DETAILED ACTION
Applicant’s amendment submitted 3/16/2026 is acknowledged. Claims 1 and 7-12 are currently amended. Claims 2-6 and 13 are canceled. Claims 1 and 7-12 remain pending in the instant application.
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 .
Priority
The instant application is a U.S. National Phase of PCT/JP2021/022698, filed 6/15/2021.
Response to Amendment
Applicant’s amendment to the specification and to claims 1 and 7-12 overcomes each and every objection and 35 U.S.C. 112(b) rejection previously set forth in the Non-Final Rejection mailed on 12/23/2025. Accordingly, the rejections are withdrawn.
Applicant’s cancelation of claim 13 renders moot the 35 U.S.C. 112(b) rejection of the claim. Accordingly, the rejection is withdrawn.
Terminal Disclaimer
The terminal disclaimer filed on 3/16/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application Number 18/563,922 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Objections
Claims 1 and 9 are objected to because of the following informalities:
Claims 1 and 9 improperly recite “a photosynthetic microorganism including a unicellular red algae” because the plurality of algae is incorrect and the alga is not a microorganism.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a) – Scope of Enablement
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.
New Rejection Necessitated by Amendment: Claims 1 and 7-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a method of promoting accumulation of a fat-based, oil-based, and starch-based biological material, comprising: culturing Cyanidioschyzon merolae in a culture medium comprising dimethyl 2-oxoglutarate under light irradiation; and collecting the fat-based, oil-based, and starch-based biological material, does not reasonably provide enablement for a method of promoting accumulation of a fat-based, oil-based, and starch-based by culturing a photosynthetic microorganism including any unicellular red algae in a culture medium containing dimethyl 2-oxoglutarate. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
In making a determination that a disclosure does not satisfy the enablement requirement, the factors that may be considered include: (A) the breadth of the claims, (B) the nature of the invention, (C) the state of the prior art, (D) the level of one of ordinary skill, (E) the level of predictability in the art, (F) the amount of direction provided by the inventor, (G) the existence of working examples, and (H) the quantity of experimentation needed to make or use the invention based on the content of the disclosure. While it is not essential that every factor be examined in detail, those factors deemed most relevant should be considered.
Nature of the invention. Claim 1 is drawn to a method of promoting accumulation of a fat-based, oil-based, and starch-based biological material by culturing a photosynthetic microorganism including a unicellular red algae in a culture medium that comprises dimethyl 2-oxoglutarate with irradiation of light; and then collecting the fat-based, oil-based, and starch-based biological material. Claim 9 is drawn to a method of promoting accumulation of a fat-based, oil-based, and starch-based biological material by culturing a photosynthetic microorganism including a unicellular red algae in a culture medium; then adding dimethyl 2-oxoglutarate to the culture medium with irradiation of light and continuing the culturing; and then collecting the fat-based, oil-based, and starch-based biological material.
Breadth of the claims. A unicellular red algae is broad. Claims 7 and 11 recite a broad range of dimethyl 2-oxoglutarate concentration ranging from 0.001 to 1,000 mmol/L. Claims 8 and 12 narrow the fat-based, oil-based, and starch-based biological material to one of a hydrophobic substance and a hydrophilic substance from the unicellular red algae.
State of the prior art and predictability of the art. The state of the art at the time of the invention reveals that inhibiting target of rapamycin (TOR) in the unicellular red alga, Cyanidioschyzon merolae promotes carbon storage and accumulation of triacylglycerol and starch; however, the understanding of TOR in photosynthetic organisms is lacking. Additionally, TOR inhibitors do not confer the same effects in the green microalga C. reinhardtii and red alga C. merolae or require genetic modification of C. merolae to impart susceptibility. Furthermore, the state of the art reveals that α-ketoglutarate (2-oxoglutarate) and cell-permeable ester derivatives thereof inhibit ATP synthase and TOR in Caenorhabditis elegans and mammalian cells, but no data exists for photosynthetic microorganisms. Additionally, the catalyzation of 2-oxoglutarate in the TCA cycle is not standard across all photosynthetic microorganisms.
Juppner et al. (Plant J., 2018, Vol. 93, pp.355-376, of record in IDS filed 11/15/2023) disclose that although several functions of TOR have been described in various heterotrophic eukaryotes, the understanding of TOR in photosynthetic organisms lags far behind (see Abstract, paragraph bridging pp.355-356,-left column, last paragraph).
