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 .
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-11 in the reply filed on 7/20/2026 is acknowledged.
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 1-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a product of nature without significantly more. The claim(s) recite(s) “biologically prepared fibers”. This judicial exception is not integrated into a practical application because the fibers are a product of biology (nature). The most analogous product of nature in the MPEP would be strands of DNA. Similar to DNA strands, the fibers that are biologically made are a naturally occurring product of nature which are considered to be “discovered” rather than “invented”. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the only additional part of the composition is a solvent which is non-limited and an optional enzyme component.
Claim 2 is directed to an intended use of the composition which also does not particularly limit the composition claim.
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 4 and 5 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 4 requires a loading of biologically prepared fibers to be 4-15% but uses units “wt/vol %”. It is not clear how applicant intended to describe the concentration of fibers. Claim 5 uses the same units “wt/vol %”
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.
Claim(s) 1-3, 6-7, and 9-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by BIANCO et al. (US 2021/0108362), claims 6-7 evidence by FOSSEY et al “Conformational Energy Studies of β-Sheets of Model Silk Fibroin Peptides. I. Sheets of poly(Ala-Gly) Chaines” (1991).
Regarding claims 1-3, 9, and 10,
BIANCO teaches a composition for the repairing of manufactures (structure) which in this context are textiles abstract. The composition includes water (solvent) and fibroin particles [0029]-[0031]. The fibroin is a spider silk or B. Mori (biologically prepared) [0052]. The enzyme is optional and not required by the claim. The dried composition will form a network/scaffold of fibers.
Regarding claims 6-7,
B. Mori is a water insoluble silk II protein. Silk II by definition is a beta sheet formation, see FOSSEY abstract and page 1530.
Regarding claim 11,
The claim does not positively require the use of bacterial cellulose instead of silk fibroin. Accordingly, the claim limitations are not required if the parent claim is met by using silk fibroin.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by HOMMA et al. (US 2017/0226407).
Regarding claims 1-3,
HOMMA teaches a composition that includes a cellulose fiber abstract. The dispersant (solvent) can include water, organic solvent or oil [0112]. The cellulose fiber can be bacterial cellulose [0106]. The composition is used for cementing [0110] and [0144].
Claim(s) 1 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by MAKAROV et al. “Films of bacterial cellulose prepared from solutions in N-methylmorpholine-N-oxide: structure and properties” (Feb. 2020).
Regarding claims 1 and 8,
MAKAROV teaches a composition for making films that includes bacterial cellulose and N-methyl-N-oxide solvent abstract. When dried into a sheet, the fibers are considered to make a network/scaffold. The NMMO is a good solvent that allows quick formation of solution page 7.
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.
Claim(s) 4, 5, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over HOMMA et al. (US 2017/0226407).
Regarding claims 4, 5, and 11,
The cellulose fibers can be present up to 0.001-40% by mass for cementing [0134]. The reference does note expressly teach the claimed ranges. However, the claimed range is overlapped by the prior art range and is considered prima facie obvious, MPEP 2144.05.I.
Claim(s) 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over HOMMA et al. (US 2017/0226407) in view of WANG et al. (US 2023/0192548).
Regarding claims 9 and 10,
HOMMA teaches using cellulose fibers in a cementing composition but does not teach including an enzyme catalyst such as carbonic anhydrase. However, WANG teaches that when repairing concrete using carbonic anhydrase, the concrete is corrosion resistant abstract. At the time of filing the invention it would have been prima facie obvious to one of ordinary skill in the art to include carbonic anhydrase enzyme in the cementing composition of HOMMA to improve corrosion resistance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN MURATA whose telephone number is (571)270-5596. The examiner can normally be reached M-F 8:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MICHAEL CLEVELAND can be reached at 571272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN MURATA/Primary Examiner, Art Unit 1712
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