DETAILED ACTION
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 .
Applicant’s amendment of claim 1, 7 and 14, in the paper of 6/23/2026, is acknowledged. Applicants' arguments filed on 6/23/2026, have been fully considered and are deemed to be persuasive to overcome some of the rejections previously applied. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. Claims 1-4 and 6-22 are still at issue and are present for examination.
Terminal Disclaimer
The terminal disclaimer filed on 6/23/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of a patent which issues from Application No. 18/288,728 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Election/Restrictions
Applicant's election without traverse of the following species:
Species Group 1: MMOH (claim 1).
Species Group 2: MMOHa (A64-L321) of SEQ ID NO:2.
Species Group 3: MMORF (99-348) of SEQ ID NO:5.
Species Group 4: MMOB (retro) of SEQ ID NO:8.
Species Group 5: C-terminus (Claim 14).
in the paper of 1/19/2026, is acknowledged.
Claim Objections
Claims 3, 6, 9 and 12 are objected to because of the following informalities:
Claims 3, 6, 9 and 12 depend from rejected claims.
Appropriate correction is required.
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 rejection of claims 1, 2, 3, 4, 5, 7, 13, 14, 15, 16, 17, 18, 19, 20-22 under 35 U.S.C. 103 as being unpatentable over the combination of Kim et al., (Nature Catalysis 2.4 (2019): 342-353), Arnold et al. (WO 2006/105082) and Takeshita et al. (WO 03/027301) as evidenced by Gladyshev et al. (J. Biological Chemistry, Vol 271,No. 14, pp 8095-8100, 1996) is withdrawn based upon applicants amendment of the claims in the paper of 6/23/2026.
Claims 1, 2, 4, 5, 7, 8, 10, 11, 13, 14, 15, 16, 17, 18, 19, 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Kim et al., (Nature Catalysis 2.4 (2019): 342-353), Park et al. (Catalysis, 8, 582, Nov 26, 2018) as evidenced by Gladyshev et al. (J. Biological Chemistry, Vol 271,No. 14, pp 8095-8100, 1996).
This rejection was stated in the previous office action as it applied to previous claims 1, 2, 4, 5, 7, 8, 10, 11, 13, 14, 15, 16, 17, 18, 19, 20-22. In response to the rejection, applicants have amended the claims and traverse the rejection as it applies to the newly amended claims.
For applicants convenience the original rejection is repeated herein.
Regarding claims 1-4, Kim teaches a protein nanoparticle comprising self-assembled ferritin monomers, comprising a ferritin monomer fused with an active domain having methane oxidation activity (p. 342, 3rd ¶ to p. 343, last ¶; Table 1). The domain(s) having methane oxidation activity comprise domains from particulate methane monooxygenase (pMMO) of M. capsulatus (Bath), comprising residues 33-172 (pmoB1) and 265-414 (pmoB2), which were determined to be the minimal structural units for pMMO catalytic activity (p. 343, 1st and 2nd ¶; p. 350-351, under Biosynthesis of recombinant proteins including pMMO-mimics; Table 1 and Supp. Table 1). Kim teaches that recombinant forms of pMMO are typically inactive due to the membrane-anchored structure of the enzyme, and that expressing pMMO as a fusion construct with ferritin allows for expression of active pMMO by providing a self-assembling particulate scaffold that mimics the native membrane-embedded structure (p. 342, 3rd ¶ to p. 343, last ¶; p. 349, 1st ¶ under Discussion to p. 350, 1st ¶). Kim further teaches that pMMO is of high interest in academia and industry due to its ability to oxidize carbon feedstocks, including the conversion of methane to methanol (p. 342, 1st – 3rd ¶).
Kim teaches that the pmoB1 and pmoB2 domains can each be fused to a single ferritin monomer, and that multiple such monomers can self-assemble to form a catalytically active nanoparticle (Table 1, pMMO-m1; p. 345-347, under Biocatalytic conversion of methane to methanol by pMMO-mimics).
