DETAILED OFFICE ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-10 are pending and are being examined on the merits.
Priority
This application claims foreign priority under 35 U.S.C. 119(a)-(d) to foreign patent application CN202211281114.9 filed on 10/19/2022. A certified copy of the foreign priority application has been filed in this application on 12/12/2023.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on November 13, 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS has been considered by the examiner and those references therein have been indicated as such.
Specification/Informalities
The use of the term “Sephadex,” which is a trade name or a mark used in commerce, has been noted in this application (see, e.g., p. 5, para 2). The use of the term “Schott,” which is a trade name or a mark used in commerce, has been noted in this application (see, e.g., p. 6, second to last paragraph). The use of the term “Shodex,” which is a trade name or a mark used in commerce, has been noted in this application (see, e.g., p. 7, paragraph beginning “Conditions of the high performance”). The terms should be accompanied by the generic terminology; furthermore, the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM, or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claims 1 and 6-10 are objected to because of the following informalities:
Claims 1 and 10 are objected to for reciting “S1”, “S2”, “S3, and “S4” In the interest of improving claim form, it is suggested that “S1”, “S2”, “S3, and “S4” be amended to “step 1”, “step 2”, “step 3”, and “step 4.”
Claim 1 is objected to for reciting “A preparation method for a Ganoderma lucidum β-glucan extract.” In the interest of improving claim form, it is suggested that the Applicants amend the recited phrase, and phrases alike, to “A method for preparing a Ganoderma lucidum β-glucan extract.”
Claim 6 is objected to for reciting “standing at room temperature for 8-12 h.” In the interest of improving claim form, it is suggested that the Applicants amend the recited phrase to “letting the mixture stand at room temperature for 8-12 h.”
Claim 7 is objected to because of the recitation of “NaOH” without first writing out the full phrase for which the abbreviation “NaOH” is used. In the interest of improving claim form, it is suggested that the Applicants amend the recited phrase to “sodium hydroxide (NaOH).”
Claim 8 is objected to for reciting “according claim 1.” In the interest of improving claim form, it is suggested that the Applicants amend the recited phrase to “according claim to 1.”
Claim 9 is objected to because of the recitation of “KOH” without first writing out the full phrase for which the abbreviation “KOH” is used. In the interest of improving claim form, it is suggested that the Applicants amend the recited phrase to “potassium hydroxide (KOH).”
Claim 9 is objected to for reciting “A detection method for a Ganoderma lucidum β-glucan extract.” In the interest of improving claim form, it is suggested that the Applicants amend the recited phrase, and phrases alike, to “A method of detecting Ganoderma lucidum β-glucan extract.”
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-10 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1 (claims 2-8 dependent therefrom) and 10 are indefinite because the recitation of “glucose gel column chromatography” is unclear. The specification does not define the term but provides an example of the purification of Ganoderma lucidum β-glucan extract by “DEAE Sephadex A-25 glucose gel column chromatography.” The Offices suggests that the applicant clarify the meaning by modification of the “glucose gel column chromatography.” For the purpose of compact prosecution, the recited limitation is interpreted to as a gel column chromatography comprising glucose in the sample, stationary phase, mobile phase, loading buffer, or wash buffer.
Claims 1 (claims 2-3 and 5-8 dependent therefrom) and 10 are rejected as indefinite because of the recitation of "extraction with heating” is unclear. The recited phrase is relative and the claims do not recite a reference for determining a what constitutes "extraction with heating” since the claims do not provide a baseline temperature before heating or an extraction temperature when heat is applied. It is suggested that applicant clarify the meaning of the term “with heating.” For the purpose of compact prosecution, the recited limitation of is construed to refer to extraction at a temperature over room-temperature, extraction at a temperature over standard-temperature (i.e., 25 °C), or extraction wherein heat is inputted into the system.
Claim 9 (claim 10 therefrom) is indefinite because the recitation of “glucose standard substance” is unclear. The Offices suggests that the applicant clarify the meaning by modification of the “glucose standard substance.” For the purpose of compact prosecution, the recited limitation is interpreted to as glucose or a compound containing a glucose and/or a glucose moiety.
Claim 9 (claim 10 dependent therefrom) is rejected as indefinite because of the recitation of "pressurizing for hydrolysis” is unclear. The recited phrase is relative and the claims do not recite a reference for determining a what constitutes "pressurizing for hydrolysis” since the claims do not provide a baseline pressure before pressurizing or an extraction pressure after pressurization. It is suggested that applicant clarify the meaning of the term “pressurizing for hydrolysis.” For the purpose of compact prosecution, the recited limitation of is construed to refer to extraction at a temperature over room-temperature, extraction at a pressure over standard-temperature (i.e., 1 atm), or extraction wherein the system is pressurized above the surrounding pressure.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-8 and 10 are rejected under 35 U.S.C. 112(a) 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 at the time the application was filed, had possession of the claimed invention.
MPEP 2163.II.A.2.(a).i) states, “Whether the specification shows that applicant was in possession of the claimed invention is not a single, simple determination, but rather is a factual determination reached by considering a number of factors. Factors to be considered in determining whether there is sufficient evidence of possession include the 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”.
For claims drawn to a genus, MPEP § 2163 states the written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406.