Imamura et al. (Plant Mol. Biol., 2015, Vol. 89, pp.309-318; of record) demonstrate that inhibition of TOR by rapamycin treatment in a strain of the red alga, Cyanidioschyzon merolae, generated for susceptibility to rapamycin by expressing a yeast FKBP12 protein drives accumulation of cytoplasmic lipid droplets containing TAG (see p.309, paragraph bridging left and right columns, passage bridging pp.312-314, and Fig. 3). Imamura et al. further demonstrate lipid droplet and TAG accumulation in the green microalga, Chlamydomonas reinhardtii, treated with rapamycin (see p.314, right column, 2nd passage, and Fig. 5). Imamura et al. previously demonstrated that rapamycin treatment also inhibits cell growth, and in this study, observed that inhibiting cell growth with the topoisomerase I inhibitor, camptothecin, did not result in the accumulation of lipid droplets, like rapamycin (see p.314, left column, 1st passage, p.317, left column, 3rd paragraph, and Supplemental Fig. 3). Imamura et al. thus demonstrated that TAG accumulation is under the control of TOR signaling (see p.314, left column, 1st passage).
Imamura et al. (Plant Signaling & Behavior, 2016, Vol. 11(3), e1149285; of record in IDS filed 11/15/2023) disclose that the TOR-signaling pathway negatively regulates TAG accumulation in microalgae (see p.1, left column, 1st paragraph, and p.2, left column, 1st paragraph). Imamura et al. further disclose that some mammalian TOR inhibitors, such as rapamycin, Torin1, and AZD8055, have been demonstrated to inhibit TOR kinase in higher plants (see p.1, paragraph bridging left and right columns). Imamura et al. demonstrate that Torin1 and AZD8055 inhibit the growth of the green microalga Chlamydomonas reinhardtii and promote lipid droplet and TAG accumulation in a dose-dependent manner similar to rapamycin (see p.1, right column, 1st passage, and Figs. 1A-1C and S1). These results demonstrate that TOR plays a critical role in TAG accumulation as a negative regulator in microalgae. To the contrary, the unicellular red alga Cyanidioschyzon merolae is insensitive to Torin1 and AZD8055, possibly because of a unique TOR structure in C. merolae or drug instabilities in the hot, acidic medium used for C. merolae cultivation (see p.1, right column, 1st passage).
Chin et al. (Nature, 2014, Vol. 510, pp.397-401) discloses that the tricarboxylic acid (TCA) cycle intermediate α-ketoglutarate (2-oxoglutarate) inhibits ATP synthase and TOR in Caenorhabditis elegans and mammalian cells treated by the metabolite intermediate (see Abstract, p.397, paragraph bridging left and right columns, p.399, paragraph bridging left and right columns, paragraph bridging pp.399-400, and Fig. 2-4). In the cell, α-ketoglutarate is decarboxylated to succinyl-CoA and CO2 by α-ketoglutarate dehydrogenase, a key control point in the TCA cycle (see p.397, right column, 2nd paragraph). Chin et al. further disclose that α-ketoglutarate is not membrane-permeable, and thus the membrane-permeable esters of α-ketoglutarate were used to deliver α-ketoglutarate across lipid membranes in their experiments (see METHODS – “Membrane-permeable esters of α-KG”). Chin et al. further describes that esters of α-ketoglutarate are hydrolyzed by cellular esterases to provide the ester and α-ketoglutarate intracellularly and yield similar cellular effects to α-ketoglutarate (see Extended Data Fig. 2g, 2h, and Extended Data Table 2).
Therefore, the state of the art at the time of the invention reveals that TOR inhibition promotes the accumulation of lipid-, oil-, and starch-based compounds in microalgae, and that C. merolae requires genetic modification to be susceptible to TOR inhibition by rapamycin. The state of the art further demonstrates that C. merolae TOR is not susceptible to the mammalian TOR inhibitors Torin1 and AZD8055, while C. reinhardtii TOR is susceptible to them. Moreover, the understanding of TOR inhibition in photosynthetic organisms lags far behind heterotrophic eukaryotic organisms. Furthermore, 2-oxoglutarate and ester derivatives were known to inhibit TOR in C. elegans and mammalian cells through downstream signaling in the TCA cycle by metabolites yielded from 2-oxoglutarate dehydrogenase. It is also noted that no prior art has demonstrated the culturing of photosynthetic microorganisms, let alone unicellular red algae, in culture medium comprising dimethyl 2-oxoglutarate. In view of the state of the art, inhibition of TOR by the ester derivative of 2-oxoglutarate, dimethyl 2-oxoglutarate, is not predictable across all unicellular red algae other than Cyanidioschyzon merolae and would require undue experimentation to practice the full scope of the claimed invention.
