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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 24 March 2026 has been entered.
Status of the Claims
Claims 1-4, 6, 11 and 16 have been cancelled.
Claims 5, 7-10 and 12-15 are presented for examination on the merits.
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 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.
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 5, 7-10 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Leon et al. (2005) and Orset et al. (2000) in view of KR20140044419A (hereinafter ‘419) and/or KR20020012351A (hereinafter ‘351).
Leon et al. optimized the concentration of the bleaching herbicide norflurazon to obtain Dunaliella bardawil cells able to accumulate phytoene without losing viability
Orset et al. disclose Dunaliella salina algae with increased 9-cis β- carotene due to growth of the cells at low radiance. The ratio of 9-cis to all- trans β-carotene in these cells was >2:1 (Abstract). Orset et al. also disclose that the use of carotenoid biosynthesis inhibitors such as norflurazon in the culture of Dunaliella salina caused the accumulation of phytoene and lycopene (Abstract).
‘419 beneficially discloses a culture system for Dunaliella salina where light in the wavelengths 640-680nm is used for enrichment in β-carotene.
‘351 beneficially discloses culture of Dunaiella salina in a culture medium under high illumination, preferably by LED with a wavelength of 610 to 750nm.
It would have been obvious to one of ordinary skill in the art at the time the claimed invention was made to prepare a Dunaliella algae with elevated carotenoid levels by combined culture conditions known to increase carotenoid levels, i.e., herbicide and red light, as taught by the cited prior art.
In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme Court emphasized a flexible approach to the obviousness question, stating that the analysis under 35 U.S.C. § 103 "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418; see also id. at 421 ("A person of ordinary skill is... a person of ordinary creativity, not an automaton.").
The adjustment of particular conventional working conditions (e.g., the optimal culture conditions, e.g., duration of light exposure, relative amounts of culture ingredients such as herbicides like norflurazon) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of skill in the art at the time the invention was made, as evidence by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant asserts that the cited prior art references do not explicitly disclose the radiance wavelengths in the specific ranges recited in the rejected claims. This is unpersuasive, since the so-called specific ranges recited in the claims are not very specific. For example white light is anywhere between 380 and 780 and a light that does not include and wavelength below 500 includes wavelengths taught by the cited prior art.
Applicant has amended claim 5 to eliminate the pigment inhibitors as a choice among the many herbicides. This is presumably because the carotenoid biosynthesis inhibitor taught by both Leon and Orset, norflurazon, is a pigment inhibitor.
However, Applicant does not provide reasoning why the choice of herbicide is critical. That is – why one would choose one particular type and avoid others or the criticality of the mechanism of action of the particular herbicide. Thus the choice of an herbicide would be a matter of simple substitution of one known herbicide for another well within the purview of the skilled practioner.
Indeed, the instant specification provides quite an extensive list of alternative choices of herbicides indicating that it is not critical what particular herbicide is chosen:
Chlorpropham (isopropyl N-(3-chlorophenyl) carbamate (CIPC) (commercial names: Bud Nip, Taterpex, Preventol, Elbanil, Metoxon, Nexoval, Stickman Pistols, Preweed, Furloe, Stopgerme-S, Sprout Nip, Mirvale, Bygran, ChlorIPC, CHLOROPROPHAM, Spud-Nic, Spud-Nie, Chloro-IFK, Chloro-IPC, Keim-stop, Triherbicide CIPC) is a carbamate herbicide and plant growth regulator used for pre-emergence control of grass weeds in alfalfa, lima and snap beans, blueberries, cranberries, carrots, cranberries, ladino clover, garlic, seed grass, onions, spinach, sugar beets, tomatoes, safflower, soybeans, gladioli and woody nursery stock. In the post-harvest treatment of potatoes during storage and transport, it is also used as a sprout suppressant and for sucker control in tobacco. It is considered to be a phytochrome inhibitor (Mann et al 1967 Nature 213, 420-421), and in wheat, has been shown to disorganize cell microtubules and microtubule organizing centres to prevent cell division (Eleftheriou, E. & Bekiari, E. Plant and Soil (2000) 226: 11. Ultrastructural effects of the herbicide chlorpropham (CIPC) in root tip cells of wheat).
Carbetamide ((R)-1-(ethylcarbamoyl)ethyl carbanilate) is a pre- and post-emergence herbicide which targets microtubuleorganizing centres and disrupts mitosis and cytokinesis in proliferating plant tissues, inhibiting cell division (Giménez-Abián, M.I., Panzera, F., López-Sáez, J.F. et al. Protoplasma (1998) 204: 119).
Accordingly, the instant claims, in the range of conditions where no unexpected results are observed, would have been obvious to one of ordinary skill having the above cited references before him/her.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL G FIEBIG whose telephone number is (571)270-5366. The examiner can normally be reached M-F 8-4.
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/RUSSELL G FIEBIG/Examiner, Art Unit 1655
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