According to MPEP 2163.II.A.3.(a).ii), [s]atisfactory disclosure of a ‘representative number’ depends on whether one of skill in the art would recognize that the applicant was in possession of the necessary common attributes or features possessed by the members of the genus in view of the species disclosed. For inventions in an unpredictable art, adequate written description of a genus which embraces widely variant species cannot be achieved by disclosing only one species within the genus…Instead, the disclosure must adequately reflect the structural diversity of the claimed genus, either through the disclosure of sufficient species that are ‘representative of the full variety or scope of the genus,’ or by the establishment of ‘a reasonable structure-function correlation.’"
The factors considered in the Written Description requirement are (1) level of skill and knowledge in the art, (2) partial structure, (3) physical and/or chemical properties, (4) functional characteristics alone or coupled with a known or disclosed correlation between structure and function, and the (5) 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.
Claims 1-8 and 10 recite a method of preparing Ganoderma lucidum the β-glucan extract comprising extraction with an alkali solution.
Claim 5 further limits the alkali solution to comprise a solution of 0.01-1 mol/mL NaOH.
The claims relate to the art of solubility because the claims encompass a method preparing Ganoderma lucidum β-glucan extract comprising an extraction with an alkali solution and/or solution of sodium NaOH.
Pubchem Compound Identifier 14798 (Sodium Hydroxide, Pubchem, published October 11, 2021; cited on the attached Form PTO-892; hereafter, “Pubchem CID 14798”) teaches that the molar mass of sodium hydroxide (NaOH) is 39.9997 g/mol (p. 1). Pubchem CID 14798 also teaches that 1 g of NaOH dissolves in 0.9 mL of water and 0.3 mL of boiling water (p. 8). An ordinary artisan would be able to calculate solubility of NaOH in water and boiling water as approximately 27.8 mol/L and 83.3 mol/L, respectively.
As such, one of skill in the art would recognize the concentration range of 0.01-1 mol/mL NaOH (equivalent to 10-1000 mol/L) in water encompassed by the claims for alkali extraction is not all attainable above its solubility in water. One of skill in the art would reasonably conclude that the claimed subject matter is not supported by an adequate written description and the disclosure fails to provide evidence that the applicant was in possession of the claimed subject matter.
Claim 1-8 and 10 are rejected under 35 U.S.C. 112(a) because the specification, while being enabling for a method of preparing Ganoderma lucidum β-glucan extract comprising extraction an alkali solution, does not reasonably provide enablement for a method of preparing Ganoderma lucidum β-glucan extract comprising extraction an alkali solution of NaOH above the solubility of NaOH.
“The test of enablement is not whether any experimentation is necessary, but whether, if experimentation is necessary, it is undue.” In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 219 (CCPA 1976). Factors to be considered in determining whether undue experimentation is required are summarized in In re Wands (858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)) as follows: (A) The breadth of the claims; (B) The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (E) The level of predictability in the art; (F) The amount of direction provided by the inventor; (G) The existence of working examples; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. See MPEP § 2164.01(a). The Factors considered to be most relevant to the instant rejection are addressed in detail below.
The nature of the invention: The nature of the invention is a method of preparing Ganoderma lucidum β-glucan extract comprising extraction with an alkali solution.
The breadth of the claims: Claims 1-8 and 10 recite a method of preparing Ganoderma lucidum β-glucan extract comprising extracting with an alkali solution. Claim 5 further limits the alkali solution to comprise a solution of 0.01-1 mol/mL NaOH.
The state of the prior art; The level of one of ordinary skill; and The level of predictability in the art: According to MPEP 2164.03, “…what is known in the art provides evidence as to the question of predictability” and “[I]f one skilled in the art cannot readily anticipate the effect of a change within the subject matter to which that claimed invention pertains, then there is lack of predictability in the art.”
The claims relate to the art of solubility because the claims encompass a method preparing Ganoderma lucidum β-glucan extract comprising an extraction with an alkali solution and/or solution of sodium NaOH.
Pubchem Compound Identifier 14798 (Sodium Hydroxide, Pubchem, published October 11, 2021; cited on the attached Form PTO-892; hereafter, “Pubchem CID 14798”) teaches that the molar mass of sodium hydroxide (NaOH) is 39.9997 g/mol (p. 1). Pubchem CID 14798 also teaches that 1 g of NaOH dissolves in 0.9 mL of water and 0.3 mL of boiling water (p. 8). An ordinary artisan would be able to calculate solubility of NaOH in water and boiling water as approximately 27.8 mol/L and 83.3 mol/L, respectively.
As such, one of skill in the art would recognize the concentration range of NaOH in the alkali solution recited by the claims encompass concentrations of NaOH not attainable based on its solubility in water.
The amount of direction provided by the inventor and The existence of working examples: The specification discloses the following working example extraction of Ganoderma lucidum β-glucan with an alkali solution:
extraction of β-glucan from Ganoderma lucidum with an alkali solution of 0.01 mol/mL NaOH;
extraction of β-glucan from Ganoderma lucidum with an alkali solution of 0.1 mol/mL NaOH; and
extraction of β-glucan from Ganoderma lucidum with an alkaline solution of 1 mol/mL NaOH.
In view of the state of the prior art and the knowledge of one of ordinary skill, undue experimentation would be necessary for a skilled artisan to make and use the entire scope of the claimed invention. Applicants have not provided sufficient guidance to enable one of ordinary skill in the art to make and use the claimed invention in a manner reasonably correlated with the scope of the claims. The scope of the claims must bear a reasonable correlation with the scope of enablement (In re Fisher, 166 USPQ 19 24 (CCPA 1970)). See In re Wands 858 F.2d 731, 8 USPQ2nd 1400 (Fed. Cir, 1988).
