DETAILED ACTION
Claims 23-28 remain withdrawn.
Applicant is reminded that upon amendment of claims, all claims including withdrawn claims should be reviewed for consistency with the amendment. Claims 22-28 recites claim terms that may not have antecedent basis in claim 21 as amended.
All objections and rejections raised in prior Office Actions are withdrawn unless restated below.
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 .
Specification
The disclosure is objected to because of the following informalities:
MPEP 2422.03(I) provides the following:
The Office strongly suggests filing the sequence listing required by 37 CFR 1.821(c) as a text file via EFS-Web. If a new application is filed via EFS-Web with an ASCII text file sequence listing that complies with the requirements of 37 CFR 1.824(a)(2) -(6) and (b), and applicant has not filed a sequence listing in a PDF file, the text file will serve as both the paper copy required by 37 CFR 1.821(c) and the computer readable form (CRF) required by 37 CFR 1.821(e). Note that the specification must contain a statement in a separate paragraph that incorporates by reference the material in the ASCII text file identifying the name of the ASCII text file, the date of creation, and the size of the ASCII text file in bytes. See MPEP § 2422.03(a) for additional information pertaining to EFS-Web submission of sequence listings.
The electronic file wrapper contains a Sequence Listing filed as a text file; however, the required statement indicated above cannot be found in the specification.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chappell, Engineering the Substrate Specificity of Galactose Oxidase, dissertation, University of Leeds, 2013 further in view of Klibanov et al. (Stereospecific oxidation of aliphatic alcohols catalyzed by galactose oxidase, Biochem. Biophys. Res. Comm. 108, 1982, 804-08), Delagrave et al. (U.S. 2001/0051369 A1) and Lookhart et al. (Acid-catalyzed isomerization and dehydration of DL-glyceraldehyde and 1,3-dihydroxy2-propanone, Carbohydrate Res. 60, 1978, 259-65).
Chappell states:
“The enzyme galactose oxidase (GO) (EC 1.1.3.9) contains a type 2 copper site and a protein derived cofactor which permit catalysis of the oxidation of primary alcohols to the corresponding aldehyde with concomitant reduction of dioxygen to hydrogen peroxide (Figure 1.10).” “It is thought that the primary function of the enzyme is generation of hydrogen peroxide which is then used for either antibiotic defence roles, or for use by peroxidases in lignin degradation. This theory is backed up by the fact that GO displays a broad substrate specificity (Section 1.6.2) which may be a compromise with the need to achieve a high rate of turnover to generate hydrogen peroxide from a range of available substrates.” Chappell, pages 24-25.
Chappell, page 25: “GO is an ideal candidate for development as an industrial biocatalyst due to a number of different features:
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The Table 1.1 (page 33) of Chappell shows that glycerol is a substrate of galactose oxidase.
“GO already shows some level of activity towards glycerol (Table 1.1) so enhancing this activity seems a realistic aim. The surge in biofuel development in the last decade has resulted in generation of large quantities of glycerol which forms the primary by-product in biodiesel production. As a result, glycerol prices have fallen significantly and the excess of available glycerol is now treated as a waste product. In order to reduce the economical and environmental impact of this waste storage and handling there is now great interest in development of processes to convert glycerol into high-value products with uses in various industries, including generation of alternatives to petroleum-based chemicals. Oxidation of glycerol can lead to a variety of different products with a range of potential uses, some examples of which are shown in Table 1.3.” Chappell, pages 42-43.
Fig. 5.2 (page 150) of Chappell shows that the F. graminearum galactose oxidase that is the primary galactose oxidase discussed by Chappell is identical to recited SEQ ID NO: 8 (alcohol oxidase).
