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 .
Remarks
The amendments and remarks filed on 06/24/2026 have been entered and considered. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action. The rejections and/or objections presented herein are the only rejections and/or objections currently outstanding. Any previously presented objections or rejections that are not presented in this Office Action are withdrawn. Claims 1-7 and 11-16 are pending; Claims 8-10 are cancelled; Claims 1 and 11-14 are amended; Claims 15-16 are new; and Claims 1-7 and 11-16 are under examination.
Withdrawal of Rejections
The rejection of Claims 1-7 and 9-14 under 35 U.S.C. 112(b) is withdrawn due to the amendment to or cancellation of the claims filed on 06/24/2026.
The rejection of Claims 1-7 and 9-14 under 35 U.S.C. 103 over Martinez‑Garcia in view of Graziani, Ganuza Taberna, Chen, and Vieira in the previous office action is withdrawn due to the amendment to or cancellation of the claims. New ground of rejection of the instant claims over combination of the cited prior art therebefore is necessitated due to the amendment to the claims as well as submission of new claims.
Claim Rejections - 35 USC § 103
Claims 1-7, 11-12, and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Martinez‑Garcia et al. (AMB Express, 2016, 6:71, pages 1-8, of record) in view of Graziani et al. (Food Funct., 2013, 4: 144-152, of record), Ganuza Taberna et al. (US 20200002665, 2020, effective filing date: 2017-12-14, of record), Chen et al. (Biotechnology Letters, 2006, 28: 607–616, of record) and Vieira et al. (Journal of Food Composition and Analysis, 2016, 52:44–51, of record), as evidenced by Allen (Arc. Microbiol., 1959, 32: 270–277, of record).
Martinez‑Garcia et al. teach a method for selectively producing fluoridoside metabolites from the red microalgae Galdieria sulphuraria, comprising steps: a) culturing a strain of Galdieria sulphuraria until late exponential phase under heterotrophic conditions in darkness to generate microalgae cell biomass, wherein the culturing is carried out in Allen medium supplemented with 1% carbon source (glycerol, galactose or glucose) at pH 2 at 40oC (Note: the Allen medium supplemented with carbon source is comparable to the first culture medium recited in step a) of the instant claim 1; and the pH and temperature read on those in the instant claims 1-2 and 4-5); b) harvesting/separating the cell biomass; c) washing the cell biomass in ultra-pure water and resuspending the cell biomass in 100 ml of an osmotic medium with osmotic agent/NaCl, e.g. at a concentration of 1 M NaCl, in the absence of carbon sources (Note: this osmotic medium/NaCl solution is comparable to the second culture medium recited in step d) of the instant claim 1; it is free of carbon sources, thus meeting the claimed limitation “in the absence of carbon sources”); and d) inducing production/accumulation of the metabolites/fluoridoside from G. sulphuraria in the NaCl solution/second culture medium under salt stress (title; abstract; page 2: left col/last para - right col/para 2), wherein the step d) (i.e. salt stress) is carried out at a temperature of 20, 30, 40, or 50oC (page 2/right col./para 2: lines 6-7 from top, and lines 5-6 and 8 from bottom). It is noted that the pH and temperature in the step a) of Martinez‑Garcia et al. meet the limitations of step a) in the instant claims 1-2 and 4-5, as indicated above. It is also noted that 1 M NaCl is equivalent to 58.44 g/L NaCl (given the molecular weight of NaCl is 58.44). Thus, a NaCl concentration of the second culture medium in the method of Martinez‑Garcia et al. is 58.44 g/L. It is further noted that the Allen medium used in the method of Martinez‑Garcia et al. inherently comprises an inorganic nitrogen resource 0.01 M ammonium sulfate (NH4)2SO4, as evidenced by Allen (who teaches Allen medium is microelement medium/solution, see Table 2 of page 274 for the detailed content of Allen medium), which is cited by Martinez‑Garcia et al. for the Allen medium (page 2, left col, lines 2-3 from bottom).
The method of Martinez‑Garcia et al. differs from the claimed method in that Martinez‑Garcia et al. do not teach that the medium in step a) is supplemented with yeast extract (as an organic nitrogen source).
Vieira et al. teach that yeast extract is rich in nutrients, which contains 64% proteins with a high proportion of essential amino acids, along with carbohydrates, vitamins, microminerals, trace elements, and antioxidant components (title, abstract/lines 6-12, Table 1). Vieira et al. teach that yeast extract is water-soluble and it is prepared by removing insoluble components of yeast (yeast cell walls) by centrifugation, followed by collecting and freeze-drying the resulting clear supernatants (page 45, left col, last para). It is noted that proteins and amino acids in the yeast extract are organic nitrogen sources; and carbohydrates in the yeast extract are organic carbon sources.
