DETAILED ACTION
This detailed action is in response to the amendments and arguments filed on 05/26/2026, and any subsequent filings.
Notations “C_”, “L_” and “Pr_” are used to mean “column_”, “line_” and “paragraph_”.
Claims 1-25 are pending. Claims 1-12 are elected.
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 .
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 1 is objected to because Claim 1 refers to “a bioremediation enzyme”, “a plurality of enzyme molecules” and “the enzyme molecules”, which is inconsistent language.
Claim Interpretation
Claim 1 is directed towards a method of protecting a bioremediation enzyme, then refers to “a plurality of enzyme molecules”. For purposes of examination, Claim 1 is being interpreted such that the “plurality of enzyme molecules” is a plurality of bioremediation enzymes to be protected by the claimed method.
Claims depending on the independent Claim 1 are also affected by this interpretation.
Claim Rejections - 35 USC § 112
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 1-12 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is directed towards a method of protecting a bioremediation enzyme, then refers to “a plurality of enzyme molecules” and “the enzyme molecules”. It is unclear whether the bioremediation enzyme of the preamble is one of the “plurality of enzyme molecules” and/or “the enzyme molecules” or is a distinct enzyme, rendering the claim indefinite.
Claim 1 is directed towards a method of protecting a bioremediation enzyme, then lists steps of combining a support material and “the enzyme molecules” to form a gel. It is unclear which step(s) perform(s) the protecting of a bioremediation enzyme, rendering the claim indefinite.
Claim 1 recites the limitation "the enzyme molecules" in line 2-3. It is unclear whether “the enzyme molecules” and “a plurality of enzyme molecules” are the same or distinct.
Dependent claims not recited above require all of the limitations of independent Claim 1, and therefore are rejected for the same reasons set forth above.
Claims 2 and 6-12 recites the limitation "the enzyme". It is unclear to which of the “plurality of enzyme molecules” this refers.
Claims 6-10 recites the limitation "the encapsulated enzyme". It is unclear to which of the “at least a portion of the enzyme molecules are encapsulated” this refers.
Claim Rejections - 35 USC § 102
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.
Claims 1 and 3-6 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Publication US20160175634A1 (‘Radian’).
The Applicant’s claims are directed towards a method.
Regarding Claims 1 and 3-6, Radian discloses a method of protecting a bioremediation enzyme ([0076-0077]), comprising:
combining a support material ([0054], matrix) with a plurality of enzyme molecules ([0053], matrix and a biomaterial. [0060], biomaterial may refer to one or more enzymes, such as enzymes within a cell or microorganism), wherein the enzyme molecules are selected from bacterial ([0060], bacteria. [0082]), archaea ([0060]), and eukaryote ([0060]) enzyme molecules; and
allowing the combination to form a gel ([0088] and [0114], silica gel synthesis), wherein at least a portion of the enzyme molecules are encapsulated ([0053] and [0060], silica-matrix encapsulated biomaterial) within the gel and not accessible to free protease ([0076] and [0081], biological protection).
Additional Disclosures Included:
Claim 3: the support material is one or more of alginate, chitosan, and tetramethylorthosilicate (TMOS) ([0086]).
Claim 4: the gel is a sol-gel ([0081]).
Claim 5: the gel is formed into beads and coated (Fig. 1b, [0065]).
Claim 6: the encapsulated enzyme is more stable than the enzyme in solution ([0076], protect against stressors. [0068], lower degradation rates in comparison to free cells in solution).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication US20160175634A1 (‘Radian’) in view of Publication Sol–gel immobilization of haloalkane dehalogenase from Bradyrhizobium japonicum for the remediation 1,2-dibromoethane (‘Skopelitou’, Journal of Molecular Catalysis B: Enzymatic 97 (2013) 5– 11).
The Applicant’s claims are directed towards a method.
Regarding Claim 2, Radian discloses the method of Claim 1, except that the enzyme is a dehalogenase.
Skopelitou also relates to a method of protecting a bioremediation enzyme (pg. 5, last Pr-pg. 6, left column, Pr1), including that the enzyme is a dehalogenase (pg. 6, left column, Pr2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the enzyme of Radian to be a dehalogenase, as demonstrated by Skopelitou, because the biomaterial of Radian may include virtually any type or types of biomaterial (Radian, [0060]) and both Radian and Skopelitou are concerned with bioremediation (Radian, [0071] and Skopelitou, abstract) using enzymes encapsulated in silica gel (Radian, [0081] and Skopelitou, abstract).
Claims 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication US20160175634A1 (‘Radian’) in view of U.S. Publication US20130309746A1 (‘DiNovo’).
The Applicant’s claims are directed towards a method.
Regarding Claims 7-10, Radian discloses the method of Claim 1, and suggests that the encapsulated enzyme is more resistant to elevated temperature compared to the enzyme in solution (Radian, [0081]). However, Radian does not teach that the encapsulated enzyme is more resistant to a protic solvent, more resistant to an alcohol solvent, more resistant to elevated temperature, and more resistant to a pH greater than 7.5 or less than 6.5 compared to the enzyme in solution.
DiNovo also relates to a method of protecting ([0002] and [0013]) a bioremediation enzyme ([0003]), including that the encapsulated enzyme is more resistant to a protic solvent ([0013] and [0017]), more resistant to an alcohol solvent ([0127-0129]), more resistant to elevated temperature ([0013] and [0017]), and more resistant to a pH greater than 7.5 or less than 6.5 ([0140-0141]) compared to the enzyme in solution.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the encapsulated enzyme of Radian to be more resistant, as demonstrated by DiNovo, because both Radian and DiNovo are concerned with biomaterial immobilization (Radian, [0080] and DiNovo, abstract).
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication US20160175634A1 (‘Radian’) in view of Publication Hybrid Silica-Microbial Materials for Bioremediation Applications (‘Yeom’, 2017).
The Applicant’s claims are directed towards a method.
Regarding Claims 11-12, Radian discloses the method of Claim 1, including that the enzyme is from pseudomonas (Radian, [0082]), except that the enzyme is selected from triazine hydrolase (TrzN) and chlorothalonil dehalogenase (Chd), wherein the enzyme is TrzN from arthrobacter or pseudomonas.
Yeom also relates to a method of protecting a bioremediation enzyme (abstract and pg. 58), including that the enzyme is selected from triazine hydrolase (TrzN) (pg. 147-148) and chlorothalonil dehalogenase (Chd), wherein the enzyme is TrzN from arthrobacter (pg. 147-148) or pseudomonas.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the enzyme of Radian to be triazine hydrolase (TrzN) from Arthrobacter, as demonstrated by Yeom, because Radian and Yeom are concerned with the atrazine bioremediation (Radian, [0082] and Yeom, abstract). Furthermore, TrzN catalyzes atrazine dichlorination but has the same reaction at a faster rate than AtzA and has a broad specificity which allows application to more than 20 s-triazine compounds (Yeom, pg. 147-148).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BOI-LIEN THI NGUYEN whose telephone number is (703)756-4613. The examiner can normally be reached Monday to Friday, 8 am to 6 pm.
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/BOI-LIEN THI NGUYEN/Examiner, Art Unit 1779
/Bobby Ramdhanie/Supervisory Patent Examiner, Art Unit 1779
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