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
1. Preliminary Amendment and claims 1-20 filed 7/31/23 are present and under consideration.
2. Applicant's election of Group I claims 1-11 & 18-20 without traverse in the reply filed on 10/20/25 is acknowledged.
3. Claims 12-17 are withdrawn from consideration as being drawn to non-elected invention.
4. 35 U.S.C. § 112, first paragraph (Written Description)
Claims 1-11 & 18-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claimed invention is directed to the following claims.
1. A method for producing terephthalic acid, comprising a step of converting a biomass resource or a compound derived from the biomass resource to p-tolualdehyde with a microbe.
2. The method for producing terephthalic acid according to claim 1, wherein the compound derived from the biomass resource is at least one of shikimic acid, 1-p-tolyl ethanol, p-methylacetophenone, and p-methylbenzyl alcohol.
3. The method for producing terephthalic acid according to claim 1, wherein the biomass resource is a biomass resource treated by a pretreatment step or a saccharification step, or by both steps.
4. The method for producing terephthalic acid according to claim 1, wherein the biomass resource is any one or more of edible biomass, edible biomass-derived monosaccharides or polysaccharides, inedible biomass, and inedible biomass-derived monosaccharides or polysaccharides.
5. The method for producing terephthalic acid according to claim 4, wherein the edible biomass comprises at least one type of biomass selected from maize, sweet potato, rice, potato, wheat, barley, tapioca, sugar cane, beet, molasses, and high-test molasses.
6. The method for producing terephthalic acid according to claim 4, wherein the inedible biomass comprises at least one type of biomass selected from grass-based biomass, wood-based biomass, paper, pulp, waste paper, bagasse, and corn stover.
7. The method for producing terephthalic acid according to claim 1, further comprising a step of adding at least one type of enzyme selected from amylase, cellulase, hemicellulase, and ligninolytic enzyme to a medium.
8. The method for producing terephthalic acid according to claim 1, wherein the p-tolualdehyde is biologically oxidized by use of a microbe to produce terephthalic acid.
9. The method for producing terephthalic acid according to claim 8, wherein the microbe is the same as that employed in the formation of p-tolualdehyde and is a microbe transfected with a gene group encoding four types of enzymes, benzaldehyde dehydrogenase, toluate methylmonooxygenase, 4-carboxybenzyl alcohol dehydrogenase, and 4-carboxybenzaldehyde dehydrogenase.
10. The method for producing terephthalic acid according to claim 1, wherein the microbe is Phlebia uda or Hydnophlebia chrysorhiza.
11. A method for producing polyester, comprising a step of reacting terephthalic acid produced by the method for producing terephthalic acid according to claim 1 with a diol compound to produce polyester.
18. The method for producing terephthalic acid according to claim 9, wherein the microbe is Phlebia uda or Hydnophlebia chrysorhiza.
19. A method for producing polyester, comprising a step of reacting terephthalic acid produced by the method for producing terephthalic acid according to claim 3 with a diol compound to produce polyester.
20. A method for producing polyester, comprising a step of reacting terephthalic acid produced by the method for producing terephthalic acid according to claim 18 with a diol compound to produce polyester.
The claims are described by broad functional limitations only. The claimed invention encompasses a genus of method steps not adequately described.
The instant specification teaches - A method for producing terephthalic acid, comprising a step of converting a biomass resource or a compound derived from the biomass resource to p-tolualdehyde with a microbe selected from Phlebia uda or Hydnophlebia chrysorhiza; and wherein the microbe is employed in the formation of p-tolualdehyde and is a microbe transfected with a gene group encoding four types of enzymes, benzaldehyde dehydrogenase, toluate methylmonooxygenase, 4-carboxybenzyl alcohol dehydrogenase, and 4-carboxybenzaldehyde dehydrogenase. The specification does not describe the as claimed.
The MPEP states that the purpose of the written description requirement is to ensure that the inventor had possession, as of the filing date of the application, of the specific subject matter later claimed by him. The courts have stated:
"To fulfill the written description requirement, a patent specification must describe aninvention and do so in sufficient detail that one skilled in the art can clearly conclude that "the inventor invented the claimed invention." Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997); In re Gostelli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989) ("[T]he description must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what isclaimed."). Thus, an applicant complies with the written description requirement "bydescribing the invention, with all its claimed limitations, not that which makes it obvious,"and by using "such descriptive means as words, structures, figures, diagrams, formulas, etc., that set forth the claimed invention." Lockwood, 107 F.3d at 1572, 41 USPQ2d at 1966."Regents of the University of California v. Eli Lilly & Co., 43 USPQ2d 1398.
Further, for a broad generic claim, the specification must provide adequate written description to identify the genus of the claim. In Regents" of the University of California v. Eli Lilly & Co. the court stated:
"A written description of an invention involving a chemical genus, like a description of a chemical species, 'requires a precise definition, such as by structure, formula, [or] chemical name,' of the claimed subject matter sufficient to distinguish it from other materials." Fiers, 984 F.2d at 1171, 25 USPQ2d 1601; In re Smythe, 480 F.2d 1376, 1383, 178 USPQ 279, 284985 (CCPA 1973) ("In other cases, particularly but not necessarily, chemical cases, where there is unpredictability in performance of certain species or subcombinations other than those specifically enumerated, one skilled in the art may be found not to have been placed in possession of a genus ...") Regents" of the University of California v. Eli Lilly & Co., 43 USPQ2d 1398.
