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 with of Species A (i.e., a single and specific Yarrowia lipolytica microorganism including: (1) a single and specific amino acid sequence of an insect fatty acyl desaturase (please see claims 1a and 14-20), Applicants’ election: SEQ ID NO: 1; (2) whether the microorganism comprises a deletion, disruption, mutation and/or reduction in the activity of one or more endogenous enzymes, Applicants’ election: deletion, and if so, indication of the following: a) whether the endogenous enzyme is one or more acetyl-CoA, and if so, a single and specific acetyl-CoA or combination thereof (please see claims 2(i)-2(iv) and 7), Applicants’ election: deletion of POX1; b) whether the endogenous enzyme is one or more (fatty) alcohol dehydrogenase, and if so, a single and specific (fatty) alcohol dehydrogenase or combination thereof (please see claim 2(ii)), Applicants’ election: deletion of FADH; c) whether the endogenous enzyme is one or more (fatty) alcohol oxidase, and if so, a single and specific fatty alcohol oxidase (please see claim 2(iii)), Applicants’ election: deletion of FAO1; d) whether the endogenous enzyme is one or more triacylglycerol lipase encoded, and if so, a single and specific triacylglycerol lipase (please see claim 2(v)), Applicants’ election; no deletion, disruption, mutation and/or reduction; (3) whether the microorganism further contains an exogenous elongase, and if so, a single and specific exogenous elongase (please see claims 4-6), Applicants’ election: the microorganism does not contain an exogenous elongase; (4) whether the microorganism further contains a pyridine nucleotide cytochrome reductase, and if so, a single and specific flavoprotein pyridine nucleotide cytochrome reductase (please see claim 9), Applicants’ election: the microorganism does not contain a pyridine nucleotide cytochrome reductase; and (5) whether the microorganism further contains a thioesterase, and if so, a single and specific thioesterase (please see claims 10-11), Applicants’ election: the microorganism does not contain a thioesterase), in the reply filed on August 28th 2024 is acknowledged.
Claims 4-6, 9-11 and 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed August 28th 2024.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/05/2026 has been entered.
Status of Claims
Claim 1 was originally filed on November 15th 2021.
The amendment received on January 24th 2022, added new claims 2-20.
The amendment received on June 30th 2025, amended claims 1 and 7.
The amendment received on March 5th 2026, amended claim 1.
Claims 1-20 are currently pending and claims 1-3, 7-8, and 12-14 are under consideration as claims 4-6, 9-11 and 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed August 28th 2024.
Priority
The present application claims the benefit under 35 U.S.C 119 (e) to U.S. Provisional Application No. 62/346,335 filed June 6th 2016. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C 119 (e) or under 35 U.S.C 120, 121, or 365 (c ) is acknowledged. The present application also claims status as a 371 (National Stage) of PCT/US2017/036136 filed June 6th 2017.
Sequence Interpretation/Claim interpretation
For claims 1 and 14, please note that the Examiner is interpreting the scope of an exogenous fatty acyl desaturase as open-ended, having at least 95% identity to SEQ ID NO: 1, with any N-/C-terminal additions. Since SEQ ID NO: 1 is 338 amino acids in length, a sequence that is at least 95% identical would encompass up to 19 modifications including any insertions, substitutions, deletions, etc.
With respect to the transmembrane desaturase sequence motif, the Examiner is interpreting HX3-4HX7-41(3 non-His)HX2-3(1 non-His)HHX61-189(40 non-His)HX2-3(1 non-His)HH as the necessary core structure needed for a sequence to be at least 95% identical to SEQ ID NO: 1 and exhibit the function of fatty acyl desaturase.
For claim 7, please note that the Examiner is interpreting ß-ketoacyl-CoA reductase, a ß-hydroxyacyl-CoA dehydratase, an enoyl-CoA reductase as any one or more endogenous proteins and not as one or more fatty acid elongation pathways.
Response to Amendment
The Declaration under 37 CFR 1.132 filed 03/05/2026 is insufficient to overcome the rejection of claims 1-3, 7-8 and 12-14 based upon the 35 U.S.C 103 rejection as set forth in the last Office action because:
1. Declarant makes reference to “Exhibit A” (see Declaration, filed 03/05/2026, pg. 1, third point). The filed declaration fails to include/incorporate additional documents and/or attachments corresponding to “a scientific exhibit”. Thus the alleged “Exhibit A” has not been submitted.
2. Declarant makes reference to Figs. 1-3 and SEQ ID NOs: 32, 38 and 36 (see Declaration, filed 03/05/2026, pg. 2, points 5-7). However, the showing is not commensurate in scope with the instant claims because it has not been clearly established whether the results were obtained with “a fatty acyl desaturase having at least 95% sequence identity to the amino acid sequence of an insect fatty acyl desaturase selected from the group consisting of SEQ ID NOs: 1, 2, 32 and 34” as recited in instant claim 1; nor with a fatty acyl desaturase having at least 95% sequence identity to SEQ ID NO: 1 (Applicant’s elected species).
Instead, Declarant’s statements confirm that the results were obtained by expressing the Helicoverpa zea desaturase having the amino acid sequence contained in SEQ ID NO: 32 or in SEQ ID NO: 38 or in SEQ ID NO: 36 in Y. lipolytica The Declarant also confirms the average amount of product, i.e., 2.1g/L, 1.49 g/L, and 1.1g/L, obtained with: Helicoverpa zea Z9 desaturase having the amino acid sequence contained in SEQ ID NO: 32; Cydia pomonella desaturase having the amino acid sequence contained in SEQ ID NO: 38; and Drosophila melanogaster desaturase having the amino acid sequence contained in SEQ ID NO: 36.
Thus, it is not sufficient for the declaration to include the average amount of product obtained as a result of independently expressing three different insect fatty acyl desaturases (i.e., H. zea, C. pomonella, D. melanogaster) in Y. lipolytica. Positive recitation of SEQ ID NOs: 32, 36 and 38 is not equivalent to having at least 95% sequence identity to an amino acid sequence selected from the group of SEQ ID NOs: 1, 2, 32, and 34 as claimed; nor to having at least 95% sequence identity to the elected species (i.e., SEQ ID NO: 1). Moreover, it is noted that the declaration is void of any statements pertaining to unexpected results and/or the alleged unexpected expression of “any insect fatty acyl desaturase, let alone a Helicoverpa zea species desaturase, in Y. lipolytica”.
Accordingly, Declarant’s arguments are not persuasive and claims 1-3, 7-8 and 12-14 remain rejected under 35 U.S.C 103.
Response to Arguments
1. Applicants’ arguments, see Remarks, filed 03/05/2026 with respect to the 35 U.S.C. 103 rejection; have been fully considered but are not persuasive. The 35 U.S.C. 103 rejection of claims 1-3, 7-8 and 12-14 has been maintained.
2. Applicants’ arguments, see Remarks, filed 03/05/2026 with respect to the nonstatutory double patenting rejection of claims 1-3, 7-8 and 12-14 as being unpatentable over claims 1-3 and 8, 11-13 of U.S. Patent No. 10,308,962 B1, have been fully considered but are not persuasive. The provisional nonstatutory double patenting rejection over US Patent No. 10,308,962 B1 has been maintained.
New Rejection
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.
