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 amendment of 07/02/2025 has been entered. Claims 1, 10-12, 14-15 and 17-18 are pending (claim set as filed on 07/02/2025). Claim 1 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 10-12, 14-15 and 17-18 are currently under examination and were examined on their merits.
Withdrawn Objections/Rejections
The rejections of claims 10-12 and 14-17 under 35 U.S.C. 112(b) as being indefinite as set forth in the previous Office action is withdrawn in light of the amendment filed on 07/02/2025.
The rejections of claims 10-12 and 14-17 under 35 U.S.C. 103 set forth in the previous Office action are withdrawn in light of the amendment filed on 07/02/2025, which introduced new limitations and narrowed the scope of base claim 10.
New rejections have been presented as discussed below.
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.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 10, 14-15, and 17-18 are newly rejected as necessitated by amendment under 35 U.S.C. 103 as being unpatentable over Gomyo et al. (JP2001128665A, published on 05/15/2001), hereinafter ‘Gomyo’, in view of Pereira et al. (“Biodegradation of aliphatic and polycyclic aromatic hydrocarbons in seawater by autochthonous microorganisms”, published on 09/27/2019, International Biodeterioration & Biodegradation Vol.145, 104789, pages 1-11), hereinafter ‘Pereira’, and Yao et al. (“Simultaneous removal of organic matter and nitrogen by a heterotrophic nitrifying–aerobic denitrifying bacterial strain in a membrane bioreactor”, published on 06/04/2013, Bioresource Technology, Vol 143 (2013), page 83-87), hereinafter ‘Yao’, as evidenced by Encyclopedia (“Inoculum”, published on 08/30/2017, downloaded from https://web.archive.org/web/20170830063033/https://www.encyclopedia.com/science/dictionaries-thesauruses-pictures-and-press-releases/inoculum, pages 1-1), hereinafter ‘Encyclopedia’, Lawal (“Polycyclic aromatic hydrocarbons. A review”, published on 07/14/2017, Cogent Environmental Science (2017),Vol. 3, Issue 1, pages 1-89), hereinafter ‘Lawal’, Mao et al. (“Occurrence and fate of benzophenone-type UV filters in aquatic environments: a review”, published on 12/21/2018, Environ. Sci.: Water Res. Technol., 2019, Vol. 5, pages 209–223), hereinafter ‘Mao’, and Kasprzyk-Hordern et al. (“The removal of pharmaceuticals, personal care products, endocrine disruptors and illicit drugs during wastewater treatment and its impact on the quality of receiving waters”, published on 11/06/2008, Water research, Vol. 43 (2009), pages 363-380), hereinafter ‘Kasprzyk-Hordern’.
Gomyo’s general disclosure relates to “novel bacterium belonging to the genus Bacillus and having the ability to degrade benzophenone or oxybenzophenone, and to a method for biologically decomposing and removing benzophenone or oxybenzophenone using the bacterium.” (paragraph [0001]).
