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 Federal Republic of Germany Application No. DE10 2020 119 698.9 filed 07/27/2020. This application is also a 371 of PCT/EP2021/025233 filed 06/25/2021. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. However, an English translation of the foreign patent document was not provided. Therefore, for the purposes applying prior art, the effective filing date of the claimed invention is 06/25/2021.
Information Disclosure Statement
The Information Disclosure Statement filed 04/21/2023 has been acknowledged and considered.
Drawings
The Drawings filed 01/25/2023 are accepted by the Examiner.
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 12/04/2025 is acknowledged. The traversal is on the grounds that the shared technical feature is not just an enzyme foam, but a catalytically active protein foam wherein the foam’s structure is formed by the specific coupling of the proteins themselves via fused, complementary connectors. Applicant states this is explicitly defined in Claim 1, Step D) and detailed in Paragraphs [0049]-[0054] of the instant Specification. This is not found persuasive for a few reasons. First, claims are interpreted in light of the Specification, but limitations from the Specification are not read into the claims. Claim 1, Step D) does not state the proteins themselves are fused via the complementary connectors. Claim 1, Step D) simply states “coupling the catalytically active proteins contained in the bubbles from step B) in the reaction chamber to form a catalytically active protein foam.” There is no mention of the connectors. Additionally, under the broadest reasonable interpretation, if the catalytically active proteins in one bubble are coming into contact with other catalytically active proteins in another bubble, the catalytically active proteins are coupled. Thus, the shared technical feature is simply an enzyme foam, as stated in the Restriction Requirement mailed 10/06/2025.
The requirement is still deemed proper and is therefore made FINAL.
Applicant's election with traverse of a monoenzyme foam and Lactobacillus brevis alcohol dehydrogenase in the reply filed on 12/04/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
The requirement is still deemed proper and is therefore made FINAL.
Amendments and Claim Status
As stated immediately above, Applicant’s elected Group I, claims 1-17, in the reply filed 12/04/2025. Applicant’s further elected a monoenzyme foam wherein Lactobacillus brevis alcohol dehydrogenase (LbADH) is the enzyme of the foam. Thus, claims 3-4 are withdrawn as they are not encompassed by the elected species because claim 3 is drawn to a bi-enzyme foam and claim 4 is drawn to a multi-enzyme foam. Additionally, claims 18-20 are withdrawn as they are not encompassed by the election of Group I.
Claims 1-20 are currently pending.
Claims 3-4 and 18-20 are withdrawn by the Examiner.
Claims 1-2 and 5-17 are under examination.
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 1-2 and 5-17 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.
Claim 1 recites “catalytically active proteins fused to a first connector and catalytically active proteins fused to a second connector that is complementary to the first connector” in lines 3-5. It is unclear exactly what ‘complementary’ means in this situation. The Specification states complementary to one another means for the connectors that they react specifically with one another so that a specific bond is formed between the catalytically active proteins (Specification, Paragraph [0034]). It is unclear how the specific bond is between the catalytically active proteins when the connectors are what are complementary. Also, claim 1 does not state the proteins are connected to one another nor does it state the connectors are connected to one another. Overall, it is unclear what this limitation is intended to mean. Thus, claim 1 and all claims dependent upon it are indefinite.
Claim 2 recites “in order to produce a monoenzyme foam in the solution of step B), the catalytically active protein which is fused to the first connector is identical to the catalytically active protein which is fused to the second connector” in lines 1-4. The limitations of this claim are unclear. First, it appears as though ‘monoenzyme foam in the solution of step B)’ should read ‘monoenzyme foam with the solution of step B)’ because according to claim 1, the bubbles are made with a gas phase and a solution, not bubbles made in the solution. Also, it is unclear how a monoenzyme foam is being formed when an enzyme is not claimed. Claim 2, and claim 1, is broadly drawn to catalytically active proteins, not specifically enzymes. Thus, claim 2 is indefinite.