“The enzyme galactose oxidase (GO) (EC 1.1.3.9) contains a type 2 copper site and a protein derived cofactor which permit catalysis of the oxidation of primary alcohols to the corresponding aldehyde with concomitant reduction of dioxygen to hydrogen peroxide.” Chappell, page 24. The corresponding aldehyde to glycerol is glyceraldehyde. Chappell, page 43, states “The oxidation of glycerol by WT GO has not been previously characterized so it is unclear where on the glycerol molecule oxidation occurs.” However, the oxidation of glycerol by galactose oxidase has been previously characterized by Klibanov, pages 805-06 and Fig. 1, stating that glycerol is oxidized to glyceraldehyde. Klibanov, abstract, states that the galactose oxidase characterized is from Dactylium dendroides. Klibanov does not state the amino acid sequence of such D. dendroides galactose oxidase; however, the sequence of such galactose oxidase from D. dendroides is associated with a sequence over 99% identical to recited SEQ ID NO: 8 and identical to recited SEQ ID NO: 10 as evidenced by Delagrave, SEQ ID NO: 2. “The enzyme galactose oxidase (GO), encoded by the galactose oxidase gene (go) of Dactylium dendroides and other organisms, catalyzes a reaction in which a primary alcohol such as the C6 hydroxyl group of galactose is oxidized to an aldehyde with concomitant reduction of molecular oxygen to hydrogen peroxide, as shown generally in Formula I.” Delagrave, para. [0003]. As such, an ordinarily skilled artisan at the time of filing would have actively understood and expected that glycerol will be converted to glyceraldehyde utilizing the F. graminearum galactose oxidase of Chappell as a significant if not major product by activity of galactose oxidase due to the over 99% amino acid identity between the galactose oxidases described by Chappell and Klibanov.
As such, Chappell in view of Klibanov teaches a method for producing high value chemicals in an industrial process by contacting a glycerol input with galactose oxidase (an alcohol oxidase) having recited SEQ ID NO: 8 or 10 to form a glyceraldehyde oxidized intermediate. However, Chappell does not teach a specific further transformation of such glyceraldehyde to an output being a high value chemical being dihydroxyacetone by contact with an acid catalyst as a finishing catalyst.
As discussed above, Table 1.3 of Chappell states various oxidation productions of glycerol that implies that these products be made with assistance with galactose oxidase as otherwise discussed by Chappell. As stated above, it is generally known in the prior art that galactose oxidase oxidizes glycerol to glyceraldehyde as shown by Klibanov, wherein Table 1.3 of Chappell shows that glyceraldehyde is a high value product.
Again, the cited prior art of at least Chappell and Klibanov teaches that a glycerol input can be converted to glyceraldehyde by contact with an alcohol/galactose oxidase having recited SEQ ID NO: 8 or 10 wherein “Oxidation of glycerol can lead to a variety of different products with a range of potential uses, some examples of which are shown in Table 1.3.” Chappell, pages 42-43. Table 1.3 of Chappell disclose that dihydroxyacetone is such a desirable product to be produced from glycerol.
It is established in the art that glyceraldehyde can be readily interconverted to dihydroxyacetone. “The interconversion of 2,3-dihydroxypropanal (1) [i.e. glyceraldehyde] and 1,3-dihydroxy-2- propanone (3) [i.e. dihydroxyacetone] and their dehydration to pyruvaldehyde (5) has been studied in 0.5M sulfuric acid [i.e. an acid catalyst] at 100 °. Lookhart, abstract. “Fig. 1 shows the generally accepted mechanism for the interconversion of 1 and 3 via the enediol (2). In addition to serving as the hypothetical intermediate for this interconversion, 2 is also thought to undergo dehydration, via beta elimination,
to the enolic form (4) of pyruvaldehyde (5).” Lookhart, page 260.
More specifically, Lookhart, page 260, teaches:
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As such, Lookhart teaches that glyceraldehyde can be interconverted (i.e. isomerized) to dihydroxyacetone and vice versa by acid catalysis (e.g. H2SO4). Lookhart teaches that “under strongly acidic conditions,” dehydration to pyruvaldehyde also occurs; however, this is understood as an explicit teaching that interconversion/isomerization between glyceraldehyde and dihydroxyacetone predominates under less than strongly acidic conditions, i.e. less than 0.5 M H2SO4.