Graziani et al. teach a method of heterotrophically culturing Galdieria strains belonging to species G. sulphuraria (page 145: Section of materials and methods, left col/last para/lines 1-2), comprising: inoculating/spreading each cultured strain of G. sulphuraria on agar plates containing yeast extract, and then inoculating a liquid Allen medium with each strain from the agar plates (agar slants) (page 145/right column: para 1/last 5 lines, para 2/lines 2-3). Examiner notes that yeast extract inherently comprises nitrogen and carbon sources such as proteins, amino acids, and carbohydrates along with a variety of trace elements and vitamins, as supported by Vieira et al. described above.
Chen et al. teach that compared to phototrophic growth of phototrophic microalgae, heterotrophic growth (i.e. growing without light under heterotrophic conditions) has advantages that heterotrophic cultivation can be well controlled and provides the possibility to achieve fast growth and high yield of valuable products (title, abstract). Chen et al. further teach that nitrogen is an essential nutrient for algal growth; there are two kinds of nitrogen sources: a simple nitrogen source including nitrate and a complex source including yeast extract; and the complex nitrogen source might be superior to simple nitrogen source in heterotrophic culture of microalgae, since they also provide amino acids, vitamins and growth factors (page 613: left col, last para, lines 1-9). Chen et al. further teach that microalgae cells grow in liquid culture medium containing yeast extract (pages 612/left col/para 2/lines 7-12; 613/right col/lines 2-5).
Ganuza Taberna et al. teach Galdieria sp. as one of microalga capable of heterotrophic growth on various organic carbon sources (para 0083, page 6/last line – page 7/line 3), and further teach a list of organic carbon sources suitable for heterotrophically growing these microalga, including yeas extract, glycerol, galactose, and/or glucose (para 0083, page 7/lines 5-7 from top, and lines 4 from bottom); and yeas extract is one of sources having a low cost (page 10, para 0102, lines 1-3 from top and line 4 from bottom).
It would have been obvious to modify the method of Martinez‑Garcia et al. by supplementing yeast extract as organic nitrogen source to the medium in the step a) for culturing G. sulphuraria. One of ordinary skill in the art would have been motivated to do so, because it is known in the art that yeast extract is a nutrient resource that provides nitrogen and other nutrients, and effectively supports growth of Galdieria sp. including G. sulphuraria, as supported by Graziani et al., Vieira et al., Chen et al., and Ganuza Taberna et al. Furthermore, it is well known in the art that yeast extract has the advantages of being at low cost; being rich in nutrients for supporting microalgae growth, comprising proteins, essential amino acids, carbohydrates, vitamins, and trace minerals; and being a complex nitrogen source that is superior to simple nitrogen source, such as nitrate used in the medium of step (a) in the method of Martinez‑Garcia et al., as supported by Vieira et al., Chen et al., and Ganuza Taberna et al. Furthermore, yeast extract comprises nutrients such as organic nitrogen including proteins and amino acids, and carbohydrates, as indicated above. The yeast extract is an art-recognized equivalent of nitrogen source (i.e. nitrate) of Martinez‑Garcia et al. for the same purpose. It would have been obvious to include yeast extract either to substitute or use together with the nitrogen source in the medium of step (a) in the method of Martinez‑Garcia et al. for cultivating G. sulphuraria. One of ordinary skill in the art has a reasonable expectation of success at modifying the method of Martinez‑Garcia et al. by providing yeast extract as a nitrogen source for supporting growth of G. sulphuraria, because Graziani et al. has demonstrated that yeast extract is a nutrient source sufficient to promote growth of G. sulphuraria. Furthermore, substitution of one known nutrient source for another and the results of the substitution would have been predictable.
Examiner notes that Graziani et al. included yeast extract in an agar culture medium, not a liquid culture medium, as nitrogen and carbon sources for supporting growth of G. sulphuraria. However, it is deemed merely a matter of obvious design choice to include yeast extract in a liquid culture medium as nutrient sources in step a) in the method of Martinez‑Garcia et al. for supporting growth of G. sulphuraria, because G. sulphuraria grows well in a liquid culture medium, as supported by Graziani et al. and Martinez‑Garcia et al. Furthermore, it is well known in the art that yeast extract is water-soluble and readily solubilized in a liquid culture medium; and it is a common practice in the art to include yeast extract as nitrogen/carbon sources in a liquid culture medium for cultivating microorganisms including microalgae, as supported by Chen et al. and Vieira et al.
