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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/15/25 has been entered.
Claims 2, 4-7, 28-31 have been canceled.
Claims 23-27 remain withdrawn as drawn to non-elected invention.
Applicants' arguments filed on 9/15/25, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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, 3, 8-22 and 32-35 are still at issue and under consideration.
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.
Claims 3, 8, 11, 12, 14, 16, 17 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 3, 8, 11-12, 14, 16-17 all recites the broad recitation such as above 82 ºC, above 70 ºC, 4-6.5, 70-100 ºC, 90-160 ºC and 20-75 ºC and from 25-40 ºC, respectively, and the claims also recites “above 100 ºC, above 85 ºC, 5-5.8, 80-90 ºC, 125-135 Cº, 40-75 ºC and 28- 35 ºC, respectively, which is the narrower statement of range/limitations recited in each of said claims. All said claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 1, 3, 8-22, 32-35 are rejected under 35 U.S.C. 103 as being unpatentable over Breneman et al., “Breneman” (US2009/0215127, 8/2009, cited in the parent case), further in view of Li et al. “Li” (Enzyme and Microbial Technology, 53, 414-419, 2013) and further in view of Blom et al., “Blom” (US patent No. 10,258,065, 4/2019, see also attachment 1).
Said patent publication teaches and claims a process for producing fermentation products (e.g. ethanol), utilizing starch containing material, wherein said process is performed at pH range of 4.5-5.4, prior to this invention. In paragraph [0056], Breneman teaches that more than 70% of its starch containing whole grain may be milled such that it will fit through a sieve of 0.5 mm. Said process (see [0055]) involves mixing milled starch-containing material (which may originate from corn (see claims 14-15) or wheat etc., see paragraph [0055]) with water to form a slurry, which is then treated with phytase liquefying starch, and subsequently for further liquefaction adding alpha-amylase ( at pH 4.5-5.2, and 68.3 ºC for (see [0058]), Followed by saccharifying the liquefied starch (see [0066], using glucoamylase) and then fermenting the fermentable sugars with yeast to obtain ethanol, wherein said ethanol (see for example claim 3) may then be recovered (see paragraph [0071]). In claim 13 of said patent application, it is recited that the liquefaction step with alpha-amylase may also utilize xylanase.
In paragraph [0064) jet-cooking is taught to be utilized at a liquefaction step wherein said jet-cooking may occur at 70-120 °C from 2 minutes-4 hours).
Said publication does not explicitly mention a source or an amino acid sequence for its xylanase.
Li has performed a study of XYNB (i.e. a GH11 xylanase from extremophilic Dictyoglomus thermophilum) activity as a function of temperature (see for example Fig 4) and reports that XYNB has its apparent temperature optimum at 85-90 ◦C.
Li however, does not report the amino acid sequence of said XYB enzyme.
Blom in Example 7, verifies the maize hydrolysis performance of a series of GH11 xylanases including SEQ ID NO:51, 52, 54, etc.), wherein its SEQ ID NO:52, is a GH11 xylanase having 100% identity to instant SEQ ID NO:34, originating from Dictyoglomus thermophilum (see attachment 1). According to the hydrolysis results shown in Table 13 of Blom, both SEQ ID NO:52 and 53 show significant hydrolysis performances based on the amount of xylose produced.
Before the effective filing of this application, it would have been obvious to one of ordinary skill in the art to start with the ethanol production method of Breneman and when working at high temperature such as 85 ºC or 90 ºC, to employ the xylanase source recommended by Li using one of the GH11 xylanases of Blom (including its SEQ ID NO:52 or SEQ ID NO:53) for liquefaction.
One of ordinary skill in the art when producing ethanol at high temperatures before the effective filing of this application, is motivated in using the method of Breneman and based on the advice of Li utilize one of the amino acids sequences of Blom including SEQ ID NO:52 because Li as early as 2013, clearly shows that Dictyoglomus thermophilum xylanase can retain good catalytic activity at high temperatures resulting in potentially higher yields of ethanol, rendering this invention obvious.
Finally, one of ordinary skill in the art has a reasonable expectation of success in preforming the method of Breneman in view of Li further in view of Blom because performing such methods were fully established in the prior art, before the effective filing of this application.