Regarding claim 10, pertaining to the method for degrading a micropollutant, Gomyo teaches a method for degrading a micropollutant in an environment (“method for biologically decomposing and removing benzophenone”; “method for treating wastewater containing benzophenone or oxybenzophenone”; paragraph [0001]), comprising: using a Bacillus strain, wherein the Bacillus strain is inoculated into a culture expansion medium (“Bacillus brevis, GU-1, isolated from seawater” ,“Example 2 … The Bacillus brevis GU-1 strain (FERM P-17615) of the present invention was inoculated into a culture apparatus … under conditions of an inflow of 1 L/day of actual wastewater (raw water) containing 100 ppm of benzophenone”; see paragraph [0011] and Example 2 in paragraph [0026]), and incubated in an aerobic condition to obtain a expansion culture product (“culture apparatus having a separate aeration tank”), and the expanded culture product is inoculated into a wastewater containing a benzophenone-containing ultraviolet sunscreen for treatment (“Example 6…A culture apparatus having an inflow rate of 1 L/day of actual wastewater (raw water) containing 100 ppm benzophenone, …, was inoculated with 10 mL of the culture solution from the addition test group in Example 2”,”it is clear that even if the culture solution in Example 2 in which the decomposition of benzophenone has once been completed is inoculated into a new culture solution in which benzophenone is present, benzophenone will still be biodegraded”; see Examples 2 and 6 in paragraphs [0026], [0037]-[0038]). The Examiner notes that the wastewater in Example 2 taught by Gomyo is inoculated with the Bacillus strain, thereby indicating that the wastewater serves as an expansion culture medium, since an inoculum is a small amount of bacteria added to start a culture, as evidenced by Encyclopedia (“Inoculum”, published on 08/30/2017, downloaded from https://web.archive.org/web/20170830063033/https://www.encyclopedia.com/science/dictionaries-thesauruses-pictures-and-press-releases/inoculum, pages 1-1).
Regarding claim 12, pertaining to degradation by the Bacillus strain under aerobic condition, Gomyo teaches that the Bacillus strain degrades benzophenone in an aerobic condition (“A culture apparatus having an inflow rate of 1 L/day of actual wastewater …, and equipped with a separate aeration tank”; “benzophenone content in the culture medium … decreased over time compared to the control test group”, “Bacillus brevis GU-1 strain (…) of the present invention biodegrades benzophenone”, “bacterium with a microbial carrier such as bran can be transported to a wastewater treatment facility and directly charged into an aeration tank; paragraphs [0021],[0028], [0037]-[0038]).
Additionally, pertaining to the wastewater temperature, Gomyo teaches wherein the wastewater has a temperature of 25 °C (“culture apparatus having an inflow rate of 1 L/day of actual wastewater (raw water) containing 100 ppm benzophenone, …, and a room temperature of 25°C”; see Example 6 in paragraph [0037]).
Gomyo further teaches an inoculation amount of 1‰ in a culture medium (“Example 7 … A sterilized liquid medium (pH 7.2) (100 mL) …. 0.1 mL of the culture liquid from Example 3 after 28 days was inoculated”; see Example 7 in paragraph [0039]), that the mass concentration of the benzophenone ultraviolet sunscreen in the wastewater is 100 mg/L and a benzophenone concentration range of 10 mg/L to 10000 mg/L in the culture medium (“wastewater (raw water) containing 100 ppm benzophenone”, “preferable to add benzophenone and/or oxybenzophenone to the medium … The amount added is preferably 0.001 to 1.0%”; paragraph [0018] and [0037]), and that the pH of wastewater is ph 7 (“The raw water used was adjusted to pH 7”; paragraph [0037]). Gomyo further discloses that “[a]s nutrient sources for the medium used to culture the Bacillus brevis GU-1 strain of the present invention, any nutrient sources such as carbon sources, nitrogen sources, inorganic salts, etc., which are necessary for the growth of a microorganism and can be assimilated by the strain, can be used, and the strain can be cultured by a conventional culture method.”; see paragraph [0017]), and teaches, wherein benzophenone was used as the sole carbon source for the isolation of microorganisms (“isolation source sample was cultured in a medium containing benzophenone or oxybenzophenone as the sole carbon source, and the growing microorganisms were collected”; paragraph [0009]).