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.
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.
Claim 8 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN108976314A (cited on the attached Form PTO-892). Reference is made to a machine translation of CN108976314A obtained from Espacenet (cited on the attached Form PTO-892; hereafter “CN’314”)
Claim 8 is drawn to a Ganoderma lucidum β-glucan extract prepared by the preparation method according to claim 1.
Regarding claim 8, CN’314 teaches a Ganoderma lucidum β-glucan extract as well as a method to prepare a β-glucan extract from Ganoderma lucidum (Title; Abstract; Claim 3). CN’314 teaches extracting polysaccharides from Ganoderma lucidum fruiting bodies (p. 2, paragraph beginning with “The traditional method…”).
It is the Examiner’s position claim 8 constitutes a product-by-process claim. Since the patentability of a product-by-process claim is determined by the product claimed and not the recited process steps (see MPEP 2113), the Ganoderma lucidum β-glucan extract taught by CN’314 anticipates instant claim 8.
For the reasons stated herein, claim 8 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN’314.
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 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 1-3 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over CN’314 in view of CN105039459A (cited on the IDS filed May 10, 2022), and Karslioglu et al. (Eurasian J Bio Chem Sci, published December 9, 2021, Vol. 4, No. 2, p. 51-55; cited on the attached Form PTO-892; hereafter “Karslioglu”) as evidenced by Janson et al. (Chromatographia, published May 1987, Vol. 23, No. 5; cited on the attached Form PTO-892; hereafter “Janson”), and Siu (The Hong Kong Polytecnic University, published 2015; cited on the attached Form PTO-892; hereafter “Siu”). Reference is made to a machine translation of CN105039459A obtained from Espacenet (cited on the attached Form PTO-892; hereafter “CN’459”).
Regarding claims 1-3 and 8, CN’314 teaches a Ganoderma lucidum β-glucan extract as well as a method to prepare a β-glucan extract from Ganoderma lucidum (Title; Abstract; Claim 3). CN’314 teaches extracting polysaccharides from Ganoderma lucidum fruiting bodies (p. 2, paragraph beginning with “The traditional method…”).
Regarding step 1 of claim 1, CN’314 teaches the method comprises pulverizing Ganoderma lucidum and adding water before extraction as well as filtering to obtain a residue of Ganoderma lucidum (Claim 3).
CN’314 does not teach wherein crushed fruiting bodies of Ganoderma lucidum are hydrolyzed by trypsin.
CN’459 teaches a method of extracting beta-glucan from the fruiting body of Ganoderma lucidum (Abstract; Claim 1). CN’459 teaches the method comprises ethanol-trypsin pre-processing wherein pulverized Ganoderma lucidum fruiting body is trypsin is added for 30-50 minutes of enzymatic hydrolysis (Abstract; p. 3, second to last paragraph; Claim 4). CN’459 teaches the trypsin-hydrolysate is then centrifuged to obtain a Ganoderma lucidum fruiting body filter residue (p. 3, last paragraph; Claim 6). CN’459 teaches the ethanol-trypsin pretreatment in the extraction process of Ganoderma lucidum β-glucan can improve the extraction efficiency of Ganoderma lucidum β-glucan (p. 3, para 3).
In view of the combined teachings of CN’314 and CN’459, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of preparing β-glucan from Ganoderma lucidum taught by CN’314 such that the pulverizing and preparation a filter residue is substituted with the method of producing β-glucan containing Ganoderma lucidum filter residue taught by CN’459 wherein pulverized Ganoderma lucidum fruiting body is enzymatically hydrolyzed with trypsin in ethanol for 30-50 min and separating by centrifugation to obtain a filter residue.
An ordinary artisan would have been motivated to modify and would have had a reasonable expectation of success the method of preparing β-glucan from Ganoderma lucidum taught by CN’314 such that the pulverizing and preparation a filter residue is substituted with the method of producing β-glucan containing Ganoderma lucidum filter residue taught by CN’459 containing Ganoderma lucidum filter residue taught by CN’459 wherein pulverized Ganoderma lucidum fruiting body is enzymatically hydrolyzed with trypsin in ethanol for 30-50 min and separating by centrifugation to obtain a filter residue. This is because CN’459 taught the ethanol-trypsin pretreatment in the extraction process of Ganoderma lucidum β-glucan can improve the extraction efficiency of Ganoderma lucidum β-glucan.
Regarding step 2 of claim 1 and claims 2-3, CN’314 teaches extracting the β-glucan residue of Ganoderma lucidum with an alkali solution (i.e., sodium hydroxide) with an extraction temperature of 20-60 °C, after alkali extraction the samples are centrifuged to collect a supernatant that is neutralized, and the supernatant is concentrated under vacuum and reduced to 1/2 to 1/5 of the original volume (Claim 3; p. 3, paragraph beginning “The method for preparing…” and ending with “extraction time is 0.5 to 4 h”). An ordinary artisan would have immediately envisioned the extraction temperature of 20-60 °C constitutes alkali extraction with heating.
CN’314 does not teach wherein the extraction comprises ultrasonic extraction.
However, CN’459 teaches ultrasonic extraction of polysaccharides from Ganoderma lucidum (p. 2, paragraph beginning with “LI Jing…” – p. 2, paragraph beginning with “Literature: Liu…”).
