DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The amendment filed January 22, 2026, has been received and entered.
Claims 1-43, 59, 62, and 63 are canceled. Claim 64 is new.
Claims 44-58, 60, 61, and 64 are pending. Claims 44-55 are withdrawn.
Claims 56-58, 60, 61, and 64 are examined on the merits.
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.
Claim 61 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. In particular, claim 61 fails to further limit the subject matter of claim 56 since claim 56 requires that the genetically modified photosynthetic microalgae has reduced expression and/or activity of PGR5 or of PGR5 and LHCA2 (lines 2-5), directed to the limitation of claim 61.
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.
Notice Re: Prior Art Available Under Both Pre-AIA and AIA
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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 56-58, 60, and 61 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (Journal of Integrative Plant Biology. 2016. 58: 943-946. Including Supporting Information. Previously cited) in view of Batyrova (International Journal of Molecular Sciences. 2017. 18: 647. 14 pages. Previously cited).
Chen discloses a mutant of Chlamydomonas reinhardtii strain CC440, named hpm91, that lacks Proton Gradient Regulation 5 (PGR5) and produces hydrogen (abstract; page 943, paragraph bridging left and right columns; ‘Strains and culture conditions’ and ‘Mutant generation and isolation’ sections of Supporting Information). The hpm91 mutant is directed to a ‘genetically modified photosynthetic microalgae’ that has ‘reduced expression and/or activity of PGR5,’ thus being directed to the genetically modified photosynthetic microalgae of instant claim 56. For hydrogen production, Chen discloses culturing the hpm91 mutant in a culture medium with illumination at 60 µmol m-2 s-1 (‘Detection of H2 and O2 production’ section of Supporting Information). This meets limitations of step (i) of instant claim 56 since it is directed to culturing genetically modified photosynthetic microalgae having reduced expression and/or activity of PGR5 in a culture medium that includes exposure to light. Additionally, Chen teaches that to measure the amount of hydrogen (H2) accumulated, gas was removed from the headspace of the culture (‘Detection of H2 and O2 production’ section of Supporting Information). This meets step (ii) of instant claim 56 since it is directed to collecting hydrogen produced by the genetically modified photosynthetic microalgae. As such, Chen teaches a process for bio-production of hydrogen meeting limitations of the claimed invention.
Chen differs from the claimed invention in that Chen does not expressly disclose that the culturing comprising culturing the genetically modified photosynthetic microalgae (the hpm91 mutant) in a complete medium under ambient air and exposure to a dark period followed by exposure to light, wherein the light is at an intensity enabling photosynthesis, and wherein the genetically modified photosynthetic microalgae produce at least 10 µmole H2 per mg chlorophyll of said microalgae per hour for at least 5 days. Instead, Chen discloses culturing the hpm91 mutant in a sulfate-free medium under 60 µmol m-2 s-1 illumination (‘Detection of H2 and O2 production’ section of Supporting Information).
Batyrova discloses hydrogen production by a genetically modified strain of Chlamydomonas reinhardtii (abstract). Various conditions were tested for cell growth of the mutant strain and its parental wild-type, including culturing the algae on tris-acetate-phosphate (TAP) medium to provide photoheterotrophic conditions (page 2, last paragraph). TAP medium is directed to ‘complete medium’ as claimed (see page 16, line 22 of the instant specification). Batyrova discloses that liquid cultures of the C. reinhardtii mutant and the parental wild-type in the TAP medium were incubated in sealed vials under an air atmosphere at the start of the experiment (page 12, first paragraph). After an initial dark period (14 hours), cultures were exposed to continuous white light for 10 hours, followed again with the periods of dark (14 hours) and light (10 hours) (page 12, first paragraph). Two light intensities, 48 µmol m-2 s-1 and 240 µmol m-2 s-1, were used (page 12, first paragraph). Also, photosynthetic yields were analyzed during the light/dark regime (page 12, second paragraph). See Table 1 on page 10, which shows photosynthesis rates for both the mutant and the wild-type strains at both light intensities. Therefore, the light is at an intensity enabling photosynthesis. As such, Batyrova discloses culturing C. reinhardtii in a complete medium (TAP medium) under ambient air and exposure to a dark period (dark period under an air atmosphere) followed by exposure to light, wherein the light is at an intensity enabling photosynthesis, thereby meeting the culture conditions of step (i) of instant claim 56.