Claims 1, 3, 8-22, 32-35 are rejected under 35 U.S.C. 103 as being obvious over Martinez-Gutierrez et al., “Martinez” (US2006/0275882, 12/2006, cited in the parent case) further in view of Li (cited above) and further in view of “Blom” (cited above).
The applied reference has a common assignee 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.
Martinez teaches and claims a method of producing ethanol utilizing yeast as a fermenting organism (see paragraph [0030]) comprising providing a mash of milled starch containing material (originating from barley, potato etc., see claim 19 and [0013], and corn (see [0013]) and water, pre-liquefying the mash, gelatinizing the pre-liquefied mash by jet-cooking, liquefying the gelatinized mash ( at 60-95°C) in the presence of alpha-amylase and xylanase, saccharifying (which may optionally occur in the presence of glucoamylase, see paragraph [0029]) and fermenting the mash ( in the range of 24-96 hours, at pH range of 4-5, see paragraph [0031]) to produce ethanol.
In [0006], Martinez mentions that a jet-cooking step may be done in its process prior to liquefaction and liquefaction is done in the presence of a thermostable beta-glucanase and a xylanase. In [0021], jet-cooking temperature is disclosed to be for example 120 ºC and in [0020], preliquefaction step which includes jet-cooking step is disclosed to be 5-60 minutes.
In [0022], according to Martinez, liquefaction occurs at pH 4.4.-6.5. In [0026], the temperature for said liquefaction step is disclosed to be between 60-95 ºC.
In [0029], Martinez mentions that saccharification and fermentation may occur separately or simultaneously (SSF). Further according to said Martinez disclosure, the preferred temperature for fermentation (see [0031], is between 26-34 ºC and fermentation may take between 24-96 hours.
Said publication does not explicitly mention a source or an amino acid sequence for its xylanase.
Li has performed a study of XYNB (i.e. a GH11 xylanase from extremophilic Dictyoglomus thermophilum) activity as a function of temperature (see for example Fig 4) and reports that XYNB has its apparent temperature optimum at 85-90 ◦C.
Li however, does not report the amino acid sequence of said XYB enzyme.
Blom in Example 7, verifies the maize hydrolysis performance of a series of GH11 xylanases including SEQ ID NO:51, 52, 54, etc.), wherein its SEQ ID NO:52, has 100% identity to instant SEQ ID NO:34, originating from Dictyoglomus thermophilum (see attachment 1). According to the hydrolysis results shown in Table 13 of Blom, both SEQ ID NO:52 and 53 show significant hydrolysis performances based on the amount of xylose produced.
Before the effective filing of this application, it would have been obvious to one of ordinary skill in the art to start with the ethanol production method of Martinez and when working at high temperature such as 85 ºC or 95 ºC, to employ the xylanase source recommended by Li using one of the GH11 xylanases of Blom (including its SEQ ID NO:52 or SEQ ID NO:53) for liquefaction.
One of ordinary skill in the art when producing ethanol at high temperatures, is motivated in using the method of Martinez and based on the advice of Li utilize one of the amino acids sequences of Blom including SEQ ID NO:52 because Li as early as 2013, clearly shows that Dictyoglomus thermophilum GH11 xylanase can retain good catalytic activity at high temperatures resulting in potentially higher yields of ethanol, rendering this invention obvious.
Finally, one of ordinary skill in the art has a reasonable expectation of success in preforming the method of Martinez in view of Li further in view of Blom because performing such methods were fully established in the prior art, before the effective filing of this application.
With respect to claim 10, even though said Martinez reference does not explicitly mention the particle size of its milled starch, preparing a starch containing material, wherein more than 70% of its contents pass through 0.5 mm sieve, was well within the skill of one of ordinary skill before the filing of this invention as evidenced by Breneman (cited above) and hence, said claim 12 is also obvious.
It should be noted that Breneman reference is not a part of this rejection and is merely referred to show the state of prior art, before the effective filing of this application.
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARYAM MONSHIPOURI whose telephone number is (571)272-0932. The examiner can normally be reached on full-flex.
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, Melanie L. Gordon can be reached on 571-272- 8037. 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 https://ppair-my.uspto.gov/pair/PrivatePair. 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.
/MARYAM MONSHIPOURI/Primary Examiner, Art Unit 1656