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 .
Claims 1-5, 7-11 and 13-22 are pending in this application and were examined on their merits.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/10/2025 has been entered.
The objection to Claims 15 and 16 because of minor informalities has been withdrawn due to the Applicant’s amendments to the claims filed 09/10/2025.
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.
Claim 19 is newly 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 19 recites the limitation "the feed". There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-5, 7-10, 14, 17 and 18 are rejected under 35 U.S.C. § 103 as being unpatentable over Garcia-Gonzalez et al. (2014), in view of Al Rowaihi et al. (WO 2019/193518 A2), as evidenced by Mozumder et al. (2013), all of record, and further evidenced by MMC (2025).
Garcia-Gonzales discloses a cultivation method wherein C. necator cell mass growth occurs under heterotrophic conditions followed by cultivating bacteria to trigger PHB biosynthesis by applying nitrogen and oxygen limitations under autotrophic conditions using a gas mixture of H2, O2 and CO2 (see Abstract and section 2.3).
The reference also discloses that the oxygen transfer rate must be enhanced to achieve higher PHB accumulation and operation at elevated pressure is one means to achieve this (Pg. 243, Column 1, Lines 60-63). Further, Garcia-Gonzalez discloses that the gas composition was maintained at H:O2:CO2 = 84:2.8:13.2 (vol%) and the pressure was maintained at atmospheric pressure or at an overpressure of 40 mbar (see section 2.2.1, section 2.2.3, and section 2.3). Therefore, Garcia-Gonzalez discloses conditions where the amount of O2 is below 10% (vol%), the amount of CO2 is between 2-25% (vol%) and the amount of H2 is between 50-90% (vol%) and a pressure of 0 barg (atmospheric pressure). It is noted that polyhydroxybutyrate (PHB) is a polyhydroxyalkonate (PHA), and reading on Claims 1 and 18.
Regarding Claims 1, 14 and 18, Garcia-Gonzalez et al. discloses the culture medium used was the same as used in Mozumder et al. (2013) (Pg. 238, Column 2, Lines 17-18). Mozumder et al. evidences that the growth/fermentation medium comprises the salts monopotassium phosphate and ammonium sulfate (Pg. 366, Column 2, Lines 18-21) at a pH of 6.80 (Pg. 366, Column 2, Lines 29-31).
Regarding Claim 2-3, Garcia-Gonzalez discloses the bacterium as Cupriavidus necator, a wild type bacterium (see Abstract).
Regarding Claim 4, Garcia-Gonzalez discloses under the heterotrophic conditions glucose and waste glycerol were used as a carbon source or organic substrate (see Abstract). Therefore, Garcia-Gonzalez discloses the carbon source as a sugar or a polyol.
Regarding Claim 5, Garcia-Gonzalez teaches that the bacteria during the growth phase increased exponentially (see Pg. 241, Paragraph. 2).
Regarding Claims 8 and 9, Garcia-Gonzalez discloses that the gas composition was maintained at H2,:O2,:CO2, = 84:2.8:13.2 (vol%) (see section 2.2.3 and section 2.3).
Regarding Claim 10, Garcia-Gonzalez produces the same product, a PHA polymer (see citations above, section 2.6, section 3.2.4, and Conclusions).
Garcia-Gonzalez et al. did not teach a method wherein the autotrophic cultivation is at a pressure of at least 2 bar, as required by Claims 1 and 18;
wherein the autotrophic cultivation is at a pressure of from 2-20 barg, as required by Claim 7;
or wherein the growth media comprises sucrose or fructose as the carbon source, as required by Claim 17.
Al Rowaihi et al. teaches that the amount of gaseous substrate provided during autotrophic fermentation is controlled to minimize loss of gas and thereby increase gas- to-liquid conversion efficiency. In the methods described herein, anaerobic fermentation is performed at a pressure higher than atmospheric pressure. Operating at increased pressure allows a significant increase in the rate of transfer of CO2 and H2 from the gas phase to the liquid phase. The pressure can be initially set to a pressure greater than or equal to 2 bar absolute (or greater than or equal to 1 barg, see MMC, Lines 6-7 whom teaches that 1 barg is approximately 2 bar absolute).
The reference further teaches that PHA producing bacterium may be cultured in a growth medium comprising a carbon source, such as fructose, sucrose, glucose or glycerol (Pg. 23, Paragraph [0079]).
