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 .
DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found
in a prior Office action.
This application is in response to the papers filed on May 13, 2025. Pursuant to the amendment filed on May 13, 2025, claims 20, 22-24, 26, 44-46 and 49-57 are currently pending.
Claims 1 and 29 were previously withdrawn in the Office Action dated February 13, 2025.
Claims 20, 23-24, 44-46, 49 and 51 have been amended, claims 1-19, 21, 25, 27-43 and 47-48 have been cancelled, and claims 52-57 are newly filed in Applicant’s amendment filed on May 13, 2025. The restriction requirement between Groups I-III was previously made final in the Office Action dated February 13, 2025.
The examiner acknowledges receiving an executed Declaration under 37 C.F.R. § 1.132 by Dr. Yanwei Wang on May 9th, 2025 (“Wang Decl. ”), and filed on May 13, 2025.
Therefore, claims 20, 22-24, 26, 44-46 and 49-57 are currently under examination to which the following grounds of rejection are applicable.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on February 13, 2025 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Arguments
Withdrawn Objections/Rejections in response to Applicants’ arguments or amendments:
Claim Rejections - 35 USC § 101
In view of Applicants’ amendment to the claims dated May 13, 2025, wherein claims 20, 23-24, 44-46, 49 and 51 have been amended and claims 1-19, 21, 25, 27-43 and 47-48 have been cancelled, the rejection to claim 20 rejected under 35 U.S.C. 101 because the claimed invention is directed to product of nature without significantly more, has been withdrawn. The withdrawn rejection is due to the amendment to claim 20 that now recites, “ method for inhibiting growth of a dinoflagellate , comprising: (a) immobilizing Shewanella strain IRI-160 in a medium to a matrix, whereby Shewanella strain IRl-160 immobilized to the matrix is prepared; and (b) applying the Shewanella strain IRI-160 immobilized to the matrix to a dinoflagellate in an environment ... whereby the growth of the dinoflagellate is inhibited." Claim 20 requires the immobilization of the Shewanella strain IRI-160 to a matrix and applying the immobilized Shewanella strain IRI-160 to a dinoflagellate such that the growth of dinoflagellate is inhibited. Therefore the claim is directed to a method encompassing limitations that amount to significantly more than the product of nature.
Claim Rejections - 35 USC § 112
In view of Applicants’ amendment to the claims dated May 13, 2025, wherein claims 20, 23-24, 44-46, 49 and 51 have been amended and claims 1-19, 21, 25, 27-43 and 47-48 have been cancelled, the rejection to claim 20, rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement, has been withdrawn. The withdrawn rejection is due to claim 20 now reciting, “wherein the dinoflagellate is selected from the group consisting of genus Karlodinium, Gyrodiunium, Pfiesteria, Alexandrium, Coch/odinium, Dinophysis, Karenia, Prorocentrum, Heterocapsa, and Oxyrrhis”, and for removing the language “amount effective for inhibiting growth of”.
Claim Rejections - 35 USC § 103
In view of Applicants' amendment to the claims May 13, 2025, wherein claims 20, 23-24, 44-46, 49 and 51 have been amended and claims 1-19, 21, 25, 27-43 and 47-48 have been cancelled, the rejection claims 20, 22-26, 42-45, and 50-51 rejected under 35 U.S.C. 103 as being unpatentable over Hare et al. (Harmful algae 4.2 (2005): 221-234) in view of Pokrzywinski et al. (Harmful algae 19 (2012): 23-29) and Covarrubias et al. (Applied microbiology and biotechnology 93.6 (2012): 2669-2680), are withdrawn. The rejections to cancelled claims 25, and 42-43 have been rendered moot. The withdrawn rejections are due to the amendment to claim 20 no longer reciting filtrate for which Pokrzywinski provides teaching on, and is therefore no longer relevant to the standing obviousness rejection.
