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 status
The examiner acknowledged the amendment made to the claims on 08/19/2025.
Claims 1, 3, 8-9, 11-15 and 17-27 are pending in the application. Claims 1 and 23 currently amended. Claims 2, 4, 6, 7,10, 16 and 28 are previously cancelled. Claim 5 is currently cancelled. Claims 14-15 and 18-20 are withdrawn in response to the restriction/election requirement. Rest of claims are previous presented. Claims 1, 3, 8-9, 11-13, 17 and 21-27 are hereby examined on the merits.
Examiner Note
Any objections and/or rejections that are made in the previous actions and are not repeated below, are hereby withdrawn.
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, 3, 8, 9 and 21-27 are rejected under 35 U.S.C. 103 as being unpatentable over Wei CN 102870877 A (English translation relied upon for reference, hereinafter referred to as Wei) in view of Parr US Patent No. 4,464,469 (hereinafter referred to as Parr), Richter-Friis WO 2005/058474 A1 (cited in the IDS filed 12/24/2024, hereinafter referred to as Richter-Friis), Sugio US Patent Application Publication No. 2006/0154842 A1 (hereinafter referred to as Sugio) and Akolkar, “Lactase production from Lactobacillus acidophilus”, World Journal of Microbiology & Biotechnology, 2005, 21, pages 1119-1122 (hereinafter referred to as Akolkar).
Regarding claims 1, 3, 8, 9, 22 and 24-27, Wei teaches that lactase enzyme is used to hydrolyze lactose in the process of making a fermented dairy product such as yogurt with a starter culture that includes Lactobacillus, Bifidobacterium and Streptococcus, in which the lactase enzyme is added either concurrently with the starter culture or is added before the starter culture is added (Abstract; 0011;0053).
Wei is silent regarding the lactase enzyme is in the form of frozen pellet having an average diameter of between 0.01-15 mm, such as 0.25-3 mm, 0.01-10 mm 0.1-10 mm and 0.1-5 mm as recited in claims 24-27, wherein the water content of the frozen pellet is at least 20 wt%, and wherein frozen pellet comprising sodium chloride or glycerol as a preservative at a concentration of 1-10 wt%.
Parr teaches that lactase in the form of solution is relative unstable, and for a long storage, the solution should be kept at low temperature in the presence of a polyol such as glycerol, wherein glycerol serves as both a stabilizing agent and antimicrobial agent (column 1, line 27-41).
Richter-Friis teaches a method of handling/storing an active pharmaceutical ingredients such as protein / enzyme preparation, comprising providing a liquid composition of the protein / enzyme preparation, and adding the droplet of the liquid composition to a container containing a cryogenic medium such as liquid nitrogen to form cryogranules, followed by storing at low temperature of -80-0 °C, such as -40-10 °C (page 2, line 9-10; page 3, line 12-22; page 7, line 16-19 and 25-31; page 9, line 22-26; page 10, line 19-20). Richter-Friis teaches that the amount of liquid composition required for each droplet is typically in the range of 0.5-250 µL, e.g., 1-100 µL such as 2-20 µL (page 8, line 8-9) which results in an average diameter of the cryogranules being in the range of 0.1-20 mm such as in the range of 0.5-10 mm (page 13, line 17-20; claim 4). Furthermore, Richter-Friis teaches that the container containing the cryogranules of the liquid composition is capable of being stored in a period of more than six months, preferably more than one year, preferably more than five years, without loss of the activity of the active pharmaceutical ingredient (page 10, line 24-27).
Sugio teaches storing an enzyme (e.g., lipoxygenase) by freezing for storage, wherein 10% glycerol is included to retain activity (0036).
Both Wei and Parr are directed to lactase. Wherein Parr teaches lactase should be kept at a low temperature for long term storage, Richter-Friis teaches that the droplet-freezing in a cryogenic medium to form a bead or cryogranules is suitable for preserving a protein/enzyme for storage., and wherein Parr teaches that glycerol serves as both a stabilizing agent and antimicrobial agent in the lactase enzyme solution, Sugio teaches that the amount of glycerol should be at 10% in an enzyme preparation for retaining the enzyme activity.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Wei by subjecting a lactase enzyme solution to droplet-frozen treatment in the presence of 10% glycerol to make a frozen enzyme formulation in the form of frozen pellets followed by storing at a low temperature of -80-0 °C, such as -40-10 °C upon the enzyme is produced. Doing so would have delivered the benefit of preserving the enzyme to retain its enzymatic activity for the later use. One of ordinary skill in the art, before the effective filing date of the claimed invention, would have had a reasonable expectation of success for doing so because prior art has established that the droplet-frozen method followed by storing at a low temperature could preserve an enzyme to retain its enzymatic activity for future use.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have added the droplet of the lactase enzyme solution in a volume range of 0.5-250 µL, e.g., 1-100 µL such as 2-20 µL to obtain frozen pellets the average diameter of which being in the range of 0.1-20 mm (or narrowly 0.5-10 mm) with reasonable expectation of success, for the reason that prior art has established that frozen pellets/cryogranules/beads of aforementioned size are suitable for handing or storage. Note that Example 2 of the specification recites that a droplet of 10-15 microliter enzyme solution will result in a frozen pellet having a diameter of 250 microns to 3 mm.
