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 .
DETAILED ACTION
This application is a US national phase of PCT/EP2021/074332, filed September 3, 2021, with foreign priority application EP20194676.1, filed September 4, 2020.
Applicant’s amendment filed May 18, 2026 is acknowledged. Claims 2-3, 8-9, 15, and 18 are canceled, and claims 1, 14, 17, and 19 are amended. Currently claims 1, 4-7, 10-14, 16-17, and 19 are pending and under examination.
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 18, 2026 has been entered.
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, 4-7, 10-13, 17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Cox et al. (WO 2009/050222 A1, cited in IDS filed 2/24/2023, hereinafter “Cox”) in view of Pereira et al. (Brazilian Jrnl of Chem Eng. 2018, Vol. 35, No. 3, pgs. 1141-1152, cited in PTO-892 mailed 2/17/2026, hereinafter “Pereira”), as evidenced by Adejuwon (African Journal of Basic & Applied Sciences, 2010, 2 (5-6): 158-160) and Li et al. (ACS Appl. Polym. Mater. 2019, 1, 3048−3056, cited in PTO-892 mailed 07/09/2025, hereinafter “Li”).
Regarding claims 1, 4 and 5, Cox teaches a method for producing a foaming agent comprising cultivating a host cell in a fermentation medium wherein the host cell extra-cellularly secretes a foaming agent, and wherein the medium also contains an antifoam which has a cloud point, and removing the antifoam while the temperature is above the cloud point (abstract and claim 1). Cox teaches the temperature of the fermentation medium is at least 10°C above the cloud point of the antifoaming agent (see Cox claim 7 and pg. 4, lines 4-5). Cox teaches the temperature of the fermentation medium must not be so high that the foaming agent is denatured and preferably the temperature of the fermentation medium is less than 90°C, more preferably less than 75°C, and the antifoam has a cloud point in the range 20-30°C and the temperature of the fermentation medium in step ii) is in the range 40-60°C (pg. 14, lines 1-6). Cox teaches holding the fermentation medium at such an elevated temperature is deliberately avoided, in order to minimize the possibility of degradation reactions (which can cause color and flavor changes), enzyme inactivation, protein denaturation and loss of, functionality (pg. 14, lines 6-10). Although the temperature range of the fermentation broth is outside the recited range in claim 1, the selection of specific fermentation temperatures clearly would have been a routine matter of optimization using standard laboratory techniques available at the time of filing on the part of the artisan of ordinary skill, said artisan recognizing that the effectiveness of the enzyme production would have been affected by these temperatures, and the technical effect of maintaining the fermentation broth at least 10 ⁰C above the cloud point of the antifoaming agent as taught by Cox can be applied in separating many types of heat-labile enzymes.
Cox teaches the antifoam agent include poly(alkylene glycol) (PAG) based compounds such as ethylene oxide/propylene oxide block copolymers, polyalcohols based on ethylene oxide/propylene oxide block copolymers and polyethers of ethylene and propylene oxides; and fatty acid ester based compounds (see e.g. claim 12).
Cox does not teach the molecule of interest separated in the method is a heat-labile enzyme.
However, Pereira teaches α-amylase secreted by Aspergillus niger, produced by a solid state fermentation and its partition behavior in aqueous two-phase systems by determining an optimized system utilizing polyethylene glycol (PEG) (a PAG based antifoaming agent) and potassium phosphate buffer (abstract). The system was designed for two independent variables: fermentation time and moisture content, and for the partition study, a face-centered central composite design (CCF) with four independent variables: PEG molecular weight, pH, temperature and partition time, wherein the partition coefficients increased with increasing pH values and a reduction in temperature (abstract). The fermentation was carried out at 30 ⁰C and the partition assays were carried out at 5 ⁰C and 25 ⁰C (pg. 1143, col. 1, para 1; Table 6). As evidenced by Adejuwon, amylase produced from Aspergillus niger is an inherently heat-labile enzyme, preferably cultured at 25 ⁰C, with peak amylase activity within a temperature rang of 20-45 ⁰C, with optimum activity at 35⁰C, after which there was a decline (pg. 159, col. 1, para 6, pg. 160, col. 1, para 3).
Therefore it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the method of separating a molecule of interest (i.e. foaming agent) from an antifoaming agent in a fermentation broth by filtering the broth at least 10 ⁰C above the cloud point of the antifoaming agent thereby separating the foaming agent and antifoaming agent as taught by Cox, for separating the heat-labile α-amylase as the molecule of interest, based on optimizing parameters for efficient separation, specifically reducing the temperature for partitioning of the foaming agent (α-amylase) and antifoaming agent as taught by Pereira, to prevent denaturation of the heat-labile enzyme. One of ordinary skill in the art would be motivated to optimize the method taught by Cox by varying different parameters (i.e. temperature) in the fermentation system to separate α-amylase from the antifoaming agent as taught by Pereira. There would be a reasonable expectation of success because it is a well understood and routine laboratory practice to optimize fermentation systems based on the physical properties of foaming and antifoaming agents as described in the prior art.
