DETAILED CORRESPONDENCE
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1, 3, 9, 10, and 12-20 are pending in the application.
Applicant’s amendment to the claims, filed June 23, 2026, is acknowledged. This listing of the claims replaces all prior versions and listings of the claims.
Applicant’s amendment to the specification, filed June 23, 2026, is acknowledged.
Applicant’s submission of a certified translation of the foreign priority application, filed June 23, 2026, is acknowledged.
Applicant’s remarks filed June 23, 2026 in response to the non-final rejection filed April 15, 2026, are acknowledged and have been fully considered.
Claims 2, 4-8, and 11 have been canceled by applicant’s claim amendment filed June 23, 2026 and rejections previously applied to these claims are withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Restriction/Election
In response to a requirement for restriction/election filed February 17, 2026, applicant elected without traverse the invention of Group I, claims 1-11, drawn to an immobilized crude enzyme for degrading polycyclic aromatic hydrocarbons, in the reply filed March 26, 2026.
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1, 3, 9, and 10 are being examined on the merits.
Specification/Informalities
The objection to the specification for using the term “Tween,” which is a trade name or a mark used in commerce, is withdrawn in view of applicant’s amendment to the specification to replace “Tween 80” with “TWEEN 80®” and the generic terminology “polysorbate 80.”
The objection to the specification for disclosing “Specific Example VIII of the present disclosure” is withdrawn in view of applicant’s amendment to the specification to replace “Specific Example” with “Embodiment.”
Claim Rejections - 35 USC § 112(b)
The rejection of claims 1, 3, and 9 under 35 U.S.C. 112(b) as being indefinite in the recitation of “An immobilized crude enzyme…wherein a solution of the immobilized crude enzyme…” in claim 1 and the recitation of the solution components and concentrations in claims 3 and 9 is withdrawn in view of applicant’s amendments to claims 1 and 3 to delete reference to a “solution” of the immobilized crude enzyme.
The rejection of claims 3 and 10 under 35 U.S.C. 112(b) for reciting the trademark/trade name “Tween” is withdrawn in view of applicant’s amendments to claims 3 and 10 replace “Tween” with “polysorbate.”
Claims 3 and 10 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. This rejection is necessitated by applicant’s amendment to claim 3.
Claim 3 (claim 10 dependent therefrom) is confusing in the recitation of “The immobilized crude enzyme for degrading complex PAHs in soil according to claim 1, wherein the crude enzyme of the white rot fungi further comprises acetonitrile, polysorbate 80, and a mediator comprising 1-hydroxybenzotriazole (HBT) and violuric acid” because immobilized crude enzymes are not known in the art to comprise acetonitrile, polysorbate 80, and a mediator comprising HBT and violuric acid. Rather, according to the disclosure of the substitute specification filed June 23, 2026, a solution of crude enzyme comprising acetonitrile, polysorbate 80, and a mediator comprising HBT and violuric acid is contacted with biochar in the preparation of the immobilized crude enzyme (paragraphs [0008], [0009], and [0018]), however, the specification does not disclose an immobilized crude enzyme itself comprising acetonitrile, polysorbate 80, and a mediator comprising HBT and violuric acid. In the interest of advancing prosecution, it is suggested that applicant clarify the meaning of claim 3.
Claim 10 remains rejected under 35 U.S.C. 112(b) for reciting the immobilized crude enzyme…wherein a solution of the crude enzyme…is prepared by…” because it is unclear as to whether or not the immobilized crude enzyme is or is not required to be present in a solution. Also, if the immobilized crude enzyme is required to be present in a solution, in view of the recitation of “The immobilized crude enzyme…is prepared by…” (emphasis added), it is unclear as to whether the recited solution characteristics are required for the claimed immobilized crude enzyme or merely product-by-process limitations and not required to be a characteristic of the claimed immobilized crude enzyme. Put another way, it is unclear as to whether claim 10 is drawn to an immobilized crude enzyme or a solution of an immobilized crude enzyme and if the claim is drawn to a solution of an immobilized crude enzyme, what characteristic(s) is/are required in the solution of the immobilized crude enzyme. As such, it is unclear as to the scope of the claimed immobilized crude enzyme. It is suggested that applicant clarify the scope of the claims.