In view of Applicants' amendment to the claims May 13, 2025, wherein claims 20, 23-24, 44-46, 49 and 51 have been amended and claims 1-19, 21, 25, 27-43 and 47-48 have been cancelled, the rejection claims 46-49 rejected under 35 U.S.C. 103 as being unpatentable over Hare et al. (Harmful algae 4.2 (2005): 221-234) in view of Pokrzywinski et al. (Harmful algae 19 (2012): 23-29) and Covarrubias et al. (Applied microbiology and biotechnology 93.6 (2012): 2669-2680), as applied to claim 20, further in view of Huang et al. (Water research 95 (2016): 113-123), are withdrawn. The rejections to cancelled claims 47-48 have been rendered moot.
Applicants’ arguments are moot in view of the withdrawn rejection. A response to any argument pertaining to a new or maintained rejection can be found below.
New Grounds of Rejection:
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.
Claims 20, 22-23, 26, 44, and 50-51 are newly rejected under 35 U.S.C. 103 as being unpatentable over Hare et al. (Harmful algae 4.2 (2005): 221-234; of record IDS filed on December 15, 2021) in view of Covarrubias et al. (Applied microbiology and biotechnology 93.6 (2012): 2669-2680) and Kang et al. (Journal of applied microbiology 103.5 (2007): 1983-1994; of record IDS). This is a new rejection necessitated by Applicants’ amendments to the claims in the response filed on May 13, 2025.
Regarding claim 20, Hare teaches a method for preparing an algicidal composition comprising immobilizing Shewanella strain IRI-160 to a matrix (“One isolate (Shewanella IRI-160) had a growth-inhibiting effect on all three dinoflagellate species tested, including P. piscicida (potentially toxic zoospores), Prorocentrum minimum, and Gyrodinium uncatenum. This bacterium did not have a negative effect on the growth of any of the other four common estuarine non-dinoflagellate species tested” (abstract); “Bacterial isolates were then transferred to LM agar plates (as above but including 15 g l−1 agar) for a culture library. Twenty-two bacterial isolates were screened for algicidal effects on P. piscicida.” (Sec. 2.2)), whereby the algicidal composition is prepared, wherein the algicidal composition comprises the Shewanella strain IRI-160 in an amount effective for inhibiting growth of a dinoflagellate in an environment (Figures 1 and 3 depict inhibition of three dinoflagellate groups in which ISI-600 was used at 108 cells ml−1).
In reference to the limitation of “immobilizing” the Specification states, “The term "immobilizing" or "immobilized" used herein refers to attachment of Shewanella strain IRI-160 to a matrix (e.g., agarose, alginate, sponge or polyester) such that the bacterium may be associated with a matrix, for example, on a surface of a matrix (e.g., sponge or polyester) or embedded in a matrix (e.g., alginate or agarose). The term "immobilizing" or "immobilized" used herein also refers to the capturing of the filtrate of Shewanella strain IRI-160 to a matrix (e.g., agarose and alginate) such that the filtrate may be embedded in the matrix. For example, Shewanella strain IRI-160 may be associated with a matrix on its surface or embedded in a matrix while a filtrate of a Shewanella strain IRI-160 culture may be embedded in a matrix.” (p 9). Therefore, it is understood that Hare teaches this limitation wherein Shewanella strain IRI-160 is grown on agarose plates.
In reference to the medium, Hare describes the bacteria being grown in liquid LM medium (modified version of Luria Bertani medium) while also describing the bacteria being washed, harvested, and tested against dinoflagellates with seawater (Sec 2.3)
Hare does not teach Shewanella strain IRI-160 immobilized to a matrix in a medium for inhibiting the growth of a dinoflagellate, but rather IRI-160 can be cultured while immobilized to a matrix, and can be used to inhibit dinoflagellates in medium while not attached to a matrix.
