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 .
Detailed Action
Applicant’s election of Group II, corresponding to claims 15-22 and 24 without traverse in the reply filed on 01/19/2026 is acknowledged. Thus, claims 1-24 are pending in this application; elected Group II, corresponding to claims 15-22 and 24 is now under consideration for examination; and claims 1-14 and 23 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim.
Priority
Acknowledgment is made of applicants’ claim for foreign priority under 35 U.S.C. 119(a)-(d). This application filed on 09/01/2023 and claims the priority date of Canada application 3191788 filed on 03/03/2023.
Information disclosure statement
The information disclosure statement (IDS) submitted on 09/01/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS statement is considered and initialed by the examiner.
Claim Objections
Claim 24 recites subject-matter in parentheses i.e., “(and optionally, to glucose or ethanol)” in claim 24; it is not clear whether the subject-matter recited in parentheses is a limitation of claim 24 or merely exemplary; examiner urges the applicants’ to make a direct reference and not recite the limitation in parentheses.
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 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.
I. Claim 15 and claims 16-22 and 24 depending therefrom 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 pre-AIA the applicant regards as the invention.
Regarding claims 15 and 24, the phrase “preferably” and "optionally" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
In the present instance, claims 15 and 24 recite the broad recitation “… wherein said source of cellulose having has a kappa number of less than 10; and hemicellulose content of less than 15%” and the claims also recite “…preferably the kappa number is 5 or less, more preferably the kappa number is 2 or less; and preferably less than 10 % w/w; even more preferably less than 5 % w/w of the total weight of the source of cellulose”, which is the narrower statement of the range/limitation (range within range). It is not clear what the applicants’ intend to encompass in the rejected claims and the metes and bounds of the claims are unclear and as being indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. Correction and clarification is required. Examiner suggests for the following range “…preferably the kappa number is 5 or less, more preferably the kappa number is 2 or less; and preferably less than 10 % w/w; even more preferably less than 5 % w/w of the total weight of the source of cellulose” applicants’ consider writing additional new claims as dependent claims.
Claims 15 and 24 is rejected for the language “optionally, recovering the supernatant comprising glucose; … (and optionally, to glucose or ethanol); … optionally, exposing said supernatant comprising glucose to an ethanologenic bacteria or fungi for the fermentation glucose to ethanol”, as being indefinite because it is not clear whether the recitation following “optionally” is limiting. See MPEP 2173.05(h), which makes clear that “optionally” is another alternative format which requires some analysis before concluding whether or not the language is indefinite. In this regard, the term “optionally” in the context of the claim is analogous to the term “preferably.” When interpreted in this manner, it is unclear whether this narrower limitation following the recitation “optionally” is limiting. See MPEP 2173.05(d). Claims 16-22 depends on rejected claim 15 and encompasses all the limitations of claim 15 thus is also rejected. Furthermore, claim 24 recites subject-matter in parentheses i.e., “(and optionally, to glucose or ethanol)” in claim 24; it is not clear whether the subject-matter recited in parentheses is a limitation of claim 24 or merely exemplary; examiner urges the applicants’ to make a direct reference and not recite the limitation in parentheses.
II. Claim 24 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential active method steps, such omission amounting to incomplete method steps in the claim. See MPEP § 2172.01 and being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claim 24 recites “…use…”, since the claim does not set forth any steps involved in the method, it is unclear what method applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim 24 is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
Claim Rejections: 35 USC § 102 (AIA )
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.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 (or as subject to pre-AIA 35 U.S.C. 102) 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.
Claims 15-17, 20-22 and 24 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Enriquez A., (US 2023/0279453 A1, priority 03/04/2022; the priority date for instant claims under consideration is deemed 03/03/2023).
Claims 15-17, 20-22 and 24 as interpreted are directed to a process to hydrolyze cellulose into glucose, said process comprising the following steps:- providing a reaction vessel; - providing a source of cellulose into said reaction vessel; wherein said source of cellulose having has a kappa number of less than 10…- providing an inoculum of an organism capable of expressing b-glucanase and b-glucosidase… (as in claims 15-17 and 24; also see claim objections and 35 U.S.C. 112(b) rejections above for claims interpretation); in said process wherein said cellulose source is exposed to an organism at a temperature between 30°C to 40°C (as in claim 20); in said process organism is incubated with said cellulose source for a period of time ranging from 1 to 30 days (as in claim 21); and in said process aqueous medium has a pH of about 5.0 to 9.0 (as in claim 22).