Gomyo does not teach
wherein the Bacillus strain is a Bacillus methylotrophicus strain, wherein the strain is named as Bacillus methylotrophicus BP 1.1, and deposited in China Center for Type Culture Collection under Deposit No. CCTCC M 20191078 on Dec. 20, 2019 (instant claim 10).
wherein the inoculated expansion culture medium is incubated at 28-30 °C for 24-48 h (instant claim 10), wherein the expansion culture medium is one of a LB (Luria-Bertani) culture medium, an inorganic salt culture medium or a beef peptone culture medium (instant claim 17).
wherein the Bacillus methylotrophicus BP1.1 strain is incubated at 28 °C for 24-48 h to obtain the BP1.1 expansion culture product expansion (instant claim 18).
wherein a temperature of the wastewater is 28-30 °C, a pH of the wastewater is 7.3-8.0, and an inoculation amount of the Bacillus methylotrophicus BP1.1 in the wastewater is 1‰-2‰ (instant claim 10), wherein the inoculation amount of the Bacillus strain in the wastewater is 1.8‰-2‰ (instant claim 14).
wherein the mass concentration of benzophenone ultraviolet sunscreen in the wastewater is 10 mg/L (instant claim 15).
Pereira’s general disclosure relates to the isolation of microorganisms with the potential for bioremediation of coastal and marine environments contaminated with petroleum hydrocarbons (“aim of this work was to bioprospect, isolate, identify and characterize autochthonous microorganisms with the potential for the bioremediation of coastal and marine environments contaminated with petroleum hydrocarbons.”; see entire document, including page 2, left column, paragraph 3).
Regarding claim 10, pertaining to the Bacillus methylotrophicus strain, Pereira teaches a Bacillus methylotrophicus strain isolated from seawater with the ability to degrade aliphatic and aromatic hydrocarbon compounds (“The enrichment by selective pressure approach was applied to the environmental samples S (sediment), SS (sediment with seawater) and SW (seawater), ... The microbiota present in these samples was cultivated in seawater added with 2% Bazu petroleum as a carbon source… 57 microorganisms were isolated.”, “two bacteria were able to produce biosurfactants and metabolize complex carbon sources in a solid medium: Bacillus methylotrophicus SSNPLPB5 and Pseudomonas sihuiensis SNPLPB7. Biodegradation assays using aliphatic and polycyclic aromatic hydrocarbons (PAHs) sources showed that both bacteria are able to biodegrade: (i) up to 92.1% and 42.4% of the medium (C8 to C19) and long (C20 to C33) chain aliphatic contaminant fraction, respectively; (ii) 31.1% of isoprenoid (pristane) and (iii) 46% of anthracene, 33.9% of phenanthrene and 35.3% of pyrene,”; see abstract, Figure 4, and page 4, left column, paragraph 5).
The Examiner notes that polycyclic aromatic hydrocarbons (PAHs) taught by Pereira and the instantly taught benzophenones are both aromatic hydrocarbons with hydrophobic character, as evidenced by Lawal (“Polycyclic aromatic hydrocarbons (PAHs) are aromatic hydrocarbons with two or more fused benzene rings in various structural configurations”, “The two primary factors which contribute to the persistence of HMW PAHs in the environment are PAHs molecule stability and hydrophobicity”; see entire document, including Figure 1; page 1, paragraph 1; page 2, paragraph 1) and Mao (“Benzophenone-type ultraviolet filters (BP-type UV filters or BPs)”, “BPs are a group of aromatic ketones”, “Being a group of hydrophobic organic compounds ...”; see entire document, including Table 1; page 211, left column, paragraph 1; page 215, right column, paragraph 2), respectively.
Additionally, Pereira teaches wherein “The biodegradation percentage results presented in this work suggest that the isolated microorganisms are capable of metabolizing aliphatic hydrocarbons and PAHs as sole carbon and energy sources.” (page 9, left column, paragraph 4), and wherein the degradation of aromatic hydrocarbons was tested in seawater (“To better understand the metabolic capacity of B. methylotrophicus and P. sihuiensis in seawater, both bacteria were tested in a mixture of (equivalent) anthracene, phenanthrene and pyrene, amounting to 0.1%
(wt. v−1) as the carbon source.”; page 8, right column, paragraph 2). Pereira also discloses “wherein aerobic biodegradation of petroleum hydrocarbons is associated with microbial activity” (page 4, right column, paragraph 5).