Covarrubias teaches the technology of immobilizing microorganism, e.g. bacteria, algae, within alginate beads for use in water treatments. The reference teaches the immobilization of both bacteria and algae in 2–4 mm diameter, polymer Ca-alginate beads increased the cellular density for both microorganisms when used in wastewater (abstract; Fig. 2c). The immobilized bacteria were shown to effectively remove ammonium and phosphorous during tertiary wastewater treatment, and furthermore the microorganisms in the medium were unable to penetrate the alginate beads to disrupt the immobilized bacteria activity or more importantly survival (Fig. 4-5; p 2677).
Hare in view of Covarrubias do not teach the algicidal activity of the immobilized bacteria, specifically Hare teaches the algicidal activity of Shewanella sp. IRI-160, but not immobilized, and furthermore, Covarrubias teaches the maintenance of immobilized bacteria’s bioactivity in a medium (that is functional ), but not algicidal activity.
Kang teaches the algicidal activity of bacterium Pseudomonas fluorescens HYK0210‐SK09 against diatom Stephanodiscus hantzschii was lower when immobilized to alginate beads compared to the free-living bacteria, while the same bacterium immobilized to a cellulose sponge exhibited higher algicidal activity against S. hantzschii compared to the free-living bacterial cells (abstract).
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 have immobilized the Shewanella IRI-160 strain as taught by Hare with a matrix and medium, based, e.g, polymer Ca-alginate beads, on the teachings of Covarrubias describing alginate beads (matrix) are useful in immobilizing bacteria for treating aquatic environments, and moreover, wherein algicidal activity should be reasonably expected to be retained as seen with Pseudomonas fluorescens HYK0210‐SK09 showing strong algicidal activity against S. hantzschii while immobilized. Altogether, there is a reasonable expectation that the combination of elements would lead to the predictable outcome of inhibiting dinoflagellates as have been clearly shown for bacterial strain + medium + matrix.
Regarding claim 22 and claim 23, both dependent on claim 20, the combined teachings of Hare in view of Covarrubias and Kang render obvious claim 20. The rejection makes clear that Hare teaches a matrix of agarose (Sec. 2.2.).
Covarrubias teaches the technology of immobilizing microorganisms, e.g. bacteria, algae, within alginate beads that acts as a matrix for use in water treatments (abstract). Covarrubias states “Alginate is the most commonly used polymer for immobilizing microorganisms within small cavities within its matrix (Smidsrød and Skjåk-Bræk 1990). Immobilization of microorganisms in alginate beads is widely used when viable microbial cells are required in numerous biotechnological processes (Prasad and Kadokawa 2009).” (p 2670, col 1, par 4).
Kang teaches the immobilization of diatom‐lysing bacterium, Pseudomonas fluorescens HYK0210‐SK09 in algicidal beads wherein the algicidal activity was retained yet lower than that immobilized on sponge (“Immobilization,” p 1984, col 2; Fig. 1). Kang states “Cells immobilized with alginate and agar might show low algicidal activity because they are physically separated from the algal cells, whereas cells immobilized with polyurethane and CIS can undergo direct contact”, and therefore based on the algicidal activity of the immobilized bacterium the type of matrix should be considered.
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 have modified the algicidal composition taught by Hare by using alginate beads for the immobilization of Shewanella strain IRI-160 based on the teachings of Covarrubias, wherein alginate beads are widely used for such immobilization, offer protection to immobilized microorganisms while preventing liberation, and allow microorganisms to treat water systems while immobilized. Furthermore, Kang supports the use of alginate beads wherein algicidal activity of the immobilized bacteria was maintained. Additionally, there would be a reasonable expectation that the immobilization of specifically Shewanella strain IRI-160 would lead to similar outcomes in inhibiting dinoflagellates with the additional advantages provided by the alginate matrix as previously described. ̊
Regarding claim 26, dependent on claim 20, Hare teaches wherein the dinoflagellate is selected from the group consisting of species Pfiesteria piscicida, Karlodinium veneficum, Alexandrium fundyense, Alexandrium tamarense, Cochlodinium polykrikoides, Cochlodinium polykrikoides, Dinophysis acuminate, Gyrodinium instriatum, Gyrodinium uncatenum, Heterocapsa triquetra, Karenia brevis, Lavenderina fissa (aka Gyrodinium instriatum and Gyrodinium uncatenum), Oxyrrhis marina and Prorocentrum minimum (“One isolate (Shewanella IRI-160) had a growth-inhibiting effect on all three dinoflagellate species tested, including P. piscicida (potentially toxic zoospores), Prorocentrum minimum, and Gyrodinium uncatenum”) (abstract).