The combination of CN’314 and CN’459 does not explicitly teach wherein the ultrasonic extraction occurs with heating.
Karslioglu teaches extracting beta-glucan from Ganoderma lucidum via ultrasonic assisted extraction results in higher molecular weight glucan beta-glucan with greater antioxidant activity (p. 52, col 1, para 1). Karslioglu teaches extracting beta-glucan wherein the sample in a sodium hydroxide solution is placed in a heated (90 °C) ultrasonic water bath (Abstract: p. 52, col 2, para 1).
In view of the combined teachings of CN’314, CN’459, and Karslioglu, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of preparing β-glucan from Ganoderma lucidum taught by CN’314 such extraction of the Ganoderma lucidum comprises ultrasonic extraction taught by CN’459, and wherein the ultrasonic extraction comprises the ultrasonic assisted extraction wherein the sample is in a sodium hydroxide solution placed in a heated ultrasonic water bath.
An ordinary artisan would have been motivated to modify and would have had a reasonable expectation of modifying the method of preparing β-glucan from Ganoderma lucidum taught by CN’314 such extraction of the Ganoderma lucidum comprises ultrasonic extraction taught by CN’459, and wherein the ultrasonic extraction comprises the ultrasonic assisted extraction wherein the sample is in a sodium hydroxide solution placed in a heated ultrasonic water bath. It is obvious to substitute one known method of extracting β-glucan for another, such as the ultrasonic assisted extraction of β-glucan wherein the sample is in a sodium hydroxide solution placed in a heated ultrasonic water bath taught by Karslioglu, with predictable and expected results because they both perform the same function of extracting β-glucan from a sample. Furthermore, Karslioglu taught extracting beta-glucan from Ganoderma lucidum via ultrasonic assisted extraction results in higher molecular weight glucan beta-glucan with greater antioxidant activity.
Regarding step 3 of claim 1, CN’314 teaches the concentrated supernatant is precipitated with ethanol, separating the solid precipitate, reconstituting the solid precipitate, and lyophilizing to obtain a crude β-glucan extract (Claim 3). An ordinary artisan would immediately envision lyophilizing is freeze-drying.
Regarding step 4 of claim 1, CN’314 teaches separating and purifying the crude β-glucan extract by a chromatographic column (p. 2, paragraph beginning with “The object of the…”). CN’314 teaches determining absolute molecular mass of Ganoderma lucidum β-glucan and purity thereof by high performance gel permeation chromatography (p. 5, para 1-3).
CN’314 does not teach purifying the crude Ganoderma lucidum β-glucan extract is completed by glucose gel column chromatography.
Siu teaches purifying β-glucan from mushrooms (p. 11, para 3). Siu teaches crude polysaccharide samples can be fractionated and purified through size exclusion chromatography such as Sephadex gel columns (p. 18, para 2). Siu teaches elution from the gel columns is eluted with a suitable running buffer, fractions collected, concentrated, and freeze dried (p. 18, para 2 – p. 19, para 1).
Evidentiary reference Janson is cited to show gel Sephadex comprises cross-linked dextran and dextran comprises glucose (Abstract; p. 362, col 1, para 2; p. 364, col 2, para 1; Figure 4). Therefore, the Sephadex gel column stationary phase-based size exclusion chromatography taught by Siu inherently comprises glucose.
In view of the combined teachings of CN’314, CN’459, and Siu, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of preparing β-glucan from Ganoderma lucidum taught by CN’314 such that purification of β-glucan by chromatography is completed by size exclusion chromatography such as Sephadex gel columns taught by Siu.
An ordinary artisan would have been motivated to modify and would have had a reasonable expectation of modifying the method of preparing β-glucan from Ganoderma lucidum taught by CN’314 such that purification of β-glucan by chromatography is completed by size exclusion chromatography such as Sephadex gel columns taught by Siu. It is obvious to substitute one known chromatographic method of purifying polysaccharides for another, such as the size exclusion chromatography such as Sephadex gel columns taught by Siu, with predictable and expected results because they both perform the same function of purifying and separating polysaccharides.
Consequently, the invention of claims 1-3 and 8 would have been obvious to one of ordinary skill in the art before the effective filing date.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over CN’314 in view of CN’459, Karslioglu, and Siu as applied to claims 1-3 and 8 above, and further in view of Garcia-Vaquero et al. (Mar. Drugs, published 2018, Vol. 16, No. 257; cited on the attached Form PTO-892; hereafter “Garcia-Vaquero”) and as evidenced by Janson.
The relevant teachings of CN’314, CN’459, Karslioglu, and Siu, and evidentiary reference Janson as applied to claims 1-3 and 8 are discussed above and incorporated herein.
Regarding claim 4, the combined teachings of CN’314, CN’459, Karslioglu, and Siu do not explicitly teach wherein the ultrasonic extraction occurs at a temperature of 60-80 °C.
Garcia-Vaquero taught ultrasound-assisted extraction of glucans at a temperature of 80 °C (Table 1).
In view of the combined teachings of CN’314, CN’459, Karslioglu, Siu, and Garcia-Vaquero, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of preparing β-glucan from Ganoderma lucidum taught by CN’314 such that through optimization that ultrasonic extraction with heating occurred at 80 °C.