Claim 5 recites “the catalytically active proteins fused to the first connector and the catalytically active proteins fused to the second connector are heterologously expressed and the connectors are a genetically fused portion of the proteins” in lines 2-4. Heterologously expressed simply means the proteins are being expressed by an organism that the protein does not originate from. It is unclear how the connectors being “heterologously expressed’ is intending to limit the connectors because the proteins aren’t being expressed in the method nor is there an organism utilized for expressing the proteins present in the method. Thus, it is unclear how the proteins are heterologously expressed in the method when the method does not include expression of the proteins or an organism to express them. It is unclear if this limitation is intending to distinguish the proteins from the connectors, meaning the connectors are not naturally expressed with the protein or are not expressed by the same organism. Overall, it is unclear what the limitation is intended to limit. Additionally, it is unclear what ‘the connectors are a genetically fused portion of the proteins’ means. It is unclear exactly what ‘genetically fused’ means. It is unclear if the ‘the connectors are a genetically fused portion of the proteins’ is simply a fusion protein comprising the protein, a linker and another protein, or if ‘genetically fused’ is a specific means of fusion. Genetically fused is not defined by the claim, the Specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Thus, claim 5 is indefinite. For the purposes of compact prosecution, the claim is being interpreted as any protein is a ‘heterologously expressed’ protein and any form of fusion is ‘genetically fused.’
Claim 7 recites “the catalytically active proteins are expressed heterologously and the connectors are subsequently chemically bound to the catalytically active proteins” in lines 2-3. This limitation renders the claim indefinite for the same reasons as listed above regarding claim 5. For the purposes of compact prosecution, the claim is being interpreted as any protein is a ‘heterologously expressed’ protein and any means of connecting reads on ‘chemically bound.’
Claim 12 recites “wherein the bubbles produced in step B) have a diameter of 5-1500 µm and the pore size of the bubbles is between 10 and 2000 µm” in lines 2-3. It is unclear what exactly a ‘pore size of the bubble’ is. It is unclear whether a pore size of the bubble is a pore on the film making the bubble, similar to a pore on a membrane, or if the pore size of the bubble is referring to the interior cavity of the bubble where the air is. The Specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention because it is unclear exactly what is being referred to as the ‘pore size of the bubble.’ The Specification states the diameter, pore size and generation frequency of the bubbles can be precisely adjusted via the geometry of the channels, the pressure gradients used and the type of continuous phase. This does not make it clear exactly what a ‘pore size of the bubble is.’ Thus, claim 12 is indefinite.
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, 5-11 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Bronshtein (WO 1998002240 A1, 01/22/1998) in view of Halloum et al. (Fermentation, 08/05/2015).
Regarding claims 1, 2, 5-8, 10-11 and 14-15, see 112b rejections above. Bronshtein discloses a method of preserving sensitive biological dispersions, suspensions, emulsions and solutions by forming stable foams from fluid materials to be dehydrated, as an aid both to the drying of one or more biologically active substrates in the fluid as an aid in preparing easily divisible dried product suitable for further commercial use (See entire document, Abstract). The invention provides a scalable method for preserving sensitive biologically active materials, such as enzymes, with a unique drying method that makes it possible to rehydrate the samples with water or aqueous solutions to reverse the process to the initial biological activity (Page 4, Last Paragraph – Page 5, First Paragraph). The invention is for preserving enzymes, proteins, viruses, serums, vaccines, liposomes and cell suspensions (Page 1, Lines 3-7). Enzymes read on catalytically active proteins. In an important embodiment of the invention, the foam forming process includes two steps: (a) an intensive dehydration of the solution or dispersion containing the biologically active agent by boiling under vacuum, to form a stable, non-collapsing foam and (b) subsequent secondary drying of the foams, to the extent that the foams are stable and do not collapse during storage (Page 4, Lines 27-33). Regarding the ‘boiling,’ the stable foams are formed by partially removing the water to form a viscous liquid and by further subjecting the reduced liquid to vacuum, to cause it to “boil” during further drying at temperatures substantially lower than 100°C (Page 3, Lines 15-19). That is, the boiling causes the viscous solutions or suspensions of biologically active materials to foam (Page 3, Lines 20-23). Boiling reads on a gas phase as boiling involves phase transition from a liquid to a gas. Using this method, it is possible to rehydrate the samples with water or aqueous solutions to reverse the process to the initial biological activity (Page 5, Lines 1-3). Stability of the foams may be further enhanced by the addition of surfactants or other synthetic or biological polymers (Page 5, Lines 14-16). In Example 1, Bronshtein performed the method on an enzyme, isocitrate dehydrogenase, wherein the isocitrate dehydrogenase was dialyzed for 5 hours, the activity of the enzymes were analyzed, the isocitrate solution was place in tubes, dried for 4 hours under low vacuum, the sample where boiled for 4 hours under high vacuum forming the stable dry foam and then samples were stored for 8 days over DRIERITE (Page 6, Lines 9-11). Dialyzing, or purifying, the isocitrate dehydrogenase reads on producing a catalytically active protein as enzymes are proteins and are catalytically active. The tubes the enzymes are in read on a bubble generator as the bubbles were generated in the tube.