Regarding claim 5, Kim teaches that the pmoB1 and pmoB2 domains can each be fused separately to a ferritin monomer, and that multiple such monomers can self-assemble to form a catalytically active nanoparticle (Table 1, pMMO-m2-pMMO-m4; p. 345-347, under Biocatalytic conversion of methane to methanol by pMMO-mimics).
Regarding claim 10, Kim teaches that the ferritin can be human heavy chain ferritin (p. 343, 1st full ¶; p. 350-351, under Biosynthesis of recombinant proteins including pMMO-mimics; Table 1 and Supp. Table 1, regarding claim 13).
Kim teaches that the pmoB1 and pmoB2 domains are fused to the C-terminus of the ferritin (p. 343, 1st full ¶; p. 350-351, under Biosynthesis of recombinant proteins including pMMO-mimics; Table 1 and Supp. Table 1) and there expression in E. coli.
Kim further teaches compositions for converting methane to methanol comprising the ferritin-pMMO construct and duroquinol as a reducing agent (p. 345-347, under Biocatalytic conversion of methane to methanol by pMMO-mimics). Kim teaches that duroquinol is essential for pMMO activity and binds directly to the catalytic core of the enzyme (p. 346, 1st full ¶).
Park et al. (Catalysis, 8, 582, Nov 26, 2018) teach that methane is an important greenhouse gas and teach the mechanisms underlying the extremely stable C-H activation of soluble methane monooxygenase (sMMO). Park et al. teach the expression and purification of the sMMO components including hydroxylase (MMOH), regulatory (MMOB) and reductase (MMOR) from type II methanotroph, Methylosius sporium to characterize its hydroxylation mechanism. Park et al. teach the expression and purification of the hydroxylase (MMOH) from M. sporium and the expression and purification of MMOB and MMOR from E. coli. Park et al. teach that MMOR is an essential component for the catalytic cycle owing for its electron transfer abilities by FAD-containing and [2Fe-2S] cluster ferrodoxin domains to reduce diiron active sites in MMOH. Park et al. further teach that the overall shape and volume of the MMOR-Fd are similar to those of the MMB core region, suggesting that MMOB and MMOR share the binding sites of MMOH.
Park et al. further disclose the activities of the essential MMO components and teach that two molar equivalents of MMOB are necessary to achieve catalytic activities and oxidized a broad range of substrates including alkanes, alkenes, halogens and aromatics. Park et al. further teach that optimal activities of MMO were observed at ph 7.5 for most substrates possibly because of the electron transfer environment in MMOR. Park et al. teach that the substitution of MMOB or MMOR from another type II methanotroph retained specific enzyme activities (see abstract and supporting text).
It would have been obvious to one of ordinary skill in the art before the effective filing date to make an enzyme construct capable of converting methane to methanol by fusing a methane oxidizing enzyme to ferritin to make a self-assembled enzyme nanoparticle as taught by Kim wherein the methane oxidizing enzyme is a chimeric polypeptide comprising the MMO catalytic domain, the MMOB domain and the MMOR domain as taught by Park et al. because it would have been obvious to combine prior art elements according to known methods to yield predictable results. One of skill in the art would have been further motivated to use MMO catalytic domain, the MMOB domain and the MMOR domain as taught by Park et al. because it was a known and cloned monooxygenase and its encoding gene was known and available to the ordinary artisan (claims 1, 2, 4,, 13, 14-22). One of ordinary skill would have been motivated to create these chimeric proteins in E. coli as done by Kim et al. E. coli inherently expresses formate dehydrogenase as evidenced by Gladyshev et al. (J. Biological Chemistry, Vol 271,No. 14, pp 8095-8100, 1996). One of ordinary skill would have been motivated to make an enzyme construct as taught by Kim wherein the enzyme is a chimeric polypeptide comprising ferritin monomer, the MMO catalytic domain, the MMOB domain and the MMOR domain as taught by Park et al because oxidation of carbon feedstocks, including conversion of methane to methanol, is of great commercial interest (claims 5 and 7). Moreover, making a construct as taught by Kim et al., Park et al. would provide an additional source of enzyme (in addition to pMMO) that could expand the range of potential operating conditions, substrates, etc. Making an enzyme construct as taught by Kim wherein the enzyme is a chimeric polypeptide comprising the MMO catalytic domain, the MMOB domain and the MMOR domain as taught by Park et al would have led to predictable results with a reasonable expectation of success because each of the references Kim et al., Park et al. produce similar protein constructs. It would have been obvious to one of skill to use these enzyme constructs, microorganisms and compositions comprising said enzyme constructs in methods of converting methane gas to methanol as taught by Kim et al. and Park et al. (claim 21).