An ordinary artisan would have been motivated to modify and would have had a reasonable expectation of modifying the method of preparing β-glucan from Ganoderma lucidum taught by CN’314 such that through optimization that ultrasonic extraction with heating occurred at 80 °C. A range can be disclosed in multiple prior art references instead of in a single prior art reference depending on the specific facts of the case (see MPEP2144.05.I). Since Garcia-Vaquero and Karslioglu taught ultrasonic extraction of glucans at 80 °C and 90 °C, respectively, an ordinary would have an operational expectation of success over the entire range taught in the prior art. Therefore, since the effectiveness of ultrasonic extraction of glucans, such as β-glucan, would have been influenced by the result effective variable of extraction temperature, it would have been obvious for one of ordinary skill to discover the optimum workable extraction temperature disclosed by the prior art by normal optimization procedures known in the art and arrived at an ultrasonic extraction temperature of 80 °C.
Consequently, the invention of claim 4 would have been obvious to one of ordinary skill in the art before the effective filing date.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over CN’314 in view of CN’459, Karslioglu, and Siu as applied to claims 1-3 and 8 above, and further in view of Huang et al. (Molecules, published 2010, Vol. 15, p. 3694-3708; cited on the attached Form PTO-892; hereafter “Huang”) and as evidenced by Janson.
Regarding claim 5, the relevant teachings of CN’314, CN’459, Karslioglu, Siu, and evidentiary reference Janson as applied to claims 1-3 and 8 are discussed above and incorporated herein.
The combined teachings of CN’314, CN’459, Karslioglu, and Siu do not explicitly teach wherein the alkali extraction solution comprises 0.01-1 mol/mL NaOH.
Huang teaches optimization of sodium hydroxide concentration for extraction of polysaccharides from Ganoderma lucidum (Title; Abstract; Table 1).
In view of the combined teachings of CN’314, CN’459, Karslioglu, Siu, and Huang, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of preparing β-glucan from Ganoderma lucidum taught by CN’314 such that through optimization the alkali extraction solution comprises 0.01 mol/mL NaOH.
An ordinary artisan would have been motivated to modify and would have had a reasonable expectation of modifying the method of preparing β-glucan from Ganoderma lucidum taught by CN’314 such that through optimization the alkali extraction solution comprises 0.01 mol/mL NaOH. The concentration of NaOH in the alkali extraction is a results effective variable since Huang teaches optimization of the NaOH concentration impacts the yield of extracting polysaccharides from Ganoderma lucidum, it would have been obvious routine experimentation to find a workable range of NaOH concentration and would have arrived at wherein the ultrasonic extraction occurs in a 0.01 mol/mL NaOH solution in order to optimize the β-glucan extraction (See MPEP 2144.05.II)
Consequently, the invention of claim 5 would have been obvious to one of ordinary skill in the art before the effective filing date.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over CN’314 in view of CN’459, Siu, and Karslioglu as applied to claims 1-3 and 8 above, and further in view of CN114805620A (cited on the attached Form PTO-892) and CN112979840A (cited on the attached Form PTO-892) and as evidenced by Janson. Reference is made to a machine translation of CN114805620A obtained from Espacenet (cited on the attached Form PTO-892; hereafter “CN’620”) and a machine translation of CN112979840A obtained from Espacenet (cited on the attached Form PTO-892; hereafter “CN’840”).
The relevant teachings of CN’314, CN’459, Karslioglu, Siu, and evidentiary reference Janson as applied to claims 1-3 and 8 are discussed above and incorporated herein.
Regarding claim 6, CN’314 further teaches alcohol precipitation to obtain crude β-glucan extract comprises adding 2 to 5 volumes of 95 wt% purity ethanol, leaving at room temperature for 24-72 h, separating the solid precipitate, reconstituting the solid precipitate, and lyophilizing to obtain a crude β-glucan extract (Claim 3).
The combined teachings of CN’314, CN’459, Karslioglu, and Siu do not explicitly teach wherein the alcohol precipitation comprises adding 90% ethanol nor wherein the precipitation occurs for 8-12 hours.
CN’620 teaches a method of preparing Ganoderma lucidum polysaccharide comprising precipitation with 60% ethanol (Abstract).
CN’840 teaches a method for separating and purifying Ganoderma lucidum beta-glucan comprising alcohol precipitation wherein ethanol is added, mixing the solution, and letting stand for 4 hours (Claim 1).
In view of the combined teachings of CN’314, CN’459, Karslioglu, Siu, CN’620, and CN’840, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of preparing β-glucan from Ganoderma lucidum taught by CN’314 such that the ethanol precipitation comprised adding 2 to 5 volumes of ethanol at room temperature and through optimization that the added alcohol was 90% ethanol and the alcohol precipitation occurred over 8-12 hours.