The gas phase in the vials during the light period was analyzed (page 12, first paragraph). Figure 3A shows that hydrogen was produced for the parental wild-type strain under the photoheterotrophic conditions on TAP medium under a light/dark regime at the two tested light intensities (legend of Figure 3A on page 8; see data for the parental wild-type strain at 40 hours and above).
In their discussion of the study, Batyrova points out that in the absence of an essential macro and micronutrient such as sulfur, cell division is arrested and cultures stop growing (page 10, second paragraph). In the case of sulfur deprivation, when washed free of sulfur, cultures stop growing within the first 5-20 hours after transition into S-deprived medium (page 10, second paragraph). The disadvantages with nutrient deprivation suggest that it will be difficult to develop a practical process for H2 production in green algae using a nutrient depletion method (page 10, third paragraph).
Before the effective filing date of the claimed invention, it would have been obvious to the person of ordinary skill in the art to substitute the culture conditions of the method of Chen with the photoheterotrophic conditions of Batyrova, specifically culturing the hpm91 mutant on TAP medium under an air atmosphere in the light/dark regime according to Batyrova (directed to culturing in a complete medium under ambient air and exposure to a dark period followed by exposure to light, wherein the light is at an intensity enabling photosynthesis) for the predictable result of producing hydrogen. It would have been an obvious matter of simple substitution of known culture conditions for hydrogen production by C. reinhardtii with other known culture conditions for the same. Moreover, one of ordinary skill in the art would have been motivated to make the substitution because the deprivation of nutrients such as sulfur has disadvantages such as arresting cell division and stopping culture growth, as pointed out by Batyrova. There would have been a reasonable expectation of producing hydrogen by this modification of Chen because hydrogen was produced by mutant and wild-type strains of C. reinhardtii using Batyrova’s culture conditions, and because Chen discloses that their hpm91 mutant grows under normal conditions and in TAP medium (page 943, right column, first paragraph; Figure S1A; ‘Strains and cultivation conditions’ and ‘Determination and H2 and O2 production’ sections of Supporting Information).
Regarding the hydrogen production by the genetically modified photosynthetic microalgae (the hpm91 mutant of Chen), Table S1 of Chen shows H2 yields by the hpm91 mutant for a duration of 336 hours (i.e., 14 days), ranging from 5.9 to 25.3 µmol H2/µg chlorophyll. These convert to 18 to 75 µmole H2 per mg chlorophyll per hour. See the calculations below:
5.9
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25.3
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Also, Table S1 of Chen discloses H2 yields by the hpm91 mutant for a duration time of 600 hours (i.e., 25 days), ranging from 8.1 to 37.6 µmol H2/µg chlorophyll. According to the calculations below, these convert to a production of 14 to 63 µmole H2 per mg chlorophyll per hour:
8.1
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37.6
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Each of the H2 yields calculated above fall in the claimed range of ‘at least 10 µmole H2 per mg chlorophyll of said microalgae per hour.’
For the method rendered obvious by Chen in view of Batyrova, the skilled artisan would have expected similar H2 yields. The difference between the durations of 336 hours (i.e., 14 days) and 600 hours (i.e., 25 days) is 11 days. Therefore, for 11 days (between 14 days and 25 days in duration), the hpm91 mutant of the method rendered obvious by Chen in view of Batyrova produces similar H2 yields as disclosed in Chen which fall within the claimed range of ‘at least 10 µmole H2 per mg chlorophyll of said microalgae per hour.’ A period of 11 days falls within the claimed range of ‘at least 5 days.’
Therefore, Chen in view of Batyrova renders obvious instant claims 56, 60, and 61 (reduced expression and/or activity of PGR5).