1. Claims 1-3, 7-8 and 12-14 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 is drawn to a method of producing a mono- or poly- unsaturated C6-C24 fatty alcohol from a C6-C24 fatty acid. The method comprises three steps, wherein step a) a Yarrowia lipolytica microorganism is manipulated to comprise “an exogenous fatty acyl desaturase having at least 95% sequence identity to the amino acid sequence of an insect fatty acyl desaturase selected from the group consisting of SEQ ID NOs: 1, 2, 32 and 34 […], and wherein the insect fatty acyl desaturase is derived from Helicoverpa zea;”. However, it is unclear what structure is required by the term “derived from”, because SEQ ID NO: 1 is construed to meet the limitation of being derived from Helicoverpa zea, therefore a sequence that has 95% or more sequence identity to SEQ ID NO: 1 would encompass up to 19 modifications including any insertions, substitutions, deletions, etc.(See Sequence Interpretation above), and thus would be derived from the genus Helicoverpa. The term “derived from” is ambiguous because it hints at a fatty acyl desaturase having at least 95% sequence identity to the amino acid sequence of an insect fatty acyl desaturase regardless of its origin, that is, whether it is derived from Helicoverpa or from a distinct insect genus. Claims 2-3, 7-8 and 12-14 are also rejected because of their dependency upon an indefinite claim.
2. Claims 1-3, 7-8 and 12-14 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 a method which comprises steps a, b and c.
In step a), a Yarrowia lipolytica microorganism is manipulated to express an exogenous fatty acyl desaturase derived from Helicoverpa zea and having at least 95% sequence identity to the amino acid sequence of an insect fatty acyl desaturase selected from the group consisting of SEQ ID NOs: 1, 2, 32 and 34.
The subsequent steps are drawn to chemically esterifying and/or transesterifying the mono- or poly-unsaturated C6- C24 fatty acid to a C6-C24 fatty acid alkyl ester (FAAE) via Fischer esterification or acid or base catalyzed esterification or transesterification (i.e., instant step b); and chemically reducing the FAAE by contacting the FAAE with a reducing agent, a partial reducing agent, or a transition metal catalyst, wherein the reduction produces a mono- or poly-unsaturated C6-C24 fatty alcohol (i.e., instant step c).
However, it has not been clearly established whether the claimed method requires an intermediate harvesting or collecting step between instant step a) and instant step b). An ordinary skilled artisan would not be able to ascertain the metes and bounds of the claimed method with respect collecting or harvesting the product(s) generated by the genetically engineered Yarrowia lipolytica microorganism manipulated to comprise at least one nucleic acid molecule encoding an exogenous fatty acyl desaturase having at least 95% sequence identity to the amino acid sequence of an insect fatty acyl desaturase selected from the group consisting of SEQ ID NOs: 1, 2, 32, and 34. As such, the claim is indefinite, because the claim fails to particularly point out and distinctly claim a transition or intermediate step between the step of producing a mono or poly unsaturated C6-C24 fatty acid and the step of chemically esterifying and/or transesterifying the mono or poly unsaturated C6-C24 fatty acid. Claims 2-3, 7-8 and 12-14 are included in this rejection because of their dependency upon an indefinite claim.
Maintained/Modified Rejections in light of Amendments
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.
103 - KSR Examples of 'Rationales' Supporting a Conclusion of Obviousness
(Consistent with the "Functional Approach" of Graham)
Further regarding 35 USC 103(a) rejections, the Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007) (KSR) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.
Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.
Also, a reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976).
3. Claims 1-3, 8 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2016/159869 A1 with International Publication Date of October 6th 2016 and US Priority Data: 62/142,236, April 2nd 2015 (cited in the IDS filed on 02/04/2022) (here in after “David”); in view of Rosenfield et al. Insect Biochemistry and Molecular Biology 31 (2001) 349-964 (herein after “Rosenfield”) as evidenced GenCore., Sequence Alignment of Accession No. AF272342.1 versus instant SEQ ID NO: 1 (herein after “GenCore_1”); and US 5,124,491 Date of Patent June, 23rd 1992 (cited in the IDS filed on 02/04/2022)(herein after “Fleckenstein”).
Regarding claim 1, David teaches fungal cells and method for production of very long chain fatty acid derived products (see David, Title); where a genetically modified fungal cell is capable of producing very long chain fatty acid (VLCFA) or very long chain fatty acid derivative (see David, Abstract). David’s “fatty acid derivatives” include fatty alcohol (see David, pg. 15, lines 1-2). David teaches that the term VLCFA or VLCFA derivative is a fatty acid or fatty acid derivative (i.e., fatty alcohol) having an acyl chain length of greater than 18 carbons (see David, pg. 15, lines 9-11), thereby constituting a method of producing C6-C24 fatty alcohol from C6-C24 fatty acid as recited in instant claim 1. David’s genetically modified yeast cell comprises one or more genetic modifications to improve production of the desired very long chain fatty acid derivatives, such modifications can include the introduction of new enzymes, and/or biosynthetic and/or metabolic pathways and/or heterologous expressions of one or more genes (see David, pg. 17, lines 31-34). In this aspect, the genetically modified fungal cell comprises at least one exogenous gene encoding a desaturase (see David, pg. 20, lines 20-22). David adds that S. cerevisiae can be a host for carrying out the invention (see David, pg. 17, lines 7, 9 and 12), however a genetically modified Yarrowia lipolytica cell is preferred (see David, pg. 22, lines 14-16). For instance, David’s Example 12 teaches production of long chain fatty alcohols in Yarrowia lipolytica combined with gene deletion (see pg. 52, lines 15-16). Wherein deletion of the genes MFE1 and PEX10 influence flux towards the products of interest by removing ß-oxidation capacity and peroxisome biogenesis (see pg. 52, lines 17-19).
David also teaches that the term “desaturase” means an enzyme that can desaturate fatty acids to produce a mono or poly-unsaturated fatty acid or precursor thereof of interest; fatty acid desaturases catalyze the introduction of a double bond into an acyl chain (see David, pg. 16, lines 17-20). David’s recombinant yeast includes at least one desaturase gene encoding Ole1, ChDes9_2 or other desaturases (see David, pg. 26, lines 2-3).
David also teaches that wild-type yeast does not have the metabolic machinery for producing very long chain fatty acid alkyl esters (FAAEs) and that “wax synthases/wax ester synthases” are enzymes capable of catalyzing the combination of acyl-thioesters and fatty alcohols to fatty acid alkyl esters (FAAEs) (see David, pg. 16, lines 25-28), thereby David teaches a Yarrowia lipolytica microorganism manipulated to comprise at least one nucleic acid molecule encoding an exogenous fatty acyl desaturase.
David does not expressly teach that the exogenous fatty acyl desaturase has at least 95% sequence identity to the amino acid sequence of an insect fatty acyl desaturase selected from the group consisting of SEQ ID NO: 1, and wherein the insect fatty acyl desaturase is derived from Helicoverpa zea; as recited in step a.