RESPONSE TO REMARKS: Applicant argues the rejection of claim 10 has been obviated by removing solution associated features. This is not found persuasive because, as previously stated, it is unclear as to whether claim 10 is drawn to an immobilized crude enzyme or a solution of an immobilized crude enzyme and if the claim is drawn to a solution of an immobilized crude enzyme, what characteristic(s) is/are required in the solution of the immobilized crude enzyme.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 3 and 10 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed, had possession of the claimed invention. This rejection is necessitated by applicant’s amendment to claim 3.
MPEP § 2163.II.A.3.(b) states, “when filing an amendment an applicant should show support in the original disclosure for new or amended claims”. See also MPEP 714.02. MPEP § 2163.II.A.3.(b) further states, “[i]f the originally filed disclosure does not provide support for each claim limitation, or if an element which applicant describes as essential or critical is not claimed, a new or amended claim must be rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112, para. 1, as lacking adequate written description”. According to MPEP § 2163.I.B, “While there is no in haec verba requirement, newly added claim limitations must be supported in the specification through express, implicit, or inherent disclosure” and “The fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath, Inc., 935 F.2d at 1563-64, 19 USPQ2d at 1117”.
As amended, claim 3 (claim 10 dependent therefrom) recites “The immobilized crude enzyme for degrading complex PAHs in soil according to claim 1, wherein the crude enzyme of the white rot fungi further comprises acetonitrile, polysorbate 80, and a mediator comprising 1-hydroxybenzotriazole (HBT) and violuric acid.” Applicant fails to show support for the instant amendment to claim 3 and while the disclosure of the substitute specification filed June 23, 2026 provides descriptive support for a solution of crude enzyme comprising acetonitrile, polysorbate 80, and a mediator comprising HBT and violuric acid, which is contacted with biochar in the preparation of the immobilized crude enzyme (paragraphs [0008], [0009], and [0018]), there is no apparent disclosure of an immobilized crude enzyme, wherein the immobilized crude enzyme comprises acetonitrile, polysorbate 80, and a mediator comprising HBT and violuric acid as recited in claim 3 as amended. Applicant is invited to show support for claim 3.
Claim Rejections - 35 USC § 102
The rejection of claims 1, 3, 9 and 10 under 35 U.S.C. 102(a)(1) as being anticipated by Zhao et al. (Environmental Technology 45:2034-2044, January 2023; cited on Form PTO-892 filed April 15, 2026; hereafter “Zhao”) is withdrawn in view of applicant’s submission of a certified translation of the foreign priority application, filed June 23, 2026, to establish an effective filing date of July 3, 2022, which antedates Zhao.
Claim Rejections - 35 USC § 103
The rejection of claims 1, 3, 9, and 10 under 35 U.S.C. 103 as being unpatentable over Naghdi et al. (Science of the Total Environment 584-585:393-401, 2017; cited on Form PTO-892 filed April 15, 2026; hereafter “Naghdi”) in view of Zhou et al. (Crop and Pasture Science 74:147-156, March 2022; cited on Form PTO-892 filed April 15, 2026; hereafter “Zhou”), and
the rejection of claims 5 and 6 under 35 U.S.C. 103 as being unpatentable over Naghdi in view of Zhou as applied to claims 1-4 and 7-11 above, and further in view of Chen et al. (Biotechnol. Lett. 38:471-476, 2016; cited on Form PTO-892 filed April 15, 2026; hereafter “Chen”)
are withdrawn in view of applicant’s amendment to claim 1 to recite “citric acid-modified chestnut inner shell.” The combination of Naghdi and Zhou does not teach or suggest citric acid-modified chestnut inner shell.
Claims 1 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Naghdi in view of Zhou, Lonappan et al. (J. Cleaner Production 224:118841, 2020, 10 pages; cited on the attached Form PTO-892; hereafter “Lonappan”), and Cobas et al. (J. Taiwan Institute Chem. Eng. 61:166-17, 2016; cited on Form PTO-892 filed April 15, 2026) and as evidenced by Zavarzina et al. (Soil Biology and Biochemistry 36:359-369, 2004; cited on the attached Form PTO-892; hereafter “Zavarzina”). This rejection is necessitated by applicant’s amendment to claim 1.
As amended, claims 1 and 9 are drawn to an immobilized crude enzyme for degrading complex polycyclic aromatic hydrocarbons (PAHs) in soil, comprising a citric acid-modified chestnut inner shell and a crude enzyme of white rot fungi, wherein the crude enzyme solution of the white rot fungi is immobilized in the citric acid-modified chestnut inner shell, and comprises copper ions.