Regarding instant claim 57, Chen in view of Batyrova differs from the claimed invention in that they do not expressly disclose that the dark period is from about 1 hour to about 10 hours (the term “about” is defined on page 13, line 3 of the instant specification). Instead, Batyrova discloses that the dark period is 14 hours long (page 12, first paragraph). However, Batyrova discloses that their 10-h:14-h light:dark cycle was used to more closely mimic natural conditions (page 6, first paragraph). It is well known that the length of a dark period in a day depends on the season, with summer having the shortest dark periods. Given the changing dark periods according to season, it would have been an obvious matter of routine experimentation to vary the length of the dark period used for culturing the C. reinhardtii, including to a length of time falling in the range of from about 1 hour to about 10 hours (e.g., 8 hours), in order to mimic natural conditions. Therefore, instant claim 57 is rendered obvious.
Regarding instant claim 58, Chen in view of Batyrova renders obvious using a light intensity of 48 µmol m-2 s-1 and 240 µmol m-2 s-1 (page 12, first paragraph of Batyrova), i.e., 48 µE m-2 s-1 and 240 µE m-2 s-1. The light intensity in terms of the units of µE (as claimed), depends on the area over which the light illuminates and the time period of illumination. Batyrova discloses light at 10 hours (page 12, first paragraph), i.e., 36,000 seconds, but does not disclose the area that is illuminated. It would have been a matter of routine experimentation to vary the area of the culture that is exposed to the light, and it would have been obvious that the area is very low in terms of units of m2. Therefore, it would have been obvious that the light intensity converts to a light intensity falling in the claimed range of from about 50 µE to about 600 µE for continuous light (which the light for 10 hours is directed to). Alternatively, it would have been a matter of routine optimization to vary to the light intensity, including to the claimed range, for the purpose of producing hydrogen, since the light intensity would have been expected to affect the processes performed by the algae, including hydrogen production. As such, instant claim 58 is rendered obvious.
Claim 64 is rejected under 35 U.S.C. 103 as being unpatentable over Chen and Batyrova as applied to claims 56-58, 60, and 61 above, and further in view of Merchant (Science. 2007. 318: 245-251) and Result 1 of SEQ ID NO: 3 search (UniProt database search performed 3/30/26).
As discussed above, Chen in view of Batyrova renders obvious claims 56-58, 60, and 61. The method rendered obvious by the references is the embodiment in which the genetically modified photosynthetic microalgae is microalgae having reduced expression and/or activity of PGR5. For that embodiment, the references differ from claim 64 in that they do not expressly disclose that the PGR5 of the hpm91 mutant (directed to the claimed ‘genetically modified photosynthetic microalgae’) comprises an amino acid sequence having at least 65% identity to the amino acid sequence set forth in SEQ ID NO: 3.
Merchant discloses the nuclear genome of Chlamydomonas (abstract), and Merchant discusses Chlamydomonas reinhardtii (abstract; page 245, first paragraph). From a sequence search in the publicly available UNIPROT database, an amino acid sequence of a protein of Chlamydomonas reinhardtii strain CC-503 disclosed by Merchant has 100.0% match with the amino acid sequence of SEQ ID NO: 3 of instant claim 64. The protein is referred to as proton gradient regulation 5. See ‘Result 1 of SEQ ID NO: 3 search,’ showing the sequence integrated into UniProtKB/TrEMBL on December 4, 2007, as disclosed by Merchant, particularly the followings lines: DT, OS, RC, RT, RL, and DR.