Enriquez A., (US 2023/0279453 A1, priority 03/04/2022) disclose a process to hydrolyze cellulose into glucose (¶ [0052]) and exposing cell supernatant to a bacterium or fungi or yeast or combinations, which converts cellobiose to glucose or ethanol (¶ [0094]), said process comprising the following steps: providing a reaction vessel; providing a source of cellulose into said reaction vessel; wherein said source of cellulose has a kappa number of less than 10 (¶ [0029-0034]), providing an inoculum of an organism capable of expressing b-glucanase and b-glucosidase (Abstract; Fig. 1-6; Fig. 4-5 depicts organism capable of expressing b-glucanase and b-glucosidase; and entire document); in said process wherein said cellulose source is exposed to an organism at a temperature between 30°C to 35°C (¶ [0029-0034]); in said process organism is incubated with said cellulose source for a period of time ranging from 14 to 42 days (¶ [0029-0034]); and in said process aqueous medium has a pH of about 8.0 (¶ [0029-0034]).
Examiner below has reproduced relevant sections from Enriquez A., (US 2023/0279453 A1, priority 03/0/4/2022):
PNG
media_image1.png
224
328
media_image1.png
Greyscale
PNG
media_image2.png
148
298
media_image2.png
Greyscale
PNG
media_image3.png
44
306
media_image3.png
Greyscale
PNG
media_image4.png
442
516
media_image4.png
Greyscale
PNG
media_image5.png
398
518
media_image5.png
Greyscale
Therefore, the disclosure of Enriquez A., (US 2023/0279453 A1, priority 03/04/2022) anticipate the instant claims 15-17, 20-22 and 24 as written/interpreted.
The applied reference has a common inventors (Enriquez A., Greer J., Weissenberger M., and Ostaszewaski A.,) 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); 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 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.
Claim Rejections: 35 USC § 102/§ 103
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 following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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.
Claims 15-18, 20-22 and 24 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated or, in the alternative, under 35 U.S.C. 103(a) as obvious over Kansoh et al., (Polymer Degradation and Stability, 1999, Vol. 63: 273-278), and as evidenced by or in view of Jun et al., (Indian J. Microbiol., 2009, Vol. 49:188-195) and Weissenberger et al., (US 11,982,051 B2; priority 06/18/2021) when given the broadest reasonable interpretation.
Claims 15-18, 20-22 and 24 are directed to encompass: a process to hydrolyze cellulose into glucose, said process comprising the following steps:- providing a reaction vessel; - providing a source of cellulose into said reaction vessel; wherein said source of cellulose having has a kappa number of less than 10…- providing an inoculum of an organism capable of expressing b-glucanase and b-glucosidase… organism capable of expressing b-glucanase and b-glucosidase is Trichoderma reesei (as in claims 15-18 and 24; also see claim objections and 35 U.S.C. 112(b) rejections above for claims interpretation); in said process wherein said cellulose source is exposed to an organism at a temperature between 30°C to 40°C (as in claim 20); in said process organism is incubated with said cellulose source for a period of time ranging from 1 to 30 days (as in claim 21); and in said process aqueous medium has a pH of about 5.0 to 9.0 (as in claim 22).
Kansoh et al., (Polymer Degradation and Stability, 1999, Vol. 63: 273-278) disclose a process to hydrolyze cellulose into glucose, said process comprising the following steps:- providing a reaction vessel; providing a source of cellulose into said reaction vessel; wherein said cellulose is a delignified cellulosic pulp obtained from bagasse by chemical treatment and reference source of cellulose having has a kappa number 8.9 and 8.2, (Exp no. IV and V; see Table 2, page 275); providing an inoculum of an organism capable of expressing b-glucanase and b-glucosidase and said reference organism capable of expressing b-glucanase and b-glucosidase is Trichoderma reesei (Col. 2, 2. Materials and Methods, 2.1; Table Cellulase activity, in the art cellulases obtained from Trichoderma reesei, comprises b-glucanase and b-glucosidase; see evidentiary reference Jun et al., provided below); in said process wherein said reference cellulose source is exposed to an organism at a temperature between 25°C to 40°C and pH 4.0-8.0, and enzyme activity (Table 5, page 276; effect of pH Fig, 2, page 277; temperature range and enzyme activity Fig. 3, page 278; b-glucosidase activity ¶ 3.5, page 277; Enzyme assay for determination of reducing sugars in the supernatants produced from cellulose hydrolysis, ¶ 2.7, page 274); in said process the reference organism is incubated with said cellulose source for a period of time of 6 days/~196 hours (Fig. 1, page 276); and in said reference process aqueous medium has a pH of about 4.0 to 8.0 (effect of pH Fig, 2, page 277).