Regarding claim 44, dependent on claim 20, Hare teaches wherein the Shewanella strain IRI-160 is in the medium at a concentration of at least 108 cells per ml (Fig. 1, “Impact of bacterial strain IRI-160 (108 cells ml−1) on P. piscicida cultures”).
Regarding claim 50 and claim 51, both dependent on claim 20, the rejection above to claim 20 makes obvious the matrix comprising alginate, and more specifically alginate beads.
Response to Applicants’ Arguments as they apply to rejection of claims 20, 22-26, 42-45, and 50-51 under 35 USC § 103
Starting on page 6 of the remarks filed on May 13, 2025, Applicants essentially argue the following:
In relation to claim 20, Applicants’ state: “Hare does not teach applying Shewanella IRI-160 immobilized to a matrix to a dinoflagellate, whereby the growth of the dinoflagellate is inhibited, as recited in claim 20. Hare, Pokrzywinski, and Covarrubias do not teach or suggest each and every limitation of claim 20. For example, these references do not disclose apply the Shewanella strain IRI-160 immobilized to the matrix to a dinoflagellate with a reasonable expectation of success in inhibiting the growth of the dinoflagellate, as recited in claim 1.
Applicant describes the “unexpected results” cited in the Wang Decl, “Further, at the time when this present invention was made, it was surprising that Shewanella strain IRI-160 retains algicidal activity once immobilized to a matrix in view of inconsistent effects of immobilization reported in previous studies. (Declaration of Yanfei Wang, Ph.D. ("Wang Declaration'), ,I 4). It has been reported that the algicidal activity of a bacterial strain may increase or decrease after being immobilized to a matrix depending on the bacterial strain and the immobilization method. (Wang Declaration, ,I,I 4-9).”
The Wang Decl. describes unexpected results in relation to claim 26, “In a comparative study, Shewanella strain IRI-160 filtrate was prepared by resuspending the cells of Shewanella strain IRI-160 in a medium before the cells were removed by filtering. The Shewanella strain IRI-160 filtrate was immobilized to alginate hydrogel beads by embedding the Shewanella strain IRI-160 filtrate in the alginate hydrogel beads. The medium alone (control), the non-immobilized Shewanella strain IRI-160 filtrate (algicide), and the immobilized Shewanella strain IRI-160 filtrate (beads with filtrate) were applied to harmful dinoflagellate Karenia brevis. The algal biomass of the Karenia brevis was measured on day 0, 1, 2, and 5. As shown in the Figure below, both the non-immobilized Shewanella strain IRI-160filtrate (square) and tt1e immobilized Shewanella strain IRl-160 filtrate (triangle) inhibited the growth of the dinoflagellate as compared with the control (circle). Further, the inhibition of the growth of the dinoflagellate by the immobilized Shewanella strain IRI-160 filtrate (triangle) was greater than that by the non-immobilized Shewanella strain IRI-160 filtrate (square).”
In response to the argument it has been fully considered but is not persuasive due to the following reasons:
Regarding the first presented argument: In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As stated in the new claim 20 rejection above, the Hare reference teaches preparing an algicidal composition comprising Shewanella strain IRI-160 having a growth-inhibiting effect on different dinoflagellate species. The Covarrubias reference teaches the combination of bacteria to a matrix to be used in a medium, and furthermore the Kang reference teaches the algicidal activity of immobilized bacteria being not only retained, but enhanced. Altogether, the new claim 20 rejection is based on the combination of these references’ teachings.