Rosenfield teaches a Δ11 desaturase family members, in particular Corn earworm HzPGDs1 Helicoverpa zea with Accession Number AF272342 (see pg. 949, Abstract, and pg. 956, Fig. 3 description), which is involved in the production of the corn earworm pheromone Z11-16Ald which is produced in the insect by the Δ11desaturation of palmitoyl-CoA followed by de-esterification and functional group conversion to the aldehyde (see pg. 950, right column, second paragraph). As evidenced by GenCore_1, the amino acid sequence corresponding to Accession Number AF272342 is 100% identical to instant SEQ ID NO: 1. As such, Rosenfield’s HzPGDs1 constitutes an exogenous fatty acyl desaturase having at least 95% sequence identity to the amino acid sequence of an insect fatty acyl desaturase selected from the group consisting of SEQ ID NO: 1; also constitutes wherein the exogenous fatty acyl desaturase comprises a transmembrane desaturase sequence motif of HX3-4HX7-41(3 non-His)HX2-3(1 non-His)HHX61-189(40 non-His)HX2-3(1 non-His)H; and wherein the insect fatty acyl desaturase is derived from Helicoverpa zea.
Therefore, it would have been obvious to modify David’s method for production of very long chain fatty acid derived products by substituting David’s desaturase enzyme with Rosenfield’s Corn earworm HzPGDs1 Helicoverpa zea (accession number AF272342), in order to arrive at the claimed method. One of ordinary skill in the art would have been motivated to do so because it was known that the Δ11 desaturase derived from the corn earworm is involved in the production of pheromones that are Z11-16. One of ordinary skill in the art would have had a reasonable expectation of success given that David deletion of the genes MFE1 and PEX10 in Yarrowia lipolytica can increase the production of long chain fatty acids.
David does not expressly teach chemically esterifying and/or transesterifying the mono- or poly-unsaturated C6- C24 fatty acid to a C6-C24 fatty acid alkyl ester (FAAE) via Fischer esterification or acid or base catalyzed esterification or transesterification as recited in instant claim 1, step b; and chemically reducing the FAAE by contacting the FAAE with a reducing agent, a partial reducing agent, or a transition metal catalyst, wherein the reduction produces a mono- or poly-unsaturated C6-C24 fatty alcohol, as recited in instant claim 1, step c:
Fleckenstein teaches that a preferred starting material for the production of fatty alcohols are fatty acids and fatty acid mixtures occurring in natural fats and/or oils which may be converted into fatty alcohols of corresponding chain length by catalytic hydrogenation (see Fleckenstein, column 1, lines 16-25). Fatty acid methyl esters suitable for catalytic hydrogenation by Fleckenstein’s process are fats, train oils or oils emanating from animal or vegetable sources in which mono or poly unsaturated fatty acids are esterified with glycerol, the fatty acid residues optionally having the same or different degrees of saturation and alkyl chain lengths (see Fleckenstein, column 2, lines 63-68 to column 3 lines 1-3). The fatty acid methyl esters may be obtained by transesterification in known manner from the above-mentioned fats, train oils and oils (see Fleckenstein, column 3, lines 3-6). Fleckenstein also teaches that methyl ester mixtures such as these are separated up by distillation processes into relatively short-chain and relatively long-chain fatty acid residues and subsequently hydrogenated (see Fleckenstein, column, 3, lines 6-9), thereby constituting chemically esterifying the mono- or poly- unsaturated C6-C24 fatty acid to a C6-C24 fatty acid alkyl ester as recited in instant claim 1, step b.
Fleckenstein also teaches that the process for the catalytic hydrogenation of fatty acid methyl esters can be reacted to fatty alcohols in high yields under relatively low pressures (see Fleckenstein, column 2, lines 24-27). The heterogeneous transition metal catalyst used for the reaction leads to the required products with high activity and selectivity without secondary reactions, such as the formation of hydrocarbons, significantly contributing towards a reduction in the product yield (see Fleckenstein, column 2, lines 28-33), thereby constituting chemically reducing the FAAE by contacting the FAAE with a transition metal catalyst as recited in instant claim 1, step c. Additionally, together with the establishment of moderate reaction conditions, the formation of hydrocarbons is minimal because, when the hydrogenation products are worked up by distillation, the boiling ranges of the hydrocarbon products overlap those of the short-chain fatty alcohols, this improves the economy of the process in relation to the prior art (see Fleckenstein, column 2, lines 33-40). Furthermore, fatty acid methyl esters are continuously hydrogenated using a catalyst advantageously containing from 32 to 38% by weight copper, based on the oxidic catalyst mass (see Fleckenstein, column 3, lines 29-32).
It is also advantageous to adjust the quantity of chromium in the catalyst to a range of from 26 to 29% by weight, the quantity of manganese to a range of from 1 to 10% by weight, the quantity of barium to a range of from 1.5 to 3% by weight and the quantity of silicon to a range of from 1.5 to 3% by weight, based in each case, on the oxidic catalyst mass before activation (see Fleckenstein, column 3, lines 32-38). A particular advantage to react the fatty acid methyl esters with hydrogen in the presence of a catalyst of which the granulates, extrudates or tablets have a diameter of from 1 to 6 mm and a length of from 1 to 6 mm, is that such granulates or extrudates show excellent activity and selectivity in the reaction of the fatty acid methyl esters with hydrogen to long-chain fatty alcohols and, in addition, readily can be separated from the reaction products (see Fleckenstein, column 4, lines 66-68 to column 3, lines 1-2), thereby constituting wherein the reduction produces a mono or poly-unsaturated C6-C24 fatty alcohol as recited in instant claim 1, step c.
From the teachings of the references, the Examiner recognizes that it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of David and esterify the mono or poly unsaturated fatty acids with glycerol to obtain fatty acid methyl esters by transesterification, and use a transition metal catalyst containing copper, chromium, manganese, barium and silicon as taught by Fleckenstein. One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so because the transition metal catalyst was known to lead to the required products (i.e., fatty alcohols) with high activity and selectivity without the formation of hydrocarbons. One of ordinary skill in the art before the filing date of the claimed invention would have had a reasonable expectation of success because metal catalyst granulates, extrudates or tablets with specific dimensions (i.e., diameter of from 1 to 6 mm and a length of from 1 to 6 mm) show excellent activity and selectivity in the reaction of the fatty acid methyl esters with hydrogen to long-chain fatty alcohols as taught by Fleckenstein.
Therefore, substituting the exogenous desaturase HzPGDs1 in place of the exogenous desaturase of David, esterifying the mono or poly unsaturated fatty acids with glycerol to obtain fatty acid methyl esters by transesterification, using a transition metal catalyst as a reducing agent, and expressing the Corn earworm HzPGDs1 derived from Helicoverpa zea in Yarrowia lipolytica would support the method for production of very long chain fatty acid derived product by constituting some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention and/or simple substitution of one known element for another to obtain predictable results pursuant to KSR.
Regarding claim 2, David teaches that the modifications also comprise elimination or reduction of non-essential pathways or pathways that compete with the production of VLCFA derivatives (see David, pg. 18, lines 1-4). Such modifications can eliminate or reduce the utilization or consumption of fatty acids by enzymes or pathways that compete with the production of fatty acid derivatives such as fatty alcohols in the recombinant yeast strain (see David, pg. 30 line 1 to pg. 31, lines 1-2). David’s fungal cell is genetically modified for reduced expression of and/or knock-out of non-essential pathway genes such as fatty-acyl coenzyme A oxidase (POX1) (see David, pg. 21, lines 19-20 and 22). Β-oxidation can be eliminated or reduced by disrupting the genes encoding, for example, fatty-acyl coenzyme A oxidase (POX1) (see David, pg. 31, lines 7-9), thereby constituting wherein the Yarrowia lipolytica microorganism comprises a deletion of one or more endogenous enzymes selected from: (i) one or more acyl-CoA oxidases encoded by a nucleic acid sequence selected from (POX1) as recited in instant claim 2(i).