Yao’s general disclosure relates to treatment of artificial sewage with Bacillus methylotrophicus L7 (“A heterotrophic nitrifying–aerobic denitrifying bacterial strain, Bacillus methylotrophicus L7, was inoculated solely into a submerged membrane bioreactor (MBR) for continuous treatment of artificial sewage.”; see entire document, including abstract).
Regarding claims 10 and 17, pertaining to the expansion culture, Yao teaches wherein a Bacillus methylotrophicus strain was incubated in an expansion culture medium at 30 °C for 24 h to obtain an expansion product (instant claim 10), wherein the expansion culture medium is LB (instant claim 17) (“The bacterial strain B. methylotrophicus L7 was cultured in LB broth at 30 °C for 24 h. Cells were harvested …”; page 84, left column, paragraph 3).
Regarding claim 10, pertaining to the temperature of the wastewater, Yao teaches “[for] startup, the reactor was inoculated with 6 L of strain L7 cell suspension” and that “[f]or continuous treatment of artificial wastewater after startup, the running conditions were: temperature 25-30 °C” (page 84, right column, paragraphs 2-3).
Additionally, Yao teaches wherein B. methylotrophicus is used for wastewater treatment under aerobic conditions (“Bacillus methylotrophicus L7, was inoculated … inoculation of this single strain in a single reactor under constant aerobic conditions
resulted in simultaneous removal of organic matter and nitrogen”, see abstract).
While Gomyo does not teach wherein the Bacillus strain is a Bacillus methylotrophicus strain (instant claim 10), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have combined Gomyo’s method of biodegrading benzophenone in wastewater with Pereira’s Bacillus methylotrophicus strain, in order to have created a method for degrading a micropollutant in an environment, comprising using a Bacillus methylotrophicus strain, wherein the Bacillus methylotrophicus strain is inoculated into an expansion culture medium, and incubated in an aerobic condition to obtain an expansion product, and the expanded culture product is inoculated into a wastewater containing a benzophenone ultraviolet sunscreen for treatment. One would have been motivated to do so, in order to create a superior method for degrading benzophenone in wastewater, since Pereira’s B. methylotrophicus has the ability to degrade PAHs which have structural similarities with the benzophenones taught by Gomyo and by Applicant. A skilled artisan would have reasonably expected success in combining Gomyo’s and Pereira’s teachings, since both references are directed to biodegradation of xenobiotic aromatic compounds using bacterial strains isolated from sea water (see above).
Modified Gomyo does not teach wherein Bacillus methylotrophicus is Bacillus methylotrophicus BP 1.1, and deposited in China Center for Type Culture Collection under Deposit No. CCTCC M 20191078 on Dec. 20, 2019. The Examiner notes that the assigned strain number to the Bacilllus methylotrophicus strain is merely a label and does not further characterize said strain. The specification and claims describe the instant Bacilllus methylotrophicus as having the property to degrade micropollutants, such as benzophenones (“Bacillus methylotrophicus strain for degrading a micropollutant in the environment.”; “Bacillus methylotrophicus, which can rapidly degrade benzophenone ultraviolet sunscreens in water environment under aerobic conditions.”; see specification, paragraphs [0004] and [0007]), and further describes wherein “Bacillus methylotrophicus BP1.1 strain can grow and propagate using 2,4-dihydroxybenzophenone as the only carbon source.” (see specification, paragraph [0025]). Based on modified Gomyo’s and Applicant’s teachings), it is highly likely that modified Gomyo’s and Applicant’s strain are the same strain since both strains share the ability to degrade aromatic hydrocarbons as a sole source of carbon and are able to degrade said compounds in an aquatic environment (see above). However, if there should be a slight variation between modified Gomyo’s and the instantly claimed strain, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have used the instant strain to degrade benzophenone in the method for degrading a micropollutant as taught by modified Gomyo, since both strains, modified Gomyo’s strain and the instant strain, share the ability to degrade aromatic hydrocarbons as a sole source of carbon.