An ordinary artisan would have been motivated to modify and would have had a reasonable expectation of modifying the method of preparing β-glucan from Ganoderma lucidum taught by CN’314 such that the ethanol precipitation comprised adding 2 to 5 volumes of ethanol at room temperature and through optimization that the added alcohol was 90% ethanol and the alcohol precipitation occurred over 8-12 hours. A range can be disclosed in multiple prior art references instead of in a single prior art reference depending on the specific facts of the case (see MPEP2144.05.I). Since CN’620 and CN’314 taught the use of 60% and 95% ethanol, respectively, in the precipitation of polysaccharides from Ganoderma lucidum, an ordinary would have an operational expectation of success over the entire range taught in the prior art. Therefore, since the effectiveness of alcohol precipitation in the preparation of polysaccharides, such as β-glucan, would have been influenced by the result effective variable of ethanol concentration, it would have been obvious for one of ordinary skill to discover the optimum workable range of the ethanol used in the alcohol precipitation disclosed by the prior art by normal optimization procedures known in the art and arrived at a concentration of 90% ethanol. Since CN’620 and CN’314 taught the length of alcohol precipitation of β-glucan from Ganoderma lucidum occurring over time periods of 4 hours and 24-72 hours, respectively, an ordinary would have an operational expectation of success over the entire range taught in the prior art. Therefore, since the effectiveness of alcohol precipitation in the preparation of β-glucan, would have been influenced by the result effective variable of length of ethanol precipitation, it would have been obvious for one of ordinary skill to discover the optimum workable range of the length of ethanol precipitation disclosed by the prior art by normal optimization procedures known in the art and arrived at a workable range of 8-12 hours.
Consequently, the invention of claim 6 would have been obvious to one of ordinary skill in the art before the effective filing date.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over CN’314 in view of CN’459, Siu, and Karslioglu as applied to claims 1-3 and 8 above, and further in view of de Jesus et al. (Carbohydrates Polymers, published November 15, 2018, Vol. 200, p. 353-360; cited on the attached Form PTO-892; hereafter “de Jesus”) and Chuang et al. (Pharmaceutical Biology, published October 8, 2012, Vol. 51, No. 1, p. 84-95; cited on the attached Form PTO-892; hereafter “Chuang”) and as evidenced by Janson.
The relevant teachings of CN’314, CN’459, Karslioglu, Siu, and evidentiary reference Janson as applied to claims 1-3 and 8 are discussed above and incorporated herein.
Regarding claim 7, the combined teachings of CN’314, CN’459, Karslioglu, and Siu do not explicitly teach wherein purification by chromatography utilizes 0.1 mol/L NaOH solution as a mobile phase.
De Jesus taught the use of 0.1 M NaOH to solubilize β-glucan from a mushroom sample to separate from α-glucan (Abstract; Figure 1).
Chuang teaches using gel chromatography to separate polysaccharide containing molecules from Ganoderma lucidum using a mobile phase comprising 0.05 N NaOH on a Sephadex G-100 column (Abstract; p. 89, col1, para 1).
In view of the combined teachings of CN’314, CN’459, Siu, Karslioglu, de Jesus, and Chuang, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of preparing β-glucan from Ganoderma lucidum taught by the combination of CN’314, CN’459, Karslioglu, and Siu such that the Sephadex-based gel chromatography taught comprises the use of 0.1 M NaOH for the mobile phase.
An ordinary artisan would have been motivated to modify and would have had a reasonable expectation of the method of preparing β-glucan from Ganoderma lucidum taught by CN’314, CN’459, Karslioglu, and Siu such that the Sephadex-based gel chromatography taught comprises the use of 0.1 M NaOH for the mobile phase. This is because De Jesus taught the use of 0.1 M NaOH to solubilize β-glucan from a mushroom sample to separate from α-glucan as well as that Chuang taught using gel chromatography to separate polysaccharide containing molecules from Ganoderma lucidum using a mobile phase comprising NaOH on a Sephadex G-100 column
Consequently, the invention of claim 7 would have been obvious to one of ordinary skill in the art before the effective filing date.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over JP2012520289A (cited on the attached Form PTO-892) in view of Yoo et al. (Food Chemistry, published March 5, 2020, Vol. 308, No. 125670; cited on the attached Form PTO-892; hereafter “Yoo”), Megazyme (Mushroom and Yeast Beta-Glucan Assay Procedure, Megazyme, available February 7, 2022; cited on the attached Form PTO-892; hereafter “Megazyme”), Xu et al. (Protein Expression and Purification, published 2006, Vol. 47, No. 1, p. 118-127; cited on the attached Form PTO-892; hereafter “Xu”), Lachance et al. (Can J Biochem, published 1977, Vol. 55, No. 9, Abstract obtained from PubMed; cited on the attached Form PTO-892; hereafter “Xu”), and Bilskey et al. (SLAS Technology, published 2020, Vol. 25, No. 5, p. 494-504; cited on the attached Form PTO-892; hereafter “Bilskey”). Reference is made to a machine translation of JP2012520289A obtained from Google Patents (cited on the attached Form PTO-892; hereafter “JP’289”).
Regarding claim 9, JP’289 teaches a Megazyme assay-based method of detecting β-glucan comprising producing a β-glucan containing extract from a mushroom by solubilizing the sample with HCl, diluting the sample five times with water and hydrolyzing, neutralizing the hydrolyzed extract with KOH, and incubating at 40 °C for 60 minutes a mixture of comprising the hydrolyzed extract as well as exo-1,3-β-glucanase and β-glucosidase in a 0.2 M sodium acetate buffer (pH 5.0) to hydrolyze the sample to D-glucose (Abstract; p. 7, para 5-7). JP’289 teaches total glucan (α-glucan + β-glucan) was determined by adding glucose oxidase / peroxidase mixture (GOPOD) and measuring absorbance at 510 nm to determine total glucan contents of the extract (p. 7, para 5). An ordinary artisan would immediately envision the mixture of hydrolyzed mushroom β-glucan extract is adequately mixed, such as that it is ‘mixed evenly,’ to ensure the hydrolysate and enzymes are evenly dispersed throughout the sample to maximize enzymatic action on the substrate. JP’289 teaches measuring α-glucan contents the mushroom extract sample by incubating with amyloglucosidase and invertase measuring before adding GOPOD and measuring absorbance at 510 nm, and the measurement comprises using a (p. 7, para 5-7). JP’289 teaches the use of a glucose standard to indirectly measure β-glucan through the difference in the measured total glucan content and α-glucan (i.e., Total glucan = α-glucan + β-glucan or β-glucan = total glucan - α-glucan) (p. 7, para 5-7; p. 10, last paragraph – p. 11, para 1). JP’289 teaches the extraction of β-glucan from Ganoderma lucidum mushrooms (p. 11, para 2).