Regarding claim 3, as previously discussed, Fleckenstein teaches chemically transesterifying the mono or poly unsaturated C6-C24 fatty acid to the C6-C24 FAAE (see Fleckenstein, column, 3, lines 6-9). A further aspect of David’s invention relates to a method for the production of a VLCFA and/or VLCFA derivative; the method comprises isolating the VLCFA and/or VLCFA derivative from the genetically modified fungal cell and/or from the culture medium (see David, pg. 23, lines 5-7), thereby constituting isolating the mono- or poly-unsaturated C6-C24 fatty acid and/or enriching for a mono- or poly-unsaturated C6-C24 fatty acid having a specific chain length as recited in instant claim 3. As such, the teachings of David when combined with the teachings of Fleckenstein suggest the claim limitations recited in instant claim 3.
Regarding claim 8, wherein the Yarrowia lipolytica microorganism is MATA ura3-302::SUC2 Δpox1 Δpox2 Δpox3 Δpox4 Δpox5 Δpox6 Δfadh Δadhl Δadh2 Δadh3 Δadh4 Δadh5 Δadh6 Δadh7 Δfaol:
David’s Example 11, teaches production of long chain fatty alcohols and wax esters in Yarrowia lipolytica and that the expression of recombinant genes can be accomplished by modification of relevant genetic engineering methods (see David, pg. 43, lines 22-25). David teaches using Yarrowia lipolytica strain PO1f (MATA ura3-302 leu2-270 xpr2-322 axp2-deltaNU49 XPR2::SUC2) as a background strain (see David, pg. 49, lines 23-327), thereby constituting wherein the Yarrowia lipolytica microorganism is MATA ura3-302::SUC2 as recited in instant claim 8. Additionally, David’s Example 12, teaches production of long fatty alcohols in Yarrowia lipolytica combined with gene deletion (see David, pg. 52, lines 14-16). According to David, flux towards the products of interest can be increased by removing β-oxidation capacity, which can be accomplished by deletion of the gene MFE1 (see David, pg. 52, lines 17-18), and by deletion of genes which consume fatty acids, the precursors for fatty acyl-CoA and fatty alcohol synthesis (see David, pg. 53, lines 1-2). The genes pox1-6 are encoding enzymes which are involved in the β-oxidation of fatty acids, thereby reducing the level of free fatty acids (see David, pg. 53, lines 4-5), thereby implying that pox1-pox6 (i.e., Δpox1 Δpox2 Δpox3 Δpox4 Δpox5 Δpox6) genes are deleted or removed from the Yarrowia lipolytica microorganism as recited in instant claim 8.
With respect to wherein the Yarrowia lipolytica microorganism comprises other gene deletions (i.e., Δfadh Δadhl Δadh2 Δadh3 Δadh4 Δadh5 Δadh6 Δadh7 Δfaol), the genetic modifications is clearly a result specific parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ. It would have been customary for an artisan of ordinary skill to determine the genes encoding enzymes (i.e., FADH, ADH1-ADH7 and FAO1) that would reduce or interfere with producing the product of interest (i.e., mono or poly- unsaturated C6-C24 fatty alcohol) in Yarrowia lipolytica. Thus, an ordinary skilled artisan would have been motivated to modify the background strain taught by David by adding additional deletions such as Δfadh Δadhl Δadh2 Δadh3 Δadh4 Δadh5 Δadh6 Δadh7 Δfaol thereby resulting in a manipulated Yarrowia lipolytica strain where one or more endogenous enzymes are deleted, because an ordinary skilled artisan would have been able to utilize the teachings of David to obtain a mono or poly-unsaturated C6-C24 fatty alcohol with a reasonable expectation of success. Thus, absent some demonstration of unexpected results from the claimed parameters, the optimization of a Yarrowia lipolytica strain in the method of producing a mono or poly-unsaturated C6-C24 fatty alcohol from a C6-C24 fatty acid have been obvious at the time of applicants' invention. Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because the teachings of the prior art are fairly suggestive of the claimed invention.
Regarding claim 14, wherein the exogenous fatty acyl desaturase has at least 95% sequence identity to the amino acid sequence of SEQ ID NO: 1:
As previously discussed, Rosenfield teaches Corn earworm HzPGDs1 Helicoverpa zea with Accession Number AF272342 (see pg. 949, Abstract, and pg. 956, Fig. 3 description) which is 100% identical to instant SEQ ID NO: 1 (see GenCore_1, pg. 1), thereby constituting wherein the exogenous fatty acyl desaturase has at least 95% sequence identity to the amino acid sequence of SEQ ID NO: 1.
4. Claim7 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2016/159869 A1 with International Publication Date of October 6th 2016 and US Priority Data: 62/142,236, April 2nd 2015 (cited in the IDS filed on 02/04/2022) (here in after “David”); in view of Rosenfield et al. Insect Biochemistry and Molecular Biology 31 (2001) 349-964 (herein after “Rosenfield”) as evidenced GenCore., Sequence Alignment of Accession No. AF272342.1 versus instant SEQ ID NO: 1 (herein after “GenCore_1); and US 5,124,491 Date of Patent June, 23rd 1992 (cited in the IDS filed on 02/04/2022)(herein after “Fleckenstein”) as applied to claim 1 above, and further in view of Rossler et al., Mol Gen Genomics (2003) 269: 290-298 (herein after “Rossler”); and Schweizer et al., J. Basic Microbiol. 28 (1988) 5, 283-292 (herein after “Schweizer”) as applied to claim 7 herewith.
Regarding claim 1, please see discussion of David, Rosenfield and Fleckenstein above.
Regarding claim 7, David teaches that the yest strains can additionally comprise genetic modifications that eliminate or reduce non-essential pathways (see David, pg. 30, lines 32-33). David’s recombinant yeast includes reduced expression and/or knock-out of at least one gene encoding Ole1 (see David, pg. 31, lines 16-17); or reduced expression of and/or knock-out of at least one gene encoding Fas1 (see David, pg. 31, lines 19-20); or reduced expression of and/or knock-out of at least one gene encoding Elo3, in order to allow accumulation of C22 (see David, pg. 31, lines 22-23); or reduced expression of and/or knock-out of at least one gene encoding Fat 1, in order to allow accumulation of very long chain fatty acids of C24 (see David, pg. 31, lines 24-26).
However, David does not expressly teach or suggest that deletion or reduction in the activity of one or more genes encoding endogenous proteins involved in one or more fatty acid elongation pathways, wherein the endogenous proteins are selected from the group consisting of a ß-ketoacyl-CoA reductase, a ß-hydroxyacyl-CoA dehydratase, an enoyl-CoA reductase, and any combination thereof.
