Regarding claim 6: The lemon juice solution disclosed in the method of Pasche meets the claim limitation.
Regarding claim 7: While Pasche does not disclose the exact ratio of byssus fibers to acid solution used in its method, the reference teaches that the color change toward yellow is a result of treating the fibers with lemon juice or citric acid solution [pg. 102, first para.; pg. 105, first para.]. Therefore, it would have been obvious to one of ordinary skill in the art to manipulate the relative concentrations of fibers and acidic solution in order to obtain sea silk fibers having desired level of color change.
It is generally noted that differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration 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). Given that Applicant did not point out the criticality of the ratio of components of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to determine where in a disclosed set of ranges is the optimum concentration. NOTE: MPEP 2144.05.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CLINKSCALES WISTNER whose telephone number is (571)270-7715. The examiner can normally be reached Monday - Thursday 8:00 AM - 5:00 PM ET.
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, Sue Liu can be reached at (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARAH C WISTNER/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616
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