Jun et al., (Indian J. Microbiol., 2009, Vol. 49:188-195) disclose and provide evidence that Trichoderma reesei produced cellulases are composed of different groups of enzymes which act together in a synergistic fashion to solubilize/hydrolyze cellulose to cellobiose and further to monomers/glucose; and is a mixture of b-glucanase and b-glucosidase (see Introduction, ¶ 2 page 188; Determination of enzyme activities, ¶ 3, page 189; Fig. 1-3, pages 192-193; and entire document).
Weissenberger et al., (US 11,982,051 B2; priority 06/18/2021) disclose and provide evidence that delignification process of cellulose fibres results in removal of greater than 90 wt% of lignin and hemicellulose and cellulose with Kappa number ranging from 1-3.5 (see Abstract; Fig. 7; and entire document); the kappa number of the resulting cellulose is below 10, preferably the kappa number of the resulting cellulose is below 4.2 (col. 7, lines 20-23) and thus provide teaching, suggestion and motivation for the use of cellulose having a kappa number of less than 10 as a suitable and preferred substrate.
As such, disclosure of the importance of a process to hydrolyze cellulose into cellobiose and glucose, said process comprising the following steps: providing a reaction vessel; providing a source of cellulose into said reaction vessel; wherein said cellulose is a delignified cellulosic pulp obtained from bagasse by chemical treatment and reference source of cellulose having has a kappa number 8.9 and 8.2; providing an inoculum of an organism capable of expressing b-glucanase and b-glucosidase; organism capable of expressing b-glucanase and b-glucosidase is Trichoderma reesei of the instant application and as taught in the prior art references of Kansoh et al., Jun et al., and Weissenberger et al., one of ordinary skill in the art would have the motivation and a reasonable expectation of success.
Given this extensive teaching in prior art (Kansoh et al., Jun et al., and Weissenberger et al.,) i.e., a process to hydrolyze cellulose into glucose, said process comprising the following steps:- providing a reaction vessel; - providing a source of cellulose into said reaction vessel; wherein said source of cellulose having has a kappa number of less than 10…- providing an inoculum of an organism capable of expressing b-glucanase and b-glucosidase… organism capable of expressing b-glucanase and b-glucosidase is Trichoderma reesei (as in claims 15-18 and 24; also see claim objections and 35 U.S.C. 112(b) rejections above for claims interpretation); in said process wherein said cellulose source is exposed to an organism at a temperature between 30°C to 40°C (as in claim 20); in said process organism is incubated with said cellulose source for a period of time ranging from 1 to 30 days (as in claim 21); and in said process aqueous medium has a pH of about 5.0 to 9.0 (as in claim 22), as taught by the instant invention is not of innovation but of ordinary skill in the art and the expectation of success is extremely high i.e., “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at, 82 USPQ2d at 1397”.
Therefore, claims 15-18, 20-22 and 24 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated or, in the alternative, under 35 U.S.C. 103(a) as obvious over Kansoh et al., (Polymer Degradation and Stability, 1999, Vol. 63: 273-278), and as evidenced by or in view of Jun et al., (Indian J. Microbiol., 2009, Vol. 49:188-195) and Weissenberger et al., (US 11,982,051 B2; priority 06/18/2021) when given the broadest reasonable interpretation.
Examiner also finds support in the following sections of MPEP.
2112 [R-3] Requirements of Rejection Based on Inherency; Burden of Proof
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C.102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir.1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
A REJECTION UNDER 35 U.S.C. 102/103 CAN BE MADE WHEN THE PRIOR ART PRODUCT SEEMS TO BE IDENTICAL EXCEPT THAT THE PRIOR ART IS SILENT AS TO AN INHERENT CHARACTERISTIC
Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C.102 and 103, expressed as a 102/103 rejection. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C.103 and for anticipation under 35 U.S.C. 102.” In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C.102/103 rejection is appropriate for these types of claims as well as for composition claims.
Claim Rejections: 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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(a) 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 15-22 and 24 are rejected under 35 U.S.C. 103(a) as being unpatentable over 15-18, 20-22 and 24 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated or, in the alternative, under 35 U.S.C. 103(a) as obvious over Kansoh et al., (Polymer Degradation and Stability, 1999, Vol. 63: 273-278), and as evidenced by or in view of Jun et al., (Indian J. Microbiol., 2009, Vol. 49:188-195) and Weissenberger et al., (US 11,982,051 B2; priority 06/18/2021) and further in view of Ghosh et al., (Green Chem., 2019, Vol. 21: 1648-1659) and Narendranath NV., (US 2019/0062791 A1).