Bronshtein does not disclose transferring the bubbles into a reaction chamber to couple the proteins in the bubbles, the enzyme being Lactobacillus brevis alcohol dehydrogenase (LbADH), the use of connectors or specifically utilizing a surfactant in Example 1.
However, it appears, absent evidence to the contrary, that the bubbles would necessarily be coupled when the multitude of bubbles are created in Step B) because the multitude of bubbles are in contact with one another. Additionally, the Specification defines a protein foam as “gaseous bubbles enclosed by liquid or solid protein thin films” (Specification, Paragraph [0031]). Therefore, the foam is simply a multitude of gaseous bubbles enclosed by liquid or solid protein thin films, which was formed in Step B). Thus, the disclosure of Bronshtein of moving the samples and storing over DRIERITE for 8 days reads on transferring the bubbles into a reaction chamber, as the DRIERITE is performing a reaction because it aids in the drying of the sample, and coupling the proteins in the bubbles.
Additionally, Halloum et al. disclose an R-specific alcohol dehydrogenase from Lactobacillus brevis LB19 (LbADH), an industrially important enzyme, being studied for its ability to reduce 3- through 5-carbon 2-alkanones and aldehydes that are relevant as biofuel precursors (See entire, Abstract). Halloum et al. further disclose the alcohol dehydrogenase from Lactobacillus brevis (LbADH) has been among the most comprehensively studied and employed enzymes in industrial biotechnology (Page 25, Paragraph 1). LbADH is an important versatile biocatalyst for multiple reasons, including having high stability at elevated temperatures, high stability in non-conventional reaction media like organic solvents and high activity on a broad range of substrates (Page 25, Paragraph 1). Halloum et al. set out to explore other compounds LbADH could effectively synthesize (Page 25, Paragraph 4). To do this, Halloum et al. created a construct comprising L. brevis LB19 and an N-terminal poly-His-tag, with the poly-His-tag for purification purposes (Page 27, Paragraph 27). A poly-His-tag reads on a connector and a peptide tag.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the L. brevis LB19 with N-terminal His-tag construct of Halloum et al. in the method of Bronshtein to form a monoenzyme foam because Bronshtein specifically discloses the method is useful for enzymes, and discloses a specific example utilizing a different species of dehydrogenase, and provides a product that is usable commercially and Halloum et al. disclose the alcohol dehydrogenase from Lactobacillus brevis (LbADH) has been among the most comprehensively studied and employed enzymes in industrial biotechnology and is an important biocatalyst for many reasons. Therefore, one of ordinary skill in the art would be motivated to utilize the method of Bronshtein to create a monoenzyme foam comprising LbADH because it was an enzyme known to be useful in industrial biotechnology as taught by Halloum et al. and Bronshtein discloses his method is useful for creating commercially useable enzymes that retain their same biological activity even after being dried.
