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 .
Applicant's cancellation of claims 9, 11, 12, amendment of claims 1-8, 10 and the addition of new claims 13-23 in the paper of 3/25/2026, is acknowledged. Applicants' arguments filed on 3/25/2026, have been fully considered and are deemed to be persuasive to overcome some of the rejections previously applied. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. Claims 1-8, 10, 13-23 are still at issue and are present for examination.
Election/Restrictions
Applicant's election with traverse of the invention of Group 1, claims 1-9 and 11, to a process for synthesizing a functionalized mercaptan, in the paper of 9/3/2025, is acknowledged. Applicant's election with traverse of the species of O-acetyl-L-homoserine, in the paper of 9/3/2025, is acknowledged.
Claims 10, 13 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Rejections - 35 USC § 101
The rejection of claims 1-8 and 11 under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter is withdrawn based upon applicants amendment of the claims and arguments presented in the paper of 3/25/2026.
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.
Claims 1-8 and 14-20 are 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.
Previously claim 1 was rejected as being indefinite in the recitation “said reaction being performed essentially in the absence of oxygen, preferably in the absence of oxygen” in the that it is unclear and confusing as to the applicants intended meaning in the terms “essentially” and “preferably”. The use of these terms obscured the scope of the claims and thus they were not given patentable weight. In response, applicants have amended the recitation, deleting “preferably” and do not further comment except to note that “essentially” in claim 1 is submitted to be terminology that a person of ordinary skill in the art can ascertain the scope of the invention with reasonable certainty from the original disclosure.
Claim 1 remains indefinite in that it is unclear as to what the object of “essentially” is. Is essentially referring to the “said reaction being performed” as in the portion of said reaction being performed or is essentially referring to “the absence of oxygen” as in essentially the absence of oxygen?
Claim 1 (claims 2-8, 14-20 dependent on) is indefinite in the recitation “said reaction” as there is a lack of antecedent basis for “said reaction” in the claim. While it is recognized that earlier in part c of the claim it recites “reacting a reaction mixture…” this is not literal antecedent basis for “said reaction”. Since applicants claim goes on to recite “said reaction being performed essentially in the absence of oxygen” it is critical that clarity be associated with “said reaction”. It is not for the reasons stated previously and herein.
Claim 22 and 23 each recite “The process for synthesizing at least one functionalized mercaptan of the general formula (I) of Claim 21” however claim 21 is drawn to “A process for synthesizing at least one functionalized mercaptan of the following formula (I):R2-X-C*H(NR1R7)-(CH2)n-SH (I)”. Thus there is a lack of antecedent basis for “The process for synthesizing at least one functionalized mercaptan of the general formula (I)” in claim 21.
Appropriate correction and/or comment is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 2, 3, 4, 5, 6, 7, 8, 14, 15, 18, 19 and 21-23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bradshaw (US 10,544,436 and WO 2016/179545).
This rejection was stated in the previous office action as it applied to previous claims 1-8 and 11. In response applicants have amended the claims and traverse the rejection as it applies to the newly amended claims. For applicants the rejection is repeated herein. Newly added claims 21-23 are included in the rejections for the same reasons stated previously for claims 1, 2, 3, 4, 5, 6, 7, 8 and 11 and for those additional reasons stated below.
Bradshaw teach compositions and methods for the biological production of methionine. Bradshaw teach a method of providing O-acetylhomoserine within a hydrogenotrophic microorganism which incorporates H2S into O-acetylhomoserine to produce homocysteine which is further converted to methionine. The methods taught by Bradshaw include providing O-acetylhomoserine, providing H2S, the catalyzation (reacting) of the reaction of O-acetylhomoserine and H2S by O-acetyl-L-homoserine sulfhydrylase (EC 2.5.1.49) (column 30, lines 52-67 and supporting text). Bradshaw further teach the above methods of providing O-acetylhomoserine, providing H2S, the catalyzation (reacting) of the reaction of O-acetylhomoserine and H2S by O-acetyl-L-homoserine sulfhydrylase (EC 2.5.1.49) in a bioreactor. Bradshaw further teach the above methods of producing methionine comprising culturing a methanogenic archaea in a bioreactor under anaerobic conditions (see claims 19-22 and supporting text).