Before the effective filing date of the claimed invention, it would have been obvious to the person of ordinary skill in the art that the PGR5 that is absent in the hpm91 strain comprises an amino acid sequence having at least 65% identity to the claimed amino acid sequence set forth in SEQ ID NO: 3 (e.g., 100% identity to the claimed SEQ ID NO: 3), for the method rendered obvious by Chen in view of Batyrova. One of ordinary skill in the art would have expected this because PGR5 of Chlamydomonas reinhardtii strain CC-503 has the sequence of SEQ ID NO: 3 (100% identity) suggesting the amino acid sequence of PGR5 in other Chlamydomonas reinhardtii strains, particularly since Merchant generalizes their genome determination to Chlamydomonas in general (abstract). Moreover, since the hpm91 strain of Chen lacks PGR5, then it lacks any amino acid sequence of a PGR5, including the claimed amino acid sequence having at least 65% identity to the amino acid sequence set forth in SEQ ID NO: 3 as recited in instant claim 64. A genetically modified photosynthetic microalgae (in this case, the hpm91 strain of Chen) lacking PGR5 is directed to microalgae having reducing expression and/or activity of PGR5, as set forth above. Therefore, instant claim 64 is rendered obvious.
Response to Arguments
Applicant’s arguments, filed January 22, 2026, with respect to the objection to the specification, the objection to claims 56-63, and the rejections under 35 U.S.C. 112(b) of claims 61 and 62, have been fully considered and are persuasive. In particular, the amendment to the specification filed January 22, 2026, addresses the objection to the specification. The claim objections have been overcome by the amendments to claims 56 and 58, and rendered moot by the canceling of claim 59. The rejections under 35 U.S.C. 112(b) have been overcome by the amendment to claim 61 and rendered moot by the canceling of claim 62. Thus, these objections and rejections have been withdrawn.
However, Applicant’s arguments are unpersuasive with respect to the rejection under 35 U.S.C. 112(d) of claim 61, and the rejection under 35 U.S.C. 103 over Chen in view of Batyrova (which has been modified as necessitated by the amendments to the claims).
With respect to the rejection under 35 U.S.C. 112(d) of claim 61, Applicant requests withdrawal of the rejection by referring to the amendment of claim 61 to recite “the genetically modified photosynthetic microalgae have.” However, the amendment does not overcome the rejection. The limitation of claim 61 repeats the following limitation at lines 2-5 of claim 56, though with different wording: “genetically modified photosynthetic microalgae selected from the group consisting of microalgae having reduced expression and/or activity of Proton Gradient Regulation 5 (PGR5) and microalgae having reduced expression and/or activity of PGR5 and Light Harvesting Complex 2 (LHCA2).” Since claim 56 requires selecting the microalgae from these two embodiments, then the genetically photosynthetic microalgae of claim 56 have a reduced expression and/or activity of PGR5 or of PGR5 and LHCA2 (i.e., the limitation of claim 61). As such, claim 61 fails to further limit the subject matter of claim 56 – there is no additional limitation in claim 61 other than the subject matter of claim 56.
Regarding the rejection under 35 U.S.C. 103 over Chen in view of Batyrova, Applicant argues that Chen and Batyrova fail to teach or suggest the claimed method as recited in independent claim 56, and one of ordinary skill in the art would not be motivated to combine the teachings of Chen and Batyrova with an expectation of success at least because the claimed method is directed to a method that is a cost-effective commercial production of hydrogen. To emphasize that argued feature, Applicant points out that claim 56 has been amended to recite “the genetically modified photosynthetic microalgae produce at least 10 µmole H2 per mg chlorophyll of said microalgae for at least 5 days.” However, as discussed above, in the modified grounds of rejection, Chen teaches that their hpm91 mutant reaches that level of hydrogen production based on Table S1. See the calculations set forth in the rejection. In modifying Chen based on Batyrova, at least that similar level of hydrogen production would have been expected for the method rendered obvious by Chen in view of Batyrova, thereby rendering obvious the limitation added to claim 56.
Applicant submits two major challenges that limit efficient biological H2 production (page 10, last paragraph of Remarks). Applicant asserts that, to overcome hydrogenase inactivation by oxygen (one of the major challenges cited by Applicant), Chen uses nutrient deprivation (sulfate-free medium) to suppress photosynthetic oxygen evolution. Then, Applicant asserts that hydrogen production is demonstrated only under this condition. However, it does not appear that Chen teaches this. Applicant has not cited any portion of Chen that supports the assertions regarding Chen. The only instance Chen mentions a sulfate-free medium is in the ‘Detection of H2 and O2 production’ section of the Supporting Information, without any indication that Chen relies on the use of a sulfate-free medium or nutrient deprivation for suppressing photosynthetic oxygen evolution or as a requirement for hydrogen production.