JP’289 does not explicitly teach wherein the method of detecting β-glucan comprises pressurized β-glucan extraction.
Yoo teaches the extraction of β-glucan under high temperature (i.e., 110-220 °C) and high pressure, and in acidic solvent produces up to two-fold higher yield than when using standard hot-water extraction (i.e., 60 °C) (Abstract; p. 3, para 5; Figures 1 and 3).
In view of the combined teachings of JP’289 and Yoo, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of detecting β-glucan comprising producing a β-glucan containing extract from a Ganoderma lucidum taught by JP’289 such that the HCl-solubilized β-glucan containing extract diluted in water is extracted by the high pressure and temperature extraction in the acidic water-based extraction method taught by Yoo.
An ordinary artisan would have been motivated to and would have had a reasonable expectation of success to modify the method of detecting β-glucan comprising producing a β-glucan containing extract from a Ganoderma lucidum taught by JP’289 such that the HCl-solubilized β-glucan containing extract diluted in water is extracted by the high pressure and temperature extraction in the acidic water-based extraction method taught by Yoo. This is because Yoo taught the high pressure and temperature extraction in the acidic water-based extraction method can increase the extraction of β-glucan by up to two times as compared to a standard extraction at low temperature.
The combined teaching of JP’289 and Yoo does not explicitly teach wherein the method detecting the β-glucan comprises cooling the β-glucan extract hydrolysate.
Megazyme teaches a Mushroom and Yeast Beta-glucan Assay procedure wherein acid solubilization of and hydrolysis of a mushroom sample comprises solubilization in acid and dilution in water before boiling the samples (i.e., 100 °C) (Title; p. 5, step A.a.1 – p. 6, step A.a.5). Megazyme teaches the cooling boiled hydrolysate sample to room temperature before the adding exo-1,3-β-glucanase and β-glucosidase in a 200 M sodium acetate buffer (p. 6, step A.a.6 – p. 6, step A.b.4). Megazyme teaches incubating the cooled mushroom hydroxylate, exo-1,3-β-glucanase, and β-glucosidase at 40 °C for 60 min (p. 6, step A.b.1 - p. 6, step A.b.4).
In view of the combined teachings of JP’289, Yoo, and Megazyme, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of detecting β-glucan taught by JP’289 and Yoo by cooling the hydrolysate before adding exo-1,3-β-glucanase and β-glucosidase in a 0.2 M sodium acetate buffer as taught by Megazyme.
An ordinary artisan would have been motivated to and would have had a reasonable expectation of success of modifying the method of detecting β-glucan taught by JP’289 and Yoo by cooling the hydrolysate before adding exo-1,3-β-glucanase and β-glucosidase in a 0.2 M sodium acetate buffer. JP’289 taught the β-glucan determination was by use of “Megazyme kit,” Megazyme teaches cooling the mushroom hydrolysate before addition of exo-1,3-β-glucanase and β-glucosidase in a 0.2 M sodium acetate buffer, and both taught the incubation of the mushroom hydrolysate and enzyme mixture at 40 °C.
The combined teachings of JP’289, Yoo, and Megazyme do not explicitly teach wherein the method detecting the β-glucan comprises in exo-1,3-β-glucanase and β-glucosidase in sodium acetate buffer with a pH 5.2.
Xu teaches a Kluyveromyces aestuarii exoglucanase discussed by Lachance et al. (Purification and partial characterization of an exo-b-glucanase from the yeast Kluyveromyces aestuarii, Can. J. Biochem. 55 (1977) 1001–1006.) is optimally active at pH 5.2 (p. 122, col 2, para 1).
Lachance teaches an exo-1,3-beta-glucanase from the yeast Kluyveromyces aestuarii (Abstract).
In view of Xu, an ordinary artisan would immediately envision the exo-1,3-beta-glucanase from the yeast Kluyveromyces aestuarii is optimally active at pH 5.2.
In view of the combined teachings of JP’289, Yoo, Megazyme, Xu, and Lachance, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the exo-1,3-β-glucanase and β-glucosidase in a 0.2 M sodium acetate buffer extraction in the method of detecting β-glucan taught by JP’289, Yoo, and Megazyme such that exo-1,3-β-glucanase comprises the Kluyveromyces aestuarii exo-1,3-beta-glucanase from Lachance and the sodium acetate buffer is pH 5.2.
An ordinary artisan would have been motivated would have had a reasonable expectation of success of modifying the exo-1,3-β-glucanase and β-glucosidase in a 0.2 M sodium acetate buffer extraction taught by JP’289, Yoo, and Megazyme such that exo-1,3-β-glucanase comprises the Kluyveromyces aestuarii exo-1,3-beta-glucanase from Lachance. It is obvious to substitute one known exo-1,3-beta-glucanase for another exo-1,3-beta-glucanase, such as the Kluyveromyces aestuarii exo-1,3-beta-glucanase, with predictable and expected results because they encode enzymes with the same enzymatic function. It would have been obvious to modify the sodium acetate buffer to be pH 5.2 since the Kluyveromyces aestuarii exo-1,3-beta-glucanase is optimally active at pH 5.2.