Rossler teaches functional differentiation and selective inactivation of multiple Saccharomyces cerevisiae genes involved in very-long-chain fatty acid synthesis (see Rossler, pg. 290, Title). Rossler teaches that Elongase II elongates palmitoyl-CoA and stearoyl-CoA up to C22 fatty acids, and elongase III synthesizes 20–26-carbon fatty acids from C18-CoA primers (see Rossler, pg. 290, Abstract). Rossler adds that Elongases II and III share the same 3-ketoacyl reductase, which is encoded by the YBR159w gene (see Rossler, pg. 290, Abstract). Inactivation of YBR159w inhibits in vitro fatty acid elongation after the first condensation reaction (see Rossler, pg. 290, Abstract). Although in vitro elongase activity is absent, the mutant nevertheless contains 10–30% of normal VLCFA levels (see Rossler, pg. 290, Abstract).
Schweizer teaches that a collection of FAS (fatty acid synthetase) deficient Yarrowia lipolytica mutants was isolated and characterized by genetic complementation and enzyme activity measurement and it was found that three acyl transferases together with the enoyl reductase domain are located on subunit ß and therefore are encoded by the gene locus FAS1 (see Schweizer, pg. 283, abstract). ß-Ketoacyl reductase, ß-Ketoacyl synthase and acyl carrier protein functions are part of the FAS2-encoded subunit α; thus. (see Schweizer, pg. 283, abstract). Thus, the functional organization of FAS1 and FAS2 is identical in both yeast, Saccharomyces cerevisiae and Yarrowia lipolytica (see Schweizer, pg. 283, abstract). As such, if the YBR159w gene is deleted and/or inactivated and/or reduced in activity in S. cerevisiae; it must follow that ß-ketoacyl-CoA reductase involved in one or more fatty acid elongation pathways is also in inhibited. Since the functional organization of FAS1 and FAS2 is identical in both yeast, it must also follow that deleting the YBR159w gene in Y. lipolytica must have the same effect.
From the teachings of the references, the Examiner recognizes that it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to follow the teachings of David and reduce the expression and/or knock-out of at least one gene encoding Elo3 in order to allow accumulation of C22. One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so because the functional organization of FAS1 and FAS2 is identical in both yeast, Saccharomyces cerevisiae and Yarrowia lipolytica as taught by Schweizer; because the 3-Ketoacyl reductase was known to be shared by Elongase II and Elongase III, because the YBR159w gene encodes 3-Ketoacyl reductase, the elongase III synthesizes 20–26-carbon fatty acids from C18-CoA primers as taught by Rossler. One of ordinary skill in the art before the filing date of the claimed invention would have had a reasonable expectation of success given that inactivation of YBR159w inhibits in vitro fatty acid elongation after the first condensation reaction; given that although in vitro elongase activity is absent, the mutant nevertheless contains 10–30% of normal VLCFA levels. Therefore, reducing the expression of and/or knock-out of the YBR159w gene which encodes Elo3 in Yarrowia lipolytica would support in support the method for production of very long chain fatty acid derived product by constituting some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention and/or simple substitution of one known element for another to obtain predictable results pursuant to KSR.
5. Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2016/159869 A1 with International Publication Date of October 6th 2016 and US Priority Data: 62/142,236, April 2nd 2015 (cited in the IDS filed on 02/04/2022) (here in after “David”); in view of Rosenfield et al. Insect Biochemistry and Molecular Biology 31 (2001) 349-964 (herein after “Rosenfield”) as evidenced GenCore., Sequence Alignment of Accession No. AF272342.1 versus instant SEQ ID NO: 1 (herein after “GenCore_1); and US 5,124,491 Date of Patent June, 23rd 1992 (cited in the IDS filed on 02/04/2022)(herein after “Fleckenstein”) as applied to claim 1 above, and further in view of Zhu et al., Current Opinion in Biotechnology 2015, 36: 65-72 (cited in the IDS filed on 02/04/2022) (herein after “Zhu”) as applied to claims 12-13 herewith.
Regarding claims 12-13, David does not expressly teach wherein the Yarrowia lipolytica microorganism has a lipid fraction of at least 30w/w and the unsaturated fatty acid produced in step (a) is at least 10% g/g of the fatty acid species as recited in instant claim 12; and wherein step (a) has an unsaturated fatty acid yield of at least 3%g/g of the Yarrowia lipolytica dry cell weight as recited in instant claim 13:
Zhu teaches that the only polyunsaturated fatty acid in Yarrowia lipolytica is linoleic acid; however Y. lipolytica has been developed as a platform cell factory to produce ꙍ-3 FAs (i.e., α-linoleic acid (ALA, C18:3n-3), stearidonic acid (STA, C18:4n-3), eicosapentaenoic acid (EPA, C20:4n-3), docosapentaenoic acid (DPA, C22:5n-3), docosahexaenoic acid (DHA, C22:6n-3)) and ꙍ -6 FAs (i.e., γ-linoleic acid (GLA, C18:3n-6), dihomo-γ-linoleic acid (DGLA, C20:3n-6) and arachinodic acid (ARA, C20:4n-6)) (see Zhu, pg. 68, left column, last paragraph). Zhu teaches that an efficient EPA biosynthetic pathway was built in Yarrowia lipolytica by using multiple copies of Δ17-desaturase genes and eliminating ß-oxidation by targeted deletion of peroxin genes (see Zhu, pg. 69, left column, paragraph 2). The Yarrowia strain (i.e., Z5567) containing 41 copies of 19 different genes produced EPA (i.e., EPA is an unsaturated fatty acid) at 50% total lipids and 25% dry cell weight (see Zhu, pg. 69, left column, paragraph 2), thereby constituting wherein a lipid fraction is at least 30%w/w and the unsaturated fatty acid produced is at least 10% g/g of the fatty acid species as recited in instant claim 12, and an unsaturated fatty acid yield of at least 3% g/g of the Yarrowia lipolytica dry cell weight as recited in instant claim 13.
From the teachings of the references, the Examiner recognizes that it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of David and express Rosenfield’s Corn earworm HzPGDs1 Helicoverpa zea (accession number AF272342), in Yarrowia lipolytica as taught by Zhu, in order to arrive at the claimed method. One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so given that Yarrowia lipolytica was known to be a platform cell factory to produce unsaturated fatty acids. One of ordinary skill in the art before the filing date of the claimed invention would have had a reasonable expectation of success because genetically engineering Y. lipolytica by eliminating ß-oxidation by targeted deletion of peroxin genes results in efficient production of 50% total lipids and 25% dry cell weight as taught by Zhu. Therefore, expressing the known Δ11 desaturase derived from Helicoverpa zea (accession number AF272342) in place of the exogenous desaturase of David and expressing multiple copies of desaturase in Yarrowia lipolytica would support the method for production of very long chain fatty acid derived product by constituting some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention and/or simple substitution of one known element for another to obtain predictable results pursuant to KSR.
In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the above claims would have been obvious to one of ordinary skill in the art within the meaning of 35 U.S.C 103. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references above.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
6. Claims 1-3, 7-8 and 12-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 8-13 of U.S. Patent No. 10,308,962 B1 Date of Patent Jun. 4, 2019 (herein after “962”) in view of WO 2016/159869 A1 with International Publication Date of October 6th 2016 and US Priority Data: 62/142,236, April 2nd 2015 (cited in the IDS filed on 02/04/2022) (here in after “David”), US 5,124,491 Date of Patent June, 23rd 1992 (cited in the IDS filed on 02/04/2022)(herein after “Fleckenstein”), and Zhu et al., Current Opinion in Biotechnology 2015, 36: 65-72 (cited in the IDS filed on 02/04/2022) (herein after “Zhu”). Although the claims at issue are not identical, they are not patentably distinct from each other.