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 autotrophic cultivation of PHB method of Garcia-Gonzalez by increasing the pressure from 0 barg to greater than or equal to 1 barg (encompassing the claimed pressure of at least 2 barg and the claimed pressure range of from 2-20 barg) as taught by Al Rowaihi because this would advantageously increase the gas transfer rate of all the present gases into the liquid phase. The ordinary artisan would have been motivated to do so because Garcia-Gonzalez teaches that the gas (oxygen) transfer rate must be enhanced to achieve higher PHB accumulation and operation at elevated pressure is one means to achieve this, a finding confirmed by Al Rowaihi. The ordinary artisan would have reasonable expectation of success in modifying the prior art reference to arrive at the claimed invention because both Garcia-Gonzalez and Al Rowaihi are directed to PHA production methods utilizing two-stage processes.
It would have been further obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Garcia-Gonzalez et al. of producing PHB by culturing Cupriavidus necator in growth medium comprising glucose or glycerol to substitute sucrose or fructose as the carbon source as taught by Al Rowaihi et al. because this is no more than the selection of an art-recognized equivalent bacteria carbon source for another. Those of ordinary skill in the art would have been motivated to make this modification based on the availability of compounds and artisan preference.
There would have been a reasonable expectation of success in making this modification because glucose, glycerol, fructose and sucrose are all art-recognized equivalent bacterial sources of carbon.
Claims 1-5, 7-10, 11, 13, 14, 17 and 18 are rejected under 35 U.S.C. § 103 as being unpatentable over Garcia-Gonzalez et al. (2014), in view of Al Rowaihi et al. (WO 2019/193518 A2), as evidenced by Mozumder et al. (2013), all of record, and further evidenced by MMC (2025), as applied to Claims 1-5, 7-11, 13, 14, 17 and 18 above, and further in view of Beilen et al. (2012), of record.
The teachings of Garcia-Gonzalez et al. and Al Rowaihi et al. were discussed
above.
None of the above references taught a molded article or product comprising the
produced PHA, as required by Claims 11 and 13.
Beilin teaches PHAs have many and wide-ranging potential applications,
such as consumer products as bottles, films, fibers, flowerpots, foils, bags, fishing lines,
nets, materials used in biomedical applications, and for other disposable items such as
bottles, cups, plates, and cutlery that can be composted (see Pg. 1, Paragraph 1-3).
It would have been obvious to one of ordinary skill in the art before the effective
filing date of the claimed invention to use the PHA produced by the method of Garcia-
Gonzalez et al. and Al Rowaihi et al. in making the products listed in Claims 11 and 13
because PHA is known in the art to be suitable for making molded articles such as
flower pots and cups. The ordinary artisan would have been motivated to do so because Beilin teaches PHAs may be used in wide-range of application and teaches products under the categories listed in the claims. The ordinary artisan would have had a reasonable expectation of success in modifying the prior art references to arrive at the
claimed invention because Garcia-Gonzalez and Beilin are directed to PHAs and Beilen
teaches that PHAs have utility in making molded articles.
Claims 1-5, 7-10, 14, 15, 16, 17 and 18 are rejected under 35 U.S.C. § 103 as being unpatentable over Garcia-Gonzalez et al. (2014), in view of Al Rowaihi et al. (WO 2019/193518 A2), as evidenced by Mozumder et al. (2013), all of record, and further evidenced by MMC (2025), as applied to Claims 1-5, 7-10, 14, 17 and 18 above, and further in view of Haas et al. (CA 2900293 A1), of record.
The teachings of Garcia-Gonzalez et al. and Al Rowaihi et al. were discussed
above.
None of the above references taught a method wherein the bacterium comprises
Pelomonas saccharophilia, as required by Claims 15-16.
Hass et al. is directed to the autotrophic fermentation of cells which synthesize
PHB (Pg. 13, Claims 1 and 3), wherein the cells may be hydrogen-oxidizing bacteria
including Cupriavidus necator (Pg. 3, Lines 21 and 30) or Pelomonas saccharophilia
(Pg. 4, Line 5).
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 method of Garcia-Gonzalez et al. and
Al Rowaihi et al. of producing PHB by Cupriavidus necator to substitute Pelomonas
saccharophilia for the C. necator because this is no more than the selection of an art-
recognized equivalent hydrogen-oxidizing bacteria known to fermentatively produce
PHB for another. Those of ordinary skill in the art would have been motivated to make
this modification based on the availability of compounds and artisan preference. There
would have been a reasonable expectation of success in making this modification
because both strains are art-recognized equivalent hydrogen-oxidizing bacterial known
to produce PHB.
Claims 1-5, 7-10, 14, 17, 18, 19 and 22 are rejected under 35 U.S.C. § 103 as being unpatentable over Garcia-Gonzalez et al. (2014), in view of Al Rowaihi et al. (WO 2019/193518 A2), as evidenced by Mozumder et al. (2013), all of record, and further evidenced by MMC (2025), as applied to Claims 1-5, 7-10, 14, 17 and 18 above, and further in view of Foster et al. (US 2019/0338320 A1).