JP’289 does not explicitly teach wherein the method of detecting β-glucan comprises high performance liquid chromatography (HPLC), and calculating the HPLC chromatic peak area of a test solution according to the chromatographic peak area and a standard concentration-peak area curve produced from a plurality of standard solutions with different concentrations.
JP’289 further teaches by incubating glucans with a mixture of highly purified exo-1,3-β-glucanase and β-glucosidase hydrolyses glucans to D-glucose (Abstract; p. 7, para 5-7).
Megazyme further teaches wherein GOPOD is a glucose determination reagent (p. 3, paragraph beginning with “Dissolve the contents…”).
Bilskey teaches a comparison of methods used to quantify glucose: Megazyme Assay utilizing glucose oxidase and peroxidase enzymes (GOPOD) and UV-Vis detection, high-performance liquid chromatography with refractive index detection (HPLC-RID), and liquid chromatography mass spectrometry (LC-MS) with electrospray ionization (ESI) and selected ion monitoring (SIM) (Abstract). Bilskey teaches the HPLC-RID based quantitation of glucose comprises a calibration curve of a plurality of glucose samples, and the method had the best coefficient of determination (R2), best accuracy, and highest limit of detection of the methods tested (p. 499, col 1, para 2; Tables 1-2). Bilskey teaches testing a sample against the HPLIC-RID calibration curve (p. 499, col 1, para 2; Table 1, Figure 1). An ordinary artisan would immediately envision a calibration curve is a standard curve, concentrations of the calibration curve are determined from the area under of the curve for glucose in each chromatogram, and calculating the content of glucose consists of comparing the chromatogram peak area under the curve for glucose in the test sample comprises with a standard concentration-peak area curve produced from a plurality of concentrations of glucose.
In view of the combined teachings of JP’289, Yoo, Megazyme, Xu, Lachance, and Bilskey, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of detecting β-glucan taught by JP’289, Yoo, Megazyme, Xu, and Lachance by substituting the GOPOD-based detection of glucose for the HPLC-RID based detection of glucose taught by Bilskey, and wherein calculating the content of β-glucan consists of comparing the chromatogram peak area under the curve for glucose in the test sample with a standard concentration-peak area curve produced from a plurality of concentrations of glucose.
An ordinary artisan would have been motivated to and would have had a reasonable expectation of success of substituting the GOPOD-based detection of glucose taught by JP’289 for the HPLC-RID based detection of glucose taught by Bilskey. It is obvious to substitute the GOPOD-based detection of glucose taught by JP’289 for another method of detecting glucose, HPLC-RID based detection of glucose taught by Bilskey, with predictable and expected results because they perform the same function of detecting glucose.
Consequently, the invention of claim 9 would have been obvious to one of ordinary skill in the art before the effective filing date.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over JP’289 in view of Yoo, Megazyme, Xu Lachance, and Bilskey as applied to claim 9 above, and further in view of CN’314, CN’459, Karslioglu, and Siu and as evidenced by Janson.
The relevant teachings of CN’314, CN’459, Karslioglu, Siu, and evidentiary reference Janson as applied to claims 1-3 and 8, are discussed above and incorporated herein.
The relevant teachings of JP’289, Yoo, Megazyme, Xu Lachance, and Bilskey as applied to claim 9, are discussed above and incorporated herein.
Regarding claim 10, the combined teaches of JP’289, Yoo, Megazyme, Xu Lachance, and Bilskey do not explicitly teach the Ganoderma lucidum β-glucan extract prepared as described instant claim 10.
In view of the combined teachings of JP’289, Yoo, Megazyme, Xu, Lachance, Bilskey, CN’314, CN’459, Karslioglu, and Siu, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to use the combined method of detecting β-glucan taught by JP’289, Yoo, Megazyme, Xu, Lachance, and Bilskey to detect the Ganoderma lucidum β-glucan extract prepared by the method taught by CN’314, CN’459, Karslioglu, and Siu.
An ordinary artisan would have been motivated to and would have had a reasonable expectation of success to use the method of detecting β-glucan taught by JP’289, Yoo, Megazyme, Xu, Lachance, and Bilskey to detect the Ganoderma lucidum β-glucan extract prepared by the method taught by CN’314, CN’459, Karslioglu, and Siu. It is obvious to substitute one Ganoderma lucidum β-glucan extract to be detected by the method taught by JP’289, Yoo, Megazyme, Xu, Lachance, and Bilskey for another Ganoderma lucidum β-glucan extract such as that produce by the combined method taught by CN’314, CN’459, Karslioglu, and Siu, with predictable and expected results because they comprise a β-glucan composition.
Consequently, the invention of claim 10 would have been obvious to one of ordinary skill in the art before the effective filing date.
Conclusion
No claims are currently allowed for the reasons as stated above. Applicants must
respond to the objections/rejections in this Office action to be fully responsive in
prosecution.
The instant Office Action is non-final.
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/SCOTT E. MULDER/Examiner, Art Unit 1656
/David Steadman/Primary Examiner, Art Unit 1656