e present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Application Status
This application is a DIV of US patent application 16/755,513, filed on01/09/2023.
Claims 1-2, 4-8, 24, 28, 150, 152-153, 154-155, and 156-157 are currently pending in this patent application.
In response to a previous Office action, a Non-Final Rejection Office action (mailed on 11/20/2025), Applicants filed a response and an amendment on 02/18/2026 and amending claims 1-2, 4, 24, 150, 152, canceling claims 3, 9-11, 12-23, 25-27, 29-149, and 151, and adding new claims 156-157 is acknowledged.
Claims 154-155 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1-2, 4-8, 24, 28, 150, 152-153, and 156-157 are present for examination.
Applicants' arguments filed on 02/18/2026, have been fully considered and are deemed persuasive to overcome some of the rejections previously applied. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.
Priority
Acknowledgement is made of applicants claim for priority of US patent application 16/755,513, filed on 04/10/2020, now US patent 11905513, and US Provisional application 62/572,012, filed on 10/13/2017.
Withdrawn-Claim Rejections - 35 USC § 112(b)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.
The previous rejection of Claim 11 under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention, is withdrawn, in view of Applicant’s amendment to the claims and persuasive arguments.
The previous rejection of Claim 4 (depends on claim 3) under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention, is withdrawn, in view of Applicant’s amendment to the claims and persuasive arguments.
Withdrawn-Claim Rejections – Improper Markush Grouping
The previous rejection of Claim 9 under the judicially approved “improper Markush grouping” doctrine, is withdrawn, in view of Applicant’s amendment to the claims and persuasive arguments.
New-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 1-2, 4-8, 24, 28, 150, 152-155, and 156-157 are rejected under 35 U.S.C. 112(b), as being indefinite and vague for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 1 recites the phrase “(a) a polynucleotide encoding ------ and (b) a polynucleotide encoding a guide RNA” which is unclear, and does not make sense with regard to (a) a polynucleotide encoding ----- (?) and” because a polynucleotide encoding something, which is unknown rendering the metes and bounds of the term unclear and confusing. Furthermore, the recitation (a) a polynucleotide encoding something unknown, which could encompass many proteins, and RNAs, which are unknown rendering the metes and bounds of the term unclear, confusing and indefinite. Clarification is required.
Withdrawn-Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(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.
The previous rejection of Claims 1-3, 4-5, 7-11, 23-24, 28, and 150-153 under 35 U.S.C. 112(a), as failing to comply with the Written Description (WD) requirement, is withdrawn, in view of Applicant’s amendment to the claims and persuasive arguments.
Withdrawn-Claim Rejections - 35 USC § 102
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 for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless -
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
The previous rejection of Claims 1-4, 9-11, 23-24, and 28, under 35 U.S.C. 102(a)(1/2) based upon a public use or sale or other public availability of the invention as anticipated by Nagaraju et al. (CRISPR/Cas systems for C1-fixing bacteria. US 2017/0247710, publication 08/31/2017, claim benefit of 63/300,532, filed on 02/26/2016, see IDS), is withdrawn, in view of Applicant’s amendment to the claims and persuasive arguments.
Maintained-Claim Rejections - 35 USC § 102
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 for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless -
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
The previous rejection of Claims 1-2, 4, 7, 8, 9, and 23 under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention as anticipated by Clomburg et al. (Industrial biomanufacturing: The future of chemical production. Science (Epub 01/06/2017), 355(38): 1-10, see IDS).
The Broadest Reasonable Interpretation (BRI) of claim 1, which is drawn to a genetically modified microorganism contacting a methylotroph with a Cas9 protein derived from Streptococcus pyogenes, wherein the polynucleotide encoding ----- and (b) a polynucleotide encoding a guide RNA (gRNA), wherein the methylotroph is first transformed with the polynucleotide e3ncoding the gRNA and subsequently transformed with the polynucleotide encoding the Cas9 protein.
