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 after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.114 has been timely paid, the finality of the previous Office Action has been withdrawn pursuant to 37 CFR 1.114.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 10/13/2025 has been entered.
Claim status
The examiner acknowledged the amendment made to the claims on 10/13/2025.
Claims 18-20 and 23-33 are pending. Claims 18 and 33 are currently amended. Claims 1-17 and 21-22 remain cancelled. Claims 19-20 and 23-32 are previously presented. Claims 18-20 and 23-33 are hereby examined on the merits.
Examiner Note
Any objections and/or rejections that are made in the previous actions and are not repeated below, are hereby withdrawn.
Claim Rejections - 35 USC § 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.
Claims 18-20, 23-26 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Richter-Friis WO 2005/058474 A1 (cited in the IDS filed 12/30/2024, hereinafter referred to as Richter-Friis) in view of Yang, “Purification of cellulase fermentation broth via low cost ceramic microfiltration membranes with nanofibers-like attapulgite separation layers”, Separation and Purification Technology, 2017, 175, pages 435-442 (available online Nov. 2016, hereinafter referred to as Yang) or Akolkar, “Lactase production from Lactobacillus acidophilus”, World Journal of Microbiology & Biotechnology, 2005, 21, pages 1119-1122 (hereinafter referred to as Akolkar).
Regarding claims 18-19, Richter-Friis teaches a method of handling/storing an enzyme preparation, comprising the steps of providing a liquid enzyme formulation (e.g., an aqueous solution or suspension) and freezing droplet of the liquid enzyme formulation in a cryogenic liquid (e.g., liquid nitrogen) to form frozen pellets (e.g., cryogranules) (page 3, line 9-22; page 6, line 12-13; page 7, line 16-19 and 25-31).
Richter-Friis teaches that the liquid enzyme formulation is in the form of an aqueous solution or suspension but is silent regarding that the liquid enzyme formulation comprises a micro filtrate from a fermentation broth or an ultra-filtrate from a fermentation broth.
Yang teaches that cellulase enzyme has high added value in multiple industries, and is produced by a fermentation method such as submerged fermentation (page 435, left hand column, under “Introduction”). Yang further teaches a method of enhancing the quality of cellulase comprising purifying the cellulase obtained from the submerged fermentation comprising micro-filtering the fermentation broth so as to obtain a micro filtrate that comprises the cellulase (page 435, right hand column; page 436, left hand column, 2nd para.; right hand column, 2.2; Fig. 1). The micro filtrate as disclosed by Yang is necessarily an aqueous solution, since it is derived from the water-based fermentation broth.
Akolkar teaches that an enzyme (e.g., lactase) could be produced by fermentation of a Lactobacillus acidophilus strain, and the lactase produced could be further purified by ultra-filtration of the fermentation broth (e.g., intracellular extract, which is necessarily taken from the fermentation media) to obtain an isolated lactase in the permeate or filtrate (page 1120, “Fermentation for lactase production”, “Instruments” and “Enzyme purification and characterization”; page 1121, “Downstream processing and characterization of lactase”), Akolkar further teaches that the resultant isolated lactase is able to cleave lactose effectively (page 1121, “Comparison with the commercial sample”). The ultra-filtrate as disclosed by Akolkar is necessarily an aqueous solution, since it is derived from the water-based fermentation broth.
Both Richter-Friis and Yang (or Akolkar) are directed to an aqueous solution that comprises an enzyme. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Richter-Friis by substituting the micro filtrate from a fermentation broth as disclosed by Yang or the ultra-filtrate from a fermentation broth as disclosed by Akolkar for the aqueous solution that comprises enzyme as disclosed by Richter-Friis and subjecting the micro filtrate or the ultra-filtrate to droplet freezing to form frozen pellets (e.g., cyrogranules). One of ordinary skill in the art, before the effective filing date of the claimed invention, would have had a reasonable expectation of success for doing so because prior art has established that subjecting a liquid enzyme formulation to droplet freezing to form a frozen pellet or cyrogranule is suitable for handing/storing an enzyme.
Regarding the limitation that the liquid enzyme formulation is 5 wt% to 10 wt% of enzyme: Richter-Friis teaches that in producing the cryogranules of an enzyme, the aqueous solutions comprising the enzyme has at least 50% (v/v) water (page 3, line 12-15, 22 and 26), thus assuming a density of ~1 gram/ml for the solution, at least 50% (v/v) water is roughly about at least 50 wt% water, therefore, the enzyme content is necessarily 50% or lower and the teaching of Richter-Friis would encompass the enzyme range as recited in the claim. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Further, the amount of enzyme such as cellulase or lactase in the cryogranules would determine the activity of the enzyme formulation. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have optimized the concentration of enzyme in the aqueous solution through varying the amount of water so as to prepare cryogranules with desired enzyme dosage and/or desired enzymatic activity. As such, the amount of enzyme as recited in claim 18 is merely an obvious variant of the prior art.