Chappell does not teach a specific further transformation of such glyceraldehyde to an output being a high value chemical by contact with an acid catalyst as a finishing catalyst. It is expressly taught by Lookhart that acetaldehyde can by interconverted/isomerized to dihydroxyacetone by contact with a H2SO4 and Chappell, Table 1.3, teaches that glyceraldehyde and dihydroxyacetone are valuable/desirable products producible from glycerol that is otherwise a waste product. A primary teaching of Chappell is application of galactose oxidase (an alcohol oxidase) to oxidize glycerol to useful products as discussed in Table 1.3 of Chappell, wherein as discussed the cited prior art teaches that galactose oxidase oxidizes glycerol to glyceraldehyde. In order to transform glyceraldehyde to other products presented in Table 1.3 of Chappell including dihydroxyacetone, an ordinarily skilled artisan at time of filing would have been motivated to contact such glyceraldehyde with an appropriate amount of acid catalyst (e.g. H2SO4) in order to advantageously convert glyceraldehyde to dihydroxyacetone taught to be a desirable product by Chappell, wherein such glyceraldehyde is produced by contact of glycerol with a galactose oxidase having SEQ ID NO: 8 or 10. Again, Chappell teaches that the produces shown in Table 1.3 be made from glycerol.
Claim(s) 21-22 and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chappell, Engineering the Substrate Specificity of Galactose Oxidase, dissertation, University of Leeds, 2013 further in view of Klibanov et al. (Stereospecific oxidation of aliphatic alcohols catalyzed by galactose oxidase, Biochem. Biophys. Res. Comm. 108, 1982, 804-08), Delagrave et al. (U.S. 2001/0051369 A1) and Lookhart et al. (Acid-catalyzed isomerization and dehydration of DL-glyceraldehyde and 1,3-dihydroxy2-propanone, Carbohydrate Res. 60, 1978, 259-65) as applied to claims 21-29 above, and further in view of Kremer (WO 2008/110596 A1).
Regarding claim 29, 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." Here, any dihydroxyacetone produced as discussed above necessarily has some percentage of purity. It is noted that the method of claim 21, and by extension claim 29, recites the open transitional phrase comprising as to be open to encompassing unrecited method steps.
Kremer teaches the production of dihydroxyacetone for fermentative oxidation of glycerol wherein such fermentations occur in aqueous media. Kremer, abstract, teaches “a method for stabilizing liquid dihydroxyacetone (DHA) by subjecting crude liquid DHA to an ion exchange process on a cation exchange resin, followed by subjecting the liquid DHA to an anion exchange resin.” Kremer, claim 1, report purity of DHA of at least 97%. As such, methods are known in the prior art for preparative chromatography techniques to isolate DHA (dihydroxyacetone) from aqueous mixtures such that an ordinarily skilled artisan at the time of filing would have been motivated to apply such techniques to recover dihydroxyacetone at a high degree of purity within the range of 60-95% recited in claim 29 since recovery of purified DHA is desirable for its further use and application, whether in cosmetics as discussed by Kremer or otherwise.
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 21-22 and 29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 18/580,308 in view of Chappell, (Engineering the Substrate Specificity of Galactose Oxidase, dissertation, University of Leeds, 2013), Klibanov et al. (Stereospecific oxidation of aliphatic alcohols catalyzed by galactose oxidase, Biochem. Biophys. Res. Comm. 108, 1982, 804-08), Delagrave et al. (U.S. 2001/0051369 A1), Lookhart et al. (Acid-catalyzed isomerization and dehydration of DL-glyceraldehyde and 1,3-dihydroxy2-propanone, Carbohydrate Res. 60, 1978, 259-65) and Kremer (WO 2008/110596 A1).
The copending claims recite:
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The rejections above under 35 U.S.C. 103 are incorporated herein by reference.
The prior art cited above describes why an ordinarily skilled artisan at time of filing would have been motivated to contact glycerol with an alcohol oxidase with recited SEQ ID NO: 8 or 10 to produce glyceraldehyde, and then contact such glyceraldehyde with an acid catalyst to produce dihydroxyacetone, the same process being an embodiment of at least copending claims 1 and 20 such that the rejected claims are not patentably distinct from the copending claims that are more generic than the rejected claims.
This is a provisional nonstatutory double patenting rejection.
Response to arguments
Applicant argues:
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The claims were amended to require such a claim feature (rather than recited in the alternative) in the amendment dated 10/24/2025. Applicant’s amendment necessitates the new grounds of rejection presented above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TODD M EPSTEIN whose telephone number is (571)272-5141. The examiner can normally be reached Mon-Fri 9:00a-5:30p.
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/TODD M EPSTEIN/Primary Examiner, Art Unit 1652