‘962 claims :
(‘962 claims 1-3 and 8, 11-13 corresponding to instant claims 1-3, 7-8 and 12-14 ). ‘962 claims a method of producing a mono- or poly- unsaturated C6-C24 fatty alcohol from an endogenous or exogenous source of saturated C6-C24 fatty acid, comprising: cultivating the recombinant Yarrowia lipolytica microorganism of claim 1, in a culture medium containing a feedstock that provides a carbon source adequate for the production of the mono- or poly-unsaturated C6-C24 fatty alcohol. It is noted that claim 3 in ‘962 teaches the recombinant Yarrowia lipolytica microorganism encoded by a nucleic acid sequenced, i.e., SEQ ID NO: 27, which when translated to the amino acid sequence and compared to instant SEQ ID NO:1 was found to be 100% identical. As such, claims 1, 3 and 8 in ‘962 correspond to instant claim 1 step (a) as well as to instant claim 14. Therefore, the instantly claimed method is a subgenus of ‘962’s method.
However, ‘962 does not teach chemically esterifying and/or transesterifying the mono-or poly-unsaturated C6-C24 fatty acid to a C6-C24 fatty acid alkyl ester (FAAE) via Fischer esterification or acid or base catalyzed esterification or transesterification as recited in instant claim 1 step (b), nor chemically reducing the FAAE by contacting the FAAE with a reducing agent, a partial reducing agent or a transition metal catalyst, wherein the reduction produces a mono- or poly-unsaturated C6-C24 fatty alcohol as recited in instant claim 1 step (c).Thus, an ordinary skill artisan would be motivated with reasonable expectation of success to modify the method claimed by ‘962 and esterify the mono or poly unsaturated fatty acids with glycerol to obtain fatty acid methyl esters by transesterification (see Fleckenstein, column 3, lines 3-6), because fatty acid methyl esters suitable for catalytic hydrogenation are fats or oils emanating from animal or vegetable sources in which mono or poly unsaturated fatty acids are esterified with glycerol and have the same or different degrees of saturation and alkyl chains as taught by Fleckenstein. An ordinary skilled artisan would also be motivated to react fatty acyl methyl esters, obtained with the method of ‘962, to fatty alcohols, because under relatively low pressures through catalytic hydrogenation a heterogeneous transition metal catalysts is used to avoid the formation of hydrocarbons as secondary reactions (see Fleckenstein, column 2, lines 24-23). Fleckenstein also teaches that a particular advantage to react the fatty acid methyl esters with hydrogen in the presence of a catalyst in the form of granulates, extrudates or tablets having a diameter of from 1 to 6 mm and a length of from 1 to 6 mm is that the catalysts shows excellent activity and selectivity in the reaction of the fatty acid methyl esters with hydrogen to long-chain fatty alcohols and can readily be separated from the reaction products (see Fleckenstein, column 4, lines 66-68 to column 3, lines 1-2). Therefore, an ordinary skill artisan would be motivated to incorporate the teachings of Fleckenstein to arrive at the claimed limitations recited in instant claim 1, steps b and c.
‘962’s method also teaches that the recombinant Yarrowia lipolytica microorganism comprises a deletion of the fao1, adh1, adh2, adh3, adh4, adh5, adh6, adh7, pox 1, pox 2, pox3, pox4, pox5 and pox 6 genes (i.e., claims 11-13); thus corresponding to instant claims 2 and 8.
The method of producing a mono- or poly-unsaturated C6-C24 fatty alcohol recited in ‘962 does not teach isolating the mono- or poly- unsaturated C6-C24 fatty acid and/or enriching for a mono- or poly- unsaturated C6-C24 fatty acid having a specific chain length as recited in instant claim 3. However, an ordinary skilled artisan would be motivated with reasonable expectation of success to combine the teachings of David with the method of ‘962 and isolate the very long chain fatty acid (VLCFA) or very long chain fatty acid derivatives from the genetically modified fungal cell and/or from the culture medium (see David, pg. 23, lines 5-7). One of ordinary skill in the art would be motivated to do so because David’s method for production of a fatty acid or fatty acid derivative (i.e., fatty alcohol) having an acyl chain length of greater than 18 carbons comprises a genetically modified Yarrowia lipolytica cell, where the genetically modified fungal cell comprises at least one exogenous gene encoding a desaturase (see David, pg. 20, lines 20-22). As such, an ordinary skilled artisan would be motivated to combine the teachings of ‘962 with the teachings of David to arrive at the claimed limitations as recited in instant claim 3.
Finally, the method of ‘962 does not teach wherein the Yarrowia lipolytica microorganism has a lipid fraction of at least 30% w/w and the unsaturated fatty acid produced in step (a) is at least 10% g/g of the fatty acid species as recited in instant claim 12, nor wherein step (a) has an unsaturated fatty acid yield of at least 3% g/g of the Yarrowia lipolytica dry cell weight as recited in instant claim 13. However an ordinary skilled artisan would be motivated with reasonable expectation of success to combine the method of ‘962 with the teachings of Zhu and built an efficient eicosapentaenoic acid (EPA, C20:4n-3) biosynthetic pathway in Yarrowia lipolytica by using multiple copies of Δ17-desaturase genes and eliminating ß-oxidation by targeted deletion of peroxin genes (see Zhu, pg. 69, left column, paragraph 2). One of ordinary skill would be motivated to do so because Y. lipolytica has been developed as a platform cell factory to produce ꙍ-3 FAs (i.e., α-linoleic acid (ALA, C18:3n-3), stearidonic acid (STA, C18:4n-3), eicosapentaenoic acid (EPA, C20:4n-3), docosapentaenoic acid (DPA, C22:5n-3), docosahexaenoic acid (DHA, C22:6n-3)) and ꙍ -6 FAs (i.e., γ-linoleic acid (GLA, C18:3n-6), dihomo-γ-linoleic acid (DGLA, C20:3n-6) and arachinodic acid (ARA, C20:4n-6)) (see Zhu, pg. 68, left column, last paragraph); and because a Yarrowia strain (i.e., Z5567) containing 41 copies of 19 different genes produced EPA (i.e., EPA is an unsaturated fatty acid) at 50% total lipids and 25% dry cell weight (see Zhu, pg. 69, left column, paragraph 2). As such, an ordinary skilled artisan would arrive at the claimed invention by combining the teachings of David, Fleckenstein and Zhu. Therefore, the ‘962 claimed invention is not patentably distinct from the instantly claimed invention.
This is a provisional nonstatutory double patenting.
Response to Arguments
Regarding Applicants' arguments filed on 03/05/2026 with respect to the 35 U.S.C 103 rejection of claims 1-3, 7-8 and 12-14, have been considered but they are not persuasive for the following reasons:
With respect to Applicants’ argument, i.e., the amendment to claim 1 provides a distinction not taught or suggested by the cited art (see Remarks, filed 03/05/2026, pg. 6), it is found unpersuasive.
