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 November 3, 2025 is acknowledged. Claims 8-9 are canceled and claims 1-4 and 14-15 are amended. Currently claims 1-7 and 10-19 are pending and under examination.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
(new rejection necessitated by amendment of claim 14) Claim 15 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 15 recites “The process according to claim 14, further comprising a step of purifying the molecule of interest, by ion exchanging the first fraction of the fermentation broth of step (b) comprising the molecule of interest”, and is a repeat of step (c) in claim 14, thus not further limiting. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-7, 10-13, and 17-19 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, hereinafter “Pereira”), as evidenced by Dehnavi et al. (Jrnl of Separation Science and Eng, 2019, vol. 10, issue 2, pgs. 80-87, hereinafter “Dehnavi”) 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 which meets the limitation in claim 1 (see Cox claim 7 and pg. 4, lines 4-5). 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 which meets the limitations in claims 1 and 4-5 (see e.g. claim 12).
Cox does not teach the molecule of interest separated in the method is an alpha-amylase.
However, Pereira teaches α-amylase 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 Dehnavi, the cloud point for PEG 2000 was determined at 23 ⁰C in a method for separating α-amylase, thus the partition assay used by Pereira separated 2 ⁰C above the cloud point (abstract).
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 apply the method of separating a molecule of interest (i.e. foaming agent) from an antifoaming agent in a fermentation broth by filtering the broth in a range of 1 ⁰C - 15 ⁰C above the cloud point of the antifoaming agent thereby separating the foaming agent and antifoaming agent as taught by Cox, towards separating an 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. 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 claims 7 and 18 (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 14-16 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 Dehnavi.
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 a modified method of separating a molecule of interest 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 November 3, 2025 have been fully considered but they are not persuasive.
Regarding response directed to the 102 rejection, Applicant argues Cox does not teach or suggest the molecule of interest recited in claims 1 and 14, thus the rejection is moot. Applicant also argues Cox suggests using temperatures over 20°C above cloud point. (See, e.g., Cox at Tables 2 and 5, showing temperatures of 26°C above cloud point work efficiently). On the other hand, the "inventors surprisingly found that separating a molecule of interest from an antifoaming agent in a fermentation broth comprising said molecule of interest and said antifoaming agent can be achieved by filtration at a temperature in the range of 1 °C to 15 °C above the cloud point of the antifoaming agent." See U.S. Pub. No. 20230323329 at 26.3 In particular, the instant methods are advantageous for "fermentation broths producing heat-labile molecules of interest" such as the recited enzymes. Id. at 70, 101. Accordingly, Cox does not render obvious any of the claims. Furthermore, Applicant argues in regard to the 103 rejections, that Cox fails to teach or suggest the subject matter of claims 1 and 14, and neither Li nor Jarvinen remedy Cox’s deficiencies, and thus do not render the claims obvious.
In response to applicant's argument that Cox suggests using temperatures over 20 ⁰C above the cloud point to work efficiently at separating the molecule of interest, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Cox explicitly shows a separation of antifoam at a temperature of 6 ⁰C above the cloud point, albeit not as efficiently at the higher temperatures used in Cox’s method. However, as discussed in the newly applied Pereira reference of the new 103 rejection, it is well-understood and routine to optimize the separation procedures based on many variables, such as temperature, pH, antifoam molecule and size, and filter size, thus it would be obvious to one of ordinary skill in the art to modify the methods taught by Cox and Pereira to optimize the separation of α-amylase based on cloud point temperatures of the anti-foaming agent. It also would have been obvious to one of ordinary skill in the art to further modify the method taught by Cox and Pereira to include an additional purification step utilizing ionic chromatography as taught by Jarvinen. Thus, given the teachings in the prior art and the general knowledge of the well-understood and routine laboratory practices of optimizing fermentation and separation methods using antifoam agents, the claimed methods are prima facie obvious.
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.
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/LOUISE W HUMPHREY/Supervisory Patent Examiner, Art Unit 1657
/JESSICA EDWARDS/
Examiner, Art Unit 1657