Moreover, regarding the argument that the references do not provide a rationale for a reasonable expectation of success, the examiner disagrees based on the Hare reference teaching the algicidal activity of Shewanella strain IRI-160 against dinoflagellates, and moreover Covarrubias and Kang teaching the matrix and the impact it has on enhancing an immobilized bacteria’s algicidal activity. Therefore, there is a reasonable expectation of success in inhibiting dinoflagellates by immobilizing the taught Shewanella strain IRI-160 of Hare to the alginate beads taught by Covarrubias.
Regarding the second presented argument: The Declaration of Yanfei Wang, Ph.D under 37 CFR 1.132 filed on May 13, 2025 is insufficient to overcome the rejection of claims 20, 22-24, 26, 44-46 and 49-51 based upon 35 U.S.C. 103 as set forth in the last Office action because of the following reasons:
The Wang Decl. states, “it was surprising that Shewanella strain IRI-160 retains algicidal activity once immobilized to a matrix in view of inconsistent effects of immobilization reported in previous studies. It has been reported that the algicidal activity of a bacterial strain may increase or decrease after being immobilized to a matrix depending on the bacterial strain and the immobilization method.” This is followed up by four different examples wherein the algicidal activity of select bacteria changed once immobilized, and in some cases is dependent on the matrix type. However, the entirety of these examples reveal that the algicidal activity is maintained, but may be different than bacteria not embedded in a matrix. Additionally, the new rejection employs Kang et al. (Ex. A) that teaches algicidal activity of embedded bacteria is enhanced dependent on the matrix which would be sufficient motivation to immobilize the Shewanella strain IRI-160 against dinoflagellates as claim 20 is directed to. Therefore, in view of these claims not specifying such limitations the Wang. Decl. is not sufficient to overcome the new 35 USC 103 rejections.
In relation to the unexpected results described in the Wang Decl. for using the immobilized filtrate, the arguments do not overcome the new 103 rejections set forth for the following reasons: The study describes results “As shown in the Figure below”, yet there is no inclusion of such figure to see the outcomes described. Moreover, the findings that are recited do not match the limitations that are present in the claims, specifically there is no limitation pertaining to the time points at which inhibition was observed; and furthermore, claim 26 does not include the Karenia brevis dinoflagellate as being inhibited. The claim does not include these limitations, and there is no support that any dinoflagellate would be inhibited similarly to that of Karenia brevis. Lastly, claim 26 makes no mention of the step of immobilizing the filtrate, and it is not clear if the step cited in the Wang Decl. of embedding is the same step for claim 26. Altogether, the comparative study is not sufficient to overcome the prior art rejections for claim 26.
Claims 20, 24, and 45 are newly rejected under 35 U.S.C. 103 as being unpatentable over Hare et al. (Harmful algae 4.2 (2005): 221-234; of record IDS filed on December 15, 2021) in view of Covarrubias et al. (Applied microbiology and biotechnology 93.6 (2012): 2669-2680) and Kang et al. (Journal of applied microbiology 103.5 (2007): 1983-1994; of record IDS) as applied to claim 20, further in view of Pokrzywinski et al. (Harmful algae 19 (2012): 23-29). This is a new rejection necessitated by Applicants’ amendments to the claims in the response filed on May 13, 2025.
Regarding claim 20, the disclosure of Hare in view of Covarrubias and Kang is applied as in the 103 rejections above, the content of which is incorporated above, in its entirety.
Regarding claim 24, dependent on claim 20, Hare describes storing Shewanella strain IRI-160 at
-80 ̊ C followed by the cells incubated at room temperature for a few days before a single colony was isolated and grown out. The incubation of the dinoflagellates and Shewanella strain IRI-160 was done over the course of 8 or 16 days, in which counts was observed at 0, 4, 8, 12 and 16 days for the bacteria (Sec. 2.4). The growth of P. minimum and G. uncantem were inhibited across 16 days by the bacterium IRI-160 (Fig. 3) wherein without the addition of IRI-160 the dinoflagellates entered exponential growth.