Regarding claims 1-2, 4, 7, 8, and 23, Clomburg et al. teach a conversion of single (C1) carbon compound methane (CH4) to a more sustainable, decentralized production of a desirable compounds including L-lactate, astaxanthin, polyhydroxy butyrate, a multicarbon compound using a recombinant methanotrophic organism Methylobacterium buryatense, Methylomonas sp. 16A or Methylocystis parvus OBBP (see, evidential reference- Henrad et al. Bioconversion of methane to lactate by an obligate methanotrophic bacterium. Scientific Reports (2016.), 6: 21585, internal page number 1-9). Clomburg et al. also teach production of astaxanthin, or polyhydroxy butyrate, a multicarbon compound using a recombinant methylotrophic organism Methylomonas sp. 16A or Methylocystis parvus OBBP. Methylomonas sp. 16A (as claimed) or Methylocystis parvus OBBP (as claimed) (see, Table 1). Clomburg et al. further teach using genetically modified methylotrophic organism Methylobacterium buryatense and overexpressing gene of L-lactate dehydrogenase from Lactobacillus helveticusm by using CRISPR/Cas9-based genome editing technology in said recombinant methylotrophic organism Methylobacterium buryatense, and could produce 0.8 g/L L-lactate, a multi-carbon compound (see, pg 5, middle Col).
Although, Clomburg et al. is silent about using gRNA, but Clomburg et al. indeed teach using CRISPR/Cas9-based genome editing technology in reference of 79, of Jiang et al. reference (see, Jiang et al._2013 as evidential reference), wherein Jiang et al. indeed teach using CRISPR/Cas9-based genome editing technology with gRNA molecule (see, title, and abstract, where RNA-guided means gRNA).
Therefore, Clomburg et al. anticipate claims 1-2, 4, 7, 8, and 23 of the instant application as written.
Arguments: Applicants argue that Clomburg is a review (?) article surveying the economics and future potential of industrial biomanufacturing from C1 feedstocks, and its substantive discussion of CRISPR/Cas9 in methylotrophs is limited to a single passage noting that genetic tools recently developed for Methylomicrobium (as claimed as genus) buryatense "open the door for the development of powerful genetic tools" such as CRISPR/Cas9-based genome editing, and further teach that CRISPR/Cas9 among genome engineering technologies that are becoming standard tools for model industrial organisms, neither passage discloses a method of contacting a methylotroph with a polynucleotide encoding a Cas9 protein and a polynucleotide encoding a gRNA-let alone the specific elements of amended claim 1, including a Cas9 derived from Streptococcus pyogenes, a weak promoter operably linked to the Cas9-encoding polynucleotide, or the sequential transformation protocol (gRNA first, then Cas9). Applicants (need to know) furthermore argue that the Office relies on Jiang et al. (2013) as an "evidential reference" to supply the gRNA teaching absent from Clomburg. Office Action at 13. But anticipation under section 102 requires that a single reference disclose every element of the claimed invention. The Office's reliance on Jiang to supply an essential element underscores that Clomburg does not, by itself, disclose each claim limitation.
Response; Applicants arguments through representative have been fully considered, but are not deemed persuasive to overcome the rejection under 35USC 102 (a) because According to MPEP a person shall be entitled to a patent unless -
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. Furthermore, a person shall be entitled to a patent unless -
MPEP-2131 Anticipation — Application of 35 U.S.C. 102 [R-08.2017]
A claimed invention may be rejected under 35 U.S.C. 102 when the invention is anticipated (or is "not novel") over a disclosure that is available as prior art. To reject a claim as anticipated by a reference, the disclosure must teach every element required by the claim under its broadest reasonable interpretation. See, e.g., MPEP § 2114, subsections II and IV.
"A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). "When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001) Note that, in some circumstances, it is permissible to use multiple references in a 35 U.S.C. 102 rejection. See MPEP § 2131.01.
MPEP-2131.01 Multiple Reference 35 U.S.C. 102 Rejections [R-11.2013]
Normally, only one reference should be used in making a rejection under 35 U.S.C. 102. However, a 35 U.S.C. 102 rejection over multiple references has been held to be proper when the extra references are cited to:
(A) Prove the primary reference contains an "enabled disclosure;"
(B) Explain the meaning of a term used in the primary reference; or
(C) Show that a characteristic not disclosed in the reference is inherent.