Regarding the limitations about NaCl concentration, pH, light condition, and temperature to be selected or maintained according to the metabolites to be produced, as recited in the instant claim 1, it is common practice in the art to modify, select, or maintain culture conditions (e.g. concentrations, pH, light condition, and temperature) suitable for producing desirable metabolites. The method of Martinez‑Garcia et al. are involved with modifying, selecting, or maintaining culture/induction conditions in its steps ,e.g. step d), suitable for optimizing production of desirable metabolites (for example: see page 2/right col./para 2: lines 6-7 from top, and lines 5-6 and 8-10 from bottom; page 4: the para spanning both cols; page 5: left col/para 1/last 7 lines). For the reasons indicated below (see next para), specific cultivation/induction conditions in the step (d) selected/maintained in the claimed method, such as in the limitation (ii) as defined in the claim 1, are not distinct from the cultivation/induction conditions of the step (d) suggested by Martinez‑Garcia et al. Thus, the claimed limitations about light, pH, temperature and NaCl concentration would have been obvious over the teachings of the cited prior art.
Regarding the limitations (i) and (ii) (for producing pigments or lipids) in the instant claim 1, Examiner notes that the claim 1 does not recite any limitations to require that the metabolites to be produced in the claimed method are pigments or lipids. It appears that producing pigments or lipids appears to be optional and the metabolites can be any other metabolites as long as light conditions, NaCl concentration, and temperature are maintained as required by the claim. Examiner further notes that the instant claim 12 further limits the metabolites to be produced are lipids; thus the limitation (ii) for producing lipids is required by the claimed method. Regarding the limitation (ii), Martinez‑Garcia et al. teach culturing G. sulphuraria in darkness (in the absence of light), the second culture medium is free of carbon sources and comprises 58.44 g/L NaCl (reading on the claimed range of 50-100 g/L), and the step d) is carried out at a temperature of 20, 30, 40, or 50oC (reading on the claimed range of 25-50oC), as indicated above and also see page 2/right col: para 1/lines 1-3 and para 2. Martinez‑Garcia et al. are silent about the specific pH of the second culture medium. However, Martinez‑Garcia et al. expressively teach that G. sulphuraria thrives under acidic conditions with pH values ranged from 0 to 4 (page 2/left col./para 2/lines 5-6) and demonstrates that G. sulphuraria grows very well at pH 2 (Fig. 1). As such, a pH between 2 and 4 recited in the limitation (ii) of the claim 1 would have been obvious, and the combination of pH, NaCl concentration, temperature, and light condition in the limitation (ii) would have been obvious to one of ordinary skill in the art in view of Martinez‑Garcia et al. Although Martinez‑Garcia et al. do no teach the metabolites are lipids, the producing lipids is directed to an outcome of the claimed method, rather than steps of the method of the claims, i.e. the production of lipids is directed to what the method does, not to what the method is. Martinez‑Garcia et al. suggests a step (d) same as the claimed step (d) and the combined teachings of the cited prior art suggest a method comprising the same steps as the claimed method. In the absence of evidence to the contrary, it is presumed that methods having substantially the same steps are capable of generating substantially the same outcome. Therefore, the claimed limitations about producing lipids in the claims 1 and 12 would have been obvious over the cited prior art.
Regarding the further limitations about the second culture medium in the claims 11 and 14, it would be obvious to include the inorganic nitrogen source in the medium because it is effectively utilized by G. sulphuraria, as supported by Martinez‑Garcia et al.
Regarding Claim 3, Martinez‑Garcia et al. teach the cells are grown until late exponential phase before being subjected to salt stress for inducing the metabolite fluoridoside. As supported by Figure 1, the cells in the method of Martinez‑Garcia et al. reach the late exponential phase in a time period from 96 hours (4 days) to 216 hours (9 days), which is encompassed by the claimed range of 4-7 days. Thus, the claim would have been obvious over the cited prior art.
Regarding the further limitation about concentration of yeast extract in Claim 6, Chen et al. teach a yeast extract concentration of 0.8 g/L for growing microalgae (page 613/right col/line 3). Although this concentration is not specifically for G. sulphuraria, the concentration of yeast extract taught by Chen et al. can be readily tried out and then further modified through routine optimization for obtaining a desired growth for G. sulphuraria. It is well settled that routine optimization is not patentable, even though it results in significant improvement over the prior art. The claimed concentration range would have been obvious to one of ordinary skill in the art, in the absence of any showing of unexpected results or criticality. See MPEP 2144.05.
Regarding Claim 7, it would have been obvious to further include ammonium sulfate (NH4)2SO4 in the first culture medium of the step a) in the method suggested by the cited prior art as the inorganic nitrogen source, because this nitrogen source effectively supports growth of G. sulphuraria, as supported by Martinez‑Garcia et al.
