DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims Status
Claims 1-15 are pending.
Applicant's arguments filed 08/05/2025 have been fully considered but they are not persuasive. The prior art rejections are maintained. See response the arguments below.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 102
Claim(s) 1, 4, 7, 10, 13 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Alvarez-Malmagro et al. (ACS Appl. Mater. Interfaces 2021, 13, 11891−11900).
Considering claims 1, 7 and 13, Alvarez-Malmagro discloses a method for the reduction of carbon dioxide to formate (page 11891) comprising linking a FeS cluster within an engineered formate dehydrogenase enzyme (page 11893, 2.2) to a thiolate linker on a first end and linking the thiolate linker on a second end to an electrode (page 11893, 2.5) wherein the linked enzyme is exposed to carbon dioxide (page 11896, 3.3).
Considering claims 4, 10 and 15, Alvarez-Malmagro discloses the electrode comprises gold (page 11893, 2.3).
Claim Rejections - 35 USC § 103
Claim(s) 2, 3, 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Alvarez-Malmagro et al. as applied to claims 1 and 7 above.
Considering claims 2, 3, 8 and 9, Alvarez-Malmagro discloses formate concentration produced with a LDG-AP-FDH electrode during typical chronoamperometry (page 11897, Fig. 8).
Alvarez-Malmagro does not disclose formate is produced at a rate of 0.16 mg of formate per hour.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce format at a rate of 0.16 mg of formate per hour for 5 hours, because Alvarez-Malmagro discloses formate concentration produced with a LDG-AP-FDH electrode during chronoamperometry for the purpose of calibration. The amount of the produced formate will be dependent on the concentration, size of the electrode, amount of carbon dioxide, temperature, etc. Therefore, one of ordinary skill, would have known to optimize the parameters for the optimal production of formate from carbon dioxide. Alvarez-Malmagro discloses an average concentration of formate produced after 90 min was 3.7 µm, thus if the system is scaled to volume of the electrolyte to be 1.5 L, the amount of formate (MW 45g/mole), would be about 1.6 mg.
Claim(s) 5, 6, 11, 12 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Alvarez-Malmagro et al. as applied to claims 1, 7 and 13 above, and further in view of Antonkine et al. (Biochimica et Biophysica Acta 1767 ‘2007’ 712–724).
Considering claims 5, 6, 11, 12 and 14, Alvarez-Malmagro does not disclose the engineered formate dehydrogenase enzyme comprises a mutation from cysteine to glycine.
However, Antonkine teaches Cys-to-Gly mutation in PsaC protein, a [4Fe-4S] protein, to open a coordination site for thiolate binding, referred to as the chemical rescue approach (abstract). Antonkine teaches that it would be possible to link an iron–sulfur cluster-containing protein directly to a gold electrode by a similar approach with a bivalent tether molecule (page 721, last paragraph of 4.4.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the chemical rescue approach to tether the FDH of Alvarez-Malmagro to the gold electrode, because Antonkine explicitly suggest such technique for attaching Fe-S protein to a gold electrode. Therefore, one would have explored an alternative method of attaching the FDH to the gold surface, with reasonable expectation of success.
Response to Arguments
Applicant's arguments filed 08/05/2025 have been fully considered but they are not persuasive. Applicant argues that Alvarez-Malmagro teaches techniques for immobilizing a formate dehydrogenase that uses Tungsten in its active sit. Alvarez-Malmargro does not teach formate dehydrogenase enzymes that use one or more Fe-S clusters at the active site of a formate dehydrogenase.
This argument is not persuasive because the claims do not require Fe-S clusters at the active site of a formate dehydrogenase, but merely a step of linking FeS cluster within an engineered formate dehydrogenase enzyme to a thiolate linker. Alvarez-Malmagro discloses a method for the reduction of carbon dioxide to formate comprising linking a FeS cluster within an engineered formate dehydrogenase enzyme, as presented in the rejection above. The claims do not exclude Tungsten or any other species in the active sit. The formate dehydrogenase of Alvarez-Malmagro comprises an Fe-S cluster and is linked to a thiolate linker, as required by the claims. Therefore, the reference of Alvarez-Malmagro is within the scope of what is claimed.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., Fe-S clusters at the active site of a formate dehydrogenase) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/WOJCIECH HASKE/ Examiner, Art Unit 1794