Hare in view of Covarrubias and Kang does not teach wherein the algicidal composition is effective for inhibiting growth of the dinoflagellate in the environment after storage of the algicidal composition at a temperature of 4 °C for at least 14 days.
Pokrzywinski teaches the Shewanella strain IRI-160 filtrate, designated IRI-160AA, has long-term stability based on the filtrate being stored at 4 °C for 21 days and still maintaining algicidal activity as seen in Fig. 3. Furthermore stating, “There were no significant differences in algicidal activity of the filtrate after exposure to boiling or freezing temperatures or after autoclaving compared to the same filtrate stored at 4 °C (Fig. 3). There were also no significant differences in algicidal activity of the filtrate after 21 days storage at room temperature, 4 °C or −80 °C (data not shown)” (Sec. 3.3, par 1).
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 have claimed the algicidal activity being preserved after storage at a temperature of 4 °C for at least 14 days, based on Pokrzywinski findings that the IRI-160AA filtrate maintains activity after such conditions. Therefore, there is a reasonable expectation that the algicidal composition comprising IRI-160AA bacteria and a matrix would have preserved algicidal activity after the claimed long-term storage as evidenced by Pokrzywinski and in view of the Hare teaching using such strain for up to 16 days at appropriate temperatures.
Moreover, in reference to the composition comprising Shewanella strain IRI-160 isolate and matrix, there remains a reasonable expectation that the algicidal activity would be maintained based on Hare teaching the cells can be stored at -80 °C and grown at 25 °C for up to 16 days, and therefore the cells are likely able to be maintained at the encompassed temperature of 4 °C. Pokrzywinski further supports that IRI-160’s secreted bioactive compound comprised within the filtrate, IRI-160AA, is able to be stored at 4 °C for at least 14 days while maintaining the algicidal activity. Therefore, it would be expected that this is a shared outcome with the IRI-160 isolate and matrix based on knowing these cells are likely viable at this temperature and length of time.
Regarding claim 45, dependent on claim 20, Hare teaches wherein the Shewanella strain IRI-160 remains at least 80% effective for inhibiting the growth of the dinoflagellate in the environment. In Figure 1, IRI-160 at a cell density of 108 cells ml-1 was able to limit the cell abundance of the dinoflagellate, P. piscicida, at around 8000 cells ml-1 while the control, filtered sterile medium, revealed around 24,000 cells ml-1 at day 6. This finding reveals IRI-1600 is able to control the dinoflagellate cell abundance by around 66% of that of the control at day 6. It is important to note that the concentration of the immobilized IRI-160 in the alginate beads can be optimized as well as the cell density within these matrices to obtain the claimed 80% effective inhibition.
The Hare reference does not use a matrix, as described in the clam 20 and 22 rejections above, but it important to note that Covarrubias teaches the technology of immobilizing microorganism, e.g. bacteria, algae, within alginate beads for use in water treatments (abstract). The use of alginate beads is further expanded upon in the context of maintaining algicidal activity as seen by Kang as described in the claim 20 rejection above.
Lastly, in reference to maintaining algicidal activity after storage at a temperature of 4 °C for at least 14 days this is made obvious in the claim 24 rejection above wherein Pokrzywinski teaches storage of the IRI-160 filtrate after 21 days storage at room temperature, 4 °C or −80 °C showed no differences in inhibitory effects.
Therefore, 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 have optimized the “effective amount” of IRI-160 strain to be used in combination with a matrix based on the optimal cell viability characteristics associated with alginate beads described by Covarrubias in combination with the algicidal activity of IRI-160 described by Hare. In doing so, it would have led one of ordinary skill in the art to arrive at the claimed invention.
Claims 46, 49, 52-55 are newly rejected under 35 U.S.C. 103 as being unpatentable over Hare et al. (Harmful algae 4.2 (2005): 221-234; of record IDS filed on December 15, 2021) in view of Covarrubias et al. (Applied microbiology and biotechnology 93.6 (2012): 2669-2680), Kang et al. (Journal of applied microbiology 103.5 (2007): 1983-1994; of record IDS), Pokrzywinski et al. (Harmful algae 19 (2012): 23-29) and Huang et al. (Water research 95 (2016): 113-123). This is a new rejection necessitated by Applicants’ amendments to the claims in the response filed on May 13, 2025.