The teachings of Garcia-Gonzalez et al. and Al Rowaihi et al. were discussed
above.
None of the above references taught a method wherein the feed comprises 150-300 g/L carbon, 1 to 5 g/L nitrogen and 1 to 10 g/L phosphorus, as now required by Claim 19;
or wherein the cultivating is under nitrogen deficient conditions and the pressure is 3-30 barg, as now required by Claim 22.
With regard to Claim 22, the Examiner notes the above finding of obviousness for the use of a pressure of greater than or equal to 1 barg (encompassing the claimed range of 3-30 barg).
Foster et al. teaches a method of producing polyhydroxyalkanoate (PHA) with C. necator (Pg. 1, Paragraph [0004]) wherein the amount of controlling the concentrations of one or more limiting nutrients during fermentation wherein the nutrients include oxygen, nitrogen, phosphorus and carbon, wherein nitrogen, oxygen and/or phosphorus limitation can increase organic acid production, and carbon limitation can cause increased carbon uptake by the organism (Pgs. 2-3, Paragraph [0018]). Foster specifically teaches an example wherein C. necator is grown on a fructose (carbon source) medium/feed with limited (e.g. deficient) nitrogen at 3.5 g/L or 1.75 g/L (Pg. 8, Table 1 and Paragraph [0083]) and wherein C. necator is grown on a medium/feed containing phosphorus at 2.35 g/L (1.41+0.04) and 1.18 g/L (0.71+0.47).
With regard to Claims 19 and 22, it would have been obvious to those of ordinary skill in the art before the instant invention to utilize a feed containing carbon, nitrogen, phosphorus and oxygen in the claimed concentration ranges because while the Foster et al. reference is silent with regard to the particular concentration of carbon in the feed composition and oxygen concentration, the Foster reference teaches that nutrient concentrations can be controlled and manipulated to produce effects on the cultured microorganisms, i.e., result effective variables. The Foster reference particularly exemplifies altering/limiting feed concentration of nitrogen and phosphorus. Therefore, the ordinary artisan would have found it obvious to alter other nutrients in the same composition to achieve desired effects.. Further, the determination of the optimal or workable ranges of the concentration of nutrients in a feed composition by routine experimentation and optimization of result effective variables is not inventive. In this instance, the concentration of carbon in the feed composition and oxygen concentration will directly affect the carbon uptake and organic acid production of the C. necator cultured thereon.. Those of ordinary skill in the art before the effective filing date on the instant invention would have been motivated to make this modification in order to obtain an effective C. necator feed composition for C. necator culture and the production of desired products. There would have been a reasonable expectation of success in making this modification because the reference already provides phosphorus and nitrogen concentration ranges for another C. necator feed composition which are within the claimed range and the determination of result effective variables by routine optimization and experimentation is within the purview of those of ordinary skill in the art.
Claims 1-5, 7-10, 14, 17, 18 and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Garcia-Gonzalez et al. (2014), in view of Al Rowaihi et al. (WO 2019/193518 A2), as evidenced by Mozumder et al. (2013), all of record, and further evidenced by MMC (2025), as applied to Claims 1-5, 7-10, 14, 17 and 18 above, and further in view of Sivashanmugam et al. (2009).
The teachings of Garcia-Gonzalez et al. and Al Rowaihi et al. were discussed
above.
None of the above references taught a method wherein growth of the bacteria is continued until a cell density of at least 20 is reached, as now required by Claim 20.
Sivashanmugam et al. teaches a method of high cell density protein expression in bacteria wherein OD600 of 10-20 are routinely achieved (Pg. 936, Abstract).
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 method of Garcia-Gonzalez et al. and
Al Rowaihi et al. of producing PHB by Cupriavidus necator in culture to culture the bacteria at a high density of 10-20 as taught by Sivashanmugam et al. because this would provide a higher density of bacteria cells producing the desired product. Those of ordinary skill in the art would have been motivated to make this modification to have a greater density of C. necator bacteria cells producing more PHB.
There would have been a reasonable expectation of success in making this modification because at least both the Garcia-Gonzalez and Sivashanmugam et al. references are drawn to the same field of endeavor, that is, the in vitro production of desired products by bacteria.
Claims 1-5, 7-10, 14, 17, 18 and 21 are rejected under 35 U.S.C. § 103 as being unpatentable over Garcia-Gonzalez et al. (2014), in view of Al Rowaihi et al. (WO 2019/193518 A2), as evidenced by Mozumder et al. (2013), all of record, and further evidenced by MMC (2025), as applied to Claims 1-5, 7-10, 14, 17 and 18 above, and further in view of Reed et al. (US 2013/0149755 A1).
The teachings of Garcia-Gonzalez et al. and Al Rowaihi et al. were discussed
above.