Applicants Response
Applicant submits that Kim, Arnold, Park, and Takeshita, even evidenced by Gladyshev, are insufficient to establish a prima facie case of obviousness of claim 1 at least because Kim, Arnold, Park, and Takeshita fail to disclose or suggest every claimed feature.
Applicant submits that they have amended claim 1 in the interest of expediting prosecution. Claim 1, as amended, recites, in part, "wherein the electron transfer domain includes a flavin adenine dinucleotide (FAD)-binding domain." Applicant respectfully submits that Kim, Arnold, Park, and Takeshita, even evidenced by Gladyshev, fail to disclose or suggest at least the above features, when taken in the context of the claim as a whole as they must be.
Applicant submits that, claim 1, as amended, recites the specific structural limitation, which is neither disclosed nor suggested by the combination of Kim, Arnold, and Takeshita.
Applicant submits that claim 1, as amended, does not merely pursue a broad, functional concept of adding any arbitrary electron transfer domain, but rather it strictly defines a specific chimeric structure where an "FAD-binding domain" is selectively fused to a self-assembled ferritin monomer. Applicant submits that in stark contrast, Kim merely teaches a basic pMMO-ferritin fusion platform that entirely lacks any type of electron transfer mechanisn and Arnold, Park, and Takeshita, even evidenced by Gladyshev, fail to provide any teaching or suggestion to isolate and select the specific FAD- binding domain to construct a chimeric nanoparticle. Applicant submits that indeed, the claimed invention successfully identifies a specific structural window that maintains both the nanoparticle assembly and the enzymatic catalytic activity, which constitutes a distinct structural limitation over Kim, Arnold, Takeshita, and Gladyshev.
Applicant submits that second, a person of ordinary skill in the art would have had no "reasonable expectation of success" due to the high unpredictability explicitly stated in the specification.
Applicant respectfully submits that a motivation to combine references cannot sustain an obviousness rejection unless a reasonable expectation of success is firmly established. Applicant submits that the electron transfer domains allegedly disclosed in Arnold and Park are predicated on a free-floating, soluble protein environment. Applicant submits that conversely, as described in the instant specification, heterologous expression of such complexes entails difficulties in the expression of water-soluble proteins and requires precise interaction of enzyme complexes. Applicant submits that the claimed invention forms a spherical self-assembly. Applicant submits that Introducing a massive functional domain onto this restricted spherical surface poses an extraordinarily high risk of structural instability.
Therefore, Applicant respectfully submits that one of ordinary skill in the art could not have reasonably expected that combining these fundamentally incompatible physical systems would successfully yield a stable and functional nanoparticle.
Applicant submits that third, the quantitative data in the instant specification demonstrates "unexpected results" over the combination of the cited references.
Applicant submits that Park explicitly teaches that a full-length reductase (FR), which includes both the [2Fe- 2S] domain and the FAD domain, is indispensable for driving the catalytic operation of the enzyme. However, referring to the comparative experimental data illustrated in FIG. 9 and the relevant descriptions in the instant specification, the instant specification conclusively demonstrates that fusing the full-length reductase (FR) to the ferritin platform actually results in a severe degradation of catalytic performance.
Applicant submits that the claimed configuration of isolating and fusing only the specific FAD- binding domain completely circumvents this structural interference, yielding a methanol production activity of 1355.16 mol/mol enzyme, which is more than three times higher than that of the full-reductase fusion (427.03 mol/mol enzyme), which is completely unexpected results from the combination of Kim, Arnold, Park, and Takeshita.