While modified Gomyo does not teach wherein the inoculated expansion culture medium is incubated at 28-30 °C for 24-48 h (instant claim 10), wherein the expansion culture medium is one of a LB culture medium, an inorganic salt culture medium or a beef peptone culture medium (instant claim 17), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have combined modified Gomyo’s teachings with Yao’s teachings on culturing B. methylotrophicus in LB medium, in order to create a method for degrading a micropollutant, wherein the inoculated expansion culture medium is incubated at 30 °C for 24 h, wherein the expansion culture medium is LB culture medium. One would have been motivated to do so, in order to develop a superior Bacillus expansion culture product for inoculating wastewater in order to improve benzophenone degradation in said wastewater. A skilled artisan would have reasonably expected success in the combination of modified Gomyo’s and Yao’s teachings since both are directed to Bacillus methylotrophicus and wastewater treatment.
While modified Gomyo does not teach wherein the Bacillus methylotrophicus BP1.1 strain is incubated at 28 °C to obtain the BP1.1 expansion culture product (instant claim 18), the recited temperature would have been within the realm of routine experimentation since modified Gomyo teaches an incubation temperature of 30 °C (see above). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine the optimal temperature for incubating B. methylotrophicus in order to obtain an optimized expansion culture for inoculating wastewater. Further, one would expect success since modified Gomyo further teaches treating wastewater with B. methylotrophicus at 25-30 °C (see Yao above), and therefore, manipulation of the incubation temperature of the expansion culture for preparing a temperature adapted inoculum for wastewater treatment would be within the purview of an artisan. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA1955). See MPEP § 2144.05 part II A.
While modified Gomyo does not teach wherein a temperature of the wastewater is 28-30 °C, and a pH of the wastewater is 7.3-8.0 (instant claim 10), the instantly recited temperature and pH ranges would be within the realm of routine experimentation since modified Gomyo teaches a wastewater temperature of 25 °C (see Gomyo above) and of 25-30 °C (see Yao above), and a wastewater pH of 7 (see Gomyo above). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the temperature and pH range of wastewater, in order to optimize benzophenone degradation in said wastewater. A skilled artisan would have expected success in modifying temperature and pH in wastewater based on modified Gomyo’s teachings, since modified Gomyo’s teachings are directed to wastewater in general, and therefore, manipulation of the above parameters for a specific wastewater would be in the purview of an artisan. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA1955). See MPEP § 2144.05 part II A.
While modified Gomyo does not teach wherein an inoculation amount of the Bacillus methylotrophicus BP1.1 in the wastewater is 1‰-2‰ (instant claim 10), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have combined modified Gomyo’s method with Gomyo’s teachings on an inoculum concentration of 1‰ in a culture medium, in order to have created a method wherein the inoculation amount of the Bacillus strain in the wastewater is 1‰. One would have been motivated to do so, in order to optimize biodegradation of benzophenone in the wastewater.
While modified Gomyo does not teach wherein the inoculation amount of the Bacillus strain in the wastewater is 1.8‰-2‰ (instant claim 14), the instantly recited range would be within the realm of routine experimentation since modified Gomyo teaches an inoculation amount of 1‰ (see above). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine the optimal inoculation amount of B. methylotrophicus in the wastewater in order to optimize biodegradation of benzophenone in the wastewater. Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA1955). See MPEP § 2144.05 part II A.
While modified Gomyo does not teach wherein the mass concentration of benzophenone ultraviolet sunscreen in the wastewater is 10 mg/L (instant claim 15), it would have been obvious to have combined modified Gomyo’s teachings on wastewater treatment with Gomyo’s teachings on benzophenone concentrations of 10 mg/L to 10000 mg/L in culture medium, to have created a method for degrading a micropollutant in an environment, wherein the mass concentration of the benzophenone ultraviolet sunscreen in the wastewater is 10 mg/L. One would have been motivated to do so, in order to have the ability to treat a given wastewater comprising a benzophenone concentration of 10 mg/L, since benzophenone concentrations in wastewater vary and reach concentrations in the mg/L range, as evidenced by Kasprzyk-Hordern et al. (see entire document, including benzophenone concentrations in Table 3).