It appears that the Representative of the Applicants is NOT aware of such Rules of MPEP for Anticipation issues because Clomburg et al. teach a conversion of single (C1) carbon compound methane (CH4) to a more sustainable, decentralized production of a desirable compounds including L-lactate, astaxanthin, polyhydroxy butyrate, a multicarbon compound using a recombinant methanotrophic organism Methylobacterium buryatense, Methylomonas sp. 16A or Methylocystis parvus OBBP (see, evidential reference- Henrad et al. Bioconversion of methane to lactate by an obligate methanotrophic bacterium. Scientific Reports (2016.), 6: 21585, internal page number 1-9). Clomburg et al. also teach production of astaxanthin, or polyhydroxy butyrate, a multicarbon compound using a recombinant methylotrophic organism Methylomonas sp. 16A or Methylocystis parvus OBBP. Methylomonas sp. 16A (as claimed) or Methylocystis parvus OBBP (as claimed) (see, Table 1). Clomburg et al. further teach using genetically modified methylotrophic organism Methylobacterium buryatense and overexpressing gene of L-lactate dehydrogenase from Lactobacillus helveticusm by using CRISPR/Cas9-based genome editing technology in said recombinant methylotrophic organism Methylobacterium buryatense, and could produce 0.8 g/L L-lactate, a multi-carbon compound (see, pg 5, middle Col). Although, Clomburg et al. is silent about using gRNA, but Clomburg et al. indeed teach using CRISPR/Cas9-based genome editing technology in reference of 79, of Jiang et al. reference (see, Jiang et al._2013 as evidential reference), wherein Jiang et al. indeed teach using CRISPR/Cas9-based genome editing technology with gRNA molecule (see, title, and abstract, where RNA-guided means gRNA). Therefore, the rejection is maintained.
New-Claim Rejections - 35 U.S.C. § 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
According to MPEP 2143:
“Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield
predictable results;
(B) Simple substitution of one known element for another to obtain predictable
results;
(C) Use of known technique to improve similar devices (methods, or products)
in the same way;
(D) Applying a known technique to a known device (method, or product) ready
for improvement to yield predictable results;
(E) “ Obvious to try ” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in
either the same field or a different one based on design incentives or other market
forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art
reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.”
Claims 1-2, 4, 5-6, 7, 8, 24, 28, 150, 152 and new claims 156-157 are rejected under 35 U.S.C. 103 as being unpatentable over Nagaraju et al. (CRISPR/Cas systems for C1-fixing bacteria. WO 2017/147555A1, publication 08/31/2017, claim benefit of 63/300,532, filed on 02/26/2016) , Clomburg et al. (Industrial biomanufacturing: The future of chemical production. Science (Epub 01/06/2017), 355(38): 1-10, see IDS), Lee et al. (Metabolic engineering of methanotrophs and its application to production of chemicals and biofuels from methane. Biofuels Bioproducts & Biorefining (2016), 10: 848-863, see IDS) and Xu et al. (Nucleotide sequence of the mxcQ and mxcE genes, required for methanol dehydrogenase synthesis in Methylobacterium organophilum XX: a two-component regulatory system. Microbiology (1995), 141, 2543-2551).
The Broadest Reasonable Interpretation (BRI) of claim 1, which is drawn to a genetically modified microorganism contacting a methylotroph with a Cas9 protein derived from Streptococcus pyogenes, wherein the polynucleotide encoding ----- and (b) a polynucleotide encoding a guide RNA (gRNA), wherein the methylotroph is first transformed with the polynucleotide e3ncoding the gRNA and subsequently transformed with the polynucleotide encoding the Cas9 protein.
Nagaraju et al. teach a genetically engineering a C1-fixing microorganism Butyribacterium methylotrophicum, a methylotroph, or Clostridium autoethanogenum bacterium, having ability to utilize one C1 carbon compound CO, CO2, for producing multicarbon compound ethanol, comprising and using a CRISPR/Cas gene encoding protein system, wherein the CRISPR/Cas protein Cas9 protein derived from Streptococcus pyogenes and Streptococcus thermophilus, wherein the CRISPR/Cas gene encoding protein, as well as point mutation, substitution mutation (a specific point mutation) or deletion mutations of Cas9 such as H840A, N854A, or N863A, wherein the Cas9 gene is cloned in an expression vector under mutated genetic regulatory element or mutated promoter lactose inducible promoter (weak promoter), and the method involves introducing into a C1-fixing bacterium containing a DNA molecule comprising a target sequence or target gene including 2,3-butanediol dehydrogenase (2,3-bdh), an engineered, non-naturally occurring CRISPR/Cas system comprising one or more vectors comprising (a) a