Guidance in the specification. The specification only demonstrates the accumulation of fat, oil, and starch in the unicellular red alga, Cyanidioschyzon merolae, cultured in the presence of dimethyl 2-oxoglutarate. In the specification, paragraph [0017] discloses that dimethyl 2-oxoglutarate slows cell proliferation of photosynthetic microorganisms, thereby promoting accumulation of substances produced by the photosynthetic microorganisms. Paragraph [0038] of the specification discloses that TOR inhibitors are not effective for all photosynthetic microorganisms. The specification further discloses that since dimethyl 2-oxoglutarate is a derivative of the metabolite 2-oxoglutarate, which is common to all organisms, it is effective in all photosynthetic microorganisms (see paragraph [0038]). However, the examples only demonstrate the culturing of the unicellular red alga Cyanidioschyzon merolae under a light condition in MA2 culture medium comprising a final concentration of 2 mmol/L dimethyl 2-oxoglutarate (see paragraphs [0040]-[0047] and Figs. 1-5). Furthermore, the tests only demonstrate the accumulation of fat, oil, and starch in the C. merolae cultured with dimethyl 2-oxoglutarate (see Figs. 2 and 5). The specification does not disclose any other photosynthetic microorganisms cultured with dimethyl 2-oxoglutarate nor any accumulated biological material other than fat, oil, and starch. There is no critical explanation for how dimethyl 2-oxoglutarate promotes accumulation of biological substances in all photosynthetic microorganisms, let alone its mode of action for the accumulation of fats, oils, and starches in C. merolae.
Amount of experimentation necessary. In view of the state of the art at the time of the invention and the single alga tested in the specification, one of skill in the art would not be able to use the full scope of the claimed invention without performing experimentation on a case by case basis for all unicellular red algae photosynthetic microorganisms besides C. merolae. Furthermore, the person of skill in the art would not have a reasonable expectation of achieving success across the breadth of photosynthetic microorganisms from what is known in the prior art about the influence of 2-oxoglutarate and derivatives thereof on TOR inhibition, the influence of TOR inhibition on the TCA cycle in photosynthetic microorganisms, the fact that mammalian TOR inhibitors do not have standard effects on all microalgae, and the lack of any disclosure outside of the specification demonstrating the effects of culturing photosynthetic microorganisms in the presence of dimethyl 2-oxoglutarate. Consequently, what has been demonstrated in the unicellular red alga C. merolae is not predictable in all photosynthetic microorganisms, let alone other unicellular red algae.
Taking these factors into account, undue experimentation would be required by one of ordinary skill in the art to practice the full scope of the claimed invention. Thus, the claims are not fully enabled by the disclosure.
Applicant may overcome this rejection by narrowing claims 1 and 9 to Cyanidioschyzon merolae.
Response to Arguments
Applicant's arguments filed 3/16/2026 have been fully considered but they are not persuasive.
In Applicant’s Remarks, see p.7, 1st paragraph, Applicant submits that the claims have been amended to correspond to the subject matter that the outstanding office action has indicated as enabled. This is not persuasive. The outstanding office action indicated that culturing Cyanidioschyzon merolae in the presence of 2-oxoglutarate for promoting accumulation of fat-based, oil-based, and starch-based biological material is enabled; however, the claims have been amended broadly to unicellular red algae. Applicant may overcome the rejection by narrowing the claims to culturing Cyanidioschyzon merolae.
The nonstatutory provisional double patenting rejection over claims 1 and 8-17 of copending Application No. 18/563,922 is withdrawn in view of Applicant’s Remarks and the approved Terminal Disclaimer filed 3/16/2026 (see Remarks – p.8, 1st paragraph).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/J.P.S./Examiner, Art Unit 1651
/MELENIE L GORDON/Supervisory Patent Examiner, Art Unit 1651
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