The recitation of “for degrading complex polycyclic aromatic hydrocarbons (PAHs) in soil” in the preamble of claim 1 is interpreted as a statement reciting a purpose or intended use of the claimed immobilized crude enzyme without structurally and/or functionally limiting the claimed immobilized crude enzyme. See MPEP 2111.02.II regarding preamble statements reciting purpose or intended use.
Naghdi is related to immobilized laccase on oxygen-functionalized nanobiochars through mineral acids treatment for removal of carbamazepine (p. 393, title).
Regarding claims 1 and 9, Naghdi teaches biocatalytic treatment with oxidoreductase enzymes, especially laccases, are an environmentally benign method for biodegradation of pharmaceutical compounds, such as carbamazepine to less harmful compounds. However, enzymes are required to be immobilized on supports to be reusable and maintain their activity. Functionalization of support prior to immobilization of enzyme is highly important because of biomolecule-support interface on enzyme activity and stability. In this work, the effect of oxidation of nanobiochar, a carbonaceous material produced by pinewood biomass pyrolysis, using HCl, H2SO4, HNO3 and their mixtures on functionalization of biochar with COOH functional groups and immobilization of laccase has been studied (p. 393, Abstract; p. 396, column 1, bottom to p. 397, column 2). Naghdi teaches the storage, pH and thermal stabilities of immobilized laccase on the functionalized nanobiochar was improved compared to free laccase (p. 400, column 1, middle). Naghdi teaches the laccase was produced using Trametes versicolor (ATCC 20869) (p. 394, column 2, bottom; p. 395, column 1, top). Trametes versicolor is also known as Coriolus versicolor. Naghdi teaches a method for immobilizing laccase onto the nanobiochar by mixing acid-treated biochar with a supernatant of Trametes versicolor (ATCC 20869) (p. 395, column 1, top to bottom).
The differences between claims 1 and 9 and the reference of Naghdi are:
while Naghdi teaches pinewood as a biomass for producing biochar, Naghdi does not teach or suggest chestnut inner shell as biomass for producing biochar;
while Naghdi teaches functionalization of biochar using inorganic acids and teaches combining the acid-treated biochar and laccase in a citrate-phosphate buffer (p. 395, column 1, bottom), Naghdi does not teach or suggest functionalization of biochar using citric acid; and
Naghdi does not teach or suggest the laccase comprises copper ions.
Regarding difference 1), Zhou teaches the surface of the chestnut is covered with two shells, one of which wraps chestnut fruit, and another is covered with thorn. There are many discarded chestnut shells around the country (China), which can be harmful to people or animals in the field. Considering a large amount of waste, these two types of chestnut shells were used for biochar production (p. 148, column 1, top). Zhou teaches shell biochar (SBC) was produced from the inside shell covering the fruit, the effects of different types of biochar on the remediation and immobilisation of Cd and Pb are shown, and the work has demonstrated the remediation potential of chestnut shell biochar and provides clues for sustainable management of chestnut shell waste (p. 148, column 1, middle).
In view of the combined teachings of Naghdi and Zhou, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify Naghdi by substituting pinewood with chestnut inner shell as the biomass for biochar. One of ordinary skill would have expected success and could have modified Naghdi by substituting pinewood with chestnut inner shell because Naghdi taught biochar as a support to immobilize laccase produced by Trametes versicolor (ATCC 20869) and Zhou taught the use of waste chestnut shells and specifically chestnut inner shell as a biomass for production of biochar in order to manage chestnut shell waste.
Regarding difference 2), Lonappan teaches functionalizing biochar using organic acids including citric acid (p. 1, Abstract). Lonappan teaches citric acid was more efficient in terms of grafting COOH groups and citric acid functionalization increased total acidic functional groups for the biochar (p. 1, Abstract).
Cobas teaches treatment of chestnut shells with organic acids including citric acid (p. 166, Abstract; p. 167, column 1). Cobas teaches the citric acid treatment increased adsorption capacity around 85%, which is due to organic acids having carboxylic acids that are linked to the surface of the chestnut shells to increase the number of carboxylic groups (p. 167, column 1, bottom).