With regard to newly added claims 21-23, Bradshaw further teach that in the above methods, any sulfide that is produced or is present for use by a hydrogenotrophic microorganism can enter the homocysteine biosynthesis pathway wherein O-acetylhomoserine sulfhydrylase incorporates H2S into O-acetylhomoserine to produce homocysteine, which can be further converted into methionine by methionine synthase (cobalamin dependent or independent). Thus the methods taught by Bradshaw comprise the limited or no oxygen (“anaerobic conditions”) and the amount of sulfides and/or polysulfides produced in the reaction of the reacting mixture is less than or equal to 5% by weight relative to the total weight of the compound of formula (I) produced. With regard to newly added claims 14-15, Bradshaw further teach the above methods comprising a degassing (pressurizing or use of an Oxoid anaerobic jar) the reactor prior to the reactions.
Applicants Response
Applicants traverse the rejection on the basis that applicants submit that Bradshaw fails to represent a prima facie case of anticipation (nor obviousness). Applicants submit that as seen from applicants repeated emphasized portions of the rejection (see top of page 14 of applicants response date 3/25/2026), there is lacking a discussion in Bradshaw of reacting the components set forth in step c) in the noted claim 1 environment. Applicants submit that there is lacking in Bradshaw a reacting of the components in step c) within a reactor essentially in the absence of oxygen or in the absence of oxygen. Applicants submit that the reference to "culturing a methanogenic archaea in a bioreactor under anaerobic conditions" does not remedy the deficiency of there being a lack in Bradshaw of disclosure of reaction conditions relative to the claim 1 reaction mixture and the claim 1 environment. Applicants submit that in other words, the effort to extrapolate the culturing of methanogenic archaea in a bioreactor under anaerobic conditions to that of the above underlined, different Bradshaw components, means that Bradshaw fails to represent a prima facie case of anticipation.
Applicants submit that furthermore, this deficiency in Bradshaw is further submitted to not provide a foundation in Bradshaw for an obviousness assertion. Applicants submit that this being particularly true when considering that the claim 1 invention is directed at an improved process for synthesizing, in particular by the biological route, functionalized mercaptans, which makes it possible to limit, or even prevent, the formation of by-products such as sulfides and/or polysulfides. Applicants submit that the present claim 1 also helps fill a need in the prior art for a process for synthesizing functionalized mercaptans that is safe and easy to implement industrially and for providing lacking features in the prior art.
Applicants amendment of the claims and applicants complete argument is acknowledged and has been carefully considered, however, is not found persuasive for the reasons previously made of record and for those reasons repeated herein.
In response to applicants submission that there is lacking a discussion in Bradshaw of reacting the components set forth in step c) in the noted claim 1 environment, this is not found persuasive for the reasons previously stated. As stated previously and repeated above, Bradshaw teach compositions and methods for the biological production of methionine. Bradshaw teach a method of providing O-acetylhomoserine within a hydrogenotrophic microorganism which incorporates H2S into O-acetylhomoserine to produce homocysteine which is further converted to methionine. The methods taught by Bradshaw include providing O-acetylhomoserine, providing H2S, the catalyzation (reacting) of the reaction of O-acetylhomoserine and H2S by O-acetyl-L-homoserine sulfhydrylase (EC 2.5.1.49) (column 30, lines 52-67 and supporting text). Bradshaw further teach the above methods of providing O-acetylhomoserine, providing H2S, the catalyzation (reacting) of the reaction of O-acetylhomoserine and H2S by O-acetyl-L-homoserine sulfhydrylase (EC 2.5.1.49) in a bioreactor. Bradshaw further teach the above methods of producing methionine comprising culturing a methanogenic archaea in a bioreactor under anaerobic conditions (see claims 19-22 and supporting text). Thus Bradshaw teach reacting the components set forth in step c) of claim 1. Thus as stated above, Bradshaw teach reacting a reaction mixture comprising said at least one compound of general formula (II) and said at least one hydrosulfide and/or sulfide salt or H2S in the presence of at least one enzyme chosen from sulfhydrylases of the class EC 2.5.1.XX in a reactor, said reaction being performed essentially in the absence of oxygen or preferably in the absence of oxygen.