Therefore, Applicant respectfully submits that, claim 1, as currently amended, is allowable over Kim, Arnold, Park, and Takeshita at least because it yields unexpected and superior results over Kim, Arnold, Park, and Takeshita.
Applicant submits that lastly, the Office Action fails to establish a proper motivation to combine and relies entirely on impermissible hindsight.
Applicant respectfully submits that the complex task of arranging heterologous functional domains on a self-assembled nanoparticle requires a careful consideration of structural constraints and precise interactions. Applicant submits that none of Kim, Arnold, Park, and Takeshita provide even a remote hint or motivation to selectively isolate the specific FAD-binding domain over other alternative electron transfer components to maximize catalytic efficiency.
Applicants amendment of the claims and applicants complete argument is acknowledged and has been carefully considered, however, is found no persuasive for the reasons previously made of record and for those reasons stated herein.
In response to applicants submission that Kim, Arnold, Park, and Takeshita, even evidenced by Gladyshev, are insufficient to establish a prima facie case of obviousness of claim 1 at least because Kim, Arnold, Park, and Takeshita fail to disclose or suggest every claimed feature, this is not found persuasive, on the basis that as previously stated, it would have been obvious to one of ordinary skill in the art before the effective filing date to make an enzyme construct capable of converting methane to methanol by fusing a methane oxidizing enzyme to ferritin to make a self-assembled enzyme nanoparticle as taught by Kim wherein the methane oxidizing enzyme is a chimeric polypeptide comprising the MMO catalytic domain, the MMOB domain and the MMOR domain as taught by Park et al. because it would have been obvious to combine prior art elements according to known methods to yield predictable results. One of skill in the art would have been further motivated to use MMO catalytic domain, the MMOB domain and the MMOR domain as taught by Park et al. because it was a known and cloned monooxygenase and its encoding gene was known and available to the ordinary artisan. The MMOR domain taught by Park et al. comprises a FAD binding domain (see Figure 1 and supporting text).
In response to applicants submission that they have amended claim 1 in the interest of expediting prosecution. Claim 1, as amended, recites, in part, "wherein the electron transfer domain includes a flavin adenine dinucleotide (FAD)-binding domain." This is not found persuasive because as stated above, one of skill in the art would have been further motivated to use MMO catalytic domain, the MMOB domain and the MMOR domain as taught by Park et al. because it was a known and cloned monooxygenase and its encoding gene was known and available to the ordinary artisan. The MMOR domain taught by Park et al. comprises a FAD binding domain (see Figure 1 and supporting text).
In response to applicants submission that claim 1, as amended, does not merely pursue a broad, functional concept of adding any arbitrary electron transfer domain, but rather it strictly defines a specific chimeric structure where an "FAD-binding domain" is selectively fused to a self-assembled ferritin monomer, this is not found persuasive because as stated above, one of skill in the art would have been further motivated to use MMO catalytic domain, the MMOB domain and the MMOR domain as taught by Park et al. because it was a known and cloned monooxygenase and its encoding gene was known and available to the ordinary artisan. The MMOR domain taught by Park et al. comprises a FAD binding domain (see Figure 1 and supporting text).
In response to applicants submission that Arnold, Park, and Takeshita, even evidenced by Gladyshev, fail to provide any teaching or suggestion to isolate and select the specific FAD- binding domain to construct a chimeric nanoparticle this is not found persuasive because applicants claims are not limited to the specific FAD-binding domain.
In response to applicants submission that a person of ordinary skill in the art would have had no "reasonable expectation of success" due to the high unpredictability explicitly stated in the specification this is not found persuasive on the basis that Kim et al. produce similar constructs and Kim and Park et al. provide all that is required to produce the obvious proteins comprising self-assembled ferritin monomers, in which each of a methane oxidation active domain and an electron transfer domain is fused to a ferritin monomer, wherein the electron transfer domain includes a flavin adenine dinucleotide (FAD)- binding domain.