Regarding Batyrova, Applicant asserts that Batyrova discloses using C. reinhardtii cy6Nac2.49 mutant for the purpose of suppressing photosynthetic oxygen evolution. Applicant argues that C. reinhardtii cy6Nac2.49 is a genetically modified algal strain that activates photosynthesis in a cyclical manner, so that photosynthesis is not active constitutively in the presence of oxygen but is turned on only in response to a metabolic trigger (anaerobiosis) (the Examiner notes that this specific teaching is in the abstract of Batyrova). In view of these arguments regarding Chen and Batyrova, Applicant concludes that nothing in Chen and Batyrova, each independently or in combination, would have led one of ordinary skill in the art to arrive at the claimed method, namely that an asserted very different mutant of C. reinhardtii, the PGR5 mutant, can produce H2 when grown in a complete medium. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., specific mutant of C. reinhardtii) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The claims more broadly recite a genetically modified photosynthetic microalgae selected from the group consisting of microalgae having reduced expression and/or activity of PGR5 and microalgae having reduced expression and/or activity of PGR5 and LHCA2, without an recitation of limitations that distinguish the claimed microalgae from the hpm91 mutant of Chen (the primary reference). The rejection recognizes that Chen does not disclose culturing their genetically modified photosynthetic microalgae (the hpm91 mutant) in a complete medium. However, as explained on page 8, last paragraph through page 9, first paragraph of the last Office Action, which is repeated in the modified rejection, it would have been obvious to substitute the culture conditions of Chen, including culture medium, with those of Batyrova which discloses a complete medium. As pointed out in the rejection, there would have been a reasonable expectation of producing hydrogen by substituting the culture conditions of Chen with those of Batyrova because hydrogen was produced by mutant and wild-type strains of C. reinhardtii using Batyrova’s culture conditions, and because Chen discloses that their hpm91 mutant grows under normal conditions and in TAP medium (page 943, right column, first paragraph; Figure S1A; ‘Strains and cultivation conditions’ and ‘Determination and H2 and O2 production’ sections of Supporting Information).
Applicant further asserts that at most, one of ordinary skill in the art would use the mutant strain of Batyrova in the method taught by Chen. However, Applicant does not provide reasoning for this assertion.
Additionally, Applicant points out that in contrast with independent claim 56, Batyrova discloses a process that repeats a 10-h:14-h light/dark regime (page 6, Section 2.2, lines 1-2 and FIG. 3), and measurable hydrogen production starts only after the second dark period, i.e. after 40 hours (FIG. 3A). However, claim 56 recites “the process comprising...” (lines 1-2) then sets forth step (i) of culturing the microalgae in a complete medium under the claimed culture conditions. As set forth in MPEP 2111.03(I), “The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps.” Since claim 56 recites a process “comprising” steps (i) and (ii), then claim 56 does not exclude additional, unrecited method steps such as culturing under additional dark and light periods (as in Batyrova). That is, claim 56 does not foreclose the repetition of a light/dark regime disclosed in Batyrova. Therefore, the Examiner maintains that in substituting the culture conditions of Chen with the culture conditions of Batyrova, then the claimed method is rendered obvious.
Further still, Applicant argues that the steps disclosed by Batyrova (repetition of light/dark regime) alone render the mutant and conditions described in Batyrova to not be a cost effective commercial production of hydrogen. However, Applicant has not explained how the steps of Batyrova are not cost effective or unsuitable for commercial production of hydrogen. Applicant cites a passage on page 11, second paragraph of Batyrova (“Despite the lower levels of H2 production…”) for supporting their argument that Batyrova leads one of ordinary skill in the art to further explore the cy6Nac2.49 strain and would not arrive at the claimed method with an expectation of success. However, given that Batyrova obtained hydrogen production with their nutrient-replete conditions under a light/dark regime for a strain of C. reinhardtii, it would have been obvious to the skilled artisan that they are suitable culture conditions for other strains of C. reinhardtii for the predictable result of producing hydrogen (as set forth in rejection, substitute the culture conditions of Chen with those of Batyrova).
Applicant asserts that Batyrova describes that under higher light intensity (50 W/m2), more than 10% oxygen is produced. It is unclear where this is taught in the reference. Figure 3A shows data points for 50 W/m2 which fall below 10% oxygen. Then, Applicant asserts that while one of ordinary skill in the art would understand that such percentage of oxygen within a photobioreactor containing hydrogen may cause a hazardous explosion, which is highly undesirable outcome in commercial production of hydrogen, Batyrova discloses that 50 W/m2 light intensity significantly reduced the photosynthetic yield (Applicant cites FIG. 3B-C), i.e., the growth of the microalgae. Therefore, Applicant concludes that based on the teachings of Batyrova, one of ordinary skill in the art would not be motivated to combine Chen with Batyrova let alone have an expectation of success in arriving at the claimed method. However, Batyrova also discloses using a lower light intensity of 10 W/m2 (FIG. 3 and Section 4.2 on page 12), and the basis of the rejection does not require that 50 W/m2 is used.
Furthermore, Applicant submits to the contrary of the combined teachings of Chen and Batyrova and unexpectedly, the claimed method shows efficient use of PGR5 mutant under commercially applicable conditions of ambient air and complete medium. However, the hpm91 mutant of Chen is directed to a PGR5 mutant, and Applicant has not provided evidence for demonstrating unexpected results. Furthermore, it is unclear what is meant by “commercially applicable,” and it is unclear what is meant by efficient use of a PGR5 mutant. Applicant further asserts that the claimed process is also performed under high light intensity (50-600 µE, asserted to be above the workable 10 W/m2 of Batyrova), thus enabling photosynthetic growth of the microalgae which would not have been envisaged from combining Chen and Batyrova. However, only claim 58 recites a light intensity of about 50 µE to about 600 µE, and it is unclear how that claimed intensity is above 10 W/m2 taught by Batyrova. Applicant has not provided a calculation showing converting units of W/m2 to units of µE. Batyrova teaches that 10 W/m2 is equivalent to 48 µmol m-2s-1 (page 12, first paragraph), and it is known in the art that units of µmol m-2s-1 are equivalent to units of µE m-2s-1. Therefore, it does not appear that W/m2 units convert to µE units.
Furthermore, Applicant submits that one of ordinary skill in the art would not have a reasonable expectation of success that the methods taught in Batyrova, which includes a different genetically modified photosynthetic microalgae, would show an efficient production of hydrogen under the currently claimed method steps, namely, ambient air and complete medium. However, as discussed above, there would have been a reasonable expectation of producing hydrogen by substituting the culture conditions of Chen with those of Batyrova (which use TAP medium directed to a complete medium and performed under an air atmosphere, as taught on page 12, first paragraph) because hydrogen was produced by mutant and wild-type strains of C. reinhardtii using Batyrova’s culture conditions, and because Chen discloses that their hpm91 mutant grows under normal conditions and in TAP medium (page 943, right column, first paragraph; Figure S1A; ‘Strains and cultivation conditions’ and ‘Determination and H2 and O2 production’ sections of Supporting Information). Also, it is unclear what is meant by “efficient production of hydrogen.” It is unclear whether it is referring to production of at least 10 µmole H2 per mg chlorophyll of the microalgae per hour for at least 5 days as recited in claim 56.
Conclusion
No claims are allowed.
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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Sef
/SUSAN E. FERNANDEZ/ Examiner, Art Unit 1651
/DAVID W BERKE-SCHLESSEL/ Primary Examiner, Art Unit 1651
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