The disclosures of Kansoh et al., (Polymer Degradation and Stability, 1999, Vol. 63: 273-278), and as evidenced by or in view of Jun et al., (Indian J. Microbiol., 2009, Vol. 49:188-195) and Weissenberger et al., (US 11,982,051 B2; priority 06/18/2021) as applied to claims 15-18, 20-22 and 24 is described in the rejection 35 USC § 102/§ 103 above. However, Kansoh et al., Jun et al., and Weissenberger et al., are silent regarding wherein said an organism capable of expressing one or more b-glucanases and b-glucosidase is Pseudomonas protegens (as in claim 19).
Regarding claim 19, the following reference, Ghosh et al., (Green Chem., 2019, Vol. 21: 1648-1659), discloses a non-pathogenic Pseudomonas fluorescens; in the art Pseudomonas fluorescens is also known as Pseudomonas protegens; said reference discloses non-pathogenic Pseudomonas fluorescens is able degrade/hydrolyze cellulose and hemicellulose in lignin biomass by producing cellulase and generating glucose including having the activities of endoglucanase and b-glucosidase (see Abstract; Fig. 1, page 1652; col. 1, ¶ 2, page 1656; Conclusions; and entire document), and thus said reference provides teaching, suggestion and motivation to skilled artisan for the use of non-pathogenic Pseudomonas fluorescens able to produce cellulases having the activities of endoglucanase and b-glucosidase in the claimed process of hydrolyzing cellulose.
Regarding claim 15-18 and 24, the following reference Narendranath NV., (US 2019/0062791 A1) also provides teaching, suggestion and motivation for production of ethanol from cellulosic pulp having a Kappa number15-100, preferably 35-75 (¶ [0016]) by enzymatic hydrolysis of polysaccharides and oligosaccharides in cellulose pulp to monosaccharides/glucose; said enzymes are of b-glucanase and b-glucosidase (¶ [0036]) and microbial biomass comprising Trichoderma sp., (¶ [0050-0052]; also see Abstract; Fig. 1-6; Claims; and entire document).
As such, disclosure of strategy and methods for the use of “non-pathogenic Pseudomonas fluorescens that is able degrade/hydrolyze cellulose and hemicellulose in lignin biomass by producing cellulases and generating glucose including having the activities of endoglucanase and b-glucosidase”; as in claim 19 of the instant invention and production of ethanol, such as that of references of Ghosh et al., and Narendranath NV., teaching the advantages of said modifications, clearly suggests to a skilled artisan to modify the teachings of Kansoh et al., Jun et al., and Weissenberger et al., and incorporate the structural and functional elements of Ghosh et al., and Narendranath NV., in the claimed method for increased production of glucose and ethanol as claimed in the instant invention. One of ordinary skill in the art would have a reasonable expectation of success, since the use of organisms producing b-glucanase and b-glucosidase and method of use for the production of ethanol are well known in the art.
Regarding specific choice of temperature, pH, incubation time are also provided/suggested in the combination of references, and examiner also takes the position the following position; optimization of known variables, and the examiner finds support in: MPEP 2144.05 [R-5]: A. Optimization Within Prior Art Conditions or Through Routine Experimentation Generally, differences in temperature, pH, incubation time optimizing temperature, pH, incubation time etc., will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation". As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re Aller, 220 F2d 454,456,105 USPQ 233,235 (CCPA 1955). Furthermore, "it is prima facie obvious to combine two or more methods each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition or third method to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980)”. Therefore, the above invention would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Therefore, claims 15-22 and 24 are rejected under 35 U.S.C. 103(a) as being unpatentable over 15-18, 20-22 and 24 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated or, in the alternative, under 35 U.S.C. 103(a) as obvious over Kansoh et al., (Polymer Degradation and Stability, 1999, Vol. 63: 273-278), and as evidenced by or in view of Jun et al., (Indian J. Microbiol., 2009, Vol. 49:188-195) and Weissenberger et al., (US 11,982,051 B2; priority 06/18/2021) and further in view of Ghosh et al., (Green Chem., 2019, Vol. 21: 1648-1659) and Narendranath NV., (US 2019/0062791 A1).
Allowable Subject Matter/Conclusion
None of the claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GANAPATHIRAMA RAGHU whose telephone number is (571)272-4533. The examiner can normally be reached on M-F 8:30am-5pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Mondesi can be reached on 408-918-7584. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of 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). 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.
/GANAPATHIRAMA RAGHU/ Primary Examiner, Art Unit 1652