Claims 10-12 are newly rejected as necessitated by amendment under 35 U.S.C. 103 as being unpatentable over in view of Gomyo et al. (JP2001128665A, published on 05/15/2001), hereinafter ‘Gomyo’, in view of Pereira et al. (“Biodegradation of aliphatic and polycyclic aromatic hydrocarbons in seawater by autochthonous microorganisms”, published on 09/27/2019, International Biodeterioration & Biodegradation Vol.145, 104789, pages 1-11), hereinafter ‘Pereira’, and Yao et al. (“Simultaneous removal of organic matter and nitrogen by a heterotrophic nitrifying–aerobic denitrifying bacterial strain in a membrane bioreactor”, published on 06/04/2013, Bioresource Technology, Vol 143 (2013), page 83-87), hereinafter ‘Yao’, as evidenced by Encyclopedia (“Inoculum”, published on 08/30/2017, downloaded from https://web.archive.org/web/20170830063033/https://www.encyclopedia.com/science/dictionaries-thesauruses-pictures-and-press-releases/inoculum, pages 1-1), hereinafter ‘Encyclopedia’, Lawal (“Polycyclic aromatic hydrocarbons. A review”, published on 07/14/2017, Cogent Environmental Science (2017),Vol. 3, Issue 1, pages 1-89), hereinafter ‘Lawal’, Mao et al. (“Occurrence and fate of benzophenone-type UV filters in aquatic environments: a review”, published on 12/21/2018, Environ. Sci.: Water Res. Technol., 2019, Vol. 5, pages 209–223), hereinafter ‘Mao’, and Kasprzyk-Hordern et al. (“The removal of pharmaceuticals, personal care products, endocrine disruptors and illicit drugs during wastewater treatment and its impact on the quality of receiving waters”, published on 11/06/2008, Water research, Vol. 43 (2009), pages 363-380), hereinafter ‘Kasprzyk-Hordern’, in further view of Mao et al. (“Occurrence and fate of benzophenone-type UV filters in aquatic environments: a review”, published on 12/21/2018, Environ. Sci.: Water Res. Technol., 2019, Vol. 5, pages 209–223), hereinafter ‘Mao’.
Gomyo’s, Pereira’s, and Yao’s teachings have been set forth above.
Modified Gomyo does not teach wherein the benzophenone ultraviolet sunscreen is 2,4-dihydroxybenzophenone (instant claim 11), wherein the Bacillus methylotrophicus strain degrades the benzophenone ultraviolet sunscreen in an aerobic condition (instant claim 12).
Mao’s general disclosure relates to “benzophenone-type ultraviolet filters (BP-type UV filters or BPs)”, and “the occurrence and fate of BP-type UV filters in certain aquatic matrices” (see entire document, including abstract and page 210, left column, paragraph 3).
Regarding claims 11 and 12, pertaining to is 2,4-dihydroxybenzophenone, Mao teaches wherein is 2,4-dihydroxybenzophenone (BP-1) is found in wastewater (“see Table 1), and wherein 2,4-dihydroxybenzophenone has estrogenic effects (“BP-1 has stronger estrogenic activity than its parent compound, BP-3.”; page 210, left column, paragraph 2).