Cox further teaches removal of the antifoam agent is achieved though filtration, such as dead-end filtration, microfiltration, or ultrafiltration, and carried out below the cloud point as described in Example 4, which meets the limitation in claims 1, 6, and 12 (pg. 13, lines 15-20, pg. 15, lines 5-7, pg. 21, lines 1-3). Cox teaches common commercially available antifoam agents with cloud points in the range of 15 ⁰C to 40 ⁰C, such as a poly(alkylene glycol) Struktol J647 with cloud point 24 ⁰C used in Example 1, which meets the limitation in claim 2 (pgs. 11-12, Table 1, pg. 16, lines 3-5). Cox teaches in Example 2, the solution temperature for removing the antifoaming agent was 30 ⁰C, which meets the limitation in claim 3 (pg. 18, Table 2). Cox teaches the foaming agent (i.e. molecule of interest) can be an enzyme subtilisin classified as a hydrophobin, which is a serine protease (pg. 6, line 20 and see e.g. claim 14). Cox teaches in Example 4, the fermentation liquor was ultrafiltered at 15 ⁰C (i.e. 9 ⁰C below the cloud point of antifoam J647) to partially purify the hydrophobin, which meets these limitations in claim 7 (pg. 21, lines 1-3). Cox teaches host cells, typically micro-organisms, may be modified to express foaming agents and may include bacteria, fungi, inter alia, which meets the limitations in claims 10-11, 13, and 19 (pg. 7, lines 10-11, 27, and see e.g. claims 1 and 15). Cox teaches polypropylene glycol (PPG) can be used in the invention, and indicates the commercially available product Antifoam 204 (pg. 12, Table 1), which as evidenced by Li has a molecular weight of 3240 g/mol (pg. 3050, col. 1, para 1), which falls within the range recited in claim 17.
Claims 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Cox in view of Pereira and Jarvinen et al. (US 20220330584 A1, cited in PTO892 mailed 07/09/2025, hereinafter “Jarvinen”), as evidenced by Adejuwon.
As discussed in the 103 rejection above, Cox and Pereira teach all the limitations of the method recited in claim 14 except for a further step of purifying the molecule of interest by ion exchange from the first separated fraction.
However, Jarvinen teaches processes for removing an antifoam agent from a solution comprising human milk oligosaccharides (HMO) (title). Jarvinen teaches HMO’s are purified from a fermentation process by precipitating and filtering out the antifoam agent, and further processing the remaining solution by cation or anion exchange chromatography (claims 1 and 34).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform an optimized method of separating a heat-labile enzyme as taught by Cox and Pereira, and further process the leftover solution (i.e. first fraction) after removing the antifoam agent, with an ion exchange chromatography as taught by Jarvinen with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to further process the solution to clarify and isolate the molecule of interest, as this is a common, well-understood, and routine laboratory practice in the art.
Although Cox does not explicitly teach in an embodiment/example that the molecule of interest is further prepared into a formulation as recited in claim 16. This embodiment belongs to the common general knowledge of the skilled person and does not involve the exercise of any skill or ability beyond that to be expected of the person skilled in the art, thus is obvious.
Response to Arguments
Applicant's arguments filed May 18, 2026 have been fully considered but they are not persuasive.
Regarding the 103 rejections, Applicant argues the combination of references does not teach or suggest every claim element, such as "a temperature in the range of 20 °C to 35 °C" and "a heat-labile enzyme." For example, Cox discloses filtering temperatures of at least 40 °C and does not disclose "a heat-labile enzyme.". The secondary references do not remedy Cox's deficiencies. Pereira discloses a solid state fermentation system of Aspergillus niger on a Cassava substrate for alpha-amylase production. For separation, the alpha-amylase is partitioned into the upper (or lower) phase in an aqueous two-phase system using PEG-4000 and 6000. As such, this system involves cultivating fungal host cells (Aspergillus niger) in a solid state fermentation system and thus differs from Cox and the instant claims. Moreover, Pereira fails to disclose a filtering step for separation of the enzyme of interest, as in step (a) of the claimed methods. Rather, according to Pereira, purified enzyme is added to an aqueous two phase system of PEG4000 and 6000 and potassium phosphate salts to study partitioning behavior. Accordingly, Pereira does not teach or suggest removal of an antifoaming agent from a fermentation broth, let alone let alone the claim elements not taught by Cox. Dehnavi also discloses an aqueous two phase system for separation of alpha amylase but does not disclose separation of the enzyme of interest using filtering in a range of 20 °C to 35 °C.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Cox teaches the claimed method of separating a foaming agent and antifoaming agent from a fermentation broth, albeit not at the specified temperature range. Cox teaches the temperature of the fermentation medium must not be so high that the foaming agent is denatured and holding the fermentation medium at such an elevated temperature is deliberately avoided, in order to minimize the possibility of degradation reactions (which can cause color and flavor changes), enzyme inactivation, protein denaturation and loss of, functionality (pg. 14, lines 6-10). Although Cox does not teach the foaming agent is a ‘heat-labile enzyme’, he does teach separation of subtilisin, which is known in the art to be heat-labile, and as also disclosed in the specification. Pereira provides teachings of the temperature fermentation ranges of the heat-labile enzyme alpha-amylase (as evidenced by Adejuwon), and further provides evidence of separating the amylase using PEG in phase separations, which would be obvious to one of ordinary skill in the art to optimize the method taught by Cox and incorporate the parameters taught by Pereira. Furthermore, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Thus, the claimed method is obvious over Cox in view of Pereira, because the person skilled in the art is motivated to select an appropriate filtration temperature in order to obtain a better separation effect, depending on the molecule of interest.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA EDWARDS whose telephone number is (571)270-0938. The examiner can normally be reached M-F 8am-5pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Louise Humphrey can be reached at (571) 272-5543. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LOUISE W HUMPHREY/Supervisory Patent Examiner, Art Unit 1657
/JESSICA EDWARDS/
Examiner, Art Unit 1657
Prosecution Insights