In response to applicants submission that there is lacking in Bradshaw a reacting of the components in step c) within a reactor essentially in the absence of oxygen or in the absence of oxygen, this is not found persuasive for the reasons stated previously and repeated above. In response to applicants submission that the reference to "culturing a methanogenic archaea in a bioreactor under anaerobic conditions" does not remedy the deficiency of there being a lack in Bradshaw of disclosure of reaction conditions relative to the claim 1 reaction mixture and the claim 1 environment is not found persuasive for the reasons stated above.
In response to applicants submission that this deficiency in Bradshaw is further submitted to not provide a foundation in Bradshaw for an obviousness assertion is not found persuasive as the present rejection is based upon anticipation, not obviousness.
Thus claim(s) 1, 2, 3, 4, 5, 6, 7, 8, 14, 15, 18, 19 and 21-23 remain rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bradshaw (US 10,544,436 and WO 2016/179545).
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 USPTO Internet website contains terminal disclaimer forms which may be used.
Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-8 and 14-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/255,803 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-11 of copending Application No. 18/255,803 (reference application) drawn to process for synthesizing at least one functionalized mercaptan of the following general formula (I): R2-X-C*H(NRiR7)-(CH2)n-SH (I) in which, - R1 and R7, which are identical or different, are a hydrogen atom or an aromatic or nonaromatic, linear, branched or cyclic, saturated or unsaturated, hydrocarbon chain of 1 to 20 carbon atoms which may comprise one or more heteroatoms; - X is chosen from -C(=0)-, -CH2- or -CN; - R2 is:(i) either absent when X represents -CN, (ii) or a hydrogen atom, (iii) or -OR3, R3 being a hydrogen atom or an aromatic or nonaromatic, linear, branched or cyclic, saturated or unsaturated, hydrocarbon chain of 1 to 20 carbon atoms which may comprise one or more heteroatoms, (iv) or -NR4R5, R4 and R5, which are identical or different, being a hydrogen atom or an aromatic or nonaromatic, linear, branched or cyclic, saturated or unsaturated, hydrocarbon chain of 1 to 20 carbon atoms which may comprise one or more heteroatoms; n is equal to 1 or 2; and * represents an asymmetric carbon; said process comprising the stages of:a) provision of at least one compound of the following general formula (II):R2-X-C*H(NRiR7)-(CH2)n-G (II) in which *, Ri, R2, R7, X and n are as defined for formula (I) and G represents either (i) R6-C(O)-O-, or (ii) (R70)(R80)-P(O)-O-, or (iii) R90-SO2-0-;with R6 being a hydrogen atom or a linear, branched or cyclic, saturated or unsaturated hydrocarbon chain of 1 to 20 carbon atoms which may comprise one or more aromatic groups and may be substituted by one or more groups chosen from -ORio, (=0), -C(O)ORii, -NR12R13;Rio, Rii, R12 and R13 being independently chosen from: H or a linear, branched or cyclic, saturated or unsaturated hydrocarbon chain of 1 to 20 carbon atoms; R7 and R, which are identical or different, being a proton, an alkali metal, an alkaline earth metal or an ammonium; R9 being chosen from a proton, an alkali metal, an alkaline earth metal or an ammonium; b) provision of H2S; c) reaction between said at least one compound of formula (II) and H2S in the presence of at least one enzyme chosen from sulfhydrylases, preferably a sulfhydrylase associated with said compound of formula (II); said reaction being performed in a reactor with a partial pressure of H2S in the gas headspace of said reactor of between 0.01 and 4 bars, for example between 0.01 and 3 bars, preferably between 0.1 and 3 bars, for example between 0.1 and 2.5 bars, at the reaction temperature; d) obtaining of at least one functionalized mercaptan of formula (I); e) optional separation of said at least one functionalized mercaptan of formula (I) which is obtained in stage d); and f) optional additional functionalization and/or optional deprotection of the functionalized mercaptan of formula (I) which is obtained in stage d) or e); and wherein stages a) and b) are optionally performed simultaneously. anticipate/make obvious instant claims 1-8 and 11 drawn to Process for synthesizing at least one functionalized mercaptan of the following general formula (I):
