DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. The Preliminary Amendment filed on June 2, 2023, has been received and entered.
3. Applicant’s election without traverse of Group I (claims 1-12) on October 14, 2025, is acknowledged.
Claim Disposition
4. Claims 1-13 are pending. Claims 1-12 are under examination. Claim 13 is withdrawn from consideration as directed to a non-elected invention.
Information Disclosure Statement
5. The Information Disclosure Statements filed on June 2, 2023 and November 1, 2023, have been received and entered. The references cited on the PTO-1449 Form have been considered by the examiner and a copy is attached to the instant Office action.
Specification Objection
6. The specification is objected to for the following informalities:
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. The following is suggested: " Enzyme based method for producing hydroxylated Fatty Acids".
Appropriate correction is required.
Claim objection
7. Claims 1-12 are objected to for the following informalities:
For clarity claims 1-12 should be amended to delete the colon(:) in front of the claim limitations (i.e., Claim 1(Original)[[:]] A method…”).
For clarity and precision of claim language it is suggested that claims 2-12 are amended to recite “….[[according to]] of….” (i.e., The method of claim 1…).
For clarity and precision of claim language it is suggested that claim 1 is amended to delete “optionally” with the method steps. The dependent claims hereto are also included.
Duplicate Claims, Warning
8. Applicant is advised that should claims 8 and 9 be found allowable, claims 8 and 9 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 706.03(k). Claim 9 with the language of “about” makes it very similar to claim 8 because the about language can mean that the temps are the same with a small portion that is different.
Correction of the above is required.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
9. Claims 1-12 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 1 and the dependent claims hereto are indefinite for the recitation of “Optionally” in the first step because it produces a product that is needed in the second step and optionally means that it is not always present.
Claim 1 lacks clear antecedent basis for the recitation of “at least one compound”. The dependent claims hereto are also included.
Claim 1 lacks clear antecedent basis for the recitation of “oxidizing the at least one unsaturated fatty acid” because step one is optional, thus would produce the at least one unsaturated fatty acid. The dependent claims hereto are also included.
Claim 1 lacks clear antecedent basis for the recitation of the pH (it is suggested to recite, “adjusting pH value to at most 4.5 to obtain….”. The dependent claims hereto are also included.
Claim 10 lacks clear antecedent basis for the recitation of “the compound”.
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.
10. Claim(s) 1-3 and 10 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Kim et al. (Biotech Advances, vol. 31, pages 1473-1485, 2013).
The crux of the claimed invention is a method that oxidizes unsaturated fatty acid by lipoxygenase to produce a hydroxylated fatty acids (step one and five are optional).
Kim et al. teach hydroxy fatty acids (unsaturated, see page 1474) and the use of lipoxygenase (see abstract). The reference also teaches hydroxylation (see abstract). Kim et al. teaches omega-3 fatty acid such as DHA and EPA (see 1474). The reference teaches the use of an N-terminal peroxidase (see page 1478).The reference teaches that reaction conditions such temperatures and pH are optimized (see page 1480) to produce increased hydroxy fatty acids and state that these fatty acids are important in industry and medicine and demand is increasing (see page 1482). Therefore, the limitations of the claims are met by the reference.
Conclusion
11. No claims are presently allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOPE A ROBINSON whose telephone number is (571) 272-0957. The examiner can normally be reached 9-5pm on Monday to Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Mondesi can be reached on (408) 918-7584. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HOPE A ROBINSON/Primary Examiner, Art Unit 1652