The rejection to claim 20 above makes obvious the combination of teachings of Hare, Covarrubias, and Kang of immobilizing Shewanella strain IRI-160 in a medium to a matrix, followed by applying the Shewanella strain IRl-160 immobilized to the matrix to a dinoflagellate in an environment whereby the growth of the dinoflagellate is inhibited. Claim 46 is different than claim 20 in that it is directed to only the filtrate being immobilized, and whereby inhibition of the growth of the dinoflagellate by the filtrate immobilized to the matrix is greater than that by the filtrate not immobilized to the matrix.
Pokrzywinski teaches the Shewanella strain IRI-160 filtrate, designated IRI-160AA, has long-term stability based on the filtrate being stored at 4 °C for 21 days and still maintaining algicidal activity as seen in Fig. 3. Furthermore stating, “There were no significant differences in algicidal activity of the filtrate after exposure to boiling or freezing temperatures or after autoclaving compared to the same filtrate stored at 4 °C (Fig. 3). There were also no significant differences in algicidal activity of the filtrate after 21 days storage at room temperature, 4 °C or −80 °C (data not shown)” (Sec. 3.3, par 1).
Huang teaches the continuous release of natural allelochemicals from sodium alginate beads for long-term control of cyanhobacteria blooms (abstract, Sec. 2.1). The sodium alginate beads are made of non-toxic and biodegradable natural materials as alginate is isolated from brown marine seaweed and algae, and is considered one of the most widely used biopolymers as a carrier for specific delivery and controlled release of drugs. The alginate beads mimic the continuous-release mode of natural allelochemicals with long-term effects due to the feature of self-regulated releasing (p 114, par 2). Huang teaches using the allelochemical 4,4’-dihydroxyflavone (DHF) for inhibiting cyanobacterial growth wherein the DHF-beads revealed a long-term inhibition effects (>30 d), whereas those of “direct-added” DHF to cells lasted a maximum of 10 d. (abstract)
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 have combined the IRI-160 filtrate, IRI-160AA, with an alginate matrix. This is because the algicidal inhibitory effects of IRI-160AA being clearly taught by Pokrzywinski, the use of alginate beads involving bacteria for water systems being taught by Covarrubias, and furthermore Huang teaching alginate beads can be combined with allelochemicals rather than cells for continuous-release over a longer period of time than directly adding to a water system. Based on these teachings, there is a reasonable expectation that such combination would result in the algicidal composition being able to inhibit growth of a dinoflagellate in an environment.
Regarding claim 49 and claim 55, both dependent on claim 46, as described above Hare does not teach Shewanella strain IRI-160 filtrate, and therefore does not teach wherein the algicidal composition retains at least 80% of the filtrate after storage of the algicidal composition at a temperature of 4 °C for at least 14 days.
Pokrzywinski teaches the Shewanella strain IRI-160 filtrate, designated IRI-160AA, has long-term stability based on the filtrate being stored at 4 °C for 21 days while maintaining algicidal activity as seen in Fig. 3. Furthermore stating, “There were no significant differences in algicidal activity of the filtrate after exposure to boiling or freezing temperatures or after autoclaving compared to the same filtrate stored at 4 °C (Fig. 3). There were also no significant differences in algicidal activity of the filtrate after 21 days storage at room temperature, 4 °C or −80 °C (data not shown)” (Sec. 3.3, par 1).
Covarrubias teaches the algicidal bead matrix for treating wastewater that comprises microorganisms as seen in the rejection to claim 20.
Kang teaches the algicidal of embedded bacteria in a matrix is retained, and is enhanced dependent on the matrix employed (abstract).