None of the above references taught a method wherein the amount of O2 is below 6% v/v, as now required by Claim 21.
Reed et al. teaches a method wherein C. necator is cultured to produce the PHA polyhydroxybutyrate (PHB) in an oxygen concentration of 4% (Pg. 17, Paragraph [0138] and Pg. 18, Paragraph [0141]).
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 method of Garcia-Gonzalez et al. and
Al Rowaihi et al. of producing PHB by Cupriavidus necator wherein the amount of oxygen is 8% to use an oxygen level of 4% as taught by Reed et al. because the oxygen amount of Garcia-Gonzalez is not limited to the disclosed amount and Reed teaches that the oxygen amount may be further reduced in culturing the same microorganism. Those of ordinary skill in the art would have been motivated to make
this modification based artisan preference and the desired limitation of oxygen in the culturing. There would have been a reasonable expectation of success in making this modification because both the Garcia-Gonzalez and Reed references are drawn to the same field of endeavor, that is, the in vitro production of PHB by C. necator.
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.
Claims 1-5, 7-11, 13, 14 and 18 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1-5, 7-9, 13, 14 and
15 of copending Application No. 18/570,699 in view of Mozumder et al. (2013).
The instant invention (Claims 1 and 18) is drawn to a method for producing
polyhydroxyalkanoate comprising:
growing bacteria under heterotrophic conditions in a media comprising at least
one phosphate salt or at least one ammonium salt; and cultivating the bacteria under
autotrophic conditions under an atmosphere of CO2, H2 and O2, wherein the amount on
O2 is below 10 % v/v and pressure is at least 2 barg, wherein the bacterium comprises
Pelomonas saccharophilia, Azomonas lata, or Cupriavidus necator, wherein a content of CO2 is between 2% and 25 % v/v and wherein a content of H2 is between 50 % and 90 % v/v.
This is anticipated by the method of the co-pending ‘699 application drawn to: a method for producing PHA comprising a) growing bacteria under heterotrophic conditions in a media; and b) cultivating the bacteria under autotrophic conditions under an atmosphere of CO2, H2 and optional O2, wherein the amount of O2 if present is less than 10 % (v/v) and pressure is at least 1 barg, wherein at least one carbon source is added before and/or during step b), reading on Instant Claims 1 and 18.
Instant Claims 2-5, 7-11 and 13 read directly on Claims 2-5, 7-9, 13 and 14 of the ‘699 application.
The ‘699 application did not teach wherein the media in step a) comprises at least one phosphate salt or at least one ammonium salt, as required by instant Claims 1 and 18;
wherein the pH of the media is 4.5 to 7.5, as required by Claim 14;
or wherein the bacteria is Cupriavidus necator, as required by Claim 18.
Mozumder et al. is drawn to a bacteria method of producing PHB, wherein C. necator bacteria are grown in a growth/fermentation medium comprising the salts monopotassium phosphate and ammonium sulfate (Pg. 366, Column 2, Lines 18-21) at a pH of 6.80 (Pg. 366, Column 2, Lines 29-31).
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 method of producing PHA by bacteria of the ‘699 application by using C. necator and the growth medium of Mozumder et al. because the ‘699 application is generic to the type of bacteria and growth medium and Mozumder et al. provides a suitable specific bacteria and growth medium for the process. Those of ordinary skill in the art would have been motivated to make this modification based on the availability of bacteria, media compounds and artisan preference. There would have been a reasonable expectation of success in making this modification because while the ‘699 application is silent with regard to the bacteria species and composition of the growth media in their process, Mozumder et al. teaches a suitable specific bacteria and growth medium for the process.
Claims 1-5, 7-11, 13, 14, 15, 16 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-9, 13, 14 and 15 of copending Application No. 18/570,699 in view of Mozumder et al. (2013), of record, as applied to Claims 1-5, 7-11, 13, 14 and 18 above, and further in view of Haas et al. (CA 2900293 A1), of record.
The teachings of the ‘699 application and Mozumder et al. were discussed above.
Neither reference taught a method wherein the bacteria is Pelomonas saccharophilia, as now required by Claims 15 and 16.
Hass et al. is directed to the autotrophic fermentation of cells which synthesize PHB (Pg. 13, Claims 1 and 3), wherein the cells may be hydrogen-oxidizing bacteria including Cupriavidus necator (Pg. 3, Lines 21 and 30) or Pelomonas saccharophilia (Pg. 4, Line 5).
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 method of the ‘699 application and Mozumder et al. of producing PHB by Cupriavidus necator to substitute Pelomonas saccharophilia for the C. necator because this is no more than the selection of an art- recognized equivalent hydrogen-oxidizing bacteria known to fermentatively produce PHB for another.