Regarding claims 20 and 23-24, Richter-Friis teaches storing the cryogranules at a temperature of -80 °C to 0 °C such as -40 °C to -10 °C (page 10, line 19-20). The broad range as disclosed by prior art encompasses the ranges as recited in claims 20 and 23-24. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Regarding claims 25-26, Richter-Friis teaches that in producing the cryogranules that comprise an enzyme, the aqueous solutions comprising the enzyme has at least 50% (v/v) water (page 3, line 12-15, 22 and 26), therefore, assuming a density of ~1 g/ml for the aqueous solution, Richter-Friis would encompass the ranges as recited in the claims (see para. 9 above). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I). Further, when Richter-Friis is modified by Yang or Akolkar, one of ordinary skill in the art would have been motived to manipulate the amount of water in the micro filtrate or ultra-filtrate to a level that meets the requirement of Richter-Friis.
Further, the water content in the formulation determines the concentration or dosage of the enzyme in the cryogranules (e.g., more water, less enzyme and less water, more enzyme). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have optimized the concentration of enzyme through varying the amount of water so as to prepare cryogranules with desired enzyme dosage and/or desired enzymatic activity. As such, the amounts of water as recited in claims 25-26 are merely obvious variants of the prior art.
Regarding claim 33, Richter-Friis teaches that each droplet is typically in the range of 0.5-250 µL, e.g., 1-100 µL such as 2-20 µL (page 8, line 8-9). The volume as disclosed by Richter-Friis overlaps with the range as recited in claim 33. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I).
Claims 27-28 are rejected under 35 U.S.C. 103 as being unpatentable over Richter-Friis in view of Yang (or Akolkar) as applied to claim 18 above, and further in view of Pierce, Protein stability and storage [Online], Published at least as early as Aug. 24, 2007, [Retrieved on 2024-04-18]. Retrieved from the Internet: <URL: https://web.archive.org/web/20070824085624/https://wolfson.huji.ac.il/purification/PDF/StorageProteins/PIERCE_ProteinStorage.pdf> (originally cited by the examiner in the OA issued 04/25/2024 for the parent application 16/622163 and the IDS filed 10/10/2023 and 12/23/2024, hereinafter referred to as Pierce).
Regarding claims 27-28, Richter-Friis teaches including a polyol such as glycerol in the aqueous solution (page 3,line 15-17) and Richter-Friis further teaches storing the frozen pellet at a temperature of -80 °C to 0 °C such as -40 °C to -10 °C (page 10, line 19-20). Richter-Friis is silent regarding the amount of glycerol in the liquid enzyme formulation.
Pierce teaches storing protein in frozen state at a temperature of -20 to -80 degree Celsius or in a liquid nitrogen could maintain the shelf of the protein for years, as compared to a shell life of 1 month at a storage temperature of 4 degree Celsius, or a shell life of 1 year when stored as a solution at -20 degree Celsius (Table 1, first page). Pierce further teaches including 25-50% glycerol in a protein solution to stabilize the protein by preventing the formation of ice crystals when stored at a low temperate (page 2, under “Additives”).
Both Richter-Friis and Pierce are drawn to storing a protein formulation at a low temperature. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have included 25-50% glycerol in the aqueous solution of Richter-Friis for stabilizing the enzyme. Where the claim requires that glycerol functions as a preservative, the glycerol as disclosed by the prior art is interpreted to meet the claim.
Claims 30-31 are rejected under 35 U.S.C. 103 as being unpatentable over Richter-Friis in view of Yang (or Akolkar) as applied to claim 18 above, and further in view of Sugio US Patent Application Publication No. 2006/0154842 A1 (cited in the IDS filed 06/16/2025, hereinafter referred to as Sugio).
Regarding claims 30-31, Richter-Friis teaches including a polyol such as glycerol in the aqueous solution (page 3,line 15-17) and Richter-Friis further teaches storing the frozen pellet at a temperature of -80 °C to 0 °C such as -40 °C to -10 °C (page 10, line 19-20). Richter-Friis is silent regarding the amount of glycerol in the liquid enzyme formulation.
Sugio teaches storing an enzyme (e.g., lipoxygenase) by freezing for storage, wherein 10% glycerol is included to retain activity (0036).
Both Richter-Friis and Sugio are directed to frozen enzyme formulations. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Richter-Friis by including 10% glycerol in the aqueous solution of Richter-Friis for retaining the enzyme activity. Where the claim requires that glycerol functions as a preservative, the glycerol as disclosed by the prior art is interpreted to meet the claim.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Richter-Friis in view of Yang (or Akolkar) and Pierce as applied to claims 27-28 above, and further in view of Beck US Patent Application Publication No. 2017/0362621A1 (hereinafter referred to as Beck).
