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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 6/24/2026 is acknowledged.
Claims 32-34 and 36-38 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/24/2026.
Claims 1, 2, 6, 7, 9, 11, 13, 15, 16, 21, 24, 26, 39 and 64 are examined in the instant application.
Claim Objections
Claims 15 and 16 are objected to because of the following informalities: claims 15 and 16 should recite “microbial” organism to be consistent with the other claims. Appropriate correction is required.
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 (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.
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.
Claim(s) 1, 2, 6, 24, 26, 39 and 64 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by North et al. (2020, Science, Vol. 369, pgs. 1094-1098, cited on IDS filed on 9/25/2023).
Regarding claims 1, 2, 6 and 26, North et al. teach a non-naturally occurring microbial organism (R. rubrum) comprising nucleic acids marB, marH, marD and marK and which produces ethylene, ethane and methane (see Abstract, Fig. 1 and pg. 1 col. 3 last parag. bridge pg. 2 col. 3).
Regarding claims 24, 39 and 64, North teaches that the genes were expressed episomally from a plasmid (pg. 2 col. 1 parag. 2).
Claim Interpretation: while North does not explicitly use the term “vector”, but rather a plasmid to express their genes, it is interpreted that the plasmid of North is the same as the vector claimed. Further the specification does not have a limiting definition of “vector” in the specification, but rather uses the terms interchangeably, such as pg. 14 line 33 “plasmid vector”.
Thus the teachings of North clearly anticipate the invention of claims 1, 2, 6, 24, 26, 39 and 64.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1, 7, 9, 11 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over North et al. (2020, Science, Vol. 369, pgs. 1094-1098, cited on IDS filed on 9/25/2023) in view of Lonjers et al. (2011, J. Bacteriology, pgs. 965-971).
Regarding claim 1, North et al. teach a non-naturally occurring microbial organism (R. rubrum) comprising nucleic acids marB, marH, marD and marK and which produces ethylene, ethane and methane (see Abstract, Fig. 1 and pg. 1 col. 3 last parag. bridge pg. 2 col. 3).
North does not teach:
one or more genes of the methylthio-alkane reductase complex that are at least 85% identical to SEQ ID NOs; 1, 3, 5 and 7.
Regarding SEQ ID NOs; 1, 3, 5 and 7, Lonjers et al. teach genes from the
methylthio-alkane reductase complex, in R. rubrum, which are 100% identical to SEQ ID NOs; 1, 3, 5 and 7.
SEQ ID NO: 1 –
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78
613
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Greyscale
SEQ ID NO: 3 –
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70
611
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SEQ ID NO: 5 -
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77
618
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SEQ ID NO: 7 –
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66
610
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Thus at the time of filing of filing the ordinary artisan would have found it prima facie obvious to combine the teachings of North regarding a non-naturally occurring microbial organism (R. rubrum) comprising nucleic acids of the methylthio-alkane reductase complex with the teachings of Lonjers regarding the nucleic acid sequences for SEQ ID NOs: 1, 3, 5 and 7 to arrive at the claimed invention.
One of ordinary skill in the art would have been motivated to make such a combination since North teaches the necessary genes to produce ethylene, ethane and methane in a microorganism and Lonjers teaching the nucleic acid sequences for SEQ ID NOs: 1, 3, 5 and 7 which are all involved in the methylthio-alkane reductase complex.
There would have been a reasonable expectation of success that the nucleic acid sequences set forth in SEQ ID NOs: 1, 3 5 and 7 would work in the microorganism of North since Lonjers teaches that their nucleic acid sequences are from the same organism of North, R. rubrum.
Thus the cited art provides the requisite teaching and motivations to make and use the invention as claimed.
Claim(s) 1, 15, 16 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over North et al. (2020, Science, Vol. 369, pgs. 1094-1098, cited on IDS filed on 9/25/2023) in view of North et al. (2020, Mol. Microbiol., Vol. 113(5), pgs. 923-937), cited on IDS filed on 1/8/2024).
Regarding claim 1, North et al. teach a non-naturally occurring microbial organism (R. rubrum) comprising nucleic acids marB, marH, marD and marK and which produces ethylene, ethane and methane (see Abstract, Fig. 1 and pg. 1 col. 3 last parag. bridge pg. 2 col. 3).
North does not teach:
one or more genes of the DHAP shunt pathway and a nucleic acid further encoding one or more genes of a SAM hydrolase.
Regarding claims 15, 16 and 21 and a nucleic acid further encoding one or more
genes of a SAM hydrolase, North et al. (Mol. Microbiol.) teach that “S-adenosyl-L-methionine (SAM) is a necessary co-substrate for numerous essential enzymatic reactions including protein and nucleotide methylations, secondary metabolite synthesis, and radical-mediated processes. (Abstract lines 1-3).
North (Mol. Microbiol.) continues to teach “Previous studies demonstrated that R. rubrum and R. palustris encode genes (mtnP, mtnA, and ald2) for enzymes that catalyze the initial steps of two distinct anaerobic MSPs for MTA metabolism (Fig. 1B-C), with DHAP and (2-methylthio)acetaldehyde as key products (North et al., 2017; Miller A et al., 2018). Given previous in vitro indications that these same enzymes may also function in 5’dAdo metabolism (Erb et al., 2012), we simultaneously quantified the intracellular levels of the SAM metabolism byproducts, MTA and 5’dAdo, in R. rubrum (pg. 3 parag. 2 lines 1-7).
Thus at the time of filing of filing the ordinary artisan would have found it prima facie obvious to combine the teachings of North regarding a non-naturally occurring microbial organism (R. rubrum) comprising nucleic acids of the methylthio-alkane reductase complex with the teachings of North (Mol. Microbiol.) regarding the role of genes in the DHAP shunt pathway and genes SAM hydrolase to arrive at the claimed invention.
One of ordinary skill in the art would have been motivated to make such a combination since North (Mol. Microbiol.) teaches the importance of genes of a DHAP shunt pathway and SHA hydrolase in the biosynthesis of compounds in bacteria as R. rubrum.
There would have been a reasonable expectation of success that genes mtnP, mtnA and ald2 and genes of a SAM hydrolase would work in the microorganism of North since North (Mol. Microbiol.) teaches that their nucleic acid sequences are from the same organism of North, R. rubrum.
Thus the cited art provides the requisite teaching and motivations to make and use the invention as claimed.
Conclusion
No claims are allowed.
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/DAVID A MONTANARI/Examiner, Art Unit 1632
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