Those of ordinary skill in the art would have been motivated to make this modification based on the availability of compounds and artisan preference. There would have been a reasonable expectation of success in making this modification because both strains are art-recognized equivalent hydrogen-oxidizing bacterial known to produce PHB.
Claims 1-5, 7-11, 13, 14, 17 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-9, 13, 14 and 15 of copending Application No. 18/570,699 in view of Mozumder et al. (2013), of record, as applied to Claims 1-5, 7-11, 13, 14 and 18 above, and further in view of Al Rowaihi et al. (WO 2019/193518 A2), of record.
The teachings of the ‘699 application and Mozumder et al. were discussed above.
Neither reference taught a method wherein the growth medium comprises sucrose or glucose, as now required by Claim 17.
Al Rowaihi et al. teaches that PHA producing bacterium may be cultured in a growth medium comprising a carbon source, such as fructose, sucrose, glucose or glycerol (Pg. 23, Paragraph [0079]).
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 bacteria PHB production method of the ‘699 application and Mozumder et al. utilizing glucose or glycerol as the carbon source in the growth media to substitute sucrose or fructose as the carbon source as taught by Al Rowaihi et al. because this is no more than the selection of an art-recognized equivalent bacteria carbon source for another. Those of ordinary skill in the art would have been motivated to make this modification based on the availability of compounds and artisan preference. There would have been a reasonable expectation of success in making this modification because glucose, glycerol, fructose and sucrose are all art- recognized equivalent bacterial sources of carbon.
Claims 1-5, 7-11, 13, 14, 18, 19 and 22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-9, 13, 14 and 15 of copending Application No. 18/570,699 in view of Mozumder et al. (2013), of record, as applied to Claims 1-5, 7-11, 13, 14 and 18 above, and further in view of Foster et al. (US 2019/0338320 A1).
The teachings of the ‘699 application and Mozumder et al. were discussed above.
Neither reference taught a method wherein the feed comprises 150-300 g/L carbon, 1 to 5 g/L nitrogen and 1 to 10 g/L phosphorus, as now required by Claim 19;
or wherein the cultivating is under nitrogen deficient conditions and the pressure is 3-30 barg, as now required by Claim 22.
With regard to Claim 22, the Examiner notes that Claim 7 of the ‘699 application discloses a pressure range of from 2-20 barg (overlapping the claimed range of 3-20 barg).
Foster et al. teaches a method of producing polyhydroxyalkanoate (PHA) with C. necator (Pg. 1, Paragraph [0004]) wherein the amount of controlling the concentrations of one or more limiting nutrients during fermentation wherein the nutrients include oxygen, nitrogen, phosphorus and carbon, wherein nitrogen, oxygen and/or phosphorus limitation can increase organic acid production, and carbon limitation can cause increased carbon uptake by the organism (Pgs. 2-3, Paragraph [0018]). Foster specifically teaches an example wherein C. necator is grown on a fructose (carbon source) medium/feed with limited (e.g. deficient) nitrogen at 3.5 g/L or 1.75 g/L (Pg. 8, Table 1 and Paragraph [0083]) and wherein C. necator is grown on a medium/feed containing phosphorus at 2.35 g/L (1.41+0.04) and 1.18 g/L (0.71+0.47).
With regard to Claims 19 and 22, it would have been obvious to those of ordinary skill in the art before the instant invention to modify the method of the ‘699 application to utilize a feed containing carbon, nitrogen, phosphorus and oxygen in the claimed concentration ranges because while the Foster et al. reference is silent with regard to the particular concentration of carbon in the feed composition and oxygen concentration, the Foster reference teaches that nutrient concentrations can be controlled and manipulated to produce effects on the cultured microorganisms, i.e., result effective variables. The Foster reference particularly exemplifies altering/limiting feed concentration of nitrogen and phosphorus. Therefore, the ordinary artisan would have found it obvious to alter other nutrients in the same composition to achieve desired effects.. Further, the determination of the optimal or workable ranges of the concentration of nutrients in a feed composition by routine experimentation and optimization of result effective variables is not inventive. In this instance, the concentration of carbon in the feed composition and oxygen concentration will directly affect the carbon uptake and organic acid production of the C. necator cultured thereon.. Those of ordinary skill in the art before the effective filing date on the instant invention would have been motivated to make this modification in order to obtain an effective C. necator feed composition for C. necator culture and the production of desired products.
There would have been a reasonable expectation of success in making this modification because the reference already provides phosphorus and nitrogen concentration ranges for another C. necator feed composition which are within the claimed range and the determination of result effective variables by routine optimization and experimentation is within the purview of those of ordinary skill in the art.
Claims 1-5, 7-11, 13, 14, 18 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-9, 13, 14 and 15 of copending Application No. 18/570,699 in view of Mozumder et al. (2013), of record, as applied to Claims 1-5, 7-11, 13, 14 and 18 above, and further in view of further in view of Sivashanmugam et al. (2009).