Huang teaches the continuous release of natural allelochemicals from sodium alginate beads for long-term control of cyanhobacteria blooms (abstract, Sec. 2.1). Huang teaches using the allelochemical 4,4’-dihydroxyflavone (DHF) for inhibiting cyanobacterial growth wherein the DHF-beads revealed a long-term inhibition effects (>30 d), whereas those of “direct-added” DHF to cells lasted a maximum of 10 d. (abstract). The optimally produced DHF-beads are predicted to have an allelochemical release time of 120 days (abstract). Furthermore, in reference to the release mechanism of the DHF beads being a diffusion-controlled release process it is described that, “the insoluble alginate-chitosan polymer matrix hinders the free diffusion of flavonoid molecules within an aqueous solution, and, therefore, the molecules slowly bypass and exit the matrix through winding ways. The molecules inside the matrix take more time to become free than those that are close to the surface so that the release of molecules is controlled … the microbial activity in water may have insignificant effects on the life expectancy and the release properties of the beads.” (p 119, par 1).
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 have optimized the algicidal composition so that it retains at least 80% of the filtrate after storage of the algicidal composition at a temperature of 4 °C for at least 14 days. This is based on Pokrzywinski describing the maintained filtrate stability across 21 days at 4 °C, and Huang teaching the slow release of chemicals from alginate beads using a diffusion-controlled release process wherein release is expected to occur up to 120 days. Moreover, it would be obvious to optimize the immobilized filtrate such as the concentration per matrix used or rather type of matrix used to obtain the claimed inhibition percentage at a temperature of 4 °C for at least 14 days.
Regarding claim 52, dependent on claim 46, Hare teaches a matrix comprised of agarose (Sec. 2.2), Covarrubias teaches a matrix consisting of alginate (“alginate beads”, Title), and Kang teaches a matrix that comprises alginate, agarose, and cellulose (abstract).
Regarding claim 53, dependent on claim 46, Covarrubias teaches a matrix consisting of alginate beads (“alginate beads”, Title).
Regarding claim 54, dependent on claim 46, Hare teaches wherein the dinoflagellate is selected from the group consisting of species Pfiesteria piscicida, Karlodinium veneficum, Alexandrium fundyense, Alexandrium tamarense, Cochlodinium polykrikoides, Cochlodinium polykrikoides, Dinophysis acuminate, Gyrodinium instriatum, Gyrodinium uncatenum, Heterocapsa triquetra, Karenia brevis, Lavenderina fissa (aka Gyrodinium instriatum and Gyrodinium uncatenum), Oxyrrhis marina and Prorocentrum minimum (“One isolate (Shewanella IRI-160) had a growth-inhibiting effect on all three dinoflagellate species tested, including P. piscicida (potentially toxic zoospores), Prorocentrum minimum, and Gyrodinium uncatenum”) (abstract).
Claim Rejections - 35 USC § 112
Claims 24, 45, 46, and by dependency claims 49, 52-56, 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 24 is indefinite in the recitation of “storage” as it is unclear if the storage is in reference to the Shewanella strain IRI-160 immobilized to the matrix or rather the dinoflagellates in the environment.
Claim 45 is indefinite in the recitation of “at least 80% effective for inhibiting the growth of the dinoflagellate in the environment” as it is unclear what the “at least 80% effective” is in relation to.
The term “improving” in claim 46 is a relative term which renders the claim indefinite. The term “improving” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not explicit if “improving” is intended to encompass the limitation “whereby inhibition of the growth of the dinoflagellate by the filtrate immobilized to the matrix is greater than that by the filtrate not immobilized to the matrix” or rather be defined by it.
Claim 46 is indefinite as it is not clear if the immobilized filtrate to the matrix includes the Shewanella IRI-160 strain or rather the bacteria is excluded from the filtrate. Clarification is required.
Conclusion
Claims 20, 22-24, 26, 44-46 and 49-57 are rejected. 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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/MICHAEL ANGELO RIGA/Examiner, Art Unit 1634
/MARIA G LEAVITT/Supervisory Patent Examiner, Art Unit 1634