The average diameter as disclosed by prior art overlaps with the ranges as recited in claims 1 and 24-27. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
The droplet-freezing method as disclosed by Richter-Friis necessarily produces a free flowing frozen enzyme pellet (page 5, line 18-20 of the instant specification recites that droplet-frozen of enzyme in liquid nitrogen results in free-flowing pellets).
The lactase enzyme solution in the form of the frozen pellet reads on the frozen enzyme formulation as recited in claim 1.
Richter-Friis teaches that the liquid composition that comprises protein/enzyme is preferably an aqueous solution or suspension (page 3, line 12-15, 22 and 26).
On the limitation about the water content in the frozen pellet: the water content in the formulation determines the concentration or dose of the enzyme in the pellet. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have optimized the concentration of enzyme through varying the amount of water so as to prepare a pellet with desirable dose of enzyme for use in milk. As such, the amount of water as recited is merely an obvious variant of the prior art.
Further, Richter-Friis teaches that in producing the cryogranules of protein/enzyme, the aqueous solutions comprising the protein/enzyme has at least 50% (v/v) water (page 3, line 12-15, 22 and 26).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Wei by making an aqueous solution that has at least 50% (v/v) water with reasonable expectation of success, for the reason that prior art has established that an aqueous protein/enzyme solutions that comprises at least 50% (v/v) water is suitable for making frozen pellets /beads /cryogranules. Aqueous solution containing at least 50% (v/v) water is interpreted to read on the limitation that water content is at least 20% (w/w).
Wei in view of Parr, Richter-Friis and Sugio teaches a lactase enzyme formulation for treating milk but is silent regarding that the enzyme formulation is a ultra-filtrate from fermentation broth, or is produced by a microorganism, wherein the microorganism or any organism is present in an amount of less than 5x 104 CFU per gram of frozen enzyme formulation.
Akolkar teaches that lactase could be produced by fermentation of a Lactobacillus acidophilus strain, and the lactase produced could be further purified by ultrafiltration of fermentation broth (e.g., intracellular extract, which is necessarily taken from the fermentation media) to obtain an isolated lactase in the permeate or filtrate (page 1120, “Fermentation for lactase production”, “Instruments” and “Enzyme purification and characterization”; page 1121, “Downstream processing and characterization of lactase”), and the resultant isolated lactase is able to cleave lactose effectively (page 1121, “Comparison with the commercial sample”).
Both Wei and Akolkar are directed lactase. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Wei by using a lactase obtained through purifying through ultrafiltration a microorganism fermentation broth as disclosed by Akolkar with reasonable expectation of success, for the reason that prior art has established that a lactase can be successfully obtained by microbial fermentation and purified by ultrafiltration.
Regarding the amount of microorganism in the frozen enzyme formulation as recited in claims 8-9: Akolkar teaches the microorganism cells are lysed in a homogenizer at a high pressure in two passes followed by ultrafiltration to extract the enzyme (page 1120, “Instruments” and “Enzyme purification and characterization”; page 1121, “Downstream processing and characterization of lactase”). It thus follows that in the resulting filtrate or permeate, the amount of microorganism is low. Further, given that the desired product in the process of Akolkar is lactase enzyme as opposed to the host microorganism or any other microorganism, one of ordinary skill in the art would have been motivated to optimize the above conditions of separation (e.g., lyse and UF) so as to ensure the efficient lyse of the microorganism and recovery of the lactase enzyme. As such, the amount of microorganism as recited in the claims are merely an obvious variant of the prior art.
Regarding claim 21, Wei as recited above teaches a lactase enzyme preparation and a starter culture is added to milk concurrently, and Wei in view of Parr, Richter-Friis, Sugio and Akolkar teaches that the lactase enzyme preparation is in the form a frozen enzyme formulation. Thus collectively, the frozen pellet of lactase formulation and the starter culture reads on the limitation about a product comprising the frozen enzyme formulation in a starter culture.