The teachings of the ‘699 application and Mozumder et al. were discussed above.
Neither of the above references taught a method wherein growth of the bacteria is continued until a cell density of at least 20 is reached, as now required by Claim 20.
Sivashanmugam et al. teaches a method of high cell density protein expression in bacteria wherein OD600 of 10-20 are routinely achieved (Pg. 936, Abstract).
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 method of the ‘699 application of producing PHA by Cupriavidus necator in culture to culture the bacteria at a high density of 10-20 as taught by Sivashanmugam et al. because this would provide a higher density of bacteria cells producing the desired product. Those of ordinary skill in the art would have been motivated to make this modification to have a greater density of C. necator bacteria cells producing more PHA. There would have been a reasonable expectation of success in making this modification because at least both the ‘699 application and Sivashanmugam et al. references are drawn to the same field of endeavor, that is, the in vitro production of desired products by bacteria.
Claims 1-5, 7-11, 13, 14, 18 and 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-9, 13, 14 and 15 of copending Application No. 18/570,699 in view of Mozumder et al. (2013), of record, as applied to Claims 1-5, 7-11, 13, 14 and 18 above, and further in view of further in view of Reed et al. (US 2013/0149755 A1).
The teachings of the ‘699 application and Mozumder et al. were discussed above.
Neither of the above references taught a method wherein the amount of O2 is below 6% v/v, as now required by Claim 21.
Reed et al. teaches a method wherein C. necator is cultured to produce the PHA polyhydroxybutyrate (PHB) in an oxygen concentration of 4% (Pg. 17, Paragraph [0138] and Pg. 18, Paragraph [0141]).
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 method of the ‘699 application of producing PHA by Cupriavidus necator wherein the amount of oxygen is less than 10% to use an oxygen level of 4% as taught by Reed et al. because the oxygen amount of the ‘699 application encompasses the disclosed amount and Reed teaches that the oxygen amount may be further reduced in culturing the same microorganism. Those of ordinary skill in the art would have been motivated to make this modification based artisan preference and the desired limitation of oxygen in the culturing. There would have been a reasonable expectation of success in making this modification because both the ‘699 application and the Reed reference are drawn to the same field of endeavor, that is, the in vitro production of PHA by C. necator.
These are provisional nonstatutory double patenting rejections.
Response to Arguments
Applicant’s arguments, see Remarks, filed 09/10/2025, with respect to the above withdrawn objections have been fully considered and are persuasive.
Applicant's arguments filed 09/10/2025 have been fully considered but they are not persuasive.
The Applicant argues that Garcia-Gonzalez allegedly does not disclose a pressure of at least 1 barg. Applicant cites the Specification that 1 barg is a pressure of one bar above atmospheric pressure and corresponds to 2.013 bar absolute. Applicant notes the Office Action assertion that Garcia-Gonzalez discloses a pressure of “atmospheric pressure (1 atm is approx. 1.013 bar) (Remarks, Pg. 5, Lines 13-21).
This is not found to be persuasive for the following reasons, in response to applicant's arguments against the Garcia-Gonzalez reference 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 discussed above, Garcia-Gonzalez discloses a pressure of 0 barg or atmospheric pressure, also discloses that the oxygen transfer rate must be enhanced to achieve higher PHB accumulation and operation at elevated pressure is one means to achieve this. Al Rowaihi et al. teaches that the amount of gaseous substrate provided during autotrophic fermentation is controlled to minimize loss of gas and thereby increase gas- to-liquid conversion efficiency. In the methods described herein, anaerobic fermentation is performed at a pressure higher than atmospheric pressure. Operating at increased pressure allows a significant increase in the rate of transfer of CO2 and H2 from the gas phase to the liquid phase.
The pressure can be initially set to a pressure greater than or equal to 2 bar absolute (or greater than or equal to 1 barg, see MMC, Lines 6-7 whom teaches that 1 barg is approximately 2 bar absolute). Thus, it would have been obvious to one of ordinary skill in the art to modify the autotrophic cultivation of PHB method of Garcia-Gonzalez by increasing the pressure from 0 barg to greater than or equal to 1 barg (encompassing the claimed pressure of at least 2 barg and the claimed pressure range of from 2-20 barg) as taught by Al Rowaihi because this would advantageously increase the gas transfer rate of all the present gases into the liquid phase.
The Applicant cites comparative Example 1D of the Specification as corresponding to the conditions of Garcia-Gonzalez wherein the PHB produced by the claimed method has alleged surprising and unexpected properties to the PHB produced by the prior art in terms of elongation break, tensile modulus and flexural modulus (Remarks, Pg. 5, Lines 22-27).