In view of the combined teachings of Naghdi, Lonappan, and Cobas, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify Naghdi by substituting the inorganic acids with citric acid for functionalization of biochar. One of ordinary skill would have expected success and could have modified Naghdi by substituting the inorganic acids with citric acid for functionalization of biochar Naghdi taught functionalizing biochar with COOH functional groups using inorganic acids, Lonappan taught functionalizing biochar using citric acid, which was more efficient in terms of grafting COOH groups and increased total acidic functional groups for the biochar, and Cobas taught treatment of chestnut shells with citric acid increased adsorption capacity by increasing the number of carboxylic groups.
Regarding difference 3), Naghdi teaches laccase immobilized onto the acid-treated biochar exhibited laccase activity (p. 397, column 2; p. 398, Table 2). Although Naghdi does not teach the laccase immobilized onto the acid-treated biochar comprises copper ions, however, evidentiary reference Zavarzina is cited to show that laccase is a copper-containing protein (p. 360, column 1, middle). As such, the laccase of Naghdi inherently comprises copper ions.
Therefore, the immobilized crude enzyme of claims 1 and 9 would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
RESPONSE TO REMARKS: Applicant argues that Nagdhi’s reason for treating biochar with inorganic acids is to functionalize the biochar with -COOH groups while the applicant’s reason for treating biochar with citric acid is to clean and unblock pores for physical loading, which had the effect of reducing negative charge. Applicant argues that given these differences, one of ordinary skill in the art would not have modified Naghdi to substitute inorganic acids with citric acid.
Applicant’s arguments are not found persuasive. According to MPEP 2144.IV, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. In accordance with MPEP 2144.IV, obviousness does not require that the prior art teach or suggest applicant’s reason for treating biochar with citric acid. As acknowledged by applicant, Nagdhi’s reason for treating biochar with inorganic acids is to functionalize the biochar with -COOH and the references of Lonappan and Cobas teach treatment of biochar and chestnut shell, respectively, with citric acid has the effect of adding -COOH functional groups. Contrary to applicant’s position, in view of the combined teachings of the cited prior art, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify Naghdi by substituting the inorganic acids with citric acid for functionalization of biochar.
Applicant further argues the specification demonstrates that the citric acid-modified chestnut inner shell biochar achieves a 36.87% remediation rate for PAH-contaminated soil within 10 days, significantly outperforming Rice husk biochar-supported crude enzyme, corn straw biochar- supported crude enzyme; and free crude enzyme liquid (paragraph [0078]; Fig. 10). According to applicant, this superior performance is attributed to the specific combination of citric acid-modified chestnut inner shell biochar with its unique pore structure and Zeta potential; and white-rot fungus crude enzyme solution containing copper ions. Applicant argues this effect could not be predicted from Naghdi and Zhou.
Applicant’s arguments and allegation of a superior result are not found persuasive. The claimed subject matter has not been compared with the closest prior art of Nagdhi as required by MPEP 716.02(e). Also, the alleged superior result is not commensurate in scope with the claimed invention as required by MPEP 716.02(d) because the claims do not require any particular pore structure and Zeta potential of the citric acid-modified chestnut inner shell biochar and while the claims recite “the crude enzyme of the white rot fungi…comprises copper ions,” the claims do not recite a white-rot fungus crude enzyme solution containing copper ions. In this case, applicant’s results are based on an immobilized crude enzyme prepared according to a specific process (e.g., substitute specification filed June 23, 2026 at paragraphs [0043]-[0045]) and while MPEP 716.02(d).I acknowledges that “[t]he nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof,” there is no evidence of record or line of reasoning presented by the applicant that the untested embodiments encompassed by the claims (i.e., an immobilized crude enzyme prepared by any process steps, e.g., chestnut inner shell biochar prepared according to any process) would behave in the same manner as the tested embodiments, particularly as the evidence of record strongly supports the treatment of biochar with citric acid at least under certain conditions results in the addition of -COOH functional groups to the biochar. As such, applicant’s results fail to rebut a prima facie case of obviousness.
For these reasons, it is the examiner’s position that the invention of claims 1 and 9 would have been obvious to one of ordinary skill in the art before the effective filing date.
Conclusion
Status of the claims:
Claims 1, 3, 9, 10, and 12-20 are pending in the application.
Claims 12-20 are withdrawn from consideration.
Claims 1, 3, 9, and 10 are rejected.
No claim is in condition for allowance.
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 DAVID J STEADMAN whose telephone number is (571)272-0942. The examiner can normally be reached Monday to Friday, 7:30 AM to 4:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MANJUNATH N. RAO can be reached at 571-272-0939. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/David Steadman/Primary Examiner, Art Unit 1656
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