The MPEP further states that if a biomolecule is described only by a functional characteristic, without any disclosed correlation between function and structure of the sequence, it is "not sufficient characteristic for written description purposes, even when accompanied by a method of obtaining the claimed sequence." MPEP § 2163. The MPEP does state that for a generic claim the genus can be adequately described if the disclosure presents a sufficient number of representative species that encompass the genus. MPEP § 2163. If the genus has a substantial variance, the disclosure must describe a sufficient variety of species to reflect the variation within that genus. See MPEP § 2163. Although the MPEP does not define what constitute a sufficient number of representative species, the courts have indicated what do not constitute a representative number of species to adequately describe a broad generic. In Gostelli, the courts determined that the disclosure of two chemical compounds within a subgenus did not describe that subgenus. In re Gostelli, 872, F.2d at 1012, 10 USPQ2d at 1618. The MPEP lists factors that can be used to determine if sufficient evidence of possession has been furnished in the disclosure of the Application. These include "level of skill and knowledge in the art, partial structure, physical and/or chemical properties, functional characteristics alone or coupled with a known or disclosed correlation between structure and function, and the method of making the claimed invention. Disclosure of any combination of such identifying characteristics that distinguish the claimed invention from other materials and would lead one of skill in the art to the conclusion that the applicant was in possession of the claimed species is sufficient." MPEP § 2163. While all of the factors have been considered, a sufficient amount for a prima facie case is discussed below.
Further, to provide evidence of possession of a claimed genus, the specification must provide sufficient distinguishing identifying characteristics of the genus. The factors to be considered include: a) the scope of the invention; b) actual reduction to practice; c) disclosure of drawings or structural chemical formulas; d) relevant identifying characteristics including complete structure, partial structure, physical and/or chemical properties, and structure/function correlation; e) method of making the claimed compounds; f) level of skill and knowledge in the art; and g) predictability in the art.
Moreover, Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir.1991), states that "applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the 'written description' inquiry, whatever is now claimed" (See page 1117). The specification does not "clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed" (See Vas-Cath at page 1116). The skilled artisan cannot envision the detailed chemical structure of the encompassed genus of polypeptides, and therefore, conception is not achieved until reduction to practice has occurred, regardless of the complexity or simplicity of the method of isolation. Adequate written description requires more than a mere statement that it is part of the invention and reference to a potential method of isolating it. The compound itself is required. See Fiers v. Revel, 25 USPQ2d 1601 at 1606 (CAFC 1993).
Therefore, for all these reasons the specification lacks adequate written description, and one of skill in the art cannot reasonably conclude that the applicant had possession of the claimed invention at the time the instant application was filed.
5. 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.
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.
Claim(s) 1 & 2 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by KR 10-2015-0143296A (2015).
Claims 1 & 2 are drawn to as follows:
1. (Original) A method for producing terephthalic acid, comprising a step of converting a biomass resource or a compound derived from the biomass resource to p- tolualdehyde with a microbe.
2. (Original) The method for producing terephthalic acid according to claim 1, wherein the compound derived from the biomass resource is at least one of shikimic acid, 1-p-tolyl ethanol, p-methylacetophenone, and p-methylbenzyl alcohol.
Claim 1 is very broadly written and encompasses any steps that would convert a biomass resource to terephthalic acid utilizing a microbe. The instant specification does not limit the microbe by a definition. The production of terephthalic acid from a biomass utilizing a microbe is disclosed by the Korean art reference (Abstract, claims 10-13, Examples, Fig. 1 and 2). Hence claim 1 is rejected over KR 10-2015-0143296 (cited on the written option/search report). Figure 1 of the KR reference discloses the terephthalic acid biosynthetic route, which includes p-tolualdehyde (4-Methylbenzaldehyde), the abstract and the last paragraph at page 3 and middle of page 4 disclose producing terephthalic acid from biomass, and the claims recite a method of producing terephthalic acid by culturing a recombinant microorganism.
Further, a word search of the Korean document shows that the precursor that is being converted is 4-methylbenzyl alcohol, which reads on the last alternative of instant claim 2.
p-methylbenzyl alcohol is also known as 4-methylbenzyl alcohol. The reference anticipates the claims.
6. Information Disclosure Statements filed 7/31/23 & 6/20/25 are acknowledged. Signed copies of the IDS(s) are provided with this Office Action.
7. Drawings filed 7/31/23 is acknowledged.
8. Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled "Comments on Statement of Reasons for Allowance."
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to TEKCHAND SAIDHA whose telephone number is (571)272-0940. The examiner can normally be reached on M-F 8.00-5.30. 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 B 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 an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TEKCHAND SAIDHA/
Primary Examiner, Art Unit 1652
Recombinant Enzymes, Hoteling
Telephone: (571) 272-0940
Fax: (571) 273-0940