nucleotide sequence encoding a guide RNA (gRNA) that hybridizes with the target sequence 2,3-bdh and (b) a nucleotide sequence encoding a type-II Cas9 protein under the control of a mutated and an inducible promoter, and transformed into a host cell Clostridium autoethanogenum, (see, abstract, para 3-4, 7-8, 10, 11, 13, 16-17, 34, 35, 38-39, 42, 73, 78, Example 3, Table 1, Fig. 1A, 1B, 2B, and claims 1-18). The CRISPR/Cas system further comprise one or more vectors (c) a nucleotide sequence comprising a 5′ homology arm that hybridizes upstream of the target sequence (T1) as a spacer sequence (donor sequence) linked to HA tag for identification, and a 3′ homology arm that hybridizes downstream of the target sequence, whereby the 5′ homology arm and the 3′ homology arm hybridize with the target DNA molecule and homologous recombination occurs in the genome of the methylotroph, resulting in the replacement of the target sequence with DNA located between the 5′ homology arm and the 3′ homology arm, wherein these elements may be located on the same or different vectors. Nagaraju et al. also teach using different types of Cas9 including catalytically active Cas9, or catalytically inactive including variants such as nickase Cas9, used to cleave the DNA molecule. Nagaraju et al. further teach catalytically inactive Cas9 used to block/silence target DNA molecule, but not cleaving of the target DNA molecule, wherein the CRISPR/Cas system has a wide variety of applications, e.g., deleting, inserting, translocating, inactivating, or activating DNA. The CRISPR/Cas system may be used to decrease expression of a gene, via cleavage of the gene, insertion of additional DNA into the gene, or silencing/blocking of the gene. Cas9 is capable of cleaving the DNA molecule in a region encoding a gene, whereby expression of the gene is decreased, and further, Cas9 can block the DNA molecule in a region encoding a gene, whereby expression of the gene is decreased, and furthermore, the DNA located between the 5′ homology arm and the 3′ homology arm disrupts the DNA molecule in a region encoding a gene, whereby expression of the gene is decreased by Cas9 enzyme.
Claims 24 and 28 is included in this rejection because donor polynucleotide sequence or DNA without any structural feature but could be fewer than 1000 bases, could be any DNA or polynucleotide sequence that is less than 1000 bases, and Nagaraju et al. indeed teach incorporating 5-50bp long guide sequence inserted into guide RNA, which is under BRI regarded as donor sequence or donor polynucleotide, or donor DNA (see, para 18-19, 41). Nagaraju et al. also teach using C1 compound CO, CO2, CH3OH, methane, CH4 (for claims 7-8) (see, para 47-48, 53).
Nagaraju et al. do not teach using a genetically modified methylotrophic microorganism Methylococcus capsulatus (for claim 5-6), using a plasmid comprises a weak promoter such as deleted promoter pMxaF or lacO promoter (for claims 150), and a mutant pMxaF promoter (for claim 152).
However, Clomburg et al. teach a conversion of single (C1) carbon compound methane (CH4) to a more sustainable, decentralized production of a desirable compounds including L-lactate, astaxanthin, polyhydroxy butyrate, a multicarbon compound using a recombinant methanotrophic organism Methylobacterium buryatense, Methylomonas sp. 16A or Methylocystis parvus OBBP (see, evidential reference- Henrad et al. Bioconversion of methane to lactate by an obligate methanotrophic bacterium. Scientific Reports (2016.), 6: 21585, internal page number 1-9, see PTO892). Clomburg et al. also teach production of astaxanthin, or polyhydroxy butyrate, a multicarbon compound using a recombinant methylotrophic organism Methylomonas sp. 16A or Methylocystis parvus OBBP. Methylomonas sp. 16A or Methylocystis parvus OBBP (see, Table 1). Clomburg et al. further teach using genetically modified methylotrophic organism Methylobacterium buryatense and overexpressing gene of L-lactate dehydrogenase from Lactobacillus helveticusm by using CRISPR/Cas9-based genome editing technology in said recombinant methylotrophic organism Methylobacterium buryatense, and could produce 0.8 g/L L-lactate, a multi-carbon compound (see, pg 5, middle Col).
Although, Clomburg et al. is silent about using gRNA, but Clomburg et al. indeed teach using CRISPR/Cas9-based genome editing technology with reference of 79, of Jiang et al. reference (see, Jiang et al._2013 as evidential reference), wherein Jiang et al. indeed teach using CRISPR/Cas9-based genome editing technology with gRNA molecule (see, title, and abstract, where RNA-guided means gRNA).
Clomburg et al. do not teach using genetically modified methylotrophic microorganism Methylococcus capsulatus (for claims 150-151), and using a plasmid comprises a weak promoter such as deletion mutated pMxaF or lacO promoter (claim 150) and a mutant pMxaF promoter (for claims 151-152).