R2-X-C*H(NR1R7)-(CH2)n-SH (I) in which,- R1 and R7, which are identical or different, are a hydrogen atom or an aromatic or nonaromatic, linear, branched or cyclic, saturated or unsaturated, hydrocarbon chain of 1 to 20 carbon atoms which may comprise one or more heteroatoms; - X is chosen from -C(=O)-, -CH2- or -CN; - R2 is:
(i) either absent when X represents -CN,(ii) or a hydrogen atom,(iii) or -OR3, R3 being a hydrogen atom or an aromatic or nonaromatic, linear, branched or cyclic, saturated or unsaturated, hydrocarbon chain of 1 to 20 carbon atoms which may comprise one or more heteroatoms,(iv) or -NR4R5, R4 and R5, which are identical or different, being a hydrogen atom or an aromatic or nonaromatic, linear, branched or cyclic, saturated or unsaturated, hydrocarbon chain of 1 to 20 carbon atoms which may comprise one or more heteroatoms; n is equal to 1 or 2; and * represents an asymmetric carbon; said process comprising the steps of: a) provision of at least one compound of the following general formula (II): R2-X-C*H(NR1R7)-(CH2)-G (II) in which *, R1, R2, R7, X and n are as defined for formula (I) and G represents either (i) R6-C(O)-O-, or (ii) (R70)(R80)-P(O)-0-, or (iii) R90-SO2-0-; with R6 being a hydrogen atom or a linear, branched or cyclic, saturated or unsaturated hydrocarbon chain of 1 to 20 carbon atoms which may comprise one or more aromatic groups and may be substituted by one or more groups chosen from -OR10, (=0), - C(O)OR11, -NR12R13; R10, R11, R12 and R13 being independently chosen from: H or a linear, branched or cyclic, saturated or unsaturated hydrocarbon chain of 1 to 20 carbon atoms; R7 and R8, which are identical or different, being a proton, an alkali metal, an alkaline earth metal or an ammonium;
R9 being chosen from a proton, an alkali metal, an alkaline earth metal or an ammonium; b) provision of at least one hydrosulfide salt and/or sulfide salt or H2S;
c) reaction between said at least one compound of formula (II) and said at least one hydrosulfide and/or sulfide salt or H2S in the presence of at least one enzyme chosen from sulfhydrylases of the class EC 2.5.1.XX, and preferably a sulfhydrylase associated with said compound of formula (II); said reaction being performed essentially in the absence of oxygen, preferably in the absence of oxygen; d) obtaining of at least one functionalized mercaptan of formula (I); e) optional separation of said at least one functionalized mercaptan of formula (I) which is obtained in step d); and f) optional additional functionalization and/or optional deprotection of the functionalized mercaptan of formula (I) which is obtained in step d) or e); and wherein steps a) and b) are optionally performed simultaneously.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Applicants Response
In response to the above rejection applicants have requested this rejection be held in abeyance until otherwise allowable subject matter is identified.
Remarks
No claim is allowed.
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 RICHARD G HUTSON whose telephone number is (571)272-0930. The examiner can normally be reached 6-3 EST Mon-Fri.
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rgh
5/21/2026
/RICHARD G HUTSON/Primary Examiner, Art Unit 1652
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