This is not found to be persuasive for the following reasons, initially, in response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which Applicant relies (i.e., elongation break, tensile modulus and flexural modulus) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Secondly, Table I of the published application discloses that comparative example 1D (corresponding to Garcia-Gonzalez) has an elongation break % of 5 which while below the break % of PHBH reference (the claimed process?) is above the break % of PHB reference. Significantly, the tensile modulus and flexural modulus of comparative example 1D are greater than that of all but the PHB reference and only differ from those values by 50 mPa and 20 mPa respectively, which do not seem to be either unexpectedly surprising or unexpectedly different.
The Applicant also notes the differences in melting point and crystallization temperature of Table 2 of the published application as evidence of non-obviousness (Remarks, Pg. 6, Lines 1-6).
This is not found to be persuasive for the following reasons, initially, in response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which Applicant relies (i.e., melting point and crystallization temperature) are not recited in the rejected claim(s). Secondly, the melting point (Tm1) of comparative example 1D does not appear to be significantly different from either of PHB or PHB reference being only 3.4 °C and 0.3 °C different respectively. Thirdly, the crystallization temperature (Tc) of comparative example 1D only differs from either of PHB or PHB reference by 14.2 °C and 3 °C respectively. Applicant has not provided evidence that these are results are both significant and unexpected.
The Applicant argues that Al Rowaihi is drawn to a different process than Garcia-Gonzalez being drawn to anaerobic production of acetic acid with carbon dioxide and hydrogen without oxygen and then transforming to PHA using aerobic microorganisms. Applicant argues that the pressure conditions of Al-Rowaihi for producing acetic acid would not be applicable to the method of producing PHB with a gaseous mixture comprising oxygen as Al-Rowaihi teaches PHA is formed in a second step without a gaseous substrate (Remarks, Pg. 6, Lines 7-15 and Pg. 7, Lines 1-2).
In response to Applicant's argument that Al Rowaihi is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Al Rowaihi is in the field of the inventor’s (and Garcia-Gonzalez’s) endeavor. That is, the reference is concerned with the in vitro production of PHA by bacteria. Al-Rowaihi was not cited by the Examiner for its particular teachings related to the process by which PHA is produced (such as anaerobic production of acetic acid, but for its broad teaching that the amount of gaseous substrate (e.g. carbon dioxide, hydrogen and oxygen) are controlled during autotropic fermentation to minimize loss of gas and increase gas to liquid conversion efficiency and performance of autotrophic fermentation at a pressure of higher than atmospheric (taught by Garcia-Gonzalez) pressure.
The reference specifically notes that operation at increased pressure allows a significant increase in the rate of transfer of carbon dioxide and hydrogen from the gas phase (atmosphere above liquid cell culture) to the liquid phase (cell culture).
The Applicant argues that while the oxygen rate of Garcia-Gonzalez may be changed, the reference does not teach or suggest the claimed cultivation method. Applicant notes that the reference teaches other ways to enhance the oxygen transfer rate and that the reference does not recognize the allegedly surprising and unexpected properties of the produced PHA under increased pressure (Remarks, Pg. 7, Lines 3-11).
This is not found to be persuasive for the following reasons, as discussed above, Garcia-Gonzalez discloses a pressure of 0 barg or atmospheric pressure, also discloses that the oxygen transfer rate must be enhanced to achieve higher PHB accumulation and operation at elevated pressure is one means to achieve this. Al Rowaihi et al. teaches that the amount of gaseous substrate provided during autotrophic fermentation is controlled to minimize loss of gas and thereby increase gas- to-liquid conversion efficiency. In the methods described herein, anaerobic fermentation is performed at a pressure higher than atmospheric pressure. Operating at increased pressure allows a significant increase in the rate of transfer of CO2 and H2 from the gas phase to the liquid phase. The pressure can be initially set to a pressure greater than or equal to 2 bar absolute (or greater than or equal to 1 barg, see MMC, Lines 6-7 whom teaches that 1 barg is approximately 2 bar absolute).
Thus, it would have been obvious to one of ordinary skill in the art to modify the autotrophic cultivation of PHB method of Garcia-Gonzalez by increasing the pressure from 0 barg to greater than or equal to 1 barg (encompassing the claimed pressure of at least 2 barg and the claimed pressure range of from 2-20 barg) as taught by Al Rowaihi because this would advantageously increase the gas transfer rate of all the present gases into the liquid phase. As to the alleged “unexpected” and “surprising” results, there is no requirement that the prior art “recognize” these properties, and as discussed above, the results are 1) not recited in the rejected claims and 2) have not been shown to be different to such a degree as to be both significant and unexpected.
The Applicant argues that Garcia-Gonzalez uses less feed and does not have phosphorus in the feed during the growth phase (Remarks, Pg. 7, Lines 12-13).