However, Lee et al. teach metabolic engineering of methanotrophs and its application to production of chemicals and biofuels from methane (CH4), and further teach methane-assimilating bacteria, methanotrophs, including Methylococcus capsulatus can play an important role in producing various value-added chemicals and biofuels including 1,4-butanediol (1,4-BDO) from methane (CD4), which (methane) is considered a next-generation carbon feedstock, and the capability to engineer the metabolic pathway of methanotrophs is a key success factor for enhancing methane-to-product conversion efficiency. Lee et al. also teach strategies to engineer methanotrophs, and its application to chemical and biofuel production from methane, and further teach expression of lactate dehydrogenase (LDH) by cloning of said LDH in an expression vector pMS3 under the control of mxaF promoter from Methylococcus capsulatus and overexpressed said LDH in said recombinant Methylococcus capsulatus, and a process of producing lactate in said Methylococcus capsulatus using said mxaF promoter (see, abstract, pg 853, left Col, para 4, pg 855, left Col, para 2-3).
Lee et al. do not teach using a plasmid comprises a weak promoter (for claims 150-151) and a mutant pMxaF promoter (for claims 151-152).
However, Xu et al. teach nucleotide sequence analysis of the mxcQ and mxcE loci, required for the synthesis of methanol dehydrogenase in Methylobacterium organophilum XX, has revealed two open reading frames that show significant similarity to sequences of prokaryotic two-component systems, especially MxaY and MxaX proteins of another methylotrophic bacterium, Paracoccus denitrificans. Cell-free extracts and DNA-column-fractionated proteins from wild-type M. organophilum XX cells grown on methanol or succinate contained protein(s) that were able to bind specifically to the upstream region of methanol dehydrogenase large subunit gene (mxaF). In contrast, cell-free extracts from mxcQ and mxcE mutant strains of M. organophilum XX had zero or reduced binding activity towards the promoter fragments of the mxaF gene as deletion mutant fragment, which is consistent with the involvement of the mxcQ and mxcE genes in transcriptional regulation of methanol dehydrogenase synthesis, and analyses of sequential deletions of the mxaF upstream region have defined the functional boundary of the promoter/operator region of this gene and identified one nucleotide segment as essential to the activation of mxaF or a mutant segment having weak promoter activity (see, abstract and Fig. 5).
Therefore, it would have been obvious to one of ordinary skill in the art to arrive at the claimed invention as a whole before the effective filing date of the invention was made by combining the teachings of Nagaraju et al., Clomburg et al., Lee et al., and Xu et al., to use C1 compound methane (CH4), and using a genetically modified methylotroph microorganism Methylomicrobium, or Methylomonas as taught by Clomburg et al., and genetically modified methylotrophic microorganism Methylococcus capsulatus, and using a plasmid comprises pMxaF promoter for the production value added chemicals including lactate or 1,4-BDO as taught by Lee et al. and using weak promoter such deleted fragment of pMxaF promoter having weak promoter activity, and modify Nagaraju et al. in view of the teachings of Clomburg et al., Lee et al., and Xu et al., to use Methylococcus capsulatus and expressing genes under mutant mxaF promoter for producing 1,4-BDO in increased amount to arrive the claimed invention.
One of ordinary skilled in the art would have been motivated to use C1 compound methane gas, which is very cheap, simple for producing value added chemicals 1,4-BDO or lactate, an expensive chemical, in a recombinant methylotroph microorganism Methylococcus capsulatus, which is commercially, industrially and financially beneficial.
One of ordinary skilled in the art would have a reasonable expectation of success because Nagaraju et al. could successfully produce 2,3-BDO, an expensive chemical using genetically engineering a C1-fixing Butyribacterium methylotrophicum or Clostridium autoethanogenum bacterium, a methylotroph. Furthermore, Lee et al. could successfully produce 1,4-BDO, an expensive chemical using a recombinant Methylococcus capsulatus.
Thus, the above references render the claims prima facie obvious to one of ordinary skill in the art.
Conclusion
Status of the claims:
Claims 1-2, 4-8, 24, 28, 150, 152-153, and 156-157 are rejected.
Claim 153 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action.
Applicants must respond to the objections/rejections in each of the sections in this Office action to be fully responsive in prosecution. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee pursuant to 37 C.F.R. § 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 IQBAL H CHOWDHURY whose telephone number is (571)272-8137. The examiner can normally be reached on M-F, at 9:00-5:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Manjunath N. Rao, can be reached on 571-272-0939. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Iqbal H. Chowdhury, Primary Examiner
Art Unit 1656 (Recombinant Enzymes and Protein Crystallography)
US Patent and Trademark Office
Ph. (571)-272-8137 and Fax (571)-273-8137
/IQBAL H CHOWDHURY/
Primary Examiner, Art Unit 1656