Regarding the new claims 15 and 16, these claims further limit the limitations (ii) and (i) respectively and they are obvious over the cited prior art for the reasons indicated above. Furthermore, even assuming the claimed method is limited to the production of lipids or pigments under the conditions defined by the claim 15 or 16, the claims would still be obvious over the cited prior art. This is because the pH and temperature ranges suggested/taught by Martinez‑Garcia et al. render the claimed pH 2.5 and 25oC to be obvious; and Martinez‑Garcia et al. further teach NaCl concentration is varied from 0.5 M, 1.0 M, to 1.5 M. (page 2/right col/para 2/lines 8-10 from bottom). It is noted that the 1.5 M is equivalent to about 88 g/L, which is close to the claimed 100 g/L. and can be further modified through routine optimization. It is noted that generally, differences in concentration or temperature will not support the patentability of subject matter 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." In re Aller, 220 F.2d 454, 456,105 USPQ 233, 235 (CCPA 1955). It is further noted that the claims only require either the limitation (i) or (ii) to be meet in the claimed method because an alternative term “or” is recited between the limitation (i) and (ii) of the claim 1. Therefore, the limitation (ii) (in the claim 16) suggested by the cited prior art meets the limitation of the claim 15.
Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention.
Duplicate Claims, Warning
Warning: Applicant is advised that should claim 11 be found allowable, claim 14 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Allowable Subject Matter
Claim 13 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including specifically the limitations of the base claim and any intervening claims as it only pertains to pigment production.
Response to Arguments
Applicant's arguments about the rejection under 35 USC 112(b) in the response filed on 06/24/2026 (page 6) have been fully considered but they are moot because the rejection has been withdrawn as indicated above.
Applicant's arguments about the rejection under 35 USC 103 in the response filed on 06/24/2026 (the paragraph spanning pages 6 and 7) have been fully considered but they are moot because the ground of the rejection in this office action is different from that in the previous office action (see pages 3-11 for details).
Applicant's arguments about the teachings of Martinez‑Garcia in the remaining of the response (pages 7-9) have been fully considered but they are not persuasive for the following reasons.
In response to Applicant’s arguments about a single metabolite under a single induction regime being induced by Martinez‑Garcia in pages 7-8 of the response, the fact that Martinez‑Garcia investigated induction of a single metabolite/floridoside does not mean the floridoside is the only metabolite that is induced under the induction conditions of the step (d) in the method of Martinez‑Garcia. As indicated above, the induction conditions (pH, temperature, light and NaCl) of the step (d) in the claimed method for producing lipids are not distinct from those conditions of the step (d) suggested by Martinez‑Garcia. Although Martinez‑Garcia does not expressively teach the metabolites to be induced/produced are lipids, the inducing/producing lipids is directed to an outcome of the claimed method, i.e. directed to what the method does, not to what the method is. The step (d) and other steps in the method suggested by the cited prior art are the same as those in the claimed method. In the absence of evidence to the contrary, it is presumed that methods having substantially the same steps are capable of generating substantially the same outcome. Therefore, the inducing/producing lipids would have been obvious over the combined teachings of Martinez‑Garcia and other cited prior art, as indicated in the 103 rejection above.
In response to Applicant’s arguments based on producing pigments in the claimed method in pages 8 and 9 of the response, these arguments are not commensurate in scope with the claims. Examiner notes that the instant claim 13 is the only claim that specifically limits the metabolites to be pigments, while the remaining claims are open to producing other metabolites, such as lipids. Although the claimed induction conditions for producing pigments are not rendered obvious, the claimed induction conditions in step d) for producing lipids are still suggested by the cited prior art. The remaining claims 1-7, 11-12, and 14-16 would have been obvious over Martinez‑Garcia et al. in view of Graziani et al., Ganuza Taberna et al., Chen et al. and Vieira et al. for the reasons indicated above.
In response to Applicant’s arguments in the last paragraph of page 9 of the response, it is noted that the “inherent outcome” rational is still appliable to the amended claims comprising selective production of lipids under induction conditions of the claimed step (d) (as defined in the limitation “(ii)” of the claim 1) because these specific induction conditions have been suggested by the cited prior art for the reasons indicated above. Accordingly, the claims 1-7, 11-12, and 14-16 are rendered obvious by the cited prior art.
Overall, the conclusion of the obviousness of the amended claims 1-7, 11-12, and 14-16 has been established over the combined teachings of Martinez‑Garcia et al. in view of Graziani et al., Ganuza Taberna et al., Chen et al. and Vieira et al. for all the reasons indicated 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 extension fee 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 date of this final action.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to Qing Xu, Ph.D., whose telephone number is (571) 272-3076. The examiner can normally be reached on Monday-Friday from 9:30 AM to 5:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Manjunath N. Rao, can be reached at (571) 272-0939. Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to the receptionist whose telephone number is (571) 272-1600.
/Qing Xu/
Patent Examiner
Art Unit 1656
/MANJUNATH N RAO/Supervisory Patent Examiner, Art Unit 1656
Prosecution Insights