The cited prior art teaches a Δ11 desaturase derived from Helicoverpa zea (Accession No. AF272342.1) which is 100% identical to instant SEQ ID NO: 1. Furthermore, as discussed in the 35 U.S.C 103 rejection above, an ordinary skilled artisan would have been motivated with reasonable expectation of success to express a Δ11 desaturase derived from Helicoverpa zea Accession No. AF272342.1 in a genetically engineered Yarrowia lipolytica cell because it was known that Y. lipolytica serves as a suitable cell factory for the production of chemicals derived from fatty acids and lipids and because deletion of MFE1 and PEX10 genes increases production of long chain fatty alcohols by removing ß-oxidation capacity and peroxisomal biogenesis; and because it was also known that the Δ11 desaturase derived from H. zea is involved in the production of pheromones produced in the insect by desaturation of palmitoyl-CoA followed by de-esterification. As such, an ordinary skilled artisan would have been motivated with reasonable expectation of success to arrive at the claimed invention after reading David and Rosenfield.
With respect to Applicants’ argument, i.e., David does not teach or suggest expression of an exogenous insect fatty acyl desaturase, let alone a Helicoverpa desaturase, in Yarrowia lipolytica (see Remarks, filed 03/05/2026, pg. 7), it is found unpersuasive.
Pursuant to MPEP 2121(I), when the reference relied on expressly anticipates or makes obvious all the elements of the claimed invention, the reference is presumed to be operable. Once such a reference is found, the burden is on applicant to rebut the presumption of operability. In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980). Moreover, MPEP 2121(III) states that a prior art reference provides an enabling disclosure and thus anticipates a claimed invention if the reference describes the claimed invention in sufficient detail to enable a person of ordinary skill in the art to carry out the claimed invention; "proof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation." Impax Labs. Inc. v. Aventis Pharm. Inc., 468 F.3d 1366, 1383, 81 USPQ2d 1001, 1013 (Fed. Cir. 2006). MPEP 716.07 states that since in a patent it is presumed that a process if used by one skilled in the art will produce the product or result described therein, such presumption is not overcome by a mere showing that it is possible to operate within the disclosure without obtaining the alleged product. In re Weber, 405 F.2d 1403, 160 USPQ 549 (CCPA 1969).
Additionally, it is the Examiner’s understanding that Applicants are suggesting that since David does not disclose a Yarrowia lipolytica cell expressing an exogenous fatty acyl desaturase, let alone an insect fatty acyl desaturase; an ordinary skilled person would not have had a reasonable expectation of success or motivation to arrive at the claimed invention. However, David does not explicitly have to disclose evidence or enabling disclosure of a Yarrowia lipolytica expressing an exogenous fatty acyl desaturase having at least 95% identity to the amino acid sequence of an insect fatty acyl desaturase selected from the group consisting of SEQ ID NOs: 1, 2, 32, 34 and 36-38, because the David’s disclosure describes the method of producing VLCFA derivatives (i.e., fatty alcohol) in sufficient detail to enable a person of ordinary skill in the art to carry out the claimed invention. The details of David’s method necessary to enable a person of ordinary skill in the art to carry out the claimed invention comprise a genetically modified Yarrowia lipolytica cell, wherein the one or more modifications improve production of the desired very long chain fatty acid derivatives, such as heterologous expression of one or more genes and reduced expression of and/or knock-out of at least one gene involved in the accumulation of very long chain fatty acids. As such, since David expressly suggests expressing a heterologous, i.e., exogenous gene in Yarrowia lipolytica in order to produce C6-C24 fatty alcohols from C6-C24 fatty acid and provides sufficient detail to practice the method, David’s disclosure is presumed enabled even though not every embodiment has been reduced to practice.
If a prior art reference described the specific method as Applicants suggest is needed, then arguably, the rejection would be one of anticipation, not obviousness. Therefore, an ordinary skilled artisan would be motivated to modify the method of David, and substitute the expression of an endogenous desaturase for the expression of an exogenous desaturase (i.e., Rosenfield’s HzPGDs1) and to reduce the activity and/or knock-out one or more endogenous genes involved in fatty acid elongation pathways in order to arrive at the claimed invention. Accordingly, the teachings of David render the claimed invention obvious.
With respect to Applicants’ argument, i.e., the examiner's rationale to combine David and Jeong relies on impermissible hindsight and is not supported by the prior art (see Remarks, filed 03/05/2026, pg. 8), it is found unpersuasive.
It is the Examiner’s understanding that Applicants are suggesting that the Examiner’s position fails to establish a prima facie case of obviousness because the prior art does not lead an artisan to the instant invention. If Applicant means to suggest that the Examiner arrived at the instantly claimed invention via the use of improper hindsight, this is not persuasive because any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the Applicants' disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Here, Applicant fails to identify a single aspect of the claimed invention that was not taught, disclosed, or suggested by the prior art relied upon by the Examiner.
Additionally, per MPEP 2145 (X) A, there is no requirement that an "express, written motivation to combine must appear in prior art references before a finding of obviousness." Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1276, 69 USPQ2d 1686, 1690 (Fed. Cir. 2004). Therefore, contrary to Applicants’ argument, the rationale to combine David and Rosenfield does not rely on impermissible hindsight because, the prior art does not have to expressly teach, suggest or demonstrate expressing SEQ ID NO: 1 in Yarrowia lipolytica, as recited in instant claim 1. Thus, under KSR, the Examiner provided articulated reasoning and rational underpinning to support the legal conclusion of obviousness.
With respect to Applicants’ argument, i.e., the combination of Fleckenstein with the biological references does not provide motivation to arrive at the claimed semi-biosynthetic method (see Remarks, filed 03/05/2026, pg. 10), it is found unpersuasive.
Obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In the instant case, as discussed above in the 35 U.S.C 103 rejection above, Fleckenstein is in the field of fatty alcohol production from fatty acids and fatty acid mixtures occurring in natural fats and/or oils. Fleckenstein’s methods comprise the transesterification in known manner of the above-mentioned fats in order to obtain the target product, and subsequently the catalytic hydrogenation of the fatty acid methyl esters under relatively low pressure with a heterogeneous transition metal catalyst. Therefore, an ordinary skilled artisan after reading Fleckenstein, would have been motivated try Fleckenstein’s steps as part of a method of producing a mono- or ply-unsaturated fatty alcohol from a fatty acid synthesized by a genetically engineered microorganism (i.e., Y. lipolytica). An ordinary skilled artisan would have been motivated to try the ex-vivo chemical esterification and reduction of fatty acids, given that Fleckenstein had already demonstrated the chemical esterification and reduction of fatty acids and fatty acid mixtures occurring in natural fats and/or oils.
Additionally, to MPEP 2143.02(II), obviousness does not require absolute predictability, however, at least some degree of predictability is required. Evidence showing there was no reasonable expectation of success may support a conclusion of nonobviousness. In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976). In other words, it is not a requirement for Fleckenstein to teach unsaturated fatty acid synthesis in Y. lipolytica and subsequent ex-vivo chemical esterification and reduction because the prior art has already demonstrated that fatty acids can be chemically esterified and reduced ex-vivo in order to achieve fatty alcohols.
With respect to Applicants’ argument, i.e., Zhu does not provide a motivation to express a Helicoverpa species desaturase in Yarrowia lipolytica, nor a reasonable expectation of success (see Remarks, filed 03/05/2026, pg. 11), it is found unpersuasive.