This is not found to be persuasive for the following reasons, as discussed above, Garcia-Gonzalez discloses the culture (growth) medium used was the same as used in Mozumder et al. (2013) (Pg. 238, Column 2, Lines 17-18). Mozumder et al. evidences that the growth/fermentation medium comprises the salts monopotassium phosphate and ammonium sulfate (Pg. 366, Column 2, Lines 18-21) at a pH of 6.80 (Pg. 366, Column 2, Lines 29-31).
Further, Foster et al. teaches a method of producing polyhydroxyalkanoate (PHA) with C. necator (Pg. 1, Paragraph [0004]) wherein the amount of controlling the concentrations of one or more limiting nutrients during fermentation wherein the nutrients include oxygen, nitrogen, phosphorus and carbon, wherein nitrogen, oxygen and/or phosphorus limitation can increase organic acid production, and carbon limitation can cause increased carbon uptake by the organism (Pgs. 2-3, Paragraph [0018]). Foster specifically teaches an example wherein C. necator is grown on a fructose (carbon source) medium/feed with limited (e.g. deficient) nitrogen at 3.5 g/L or 1.75 g/L (Pg. 8, Table 1 and Paragraph [0083]) and wherein C. necator is grown on a medium/feed containing phosphorus at 2.35 g/L (1.41+0.04) and 1.18 g/L (0.71+0.47).
Thus, it would have been obvious to those of ordinary skill in the art before the instant invention to utilize a feed containing carbon, nitrogen, phosphorus and oxygen in the claimed concentration ranges because while the Foster et al. reference is silent with regard to the particular concentration of carbon in the feed composition and oxygen concentration, the Foster reference teaches that nutrient concentrations can be controlled and manipulated to produce effects on the cultured microorganisms, i.e., result effective variables. The Foster reference particularly exemplifies altering/limiting feed concentration of nitrogen and phosphorus. Therefore, the ordinary artisan would have found it obvious to alter other nutrients in the same composition to achieve desired effects.. Further, the determination of the optimal or workable ranges of the concentration of nutrients in a feed composition by routine experimentation and optimization of result effective variables is not inventive.
In this instance, the concentration of carbon in the feed composition and oxygen concentration will directly affect the carbon uptake and organic acid production of the C. necator cultured thereon.. Those of ordinary skill in the art before the effective filing date on the instant invention would have been motivated to make this modification in order to obtain an effective C. necator feed composition for C. necator culture and the production of desired products. There would have been a reasonable expectation of success in making this modification because the reference already provides phosphorus and nitrogen concentration ranges for another C. necator feed composition which are within the claimed range and the determination of result effective variables by routine optimization and experimentation is within the purview of those of ordinary skill in the art.
The Applicant argue that the claimed (cell) density is higher than that of Garcia-Gonzalez whom teaches that high cell density produced no PHA (Remarks, Pg. 7, Lines 14-16).
This is not found to be persuasive for the following reasons, as discussed above, Sivashanmugam et al. teaches a method of high cell density protein expression and production in bacteria wherein OD600 of 10-20 are routinely achieved (Pg. 936, Abstract).
Thus, 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 method of Garcia-Gonzalez et al. and Al Rowaihi et al. of producing PHB by Cupriavidus necator in culture to culture the bacteria at a high density of 10-20 as taught by Sivashanmugam et al. because this would provide a higher density of bacteria cells producing the desired product. Those of ordinary skill in the art would have been motivated to make this modification to have a greater density of C. necator bacteria cells producing more PHB. The Examiner notes that while Garcia-Gonzalez indicates that no PHB accumulation was observed at a high cell density of 35 g/L RCC, the reference does not indicate that this corresponds to the claimed OD600 of 10-20 and the reference further postulates that the lower PHB content at higher cell-density could be attributed to damage of the autotrophic growth ability of the microorganisms as a result of prolonged heterotrophic cultivation (Pg. 243, Column 1, Lines 15-18).
The Applicant argues that that the combination of references does not teach, suggest or otherwise obviate the claimed invention (Remarks, Pg. 7, Lines 24-28 and Pg. 8, Lines 1-6 and Lines 10-20).
This is not found to be persuasive for the reasoning set forth in the above rejections.
The Applicant argues that the Examiner has not provided a two-way distinctness test to support the provisional non-statutory double patenting rejections (Remarks, Pg. 9, Lines 4-19).
This is not found to be persuasive for the reasoning provided in the above provisional non-statutory obviousness double patenting rejections wherein the instant claims and application claims were analyzed in view of one another.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to PAUL C MARTIN whose telephone number is (571)272-3348. The Examiner can normally be reached Monday-Friday 12pm-8pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpract