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/US21/63725, filed December 16,
2021, with provisional application 63/126153, filed December 16, 2020. Claims 1-20 are pending.
Election/Restrictions
Applicant’s election without traverse of Group I and species: PVDC and acetic acid in the reply filed on December 2, 2025 is acknowledged. Claims 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 2, 2025. Currently claims 1-15 are under examination.
Claim Objections
Claims 2, 5, 10 and 12 are objected to because of the following informalities:
Claim 2 is convoluted and may be amended to: The method of claim 1, wherein the reacting is further in the presence of a radical initiator.
Claim 5 is missing a comma after “polyolefin” and before “or any combination thereof” in line 3.
Claim 10 recites “…the bacterium is of the strain Pseudomonas” needs to be changed to “the bacterium is a Pseudomonas strain” to correct convoluted claim language.
Claim 12 recites “wherein the bacterium has the genes pcal and pcaJ deleted”. pcal and pcaJ genes should be italicized for proper scientific annotation.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a method comprising reacting a plastic comprising: polystyrene, polyethylene, polyethylene terephthalate (PET), acrylonitrile butadiene styrene (ABS), poly(vinylidene chloride) (PVDC), a polyolefin, in the presence of a Co/Mn/NHPI/O2 system and solvent comprising acetic acid, ethyl acetate, benzene, water, or acetonitrile, into intermediate products which are then converted by a metabolically engineered Pseudomonas putida KT2440 strain expressing specific recombinant genes that render it capable of catabolizing terephthalate (TPA), glycolate, or adipate, thereby generating a product, does not reasonably provide enablement for a method comprising reacting any type of plastic in the presence of any kind of catalyst and solvent thereby generating any kind of intermediate that is catabolized with any kind of non-naturally occurring bacterium, thereby generating a product. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
The breadth of the claims:
Claims 1-15 are drawn to a method comprising reacting a plastic in the presence of a catalyst and solvent, thereby generating an intermediate, then catabolizing said intermediate with a non-naturally occurring bacterium, thereby generating a product. The breadth of the claims encompasses any type of plastic, catalyst, intermediate, and bacterium. The Specification discloses the plastic includes polymers and resins, and may comprise polystyrene, polyethylene, polyethylene terephthalate (PET), acrylonitrile butadiene styrene (ABS), poly(vinylidene chloride) (PVDC), a polyolefin or any combination thereof [0007]. The specification discloses the catalyst may comprise a transition metal, for example, Co, Mn, or a combination thereof and discloses the radical initiator may comprise NHPI [0006]. The specification discloses the intermediate may comprise carboxylic acids or dicarboxylic acids having a number of carbon atoms selected from the range of 7 to 15, more specifically chlorocarboxylic acid [0008]. The solvent may comprise acetic acid, ethyl acetate, benzene, water, acetonitrile, or a combination thereof [0009]. The specification discloses the non-naturally occurring bacterium may be a genetically engineered Pseudomonas putida strain, that can catabolize three major catalysis products (TPA, glycolate, and adipate) into PHA products [0030]. The specification discloses the final products generated may comprise polymer precursors, such as polyhydroxyalkanoates (PHAs) or β-ketoadipate [0010].
The nature of the invention:
The nature of the invention relies upon chemical reactions and biological catabolism by a non-naturally occurring bacterium, which are known in the art to be highly sensitive to molecular structure, reaction conditions, and organism-specific metabolic pathways.
The state of the prior art:
Whether the specification would have been enabling as of the filing date involves consideration of the nature of the invention, the state of the prior art, and the level of skill in the art. The state of the prior art is what one skilled in the art would have known, at the time the application was filed, about the subject matter to which the claimed invention pertains. The relative skill of those in the art refers to the skill of those in the art in relation to the subject matter to which the claimed invention pertains at the time the application was filed. See MPEP § 2164.05(b). The state of the prior art provides evidence for the degree of predictability in the art and is related to the amount of direction or guidance needed in the specification as filed to meet the enablement requirement. The state of the prior art is also related to the need for working examples in the specification.
A thorough review of the patent and non-patent literature indicates that the state of the art demonstrating that non-naturally occurring bacteria generally possess the ability to catabolize intermediates generated from diverse plastics using diverse catalysts and solvents are variable and unpredictable. Rather, the prior art demonstrates that such catabolic activity is highly specific to particular polymer types, intermediates, and engineered metabolic pathways. As summarized by Heris (Bulletin of the National Research Centre (2024) 48:87, pgs. 1-9), the process of bacterial biodegradation of synthetic plastics has several drawbacks, such as most synthetic plastics are resistant to the biodegradation process and developing a biochemical foundation for mechanisms of synthetic plastic biodegradation still has a long way to go (pg. 6, col. 2, para 3).
Furthermore, Zimmerman (Chem. Sci., 2025, 16, 6573–6582) discloses plastic waste often contains several types of synthetic polymers in complex mixtures, additives and contaminants complicating their potential for recycling (pg. 6573, col. 2, para 4). Zimmerman discloses that although a large number of publications have reported biodegrading effects of microorganisms on polyolefins, only limited information is available on potential enzymes involved (pg. 6575, col. 1, para 1). Results on enzymatic plastic-degrading activities obtained from different studies are often difficult to compare, citing poorly characterized plastic samples as substrates, the presence of additives, and overestimation of enzymatic activity due to improper analyses, complicates the interpretation and comparison of results (pg. 6577, col. 1, para 2).
Thus a review of the prior art does not find predictability among engineered bacteria and their ability to degrade any type of plastic or plastic intermediate from the full scope of the claimed method.
The level of one of ordinary skill and predictability in the art:
While the level of one of ordinary skill practicing said invention would be high, the level of predictability is considered variable as evident in the prior art discussed above and is not considered to provide sufficient enablement to practice the claimed invention. Because the state of the prior art does not provide evidence of the degree of predictability that methods for degrading any type of plastic using any type of catalyst and solvent and any type of non-naturally occurring bacterium to catabolize an intermediate into a final product, one of ordinary skill in the art would look for guidance or direction in the instant specification.
“The “predictability or lack thereof” in the art refers to the ability of one skilled in the art to extrapolate the disclosed or known results to the claimed invention. If one skilled in the art can readily anticipate the effect of a change within the subject matter to which the claimed invention pertains, then there is predictability in the art. On the other hand, if one skilled in the art cannot readily anticipate the effect of a change within the subject matter to which that claimed invention pertains, then there is lack of predictability in the art. Accordingly, what is known in the art provides evidence as to the question of predictability.” (MPEP 2164.03). In the instant case, the various engineered bacteria and type of plastic that fall within the scope of the claimed method, would require different methodologies, and thus would not be predictable to react any type of plastic in the presence of any type of catalyst and solvent, and utilizing a non-naturally occurring bacterium to catabolize the intermediate into a final product.
The amount of direction provided by the inventor and existence of working examples:
The instant application describes a hybrid process using mixed, post-consumer plastics that are thermocatalytically depolymerized into a mixture of compounds that are then biologically converted in a single valuable product. The thermocatalytic pretreatment is a Co/Mn/NHPI/O2 system that can cleave the C-C bonds of polystyrene and polyethylene substrates to generate small molecule organic acids, and also suggests O2 as a likely limiting factor in this system [0028]. The specification also describes the use of strain Pseudomonas putida KT2440 to catabolize all of the major products, and the engineered P. putida is designed to catabolize three major catalysis products TPA, glycolate, and adipate [0030]. The specification then describes the specific integrated genes for robust catabolism of each of mentioned products [0030]. The specification also describes PVDC containing plastics while avoiding dichlorination and crosslinking, by utilizing oxygen, a radical initiator, and transition metal catalysts (Co or Mn) with acetic acid as a solvent.
The working embodiments do not describe any other type of mixed plastics, nor any other type of non-naturally occurring bacterium. While the MPEP 2164.02 states the specification need not contain an example if the invention is otherwise disclosed in such manner that one skilled in the art will be able to practice it without an undue amount of experimentation.
The quantity of experimentation needed to make or use the invention based on the content of the disclosure:
The prior art is undeveloped for the role of reacting any type of plastic with any type of catalyst and solvent, and utilizing any type of non-naturally occurring bacterium that catabolizes the intermediate, thereby generating a product, and given the broad scope of the claims and different plastics/engineered bacteria encompassed, it is unpredictable. The specification does not provide sufficient guidance of the full scope of all plastic types or non-naturally occurring bacteria, and the prior art also does not provide additional guidance to enable the full scope of the claims.
Therefore, due to the unpredictability in the art with respect to reacting any type of plastic with any catalyst and solvent and utilizing a non-naturally occurring bacterium that catabolizes the intermediate of the full scope of the products, reactions, and species which would be considered methods in degrading plastics, one would have to engage in experimentation that is not reasonable in order to determine which of the various conditions could be utilized to perform the claimed method.
Without further guidance, one of skill in the art would have to practice a substantial amount of trial-and-error experimentation, an amount considered undue and not routine, to practice the instantly claimed invention.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 14-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 14 recites the limitation "the one or more intermediate products" in line 7. There is insufficient antecedent basis for this limitation in the claim. Claim 15 is likewise rejected as being dependent on an indefinite claim.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 5-6, and 9-13 are rejected under 35 U.S.C. 102(a)(1)(a)(2) as being anticipated by Beckham et al. (WO2019/222396A1, hereinafter “Beckham”, cited in IDS filed 9/11/2023).
The applied reference has a common applicant with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Beckham teaches engineered microorganisms for the deconstruction of polymers, specifically a P. putida KT2440 expressing PETase and MHETase enzymes that selectively degrade PET into monomers (title, abstract). Beckham teaches a biological strategy for degrading PET by contacting with PETase, which hydrolyzes to produce TPA, which is then catabolized by engineered P. putida that possess genes enabling TPA transport and conversion of TPA into protocatechuic acid (PCA), thus anticipating claims 1, 5-6, 10-11 [0032, 0048]. The engineered strains were assessed for PET degradation ability by shake flask experiments containing modified M9 media supplemented with glucose and PET, which inherently would include water and being grown in presence of oxygen, thus anticipating claims 8-9 [0045]. Beckham teaches the ultimate objective of the project is to use P. putida for the valorization of TPA into other high value products, such as β-ketoadipate, thus the genes that facilitate β-ketoadipate consumption, pcaIJ, have been deleted from the TPA utilizing strains to allow β-ketoadipate accumulation, therefore anticipating claims 12-13 [0050].
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 2-4, 8, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Beckham as applied to claims 1, 5-6, and 9-13 above, and further in view of Partenheimer (WO 02/10228 A2, cited in IDS filed 9/11/2023).
As discussed above, Beckham teaches a method of degrading a plastic in the presence of a catalyst and solvent to produce an intermediate, that is then catabolized by an engineered P. putida strain thereby generating Β-ketoadipate. Beckham does not teach a radical initiator, such as N-hydroxypthalimide (NHPI) nor that the catalyst comprises a transition metal, such as Co or Mn, or that the solvent is acetic acid.
However, Partenheimer teaches methods using chemicals to oxidize polymeric materials by applying acetic acid as a solvent and a metal bromide catalyst (abstract). Partenheimer teaches the oxidation for the production of useful chemicals from polymeric material, including salvage or waste polymeric material, comprising contacting the polymeric material with an oxidant in the presence of a metal catalyst, preferably a metal bromide catalyst (pg. 2, lines 8-10), wherein the polymer can include polyvinyl, polyethylene terephthalate (PET), and the metal catalyst can be Co, Mn, inter alia, as well as other substances to be used with the metal catalyst such as NHPI, and the solvent to be used is acetic acid, thus meeting these limitations recited in claims 2-4, 8, and 14-15 (pg. 3, lines 31-33, pg. 4, lines 3-4, pg. 6, lines 13-16). Partenheimer teaches the oxidation of polystyrene using a catalyst system of Co/NHPI generated 3.7% mol benzoic acid (a carboxylic acid) and 0.16% mol benzil (pg. 25, Table 13). Partenheimer also teaches the reaction of PET with the Co/Mn catalyst produces high yields of terephthalic acid (the precursor of TPA), glyoxylic acid, and acetoxy acetic acid (pg. 12-14, Table 6).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to modify Beckham’s plastic degradation method of reacting a plastic with a catalyst and solvent to form an intermediate, that is then catabolized by an engineered P. putida strain that is designed to accumulate Β-ketoadipate, by reacting the plastic in a Co/NHPI system to enhance the oxidation of the reaction in intermediate carboxylic acids, such as benzoic acid, as taught by Partenheimer, with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to include metal transition catalyst and a radical initiator as these enhance cleavage of the polymer and efficiently perform the depolymerization reaction in the method taught by Partenheimer, to provide small molecules for further catabolizing in the method taught by Beckham.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Beckham as applied to claims 1, 5-6, and 9-13 above, and further in view of Terakado et al. (High Temperature and Material Processes, 2009, vol. 28, no. 3, pgs. 133-139, hereinafter “Terakado”) and Partenheimer, as evidenced by Jones et al. (Chemico-biological Interactions, 1978, vol. 20, issue 1, pgs. 27-41, hereinafter “Jones”).
Claim 7 recites “the method of claim 1, wherein the plastic is PVDC and the intermediate comprises a chlorocarboxylic acid.”, ‘the plastic is PVDC’ is interpreted to mean that the method requires that the PVDC be present in the plastic but is not interpreted as excluding other plastics from also being present. The review of the prior art does not indicate the degradation of PVDC produces chlorocarboxylic acid compounds as an intermediate, but rather leads to unsaturated and partially dechlorinated polymer fragments, as disclosed by Mishra et al. (Chem. Eur. J. 2025, 31, pgs. 1-6, abstract). Therefore, based on the example of PVDC degradation in the instant specification utilizing a mixed plastic containing PVDC and PE [0031], and claim language indicating the plastic ‘comprises’ PVDC, PE, inter alia, recited in claim 6, the Examiner is interpreting the plastic as ‘PVDC’ recited in claim 7 to be a mixed plastic comprising PVDC, wherein the intermediate comprises a chlorocarboxylic acid.
As discussed above, Beckham teaches a method of degrading a plastic in the presence of a catalyst and solvent to produce an intermediate, that is then catabolized by an engineered P. putida strain thereby generating a product. Beckham does not teach the plastic is poly(vinylidene chloride) (PVDC) nor that the intermediate comprises chlorocarboxylic acid.
However, Terakado teaches the influence of metal oxide on the fixation of chlorine in thermal decomposition of PVDC and PVC (PVDCcp) (title, abstract). Terakado teaches the chlorine fixation ability of various metal oxides give rise to suppression of HCl gas owing to the chlorination of oxides (abstract). Terakado teaches the formation of chlorinated organic compounds, such as mono-, di-, and tri-chlorobenzene, and a series of chloronaphthalenes (pg. 137, col. 1, para 2). Terakado teaches in the presence of ZnO, HCl gas generation is significantly less than other metal oxides, and iron oxide was especially remarkable for the suppression of chlorinated organic aromatic compounds, and suggests metal oxides as useful not only for the feedstock recycling of waste plastics including chlorinated polymers but also for environment-friendly treatment in the chlorine circulation. (pg. 138, Fig. 5, col. 2, para 2).
Neither Beckham nor Terakado teach the intermediate comprises a chlorocarboxylic acid.
However, Partenheimer teaches methods using chemicals to oxidize polymeric materials by applying acetic acid as a solvent and a metal bromide catalyst (abstract). Partenheimer teaches the oxidation for the production of useful chemicals from polymeric material, including salvage or waste polymeric material, comprising contacting the polymeric material with an oxidant in the presence of a metal catalyst, preferably a metal bromide catalyst (pg. 2, lines 8-10), wherein the polymer can include polyvinyl and the metal catalyst can be Co, Mn, inter alia, as well as other substances to be used with the metal catalyst such as NHPI (pg. 3, lines 31-33, pg. 4, lines 3-4). Partenheimer teaches oxidation of polyvinylchloride to chloroacetic acid (a chlorocarboxylic acid) when catalyzed with Co/Mn/Br/Zn (pg. 21).
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 utilize Beckham’s plastic degradation method of reacting a plastic with a catalyst and solvent to form an intermediate, that is then catabolized by an engineered P. putida strain that is designed to accumulate Β-ketoadipate, to degrade a plastic that comprises PVDC-PVC that is reacted with a metal oxide to reduce HCl gas and form chlorinated organic compounds, such as choroacetic acids, as taught by Terakado and Partenheimer, with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to react a plastic comprising a mixture of PVDC and PVC with a metal catalyst, such as Zn or Co to effectively reduce the emission of harmful compounds such as hydrogen chloride, by chlorine fixation as taught by Terakado, which would also produce chloroacetic acid products in the process as taught by Partenheimer. Furthermore, although Terakado does not explicitly disclose chlorocarboxylic acid compounds are produced from PVDC degradation, the degradation of vinylidene chloride in rats results in chloroacetic acid production, as evidenced by Jones (abstract), which one of ordinary skill in the art would expect the degradation products of PVDC to include chloroacetic acid compounds.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A weβ-based eTerminal Disclaimer may be filled out completely online using weβ-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 5-6, and 9-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,460,176B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are obvious over the patent claims.
Claims 1-3 of ‘176 recite a genetically modified Pseudomonas comprising at least two exogenous genes, wherein the first encodes a functional PETase, and the second encodes for a functional MHETase, and are encoded into a genetically modified Pseudomonas, wherein the genetically modified Pseudomonas metabolizes PET to produce PET deconstruction products, such as TPA, Β-ketoadipate, inter alia.
Claims 6-10 and 13 of ‘176 recite the same genetically modified Pseudomonas of claim 1 further comprising heterologous TPA transporters; and claims 11-12 further comprise the genetically modified Pseudomonas lacking pcaIJ gene to metabolize TPA to Β-ketoadipate.
Claims 4-5 of ‘176 recite a method for deconstructing PET with the genetically modified Pseudomonas of claim 1 to produce the PET deconstruction products, which is encompassed by the instant claims.
The claims of ‘176 directed to the modified Pseudomonas would inherently carry out the steps of the claimed process recited in instant claims 1, 5-6, and 9-13, because if practicing the microorganism necessarily results in the performance of the process, then the claims are not patentably distinct, particularly since instant independent claim 1 is generically broad to include ‘catalyst’ as PETase, and ‘solvent’ as the media the microorganism is grown in. Thus, one of ordinary skill in the part, practicing the microorganism claims of the reference patent would inevitably perform the claimed process, rendering the instant claims and obvious variation thereof. See AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014)
Claims 2-4, 8, and 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,460,176B2 in view of Partenheimer.
As discussed above, ‘176 claims recite a modified Pseudomonas strain and method of degrading a plastic with said Pseudomonas.
‘176 claims do not recite a radical initiator, such as N-hydroxypthalimide (NHPI) or that the catalyst comprises a transition metal, such as Co or Mn, or that the solvent is acetic acid, as recited in instant claims 2-4, 8, and 14-15.
However, Partenheimer teaches methods using chemicals to oxidize polymeric materials by applying acetic acid as a solvent and a metal bromide catalyst (abstract). Partenheimer teaches the oxidation for the production of useful chemicals from polymeric material, including salvage or waste polymeric material, comprising contacting the polymeric material with an oxidant in the presence of a metal catalyst, preferably a metal bromide catalyst (pg. 2, lines 8-10), wherein the polymer can include polyvinyl, polyethylene terephthalate (PET), and the metal catalyst can be Co, Mn, inter alia, as well as other substances to be used with the metal catalyst such as NHPI, and the solvent to be used is acetic acid, thus meeting these limitations recited in claims 2-4, 8, and 14-15 (pg. 3, lines 31-33, pg. 4, lines 3-4, pg. 6, lines 13-16). Partenheimer teaches the oxidation of polystyrene using a catalyst system of Co/NHPI generated 3.7% mol benzoic acid (a carboxylic acid) and 0.16% mol benzil (pg. 25, Table 13). Partenheimer also teaches the reaction of PET with the Co/Mn catalyst produces high yields of terephthalic acid (the precursor of TPA), glyoxylic acid, and acetoxy acetic acid (pg. 12-14, Table 6).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to modify the plastic degradation method of reacting a plastic with an engineered P. putida strain that is designed to accumulate Β-ketoadipate as recited by ‘176, and also reacting the plastic in a Co/NHPI system to enhance the oxidation of the reaction into intermediate carboxylic acids, such as terephthalic acid, a precursor to TPA, as taught by Partenheimer with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to include metal transition catalyst and a radical initiator as these enhance cleavage of the polymer and efficiently perform the depolymerization reaction in the method taught by Partenheimer, to provide small molecules for further catabolizing in the method recited by ‘176.
Claim 7 is are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,460,176B2 in view of Partenheimer and Terakado, as evidenced by Jones.
As discussed above, ‘176 recites a modified Pseudomonas strain and method of degrading a plastic with said Pseudomonas.
‘176 claims do not recite the plastic is poly(vinylidene chloride) (PVDC) nor that the intermediate comprises chlorocarboxylic acid as recited in instant claim 7.
However, Terakado teaches the influence of metal oxide on the fixation of chlorine in thermal decomposition of PVDC and PVC (PVDCcp) (title, abstract). Terakado teaches the chlorine fixation ability of various metal oxides give rise to suppression of HCl gas owing to the chlorination of oxides (abstract). Terakado teaches the formation of chlorinated organic compounds, such as mono-, di-, and tri-chlorobenzene, and a series of chloronaphthalenes (pg. 137, col. 1, para 2). Terakado teaches in the presence of ZnO, HCl gas generation is significantly less than other metal oxides, and iron oxide was especially remarkable for the suppression of chlorinated organic aromatic compounds, and suggests metal oxides as useful not only for the feedstock recycling of waste plastics including chlorinated polymers but also for environment-friendly treatment in the chlorine circulation. (pg. 138, Fig. 5, col. 2, para 2).
Neither ‘176 nor Terakado disclose the intermediate comprises a chlorocarboxylic acid.
However, Partenheimer teaches methods using chemicals to oxidize polymeric materials by applying acetic acid as a solvent and a metal bromide catalyst (abstract). Partenheimer teaches the oxidation for the production of useful chemicals from polymeric material, including salvage or waste polymeric material, comprising contacting the polymeric material with an oxidant in the presence of a metal catalyst, preferably a metal bromide catalyst (pg. 2, lines 8-10), wherein the polymer can include polyvinyl and the metal catalyst can be Co, Mn, inter alia, as well as other substances to be used with the metal catalyst such as NHPI (pg. 3, lines 31-33, pg. 4, lines 3-4). Partenheimer teaches oxidation of polyvinylchloride to chloroacetic acid (a chlorocarboxylic acid) when catalyzed with Co/Mn/Br/Zn (pg. 21).
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 utilize a plastic degradation method of reacting a plastic with a catalyst and solvent to form an intermediate, that is then catabolized by an engineered P. putida strain that is designed to accumulate Β-ketoadipate as recited by ‘176, and degrade a plastic that comprises PVDC-PVC that is reacted with a metal oxide to reduce HCl gas and form chlorinated organic compounds, such as choroacetic acids, as taught by Terakado and Partenheimer, with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to react a plastic comprising a mixture of PVDC and PVC with a metal catalyst, such as Zn or Co to effectively reduce the emission of harmful compounds such as hydrogen chloride, by chlorine fixation as taught by Terakado, which would also produce chloroacetic acid products in the process as taught by Partenheimer. Furthermore, although Terakado does not explicitly disclose chlorocarboxylic acid compounds are produced from PVDC degradation, the degradation of vinylidene chloride in rats results in chloroacetic acid production, as evidenced by Jones (abstract), which one of ordinary skill in the art would expect the degradation products of PVDC to include chloroacetic acid compounds.
Claims 1, 5-6, 9-11, and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,371,718B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are obvious over the patent claims.
Claims 1-6 of ‘718 recite a genetically modified Pseudomonas comprising at least two exogenous genes, wherein the first encodes a functional PETase, and the second encodes for a functional MHETase, and are encoded into a genetically modified Pseudomonas, wherein the genetically modified Pseudomonas metabolizes PET to produce PET deconstruction products, such as TPA, Β-ketoadipate, inter alia.
Claims 7-8 of ‘718 recite a method for deconstructing PET with the genetically modified Pseudomonas of claim 1 to produce the PET deconstruction products, which is encompassed by the claimed process recited in instant claims 1, 5-6, 9-11, and 13. If practicing the microorganism necessarily results in the performance of the process, then the claims are not patentably distinct, particularly since instant independent claim 1 is generically broad to include ‘catalyst’ as PETase, and ‘solvent’ as the media the microorganism is grown in. Thus, one of ordinary skill in the art, practicing the microorganism claims of the reference patent would inevitably perform the claimed process, rendering the instant claims and obvious variation thereof. See AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014)
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,371,718B2 in view of Beckham.
As discussed above, ‘718 recites a modified Pseudomonas strain and method of degrading a plastic with said Pseudomonas.
‘718 claims do not recite the bacterium has genes pcaIJ deleted as recited in claim 12.
However, Beckham teaches the modified Pseudomonas recited in ‘718 and also teaches the ultimate objective of the project is to use P. putida for the valorization of TPA into other high value products, such as β-ketoadipate, thus the genes that facilitate β-ketoadipate consumption, pcaIJ, have been deleted from the TPA utilizing strains to allow β-ketoadipate accumulation [0050], thus meeting the limitation in claim 12.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to modify the P. putida strain in the plastic degradation method recited by ‘718, and delete genes pcaIJ to effectively force Β-ketoadipate accumulation as taught by Beckham with a reasonable expectation of success.
Claim 2-4, 8, and 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,371,718B2 in view of Partenheimer.
As discussed above, ‘718 recites a modified Pseudomonas strain and method of degrading a plastic with said Pseudomonas.
‘718 claims do not recite a radical initiator, such as N-hydroxypthalimide (NHPI) or that the catalyst comprises a transition metal, such as Co or Mn, or that the solvent is acetic acid, as recited in instant claims 2-4, 8, and 14-15.
However, Partenheimer teaches methods using chemicals to oxidize polymeric materials by applying acetic acid as a solvent and a metal bromide catalyst (abstract). Partenheimer teaches the oxidation for the production of useful chemicals from polymeric material, including salvage or waste polymeric material, comprising contacting the polymeric material with an oxidant in the presence of a metal catalyst, preferably a metal bromide catalyst (pg. 2, lines 8-10), wherein the polymer can include polyvinyl, polyethylene terephthalate (PET), and the metal catalyst can be Co, Mn, inter alia, as well as other substances to be used with the metal catalyst such as NHPI, and the solvent to be used is acetic acid, thus meeting these limitations recited in claims 2-4, 8, and 14-15 (pg. 3, lines 31-33, pg. 4, lines 3-4, pg. 6, lines 13-16). Partenheimer teaches the oxidation of polystyrene using a catalyst system of Co/NHPI generated 3.7% mol benzoic acid (a carboxylic acid) and 0.16% mol benzil (pg. 25, Table 13). Partenheimer also teaches the reaction of PET with the Co/Mn catalyst produces high yields of terephthalic acid (the precursor of TPA), glyoxylic acid, and acetoxy acetic acid (pg. 12-14, Table 6).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to modify the plastic degradation method of reacting a plastic with an engineered P. putida strain as recited by ‘718, and also reacting the plastic in a Co/NHPI system to enhance the oxidation of the reaction into intermediate carboxylic acids, such as terephthalic acid, a precursor to TPA, as taught by Partenheimer with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to include metal transition catalyst and a radical initiator as these enhance cleavage of the polymer and efficiently perform the depolymerization reaction in the method taught by Partenheimer, to provide small molecules for further catabolizing in the method recited by ‘718.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,371,718B2 in view of Partenheimer and Terakado, as evidenced by Jones.
As discussed above, ‘718 recites a modified Pseudomonas strain and method of degrading a plastic with said Pseudomonas.
‘718 claims do not recite the plastic is poly(vinylidene chloride) (PVDC) nor that the intermediate comprises chlorocarboxylic acid as recited in instant claim 7.
However, Terakado teaches the influence of metal oxide on the fixation of chlorine in thermal decomposition of PVDC and PVC (PVDCcp) (title, abstract). Terakado teaches the chlorine fixation ability of various metal oxides give rise to suppression of HCl gas owing to the chlorination of oxides (abstract). Terakado teaches the formation of chlorinated organic compounds, such as mono-, di-, and tri-chlorobenzene, and a series of chloronaphthalenes (pg. 137, col. 1, para 2). Terakado teaches in the presence of ZnO, HCl gas generation is significantly less than other metal oxides, and iron oxide was especially remarkable for the suppression of chlorinated organic aromatic compounds, and suggests metal oxides as useful not only for the feedstock recycling of waste plastics including chlorinated polymers but also for environment-friendly treatment in the chlorine circulation. (pg. 138, Fig. 5, col. 2, para 2).
Neither ‘718 nor Terakado disclose the intermediate comprises a chlorocarboxylic acid.
However, Partenheimer teaches methods using chemicals to oxidize polymeric materials by applying acetic acid as a solvent and a metal bromide catalyst (abstract). Partenheimer teaches the oxidation for the production of useful chemicals from polymeric material, including salvage or waste polymeric material, comprising contacting the polymeric material with an oxidant in the presence of a metal catalyst, preferably a metal bromide catalyst (pg. 2, lines 8-10), wherein the polymer can include polyvinyl and the metal catalyst can be Co, Mn, inter alia, as well as other substances to be used with the metal catalyst such as NHPI (pg. 3, lines 31-33, pg. 4, lines 3-4). Partenheimer teaches oxidation of polyvinylchloride to chloroacetic acid (a chlorocarboxylic acid) when catalyzed with Co/Mn/Br/Zn (pg. 21).
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 utilize a plastic degradation method of reacting a plastic with a catalyst and solvent to form an intermediate, that is then catabolized by an engineered P. putida strain as recited by ‘718, and degrade a plastic that comprises PVDC-PVC that is reacted with a metal oxide to reduce HCl gas and form chlorinated organic compounds, such as choroacetic acids, as taught by Terakado and Partenheimer, with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to react a plastic comprising a mixture of PVDC and PVC with a metal catalyst, such as Zn or Co to effectively reduce the emission of harmful compounds such as hydrogen chloride, by chlorine fixation as taught by Terakado, which would also produce chloroacetic acid products in the process as taught by Partenheimer. Furthermore, although Terakado does not explicitly disclose chlorocarboxylic acid compounds are produced from PVDC degradation, the degradation of vinylidene chloride in rats results in chloroacetic acid production, as evidenced by Jones (abstract), which one of ordinary skill in the art would expect the degradation products of PVDC to include chloroacetic acid compounds.
Conclusion
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/JESSICA EDWARDS/
Examiner, Art Unit 1657
/LOUISE W HUMPHREY/Supervisory Patent Examiner, Art Unit 1657