In response to applicants submission that conversely, as described in the instant specification, heterologous expression of such complexes entails difficulties in the expression of water-soluble proteins and requires precise interaction of enzyme complexes, this is not found persuasive based upon the teaching of Kim et al. who create similar protein fusion complexes.
In response to applicants submission that the quantitative data in the instant specification demonstrates "unexpected results" over the combination of the cited references.
In response to applicants submission that the claimed configuration of isolating and fusing only the specific FAD- binding domain completely circumvents structural interference, yielding a methanol production activity of 1355.16 mol/mol enzyme, which is more than three times higher than that of the full-reductase fusion (427.03 mol/mol enzyme), which is completely unexpected results from the combination of Kim, Arnold, Park, and Takeshita, while applicants submitted difference is acknowledged, applicants suggested unexpected results and not commensurate in scope with the claims.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range which the evidence is offered to support.
In response to applicants submission that none of Kim, Arnold, Park, and Takeshita provide even a remote hint or motivation to selectively isolate the specific FAD-binding domain over other alternative electron transfer components to maximize catalytic efficiency, this is not found persuasive on the basis that the isolation of the FAD-binding domain is not required to make obvious the claimed protein comprising self-assembled ferritin monomers, in which each of a methane oxidation active domain and an electron transfer domain is fused to a ferritin monomer, wherein the electron transfer domain includes a flavin adenine dinucleotide (FAD)- binding domain. As stated previously and repeated above, it would have been obvious to one of ordinary skill in the art before the effective filing date to make an enzyme construct capable of converting methane to methanol by fusing a methane oxidizing enzyme to ferritin to make a self-assembled enzyme nanoparticle as taught by Kim wherein the methane oxidizing enzyme is a chimeric polypeptide comprising the MMO catalytic domain, the MMOB domain and the MMOR domain as taught by Park et al. because it would have been obvious to combine prior art elements according to known methods to yield predictable results. One of skill in the art would have been further motivated to use MMO catalytic domain, the MMOB domain and the MMOR domain as taught by Park et al. because it was a known and cloned monooxygenase and its encoding gene was known and available to the ordinary artisan (claims 1, 2, 4,, 13, 14-22). One of ordinary skill would have been motivated to create these chimeric proteins in E. coli as done by Kim et al. E. coli inherently expresses formate dehydrogenase as evidenced by Gladyshev et al. (J. Biological Chemistry, Vol 271,No. 14, pp 8095-8100, 1996). One of ordinary skill would have been motivated to make an enzyme construct as taught by Kim wherein the enzyme is a chimeric polypeptide comprising ferritin monomer, the MMO catalytic domain, the MMOB domain and the MMOR domain as taught by Park et al because oxidation of carbon feedstocks, including conversion of methane to methanol, is of great commercial interest (claims 5 and 7). Moreover, making a construct as taught by Kim et al., Park et al. would provide an additional source of enzyme (in addition to pMMO) that could expand the range of potential operating conditions, substrates, etc. Making an enzyme construct as taught by Kim wherein the enzyme is a chimeric polypeptide comprising the MMO catalytic domain, the MMOB domain and the MMOR domain as taught by Park et al would have led to predictable results with a reasonable expectation of success because each of the references Kim et al., Park et al. produce similar protein constructs. It would have been obvious to one of skill to use these enzyme constructs, microorganisms and compositions comprising said enzyme constructs in methods of converting methane gas to methanol as taught by Kim et al. and Park et al. (claim 21).
Thus claims 1, 2, 4, 5, 7, 8, 10, 11, 13, 14, 15, 16, 17, 18, 19, 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Kim et al., (Nature Catalysis 2.4 (2019): 342-353), Park et al. (Catalysis, 8, 582, Nov 26, 2018) as evidenced by Gladyshev et al. (J. Biological Chemistry, Vol 271,No. 14, pp 8095-8100, 1996).
Remarks
No claim is allowed.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD G HUTSON whose telephone number is (571)272-0930. The examiner can normally be reached 6-3 EST Mon-Fri.
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 at (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.
rgh
8/17/2026
/RICHARD G HUTSON/Primary Examiner, Art Unit 1652
Prosecution Insights