It would have been further obvious to one of ordinary skill in the art to utilize a surfactant as an additional additive for stability of the foam in Example 1 of Bronshtein because Bronshtein specifically discloses, as discussed above, that the stability of the foams may be further enhanced by the addition of surfactants.
Regarding claim 2, Bronshtein discloses Example 1 which included only one enzyme, isocitrate dehydrogenase, reading on a monoenzyme foam.
Regarding claim 9, as discussed above, Bronshtein discloses the invention provides a scalable method for preserving sensitive biologically active materials, such as enzymes, with a unique drying method that makes it possible to rehydrate the samples with water or aqueous solutions to reverse the process to the initial biological activity. Water or aqueous solution reads on a ‘liquid flow’ and initializing the original biological activity reads on being used to convert a substrate to a product because the is what enzymes do, catalyze substrates into new molecules, or products.
Claims 1-2 and 5-17 are rejected under 35 U.S.C. 103 as being unpatentable over Bronshtein (WO 1998002240 A1, 01/22/1998) in view of Halloum et al. (Fermentation, 08/05/2015) and further in view of Hu et al. (Angewandte Chemie International, 2019).
The teachings of Bronshtein and Halloum et al. are discussed above.
Regarding claims 12-13 and 16-17, neither Bronshtein or Halloum et al. disclose the bubbles have a diameter of 5-1500 µm, the pore size of the bubbles is between 10 and 2000 µm, the film of the bubbles is cross-linked and 0.1-200 µm thick or adding composite material, wherein that composite material is DNA-silica nanocomposite material.
However, Hu et al. disclose assembly of DNA-Silica Nanocomposites into hollow spheres (See entire document, Title). Hu et al. further disclose the DNA-SiNP nanocomposite materials formed hollow microspheres wherein the shell had a thickness of 4-6 µm and a diameter of 120 µm (Page 17271, Left Column, Paragraph 2 – Right Column, Paragraph 1). Hollow microspheres reads on a bubble. Additionally, Hu et al. disclose the DNA, which coated the SiNPs, served as a cross-linker between the particles (Page 17270, Right Column, Paragraph 2 and Figure 2). Hu et al. state this approach could be used for many applications in life sciences, including to develop compartmentalized reaction systems for biocatalytic applications (Page 17272, Left Column, Paragraph 1).
It is reiterated that the instant Specification states “the diameter, pore sizes and generation frequency of the bubbles can be precisely adjusted via the geometry of the channels, the pressure gradients used and the type of continuous phase” (Specification, Paragraph [0066]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the method of Bronshtein to create bubbles with a diameter of 120 µm and a thickness of 4-6 µm, both falling within the claimed range, as that is the diameter and thickness disclosed by Hu et al. in a similar method of producing hollow spheres, reading on bubbles. Additionally, absent evidence to the contrary, it appears the diameter, thickness and pore size are easily manipulatable characteristics and it would be obvious to one of ordinary skill in the art to manipulate each of these to their specific size and thickness needed for the specific application motivated by the desire to create a bubble effective for the designated purpose. “Where 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.” See MPEP 2144.05. Thus, as a bubble would inherently have a diameter, pore size and thickness of the outer film of the bubble, it is not inventive to discover the optimal ranges for such parameters.
It would have been further obvious to one of ordinary skill in the art to add a composite material, such as DNA-silica nanocomposite material into the foam of Bronshtein as Bronshtein specifically disclosed synthetic or biological polymers could be added to the foam to enhance stability motivated by the desire to effectively cross-linked the proteins of the foam and provide a compartmentalized biocatalytic reaction system as taught by Hu et al. It would have been obvious to utilize the DNA-silica nanocomposite material in the foam of Bronshtein because the foam of Bronshtein is drawn to enzymes and adding the DNA-silica nanocomposite material provides a means of crosslinking so they connect and create compartmentalized reaction systems for biocatalytic purposes.
Conclusion
Claims 1-2 and 5-17 are rejected.
No claims are allowed.
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/A.T.W./Examiner, Art Unit 1653
/SHARMILA G LANDAU/Supervisory Patent Examiner, Art Unit 1653