Pursuant to MPEP 2143.02(II), obviousness does not require absolute predictability, however, at least some degree of predictability is required. Evidence showing there was no reasonable expectation of success may support a conclusion of nonobviousness. In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976). In other words, it is not a requirement for Y. lipolytica to “be the best host for all lipid synthesis” because the prior art has already demonstrated that lipid pathway engineering in Y. lipolytica results in production of fatty acids and lipids. Zhu teaches Y. lipolytica as a superior host for metabolic engineering in light its physiological, metabolic and genomic characteristics thereby allowing for the metabolic engineering of Yarrowia lipolytica for industrial applications (see Zhu, pg. 65, abstract). Zhu expressly discloses that optimization of internal pathways in Y. lipolytica have demonstrated cost-effective production of chemicals and fuels derived from fatty acids, lipids and acetyl-CoA (see Zhu, pg. 65, abstract). Zhu teaches that Yarrowia lipolytica has emerged as a preferred non-conventional yeast for metabolic engineering, especially for the production of chemicals derived from acetyl-CoA, fatty acids (FA) and lipids (see Zhu, pg. 65, right column, third paragraph). Additionally, Zhu demonstrates that the Yarrowia strain (i.e., Z5567) containing 41 copies of 19 different genes produced EPA (i.e., EPA is an unsaturated C20 fatty acid) at 50% total lipids and 25% dry cell weight (see Zhu, pg. 69, left column, paragraph 2). Therefore, the standard for determining whether a person of skill in the art has the requisite expectation of success does not depend on absolute expectation of success (i.e., Y. lipolytica being the best host for all lipid synthesis). Rather the standard depends on whether there is reasonable expectation of success (i.e., production of fatty acids by Y. lipolytica).
With respect to Applicants’ argument that Zhu expressly warns that Y. lipolytica may not be the best host for all lipid synthesis and that Zhu’s teaching, if anything, would discourage rather than motivate a skilled artisan from attempting to express an insect Helicoverpa desaturase in Y. lipolytica without specific evidence that such expression would succeed (see Remarks, filed 03/05/2026. [g/ 11, second full paragraph), it is found unpersuasive.
It is the Examiner’s understanding that Applicant is suggesting that the cited reference “teaches away” from the claimed invention in view of the statements recited above. The Examiner notes that this argument is not persuasive because none of prior art references at issue “teach away” from the claimed invention since they do not actually “criticize, discredit, or otherwise discourage the solution claimed” (see, e.g., MPEP § 2141.02(VI)). Applicant has not identified any disclosure that “criticizes, discredits, or otherwise discourages the solution claimed”. Accordingly, no “teaching away” has been identified on record. Additionally, Zhu’s teachings with respect to cost-effective production and host selection pertain to S. cerevisiae and E. coli (see Zhu, pg. 65, right column, second paragraph). Thereby, Applicants assertions are incorrect and do not constitute a teaching away nor discourage an ordinary skilled artisan to express a desaturase derived from H. zea in Y. lipolytica.
With respect to Applicants’ argument, i.e., Applicant was the first to demonstrate functional expression of Helicoverpa zea species desaturases in Yarrowia lipolytica at commercially relevant yields - evidence of non-obviousness (see Remarks, filed 03/05/2026, pg. 11), it is found unpersuasive.
As discussed above, in the “Response to Amendment” section, the Declaration under 37 CFR 1.132 filed 03/05/2026 is insufficient to overcome the obviousness rejection of claims 1-3, 7-8 and 12-14. Declarant’s arguments are insufficient because the data provided is not commensurate in scope with the instant claims. The showing of the data fails to establish whether the results were obtained with “a fatty acyl desaturase having at least 95% sequence identity to the amino acid sequence of an insect fatty acyl desaturase selected from the group consisting of SEQ ID NOs: 1, 2, 32 and 34” as recited in instant claim 1; nor with a fatty acyl desaturase having at least 95% sequence identity to SEQ ID NO: 1 (Applicant’s elected species). Additionally, the scope of the instant claims does not encompass commercially relevant yields of the insect pheromone precursor per gram of yeast biomass, nor commercially relevant yields from each of the claimed sequences upon first expression in Y. lipolytica. Furthermore the declaration fails to include any statements pertaining to unexpected results and/or the alleged unexpected expression of “any insect fatty acyl desaturase, let alone a Helicoverpa zea species desaturase, in Y. lipolytica” nor that Applicants were the first to demonstrate the utility of Helicoverpa desaturase expressed in a genetically engineered Y. lipolytica.
Accordingly, the Declarant’s arguments are not persuasive and claims 1-3, 7-8 and 12-14 remain rejected under 35 U.S.C 103.
In response to Applicants’ arguments regarding the nonstatutory double patenting rejection over ‘962, have been fully considered but are not persuasive.
Applicants contend that the instant claims (i.e., 1-3, 7-8 and 12-14) are not obvious over ‘962 patent claims in view of David, Fleckenstein and Zhu. Applicants contend that the cited prior art does not teach or suggest that the instant claims are not an obvious variant of the ‘962 patent because the cited ‘962 patent claims do not disclose or suggest:
(i) chemical esterification/transesterification of the unsaturated fatty acid to a fatty acid alkyl ester (FAAE) via Fischer esterification or acid or base catalyzed esterification or transesterification, nor
(ii) chemical reduction of the FAAE via contact with a reducing agent, a partial reducing agent, or a transition metal catalyst (see Remarks, filed 03/05/2026, pg. 16, paragraph 2).
It is acknowledged that the ‘962 claims do not comprise the steps of b) and c). However, it is not necessary for the ‘962 claims to recite more than one heterologous fatty acyl desaturase, as recited in instant step a); chemically esterifying and/or transesterifying the mono- or poly- unsaturated C6-C24 fatty acid to a C6-C24 fatty acid alkyl ester (FAAE) via Fischer esterification or acid or base catalyzed esterification or transesterification, as recited in instant step b; and chemically reducing the FAAE by contacting the FAAE with a reducing agent, a partial reducing agent, or a transition metal catalyst, wherein the reduction produces a mono- or poly- unsaturated C6-C24 fatty alcohol, as recited in instant step c, because , an ordinary skilled artisan would have been motivated to combine claim 1 of the ‘962 patent with the teachings of Fleckenstein in order to arrive at a mono- or poly- unsaturated C6-C24 fatty acid as recited in instant claim 1, steps b and c. Similarly, for instant claims 2-3, 7-8 and 12-14; an ordinary skill artisan would have been motivated to combine claims 3, 8 and 11-13 of the ‘962 patent with the teachings of David, and Zhu to arrive at the instantly claimed method of producing a mono- or poly- unsaturated C6-C24 fatty alcohol from a C6-C24 fatty acid.
Additionally, the instant claims and the issued claims (i.e., ‘962 Patent) include the transitional phrase “comprising” which per MEPE 2111.03, the term is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. Therefore, it is not necessary for the cited ‘962 patent to disclose or suggest (i) chemical esterification/transesterification of the unsaturated fatty acid to a fatty acid alkyl ester (FAAE) via Fischer esterification or acid or base catalyzed esterification or transesterification, nor (ii) chemical reduction of the FAAE via contact with a reducing agent, a partial reducing agent, or a transition metal catalyst.
Accordingly, the nonstatutory double patenting rejection is maintained.
Conclusion
No claims are allowed.
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/CLAUDIA ESPINOSA/Patent Examiner, Art Unit 1654
/LIANKO G GARYU/Supervisory Patent Examiner, Art Unit 1654
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