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 claims benefit of priority to People’s Republic of China Application No. CN202110837446.X filed on 07/23/2021. This application is also a 371 of PCT/CN2021/120703 filed on 09/26/2021. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. For the purposes of applying prior art, the effective filing date of the claimed invention is 07/23/2021.
Amendment and Claim Status
In the reply filed on 11/03/2025, Applicant amended claims 1-2, 4-6 and 10-11 and canceled claim 3. Claims 7-14 were previously withdrawn by the Examiner as they were not encompassed by the elected group.
Claims 1-2 and 4-14 are currently pending.
Claims 7-14 are withdrawn.
Claims 1-2 and 4-6 are under examination.
Withdrawn Rejections
The 35 USC § 112(a) rejection of previously examined claims 2-6 is withdrawn due to Applicant’s amendment to instant claim 2. Additionally, it is noted the 112(a) rejection was a new matter rejection. The rejection was made because claim 2, as presented in the claim set of 06/10/2025, recited “… wherein the strain is configured for fermenting …” yet the claims when initially filed recited “… wherein the strain is capable of fermenting ….” The Instant Specification nor the PCT provide support for “configured for fermenting” because both specifically state “capable of fermenting” and configured for and capable of have different meanings and are not simply interchangeable. This was solely a new matter rejection. However, as Applicant has amended the claim to recite “capable of fermenting,” the previously made rejection is withdrawn.
The 35 USC § 102(a)(1) rejection of previously pending claims 1-6 is withdrawn due to Applicant’s amendment to instant claim 1.
Maintained Rejections (Including modification as necessitated by amendment)
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 1-2 and 4-6 are rejected under 35 U.S.C. 103 as being anticipated by Feng et al. (CN 104450655 A, 03/25/2015) (English Translation Provided) in view of Wu et al. (US 20190093067 A1, 03/28/2019) (IDS Reference of 07/25/2023).
Regarding claims 1 and 4-6, Feng et al. disclose inoculating a type of Bacillus, Paenibacillus sp. strain CGMCC No. 8333, into a culture medium for producing extracellular polysaccharide (Paragraph [0012]). Further, Feng et al. disclose the culture is a wheat bran culture medium (Paragraph [0014]).
Further, Feng et al. disclose Paenibacillus sp. is inoculated into a culture medium and fermented for 48 hours (Paragraph [0009]), a supernatant was obtained and mixed with ethanol and let stand for 1-5 at a temperature of 2°C to 5°C, centrifuged and the precipitate collected (Paragraph [0010]), the precipitate was dissolved in water, centrifuged and then freeze-dried to obtain the product (Paragraph [0011]). The strain used was Paenibacillus sp. with deposit number CGMCC No. 8333 which is useful for producing extracellular polysaccharides (Paragraph [0012]). It was further disclosed that the culture contained a high polysaccharide content (Paragraph [0013]).
The method disclosed by Feng et al. is very similar to the method disclosed in the Instant Specification (Specification, Page 38). Thus, it would appear that as similar fermentation methods were used for fermenting wheat bran with the same bacterial strain, Paenibacillus sp. with deposit number CGMCC No. 8333, the fermentation medium would necessarily contain the extracellular polysaccharides of instant claims 1 and 4-6.
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003) (rejecting the contention that inherent anticipation requires recognition by a person of ordinary skill in the art before the critical date and allowing expert testimony with respect to post-critical date clinical trials to show inherency); see also Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004) ("[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention."); Abbott Labs v. Geneva Pharms., Inc., 182 F.3d 1315, 1319, 51 USPQ2d 1307, 1310 (Fed. Cir. 1999). See MPEP 2112(II).
It is noted that all experimentation steps after the fermentation process, as instantly-disclosed, are steps to isolate the extracellular polysaccharides from the fermentation process and data extrapolation steps, there are no additional steps to produce the polysaccharides. Therefore, absent evidence to the contrary, it appears the method of Feng et al. would necessarily produce the same extracellular polysaccharides as the instantly claimed polysaccharides in instant claims 1 and 4-6.
Regarding the new limitation added to instant claim 1, Feng et al. do not disclose isolating the extracellular polysaccharide by a DEAE-Sepharose Fast Flow column using a constant flow pump and collecting the eluent to obtain the extracellular polysaccharide.
However, Wu et al. disclose a method for preparing the extracellular polysaccharide of Paenibacillus, wherein Paenibacillus CGMCC No. 8333 is fermented to obtain a fermentation broth (Paragraph [0023]). After fermentation and once the crude product of extracellular polysaccharide had been obtained, to purify the crude product, the crude product of the extracellular polysaccharide was dissolved in buffer and chromatographed on a DEAE-Sepharose FF column (Paragraph [0026]). Additionally, Figure 9 shows the molecular weight determined by liquid chromatography for the purified extracellular polysaccharide of the Paenibacillus strain (Paragraph [0045] and Figure 9). Wu et al. further disclose a primarily purified component of polysaccharide was obtained after being chromatographed on a DEAE-Sepharose FF column (Paragraph [0093]). It is noted the instant Specification does not define ‘isolating.’ Therefore, under the broadest reasonable interpretation, the solution containing the crude polysaccharide being chromatographed on a DEAE-Sepharose FF column and the result being a primarily purified component of polysaccharide reads on isolating the extracellular polysaccharide.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize a DEAE-Sepharose FF column in the method of Feng et al. to purify, or isolate, the extracellular polysaccharide in the medium after fermenting Paenibacillus sp. with deposit number CGMCC No. 8333 because Wu et al. disclose a similar method wherein Paenibacillus sp. with deposit number CGMCC No. 8333 was fermented and the produced extracellular polysaccharide was effectively purified via chromatographing on a DEAE-Sepharose FF column. Therefore, it would have been obvious to one of ordinary skill in the art to utilize a DEAE-Sepharose FF column with a reasonable expectation of success as Wu et al. successfully utilized a DEAE-Sepharose FF column for the same purpose, purifying the extracellular polysaccharide produced via fermentation of Paenibacillus sp. with deposit number CGMCC No. 8333.
Regarding claim 2, as the strain in the instant claim is the same as the strain disclosed by the prior art, being Feng et al., and the prior art utilizes the strain for fermenting a wheat bran, the strain is capable of fermenting wheat bran to synthesize an extracellular polysaccharide.
USC § 102 – Response to Arguments
Applicant’s arguments, see pages 6-8, filed 11/03/2025, with respect to the rejection of claims 1-6 under 35 USC § 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made over Feng et al. in view of Wu et al. as set forth above. The modified rejection set forth above, as necessitated by amendment, addresses all of the limitations of the instant claims, including the newly presented limitation in instant claim 1.
Conclusion
Claims 1-2 and 4-6 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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/A.T.W./Examiner, Art Unit 1653
/SHARMILA G LANDAU/Supervisory Patent Examiner, Art Unit 1653
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