While modified Gomyo does not teach wherein the benzophenone ultraviolet sunscreen is 2,4-dihydroxybenzophenone (instant claim 11), wherein the Bacillus methylotrophicus strain degrades the benzophenone ultraviolet sunscreen in an aerobic condition (instant claim 12), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined modified Gomyo’s method with Mao’s teachings on 2,4-dihydroxybenzophenone, in order to have created a method for degrading a benzophenone ultraviolet sunscreen, wherein the benzophenone ultraviolet sunscreen is 2,4-dihydroxybenzophenone, wherein the Bacillus methylotrophicus strain degrades the benzophenone ultraviolet sunscreen in an aerobic condition. One would have been motivated to do so, since 2,4- dihydroxybenzophenone is found in wastewater and has estrogenic effects (see Mao above).
Response to Arguments
Applicant has traversed the previous rejections of claims 10-12 and 14-17 under 35 U.S.C. §103 in light of amended claim 10, amended claim 14, and new claim 18 (remarks, pages 7-8). As discussed above, the previous rejections under 35 U.S.C. §103 have been withdrawn, and new rejections have been presented in light of Applicant’s amendment of 07/02/2025. Gomyo, Pereira, Yao, and Mao, are still relied upon in the above rejections. Applicant's arguments filed on 07/02/2025 have been fully considered but they are not persuasive.
In Applicant’s reply, Applicant states that Gomyo “merely disclosed the wastewater has a temperature of 25 °C, and the pH of wastewater is ph 7”, “fails to disclose the feature of "the temperature of the wastewater is 28-30 °C, the pH of
the wastewater is 7.3-8.0'' as recited in the amended claim 10” (remarks, page 7), and that “the above feature is able to attain unexpected results” (remarks page 8). Applicant further describes that Gomyo “fails to disclose “the feature of "the Bacillus methylotrophicus BP1.1 strain is incubated in an aerobic condition at 28°C for 24-48 h to obtain the BP1.1 expansion culture product" as recited in new claim 18” (remarks, page 8), that Gomyo “fails to disclose the feature of "an inoculation amount of the Bacillus methylotrophicus BP1.1 in the wastewater is 1‰-2‰" as recited in the amended claim 10” (remarks, page 8), and “the feature of "the inoculation amount of Bacillus methylotrophicus BP1.1 in the wastewater is 1.8‰-2‰" as recited in the amended claim 14” (remarks, page 8). Applicant concludes that “the amended claim 10 stands non-obvious over the cited references”.
In response to Applicant’s argument that Gomyo does not teach the above cited features and that amended claim 10 is non-obvious over the cited references, the Examiner recognizes that 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 this case, regarding the above cited wastewater parameters temperature, pH and inoculum amounts, and the expansion culture parameter temperature, Gomyo provides a wastewater temperature of 25 °C and a wastewater pH of 7, and an inoculum size of 1‰, and Yao provides wastewater temperatures of 25-30 °C, and an expansion culture incubation temperature of 30 °C. While Gomyo and Yao individually do not teach the exact expansion culture incubation temperature of 28°C, a wastewater temperature of 28-30 °C, a waste water pH of 7.3-8.0, with waste water inoculum amounts of 1‰-2‰ or 1.8‰-2‰, the recited temperatures, ph range, and inoculum amounts would be within the realm of routine experimentation, as discussed above.
In response to Applicant’s statement that “the above feature is able to attain unexpected results” (remarks page 8), the Examiner states that the results are not considered unexpected, since variation of temperature and pH would be within routine experimentation of a skilled artisan, and are commonly optimized in order to obtain improved results. It is noted that Applicant does not present results of benzophenone degradation experiments conducted at varying wastewater temperatures or pH values. As such, the criticality of a wastewater temperature of 28-30 °C and a wastewater pH of 7.3-8.0 is not evident. Additionally, it is not possible to properly interpret the benzophenone degradation results presented in instant Fig. 3, since the statistical significance of the presented data is unclear (see MPEP 716.02(b) I).
Conclusion
No claims are allowed.
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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/SANDRA ZINGARELLI/Examiner, Art Unit 1653
/SHARMILA G LANDAU/Supervisory Patent Examiner, Art Unit 1653