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 .
This office action is in response to applicant’s claims filed March 3, 2025.
Claims 1-15 are pending.
Claim Objections
Claims 5-12 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot depend from another multiple dependent claim. See MPEP § 608.01(n). Accordingly, the claims have not been further treated on the merits.
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 13-15 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 13-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: the claims recite a use without any method steps. Use claims are not permitted. Claims 13-15 provide for the use of light, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claims 1 and 2 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 conversion of indican to indigo is mediated solely by light exposure but applicant also indicates in the specification that the light converts indican to indoxyl and that the presence and a spontaneous oxidation reaction converts the indoxyl to indigo indicating the oxygen present in the aqueous solution and in air would also mediate the conversion (applicant’s specification page 6, lines 15-30). The examiner is unclear as to the role of oxidation and if oxygen is considered a mediator. Clarification is requested as to what is meant by “mediated solely by light exposure”. Claim 2 is also rejected for being dependent upon claim 1 and inheriting the same deficiency. For examination purposes the examiner interpreted the claims to allow for air oxidation.
Claims 9-12 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. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 9 recites the broad recitation “one or more of yarn, textile and fabric” and the claim also recites “preferably cotton-based product” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Claims 10-12 are also rejected for being dependent upon claim 9 and inheriting the same deficiency.
Claim 12 is 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. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 12 recites the broad recitation “mixing components (i),(ii), and (iii)” and the claim also recites “preferably at reaction conditions wherein less than 2% free oxygen is present”” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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 therefore, subject to the conditions and requirements of this title.
Claims 13-15 are rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
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 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.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Bechtold et al. (Process balance and product quality in the production of natural indigo from Polygonum tinctorium Ait. Applying low technology methods. Bioresource Technology 81 (2002) 171-177).
Bechtold teaches extraction of indican from indigo plant and storage at room temperature for 4-5 days in open polyethylene containers in the presence of sunlight which includes the claimed wavelength range of 300-470 nm (page 173, left column, section 2.2; Figure 1; page 172, right column paragraph before Table 1, only samples 12 and 13 were stored without sunlight, indicating others were stored in the presence of sunlight). Examples 1-11 are stored at room temperature (20°C 0> Applicant’s aqueous solution and process also includes oxygen as oxygen is dissolved in water and no inert environment is used so air is present, therefore based on the interpretation of applicant’s method by examiner as allowing for air oxidation, the teachings of Bechtold are sufficient to anticipate the material limitations of the instant claims.
In the alternative, if the teachings of Bechtold are not sufficient to anticipate the material limitations of the instant claims, it would have been nonetheless obvious to arrive at the claimed invention as Bechtold teaches water extraction of indican from indigo plants and leaving the aqueous indigo solution exposed to sunlight for 4-5 days at room temperature wherein indigo is produced. This method is expected to produce indigo by applicant’s definition of using sufficient radiant energy (sunlight of the same wavelength 300-470 nm) to convert at least 50% of the indican to indigo. Exposure of the same aqueous solution of indican to the same wavelength for the same time period at the same temperature would be expected to produce an identical conversion amount and identical glycosidic bond cleavage.
Claims 3-11 and 13-15 are rejected under 35 U.S.C. 103 as obvious over Bechtold et al. (Process balance and product quality in the production of natural indigo from Polygonum tinctorium Ait. Applying low technology methods. Bioresource Technology 81 (2002) 171-177) in view of Dueber (WO 2016141207).
Bechtold is relied upon as set forth above.
Bechtold does not specify dyeing cotton with while exposed to indican solution.
Dueber teaches soaking cotton in indican and converting to indigo to dye the denim.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to use the indigo production methods from indican in the indigo dyeing of cotton as Dueber teaches it is known to soak cotton fabrics in indican and dye them by converting the indican to indigo. Using the known method of producing indigo in sunlight of Bechtold in the indigo dyeing of Dueber would be obvious as substituting one known method effective for converting indican to indigo for another also effective method is obvious to try. Adjusting the concentration of indican, radiant exposure time, radiation amount of 20-220 W/m2 and final radiant exposure could be determined through routine experimentation as this would directly impact how much indigo is produced and the final shading of the cotton fabric.
Claim 12 is rejected under 35 U.S.C. 103 as obvious over Bechtold et al. (Process balance and product quality in the production of natural indigo from Polygonum tinctorium Ait. Applying low technology methods. Bioresource Technology 81 (2002) 171-177) in view of Dueber (WO 2016141207) and further in view of Inoue (Characterization of UDP-glucosyltransferase from Indigofera tinctoria. Plant Physiology and Biochemistry 121 (2017) 226-233).
Bechtold and Dueber are relied upon as set forth above.
Bechtold and Dueber do not specify preparing indican from indoxyl, nucleotide sugar and polypeptide with glycosyltransferase enzyme activity.
Inoue teaches indican is synthesized from indoxyl, UDP-glucose and is catalyzed by UDP-glucosyltransferase (abstract).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to use the prepare indican using indoxyl, a nucleotide sugar and a polypeptide having glycosyltransferase activity as Inoue teaches indoxyl, UDP-glucose and is catalyzed by UDP-glucosyltransferase effectively produce indican and Bechtold and Dueber invite the inclusion of indican as a starting material for indigo dyeing of cottons. Substituting a known effective method of producing indican for another known effective method is obvious to try.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMINA S KHAN whose telephone number is (571)272-5573. The examiner can normally be reached Monday-Friday, 9am-5:30pm EST.
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, Angela Brown-Pettigrew can be reached at 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMINA S KHAN/Primary Examiner, Art Unit 1761
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