Regarding claim 23, given that Richter-Friis teaches the same droplet-frozen method to make a frozen enzyme pellet as the method as recited in the instant disclosure (e.g., example 1), it logically follows that the frozen enzyme pellet as disclosed by prior art has the stability of claim 23. See MPEP 2112.01 I, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Claims 11, 12, 13, 17 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Wei in view of Parr, Richter-Friis, Sugio and Akolkar as applied to claim 1 above, and further in view of Stavnsbjerg US Patent No. 8,481,027 (hereinafter referred to as Stavnsbjerg).
Regarding claims 11, 12, 13, 17 and 21, Wei in view of Parr, Richter-Friis, Sugio and Akolkar as recited above teaches a frozen enzyme formulation and a starter culture comprising Lactobacillus, Bifidobacterium and Streptococcus, but is silent regarding the starter culture in the form of frozen pellets, or that the frozen pellet comprises a cryoprotectant.
In the same field of endeavor, Stavnsbjerg teaches a highly concentrated pellet-frozen LAB dairy starter culture comprising Lactococcus spp. or Streptococcus spp., wherein at least 5 x 109 CFU of viable LAB is present in one gram of pellet (column 1, line 24-30 and 43-46; column 6, line 27-35; column 7, line 8-15 and 23-29); Stavnsbjerg further teaches that the frozen LAB pellets further comprises a cryoprotectant to increase viability of the bacteria culture (column 8, line 50-53). Stavnsbjerg further teaches that pellet-frozen starter culture is usually commercially available.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Wei by including the viable LAB count as disclosed by Stavnsbjerg and have had a reasonable expectation of success for the reason that the prior art has established that pellets that comprise at least 5 x 109 CFU of viable LAB/g pellets are suitable for function as a dairy starter culture.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Wei by including cryoprotectant in the pellets for increasing viability of the bacteria culture. One of ordinary skill in the art, before the effective filing date of the claimed invention, would have had a reasonable expectation of success for doing so because the prior art has established that including a cryoprotectant in the LAB frozen pellets could increase viability of the bacteria culture.
Given that Wei teaches that the lactase enzyme and the starter culture can be used together or sequentially, claim 21 limitation is met when the two are used together, and claim 12 limitation is also rendered obvious by prior art where the enzyme and the starter culture are not used in the same time.
Response to Arguments
Applicant's arguments filed 08/19/2025 have been fully considered but they are not persuasive.
Applicant argues on page 7 of the Remarks that Wei silent regarding about the frozen enzyme formulation of the enzyme, or the pellet, or 1-10% preservative, or the fermentation broth.
This argument is considered but found piecemeal. The rejection is over Wei in view of Parr, Richter-Friis, Sugio and Akolkar, not over Wei alone. The cited arts in combination arrive at all the ingredients of claim 1.
For the same reason above, applicant’s arguments on page 7-8 of the Remarks regarding Parr, Richter-Friis or Sugio failing to teach fermentation broth are not persuasive, either.
The argument about Larsen on page 8 is considered but found moot because the refence is no longer relied upon in the instant office action.
Regarding Parr, applicant argues on page 7 of the Remarks that Parr avoids the need for freezing the formulation, and that Parr’s invention is the discovery that high concentration (e.g., 50-70%) sorbitol is particularly effective than glycerol in stabilizing aqueous enzyme solution. Applicant further argues that Parr also shows that 70% lactose produces longer half-life than 45% glycerol. Applicant goes on to argue that one of ordinary skill in the art would be to motivated to use high concentration of lactose or at least 45% glycerol as opposed to 1-10% glycerol.
The argument is considered but found persuasive. The feature of storing lactase in high concentration of sorbitol or other polyol at ambient temperature is not what the rejection relies upon, rather, the rejection relies on the teaching of Parr that lactase in the form of solution is relative unstable, and for a long storage, the solution should be kept at low temperature in the presence of a polyol such as glycerol, wherein glycerol serves as both a stabilizing agent and antimicrobial agent. Further, Sugio as cited advises the concentration of glycerol (e.g., 10%) in the environment of storing an enzyme by freezing. Therefore, contrary to applicant’s assertion, one of ordinary skill in the art tasked with freeze storing an enzyme would have been motivated to include 10% glycerol in the formulation that contains lactase, for the purpose of preserving the enzyme to retain its enzymatic activity for a later use. Note that Parr is merely a secondary reference and the teaching of Parr about storing lactase in high concentration of sorbitol at ambient temperature is not relevant to the rejection.
For the reason set forth above, applicant’s arguments on page 9 of the Remarks regarding claims 8-9, 11-13 and 17 and 21 are not persuasive, either.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/CHANGQING LI/Primary Examiner, Art Unit 1791