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 .
Priority
This application is a 371 of PCT/KR2022/006839 filed 05/12/2022. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Status of the Claims
Claims 1, 7 and 9-11 are amended. Claims 2-6 are cancelled. Claims 1 and 7-11 are pending. Claims 9-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/23/2025.
Claims 1, 7 and 8 (claim set filed 06/20/2025) are examined on the merits herein.
Withdrawal of Rejections
The response and amendment filed on 06/20/2025 are acknowledged. All of the amendment and arguments have been thoroughly reviewed and considered.
For the purposes of clarity of the record, the reasons for the Examiner's withdrawal and/or maintaining if applicable, of the substantive or essential claim rejections are detailed directly below and/or in the Examiner's response to arguments section.
The previous claims 1 and 3-8 rejections under 35 U.S.C. 102(a)(1) and (a)(2) have been withdrawn necessitated by amendment of claim 1 and cancellation of claim 2-6.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over San (US 20160040171 A1 on record in IDS).
Regarding claim 1, San teaches methods of production of hydrocarbon feedstock and in particular C4-C10 fatty acids or derivatives from one carbon (C1) substrates such as methanol and carbon dioxide (Abstract). San teaches several one carbon substrates, including formate (which is a derivative of formic acid): “This disclosure focuses on the microbial conversion of one-carbon substrates such as methane, methanol, formate, carbon dioxide and carbon monoxide to useful chemicals and fuels.” (paragraph 0013). San discloses growing bacteria in a culture medium providing a C1 carbon source (claim 9). The described bacteria are acetogenic bacteria (paragraph 0029 and claim 3).
The recitations: “for increasing a growth and metabolic rate of an acetogenic strain” are interpreted as intended use of the structure which is a composition comprising C1 compound. The recitation of intended use is given weight to the extent that it imparts a structural limitation and the prior art needs to be capable of performing the intended use. (MPEP 2111.02). Since there is no indication that the recitations can impart the structural difference between the claimed invention and the prior art and the prior art teaches growing bacteria and metabolizing, i.e. producing fatty acids, the increasing growth and metabolic rate of an acetogenic strain is inherent to culture medium comprising C1 compound described by the prior art of San.
The acetogenic strain of claim 1 is interpreted as intended use that does not impart the structure as described above. The Eubacterium limosum is a further limitation of the intended use. Nevertheless, San describes acetogenic bacteria species including Eubacterium limosum (paragraph 0041).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to look at the guidance of San and use culture medium composition comprising the C1 compound such as formic acid for growing of acetogenic strains. One would have been motivated to do that because San provides description of culture medium with several C1 substrates used for production of useful chemicals and fuels including fatty acids. A skilled artisan would have reasonably expected success in preparation and using culture medium comprising C1 compound such as formic acid following description of the prior art. Thus, San teaching renders claim 1 obvious.
Regarding claim 7 and 8, even though San does not explicitly teach increase in consumption rate of a gas substrate, San describes production of fatty acids in the medium comprising methanol and a gas substrate, CO2 (paragraph 0029). The increase in metabolic rate is interpreted as intended use that does not impart the structure as described above. The increase in the consumption rate of a gas substrate in claim 7 is a further limitation of the intended use and the gas substrates in claim 8 are further limitations of claim 7. Therefore, the increase in metabolic rate through an increase in a consumption rate of a gas substrate comprising at least one of H2, CO and CO2 gases is inherent to the culture medium comprising C1 substrate taught by San and therefore San teaching renders claims 7 and 8 obvious.
Response to Arguments
Applicant's arguments filed 06/20/2025 have been fully considered but they are not persuasive.
Applicant argues (addressing pages 5 and 6 of the Remarks) that: “ … San utilizes genetically engineered bacteria that express specific enzymes to convert C1 substrates into longer-chain fatty acids or their hydrocarbon derivatives.” Applicant further argues that: “San listed Eubacterium as an example of "a suitable starting host" for this genetic manipulation, but it would be modified through the biological technique disclosed by San to produce C4-C10 fatty acids. Therefore, San also fails to disclose "the acetogenic strain comprises Eubacterium limosum" which is used "as is" in the claimed culture medium composition.” These arguments are not persuasive because:
The limitation “Eubacterium limosum” is presented in “wherein” clause as: “acetogenic
strain comprises Eubacterium limosum” (and not is Eubacterium limosum). The acetogenic strain is interpreted as intended use of the composition and Eubacterium limosum is interpreted as further limitation of the intended use as described in the rejection above. Since Eubacterium limosum limitation does not impart a structural limitation, composition comprising C1 compound, the limitation Eubacterium limosum is inherent to the composition and hence is not given weight.
Assuming arguendo that limitation “Eubacterium limosum” is given weight, whether
Eubacterium limosum is the wild-type strain or a genetically modified strain is not within the scope of claim 1. 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., not genetically modified engineered Eubacterium limosum) 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). In instant case, prior art of San describes using acetogenic strains and Eubacterium limosum (paragraph 0041) and hence the prior art reads on the limitation of claim 1.
Applicant argues (addressing pages 5 and 6 of the Remarks) that: “ … San only uses methane, methanol, formate, carbon dioxide, and carbon monoxide for one-carbon substrates. … fails to disclose "the Cl compound comprises at least one selected from a group consisting of formic acid and formaldehyde.” These arguments are not persuasive because:
Formate is a derivative of formic acid. It would be obvious to one of ordinary skill in the art that formic acid would be present in the form of format at neutral pH. Eubacterium limosum has the pH optimum at 7.3-7.4 as evidenced by Pacaud (Pacaud et al. Curr. Microbiol., 1985, 12, 245-250, Abstract) and therefore addition of formic acid to culture medium as C1 compound during fermentation by Eubacterium limosum will produce formate. Therefore, formate can substitute formic acid as claimed C1 compound unless shown otherwise. It is also noted that the Applicant does not provide a working example of using formic acid as C1 compound.
Applicant’s arguments with respect to prior art of Bryant are moot because the new ground of rejection does not rely on prior art of Bryant applied in the prior rejection of record.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIOUBOV G KOROTCHKINA whose telephone number is (571)270-0911. The examiner can normally be reached Monday-Friday: 8:00-5:30.
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/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sharmila G Landau can be reached at (571)272-0614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/L.G.K./ Examiner, Art Unit 1653
/SHARMILA G LANDAU/ Supervisory Patent Examiner, Art Unit 1653