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 .
Claim Rejections - 35 USC § 112
Claim 3 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.
Claim 3 is indefinite because it outside the scope of Claim 1. Claim 3 broadens the limitations of Claim 1 because Claim 1 requires only 1 PHADase and Claim 3 requires two or more PHADase’s. Correction is required.
Election/Restrictions
Claims 9-11, 15, and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 06/17/2026.
Applicant’s election without traverse of Group I in the reply filed on 06/17/2026 is acknowledged.
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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Desrousseaux et al. (US20190218360A1) in view of Takwa et al. (WO2016085396A1) as evidenced by Shrestha (“Mesophiles: Definition, Habitat, Examples, Advantages”, 03/08/2024, https://microbenotes.com/mesophiles/).
Regarding Claim 1, Desrousseaux teaches the following:
A process for degrading a plastic product comprising at least one polyester such as… polyhydroxyalkanoate (PHA)(para 102) and the process of the invention may be used for degrading domestic plastic wastes, including plastic bottles, plastic bags and plastic packaging, soft and/or hard plastics, even polluted with food residues, surfactants, etc. (para 101)(a method for treatment of a postconsumer product comprising polyhydroxyalkanoate)
the process comprises a subsequent biological depolymerization step, wherein the plastic product is contacted with a depolymerase and/or a microorganism expressing and excreting a depolymerase (para 17)(within a reaction chamber, contacting a post-consumer product with a depolymerase and/or a microorganism that expresses a depolymerase)
Desrousseaux does not explicitly teach an extremophilic polyhydroxyalkanoate depolymerase (PHADase) or the contact taking place at an environmental condition that is deleterious to a mesophilic pathogen and at which the PHADase is active, whereupon the contact, the post-consumer product is decontaminated and the polyhydroxyalkanoate is degraded.
Takwa teaches the depolymerization of PHA (page 29, line 16). Takwa further teaches a crude PHA-depolymerase enzyme showed a noticeable depolymerization within only two hours at 70°C, the optimum temperature for enzyme activity (page 29, lines 20-23) and the assigned PHA-depolymerizing strain is a thermophilic bacterium (page 28, lines 16-17)(an extremophilic polyhydroxyalkanoate depolymerase (PHADase) and the contact taking place at an environmental condition that is deleterious to a mesophilic pathogen (see Shrestha below) and at which the PHADase is active).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the process of Desrousseaux with the PHA-depolymerase and environmental conditions as taught by Takwa. One would have been motivated to make this modification as over 50% of PHA content was depolymerized within 8 hours (page 29, line 24) creating an effective method of the depolymerization of PHA.
Note: Shrestha teaches the thermal death point of mesophilic bacteria is 50-65 C (page 3). Further, whereupon the contact, the post-consumer product is decontaminated and the polyhydroxyalkanoate is degraded would be the result of the above process in the above described conditions.
Regarding Claim 2, Desrousseaux in view of Takwa teaches all of the limitations of Claim 1 (see above). Takwa further teaches the microbial cells used for depolymerization are Schlegelella thermodepolymerans or any other PHA-depolymerizing thermophilic or mesophilic microorganism (page 17, lines 19-21)(polyextremophilic PHADase).
Regarding Claim 3, Desrousseaux in view of Takwa teaches all of the limitations of Claim 1 (see above). Takwa further teaches said depolymerizing enzyme is a PHA-extracellular depolymerase and PHA oligomer hydrolase or any combinations thereof (page 17, lines 23-25)(contacting the post-consumer product with two or more extremophile PHADase).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN E LEPAGE whose telephone number is (571)270-3971. The examiner can normally be reached 8:30-5:30 ET.
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/J.E.L./Examiner, Art Unit 1796
/MICHAEL A MARCHESCHI/Supervisory Patent Examiner, Art Unit 1799
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