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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/30/2026 has been entered.
Claims Status
Claims 1-15 are pending.
Applicant’s arguments, filed 04/30/2026, with respect to the rejection(s) of claim(s) 1-12 under 102 and 103 have been fully considered and are persuasive. Therefore, the rejection of claims 1-12 has been withdrawn.
Applicant's arguments filed 04/30/2026, with respect to the rejection(s) of claim(s) 13-15 under 102 and 103 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 § 112
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In claim 1, the limitation reciting “linking a FeS cluster at the active site of an engineered formate hydrogenase enzyme” is a new matter, because the specification does not reasonably describe the claimed active site or FeS cluster at the active site. In particular the specification recites “the FeS cluster removes one important kinetic limitation found in natural systems, ie the requirement of binding both the substrate CO2 in the active site, and also the soluble redox mediator (NAD(H)).” (specification para [0018]) However, the specification is silent about “a FeS cluster at the active site” of the enzyme.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claims 2-15 also have new matter issue as being dependent on claim 1.
Claim 1 recites the limitation "the active site" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-15 are also indefinite as being dependent on indefinite claim 1.
Claim Rejections - 35 USC § 102
Claim(s) 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 claim 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). With respect to the limitation of “a FeS cluster at the active site”, the instant speciation teaches that characteristics of the active site is binding CO2. The FeS clusters of Alvarez-Malmagro will inherently have the same property of binding CO2 as they have the same chemical composition of the claimed FeS clusters.
Considering claim 15, Alvarez-Malmagro discloses the electrode comprises gold (page 11893, 2.3).
Claim Rejections - 35 USC § 103
Claim(s) 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 claim 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 04/30/2026, with respect to the rejection(s) of claim(s) 13-15 under 102 and 103 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Wojciech Haske whose telephone number is (571)272-5666. The examiner can normally be reached M-F: 9:30 am - 6:00 pm.
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/WOJCIECH HASKE/Examiner, Art Unit 1794
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