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 1-20 are pending in the application.
Applicant’s preliminary amendment to the claims, filed March 26, 2026, is acknowledged. This listing of the claims replaces all prior versions and listings of the claims.
Restriction/Election
Applicant’s election without traverse of Group I, claims 1-11, drawn to an immobilized crude enzyme for degrading polycyclic aromatic hydrocarbons, in the reply filed March 26, 2026 is acknowledged.
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Priority
This application claims foreign priority under 35 U.S.C. 119(a-d) to Chinese application 202210776864.7, filed July 3, 2022.
A certified copy of the foreign priority document has been received in this application on August 11, 2023. Should applicant desire to obtain the benefit of the filing date of the foreign priority application, a certified English translation of the application must be submitted. Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Specification/Informalities
The use of the term “Tween,” which is a trade name or a mark used in commerce, has been noted in this application, e.g., p. 2, paragraph [0008]. All instances of the term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term. Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The specification is confusing in referencing “Specific Example VIII of the present disclosure” (p. 8, paragraph [0061]) because there is no apparent disclosure of an Example VIII in the specification. Appropriate clarification and/or correction is required.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-11 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.
Claims 1-11 are 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 2-11 because it is unclear as to whether 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 from…” (emphasis added), it is unclear as to whether the recited solution characteristics (e.g., “copper ions in the crude enzyme solution of the white rot fungi” in claim 1) 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 the claims are drawn to an immobilized crude enzyme or a solution of an immobilized crude enzyme and if the claims are 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.
Claims 3 (claims 5, 7, and 10 dependent therefrom), 4 (claims 6, 8, and 11 dependent therefrom), 10, and 11 recite the trademark/trade name “Tween.” Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b). See MPEP 217.05(u). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a polysorbate composition and, accordingly, the identification/description is indefinite.
Claims 7 and 8 are indefinite in the recitation of “natural pH value.” The examiner has reviewed the specification and can find no examples or teachings that can be used for ascertaining the scope of pH value(s) that is/are considered to be “natural.” Moreover, there is nothing in the specification or prior art of record to indicate that one of skill in the art could have ascertained the scope of pH value(s) that is/are considered to be “natural.” It is suggested that applicant clarify the scope of the claims by reciting a particular pH value or a particular range of pH values.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhao et al. (Environmental Technology 45:2034-2044, January 2023; cited on the attached Form PTO-892; hereafter “Zhao”).
The claims are drawn to an immobilized crude enzyme for degrading complex polycyclic aromatic hydrocarbons (PAHs) in soil, wherein a solution of the immobilized crude enzyme is prepared from an acid-modified chestnut inner shell and a crude enzyme solution of white rot fungi; and there are copper ions in the crude enzyme solution of the white rot fungi.
For reasons stated above, other than an “immobilized crude enzyme,” it is entirely unclear as to the required characteristic(s) of the “immobilized crude enzyme” of claims 1-11. In the interest of compact prosecution and giving the claims their broadest reasonable interpretation, claims 1-11 are interpreted as requiring a crude enzyme of white rot fungi immobilized onto an acid-modified chestnut inner shell. The recited crude enzyme solution characteristics and methods for producing the recited crude enzyme solution in claims 1-11 are interpreted as product-by-process limitations that are not required characteristic(s) of the claimed immobilized crude enzyme.
Regarding claims 1-4 and 7-11, Zhao teaches immobilization of white-rot fungal crude enzyme onto an acid-modified chestnut inner shell biochar to remediate polycyclic aromatic hydrocarbons contaminated soils (p. 2034, title and abstract). Zhao teaches the white-rot fungus is Trametes versicolor (p. 2034, column 1, bottom). Trametes versicolor is also known as Coriolus versicolor.
Regarding claims 5 and 6, Zhao teaches the crude enzyme has laccase activity of 10 U/mL (p. 2036, column 1, middle).
Therefore, Zhao anticipates claims 1-11 as written.
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.
Claims 1-4 and 7-11 are rejected 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 the attached Form PTO-892; hereafter “Naghdi”) in view of Zhou et al. (Crop and Pasture Science 74:147-156, March 2022; cited on the attached Form PTO-892; hereafter “Zhou”).
The claims are drawn to an immobilized crude enzyme for degrading complex polycyclic aromatic hydrocarbons (PAHs) in soil, wherein a solution of the immobilized crude enzyme is prepared from an acid-modified chestnut inner shell and a crude enzyme solution of white rot fungi; and there are copper ions in the crude enzyme solution of the white rot fungi.
For reasons stated above, other than an “immobilized crude enzyme,” it is entirely unclear as to the required characteristic(s) of the “immobilized crude enzyme” of claims 1-4 and 7-11. In the interest of compact prosecution and giving the claims their broadest reasonable interpretation, claims 1-4 and 7-11 are interpreted as requiring a crude enzyme of white rot fungi immobilized onto an acid-modified chestnut inner shell. The recited crude enzyme solution characteristics and methods for producing the recited crude enzyme solution in claims 1-4 and 7-11 are interpreted as product-by-process limitations that are not required characteristic(s) of the claimed immobilized crude enzyme.
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 1-4 and 7-11, 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 immobilization of laccase has been studied (p. 393, Abstract; ). 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 difference between claims 1-4 and 7-11 and Naghdi is that Naghdi does not teach or suggest acid-modified chestnut inner shell.
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. Therefore, the immobilized crude enzyme of claims 1-4 and 7-11 would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Claims 5 and 6 are rejected 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 the attached Form PTO-892; hereafter “Chen”).
Claims 5 and 6 are drawn to the immobilized crude enzyme for degrading complex PAHs in soil according to claims 3 and 4, respectively, wherein the crude enzyme solution of the white rot fungi shows a laccase activity of 10 U/mL.
The relevant teachings of Naghdi and Zhou as applied to claims 1-4 and 7-11 are set forth above.
The combination of Naghdi and Zhou does not teach or suggest the laccase produced using Trametes versicolor has laccase activity of 10 U/mL.
Chen teaches Trametes versicolor 1017 produces two laccase isoenzymes with a total activity of 10 U/mL (p. 471, Abstract; p. 476, column 1).
In view of the combined teachings of Naghdi, Zhou, and Chen, it would have been obvious to one of ordinary skill in the art before the effective filing date to further modify Naghdi by substituting laccase produced by Trametes versicolor (ATCC 20869) with laccase produced by Trametes versicolor 1017. One of ordinary skill would have been motivated and would have expected success to modify Naghdi by substituting laccase produced by Trametes versicolor (ATCC 20869) with laccase produced by Trametes versicolor 1017 because Naghdi taught the laccase produced by Trametes versicolor (ATCC 20869) has 0.5 U/mL or 1.2 U/mL (Figures 4 and 5, respectively) while Chen taught the laccase produced by Trametes versicolor 1017 has laccase activity of 10 U/mL. Therefore, the immobilized crude enzyme of claims 5 and 6 would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Amato et al., “Valorization of Agroindustrial Waste from Chestnut Production,” Chemical Engineering Transactions 87:445-450, 2021,
Cobas et al., “Chestnut shells to mitigate pesticide contamination,” J. Taiwan Institute Chem. Eng. 61:166-17, 2016, and
Pandey et al., “Biochar: Production, properties and emerging role as a support for enzyme immobilization,” J. Cleaner Production 255:120267, 2020, 9 pages.
Conclusion
Status of the claims:
Claims 1-20 are pending in the application.
Claims 12-20 are withdrawn from consideration.
Claims 1-11 are rejected.
No claim is in condition for allowance.
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/David Steadman/Primary Examiner, Art Unit 1656
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