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 .
The response filed on January 19, 2026 is received.
Claims 1-10 are pending in this application, claims are 3-5 and 10 are withdrawn from further consideration (See Restriction/Election below), and claims 1, 2 and 6-9 are being examined.
Restriction/Election:
Applicant's election with traverse of Group I, claims 1 and 6-9 in the reply filed on 01/19/2026 is acknowledged. The traversal is on the ground(s) that “In particular, Applicant respectfully submits that the subject matter of Groups I and II are significantly overlapping such that at least claim 2 should have been included in Group I.”.
Applicant above arguments with respect to rejoining claim 2 (Group II) filed on 1/19/2026 is considered and is persuasive, therefore claim 2 is rejoined.
Claims 3-5 and 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions (Groups III and IV), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/19/2026.
Objection(s):
Claim 9 is objected to because of the following informalities:
In claim 9, delete “selected from the group consisting of 3-carotene, 3-cryptoxanthin and zeaxanthin”.
Appropriate correction is required.
Claim Rejection - 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.
Claims 1, 2 and 6-9 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.
In claim 1, the preamble reads “a method for producing at least one carotenoid selected from the group consisting of beta-carotene, 3-cryptoxanthin and zeaxanthin by culturing bacteria of the genus Paracoccus” while the body of the claim only recites a step of adjusting the concentration of dissolved oxygen in a culture solution to 0.8 ppm or less. In this case, the body of the claim does not recite a culturing step and it does not recite a step of producing at least one carotenoid selected from the group consisting of beta-carotene, 3-cryptoxanthin and zeaxanthin, as such it is not exactly clear what applicant is trying to claim.
Suggestion to obviate the rejection: amend to clearly define the method steps.
In claim 2, the preamble reads “a method for producing at least one carotenoid selected from the group consisting of 3-carotene, 3-cryptoxanthin and zeaxanthin”, however the body of the claim does not recite an actual step of producing at least one carotenoid selected from the group consisting of beta-carotene, 3-cryptoxanthin and zeaxanthin, as such it is not exactly clear what applicant is trying to claim.
Suggestion to obviate the rejection: amend to clearly define the method steps.
Claim Rejection - 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.
Claims 1, 2 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2011/122616 A1 (English translation which is cited in the IDS filed on 12/12/2023, and the translation of written opinion of the ISR filed on 12/12/2023, and in applicant’s specification, 18 pages of PDF) in view of , Ide et al. (Biochemical Engineering Journal, Volume 65, 2012, p. 37-43).
Regarding claims 1 and 2, WO 2011/122616 teach a method for producing at least one carotenoid selected from the group consisting of beta-carotene, beta-cryptoxanthin and zeaxanthin by culturing bacteria of the genus Paracoccus, said method comprising adjusting the concentration of dissolved oxygen in a culture solution to 0.8 ppm or less, as measured with a dissolved oxygen electrode, wherein the bacteria of the genus Paracoccus are bacteria forming yellow to orange colonies, and culturing bacteria of the genus Paracoccus in a culture solution whose dissolved oxygen concentration is 0.8 ppm or less (producing zeaxanthin by culturing zeaxanthin producing Paracoccus ZX-3 strain, yellow-orange colonies, in a culture and dissolved oxygen maintained at 2ppm, and zeaxanthin produced) (See for p. 13 Example 1 –Continued on p. 14), and
Regarding the dissolved oxygen concentration WO 2011/122616 teach the dissolved oxygen concentration is 0.8 ppm or less (dissolved oxygen concentration 0.5 ppm or more, which his overlapping with 0.8 ppm or less) (See for example, p. 10 1st paragraph).
Regarding claim 6, WO 2011/122616 teach wherein the bacteria forming yellow to orange colonies are obtained by selecting yellow to orange colonies generated upon mutagenesis of bacteria of the genus Paracoccus that form red colonies (See for example, p. 15 Example 5 1st paragraph).
Regarding claim 9, WO 2011/122616 teach the at least one carotenoid is beta-cryptoxanthin (See for example, p. 17 4th claim).
WO 2011/122616 A1 do not teach endogenous crtW gene has been partially or completely deleted or inactivated to lose the ability to produce a functional crtW enzyme, the endogenous crtW gene comprises a nucleotide sequence at least 90% identical to the nucleotide sequence shown in SEQ ID NO: 1 (claim 7), wherein the crtW enzyme comprises an amino acid sequence at least 90% identical to the amino acid sequence shown in SEQ ID NO: 2 (claim 8).
However, before the effective filing date of the invention Ide et al. teach recombinant techniques of producing Paracoccus mutants, and further teach endogenous crtW (gene coding for beta-carotene ketolase enzyme), same as the claimed crtW gene, and beta-carotene ketolase involves in carotenoids biosynthesis pathway and catalyzes that conversion of beta-carotene to the next carotenoid, i.e., canthaxanthin, and the next enzyme in the pathway is beta-carotene hydroxylase (encoded by CrtZ gene) catalyzes the conversion of beta-carotene to Zeaxanthin (See or example, p. 38 figure 1 and legend).
It should be noted that crtW gene taught by Ide et al. is the same as the claimed crtW gene, as such it must have the claimed nucleotide sequence of at least 90% identical to the nucleotide sequence shown in SEQ ID NO: 1, and the claimed an amino acid sequence of at least 90% identical to the amino acid sequence shown in SEQ ID NO: 2.
Therefore, in view of the above teachings, a person of ordinary skill in the art before the effective filing date of the invention would have been capable of applying the prior art teachings and modifying the claimed crtW gene taught by the prior art by applying known recombinant techniques with a reasonable expectation of success in producing a Paracoccus bacteria in which the endogenous crtW gene has been partially or completely deleted or inactivated to lose the ability to produce a functional crtW enzyme, and provide the claimed method. Because, Ide et al. teach recombinant techniques of producing Paracoccus mutants, and further teach endogenous crtW (gene coding for beta-carotene ketolase enzyme), same as the claimed crtW gene, and beta-carotene ketolase involves in carotenoids biosynthesis pathway and catalyzes that conversion of beta-carotene to the next carotenoid, i.e., canthaxanthin, and the next enzyme in the pathway is beta-carotene hydroxylase (encoded by CrtZ gene) catalyzes the conversion of beta-carotene to Zeaxanthin.
Conclusion(s):
No claim(s) is allowed at this time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KADE ARIANI whose telephone number is (571)272-6083. The examiner can normally be reached IFP, Monday - Friday, 8:00 AM -4:00 PM EST.
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/KADE ARIANI/Primary Examiner, Art Unit 1651
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