Regarding claim 29, Richter-Friis in view of Yang (or Akolkar) and Pierce as recited above teaches that the aqueous solution or the liquid enzyme formulation comprises 25-50% a polyol (e.g., glycerol), but is silent regarding that the solution or the formulation further comprises benzoate.
Beck teaches that a protein (e.g., Xyl3A protein) is stored in a stock solution that comprises a polyol (e.g., sorbitol) and a small amount of sodium benzoate (0238). One of ordinary skill working in the field of protein science before the effective filling date of the claimed invention would have recognized that sodium benzoate, a well-known preservative, functions to preserve the protein/extend the shell of the protein.
Both Richter-Friis and Beck are directed to proteins that are stored in an aqueous solution that comprises a polyol. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Richter-Friis by including a small amount of sodium benzoate in the aqueous solution of Richter-Friis for preserving the enzyme/extending the shell of the enzyme. Further, the skilled person will be motivated to manipulate the amount of sodium benzoate in the formulation so as to ensure the preservative effect.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Richter-Friis in view of Yang (or Akolkar) and Pierce as applied to claims 27-28 above, and further in view of Szabo US Patent Application Publication No. 2015/0361407 A1 (hereinafter referred to as Szabo).
Regarding claim 29, Richter-Friis in view of Yang (or Akolkar) and Pierce as recited above teaches that the aqueous solution or the liquid enzyme formulation comprises 25-50% a polyol (e.g., glycerol), but is silent regarding that the solution or the formulation further comprises benzoate.
Szabo teaches that adding a polyol such as glycerol to an enzyme mixture to stabilize the enzyme mixture, and adding sodium benzoate to the enzymatic mixture to prevent growth of microbial contamination (0055).
Both Richter-Friis and Szabo are directed to enzyme mixtures that comprise a polyol. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Richter-Friis by including a sodium benzoate in the aqueous solution of Richter-Friis for preventing the growth of microbial contamination. Further, the skilled person will be motivated to manipulate the amount of sodium benzoate in the formulation so as to ensure the effective prevention of microbial contamination.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Richter-Friis in view of Yang (or Akolkar) and Sugio as applied to claims 30-31 above, and further in view of Beck US Patent Application Publication No. 2017/0362621 A1 (hereinafter referred to as Beck).
Regarding claim 32, Richter-Friis in view of Yang (or Akolkar) and Sugio as recited above teaches that the aqueous solution or the liquid enzyme formulation comprises 10% a polyol (e.g., glycerol), but is silent regarding that the solution or the formulation further comprises benzoate.
Beck teaches that a protein (e.g., Xyl3A protein) is stored in a stock solution that comprises polyol (e.g., sorbitol) and a small amount of sodium benzoate (0238). One of ordinary skill working in the field of protein science before the effective filling date of the claimed invention would have recognized that sodium benzoate, a well-known preservative, functions to preserve the protein/extend the shell of the protein.
Both Richter-Friis and Beck are directed to proteins that are stored in an aqueous solution that comprises a polyol. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Richter-Friis by including a small amount of sodium benzoate in the aqueous solution of Richter-Friis for preserving the enzyme/extending the shell of the enzyme. Further, the skilled person will be motivated to manipulate the amount of sodium benzoate in the formulation so as to ensure the preservative effect.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Richter-Friis in view of Yang (or Akolkar) and Sugio as applied to claims 30-31 above, and further in view of Szabo US Patent Application Publication No. 2015/0361407 A1 (hereinafter referred to as Szabo).
Regarding claim 32, Richter-Friis in view of Yang (or Akolkar) and Sugio as recited above teaches that the aqueous solution or the liquid enzyme formulation comprises 10% a polyol (e.g., glycerol), but is silent regarding that the solution or the formulation further comprises benzoate.
Szabo teaches adding a polyol such as glycerol to an enzyme mixture to stabilize the enzyme mixture, and adding sodium benzoate to the enzymatic mixture to prevent growth of microbial contamination (0055).
Both Richter-Friis and Szabo are directed to enzyme mixtures that comprise a polyol. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified Richter-Friis by including a sodium benzoate in the aqueous solution of Richter-Friis for preventing the growth of microbial contamination. Further, the skilled person will be motivated to manipulate the amount of sodium benzoate in the formulation so as to ensure the effective prevention of microbial contamination.
Response to Arguments
Applicant's arguments filed 10/13/2025 have been fully considered but are moot over the new ground of rejection set forth in the instant office action.
Conclusion
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/CHANGQING LI/Primary Examiner, Art Unit 1791