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 .
DETAILED ACTION
Applicant’s response filed on 07/27/2026 is duly acknowledged.
Claims 2, 3, 5, 8, 9, 12, 13, 15, 17, 18, 23-25, 30-33 have been canceled by the applicants.
Claim 34 has been newly presented for examination (taken under elected invention of Group I).
Claims 1, 4, 6, 7, 10, 11, 14, 16, 19-22, 26-29 and 34 (as currently amended/presented) are pending in this application.
Claims 14, 16, 19-22 and 26-29 (non-elected inventions of Groups II-VI, without traverse) remain withdrawn.
Claims 1, 4, 6, 7, 10, 11 and 34 (elected invention of Group I, without traverse; directed to “A biological method for obtaining an MO monomer…”) have been examined on their merits in this action hereinafter.
Priority
This application is a 371 of PCT/EP2022/069156 (filed on 07/08/2022), which claims foreign priority to an application from FRANCE 2107485 (filed on 07/09/2021).
Claim Objections – Withdrawn
In view of current amendments to claims and remarks presented by applicants (see REM dated 07/27/2026, p. 6), the claim objections as previously made by the examiner have been withdrawn.
Claim Rejections - 35 USC § 112 -Withdrawn
In view of cancelation of claim 9, the 112b rejection, as previously made by the examiner has been withdrawn.
The following contains new grounds of objection/rejection necessitated by applicant’s current amendments to pending claims.
Claim Rejections - 35 USC § 112 - New
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.
Claim 4 (as presented) 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 4 recites the following:
“4. (Previously Presented) The method according to claim 1, wherein the MO monomer has a bio-sourced carbon content of between 5wt% and 100wt% relative to the total carbon weight in said MO monomer, the bio-sourced carbon content being measured according to a standard ASTM D6866-21 Method B.”
Claim 4 directly depends from independent claim 1 and recites the limitations “wherein the MO monomer has a bio-sourced carbon content of between 5wt% and 100wt% relative to the total carbon weight in said MO monomer…”, which is ambiguous and confusing. It is unclear as to how the product MO monomer has, for example, a bio-sourced carbon content of 5wt%, when the substrate CN compound has a bio-sourced carbon content of 60wt% to 100wt%, as recited in claim 1, as currently amended.
PNG
media_image1.png
253
574
media_image1.png
Greyscale
Since, the carbon atoms during the reaction with nitrilase enzyme, for instance, do not change (decrease or increase) during conversion of a nitrile to an acid (see disclosure from Hauer et al, 2002 of record), it is not clear as to how the of the product would be any different that the substrate, such as reduced to the extent of 5wt % in the MO monomer (i.e. reduced from “between 60wt% and 100wt%” in the CN compound). Since, the carbon atom from the -CN group is completely conserved in the final product during nitrilase enzyme reaction, both starting material and the product should have the same number of carbon atoms, and therefore, the recitation of limitations “wherein the MO monomer has a bio-sourced carbon content of between 5wt% and 100wt% relative to the total carbon weight in said MO monomer…”, as presented in instant claim 4 is deemed indefinite. The metes and bounds of the claimed process does not appear to be properly defined. Appropriate correction and/or explanation is required.
NOTICE: 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.
Claim Rejections - 35 USC § 103 – New Grounds
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, 4, 6, 7, 11 and 34 (as amended/presented) are/remain rejected under 35 U.S.C. 103 as being unpatentable over Hauer et al (2002; WO 02/18612 A1; PTO English machine translation previously made of record) in view of Beerthuis et al (2015; NPL cited in applicant’s IDS dated 11/30/2023, citation no. 16) and Haverly et al (2019; NPL previously made of record).
Claim 1 (as currently amended) and newly presented claim 34 are as follows::
“1. (Currently Amended) A biological method for obtaining an MO monomer comprising an ethylenic unsaturation by bioconversion of a CN compound comprising at least one nitrile function, said CN compound being at least partially renewable and non-fossil, said biological method comprising at least one step of enzymatic bioconversion of the CN compound in the presence of a biocatalyst comprising at least one enzyme,
the MO monomer being selected from the group consisting of (meth)acrylamide, ammonium (meth)acrylate, and (meth)acrylic acid,
the CN compound being (meth)acrylonitrile or 3-hydroxypropionitrile,
wherein the CN compound has a bio-sourced carbon content of between 60 wt% and 100 wt% relative to a total carbon weight in the CN compound, the bio-sourced carbon content being measured according to a standard ASTM D6866-21 Method B.
“34. (New) A biological method for obtaining an MO monomer comprising an ethylenic unsaturation by a bioconversion of a CN compound comprising at least one nitrile function, said CN compound being at least partially renewable and non-fossil, said biological method comprising at least one step of enzymatic bioconversion of the CN compound in the presence of a biocatalyst comprising at least one enzyme,
the MO monomer being (meth)acrylamide,
the CN compound being (meth)acrylonitrile or 3-hydroxypropionitrile,
wherein the CN compound has a bio-sourced carbon content of between 60 wt% and 100 wt% relative to a total carbon weight in the CN compound, the bio-sourced carbon content being measured according to a standard ASTM D6866-21 Method B.”
See also the 112b rejection discussed above, and the limitations of dependent claims 4, 6, 7 and 11 as currently amended/presented.
Hauer et al (2002; citations per English machine translation attached) disclose a biological method for obtaining a monomer (regarding instant claim 1; see p. 1, Abstract; and p. 16-17, Claims) comprising an ethylenic unsaturation (such as corresponding carboxylic acid taken herein as “MO monomer”, i.e. acrylic acid; see p. 2, 5th-6th paragraphs; and p. 4, 3rd-4th paragraphs) by bioconversion of a nitrile compound comprising at least one nitrile function (R-CN; such as comprising acrylonitrile, methacrylonitrile, propionitrile, etc.; see p. 6, section “Compounds with at least one nitrile function”; p. 16, Example 11), wherein the biological method comprises at least one step of enzymatic bioconversion of the nitrile compound in the presence of a biocatalyst comprising at least one enzyme such as nitrile hydratase-amidase complex isolated from a microorganism such as Rhodococcus species (see p. 2, 3rd to 7th paragraphs; p. 16-17, Claims 1-4, 10-12). The bioconversion by nitrile hydratase-amidase enzyme complex has following disclosed reactions (schematic reproduced from p. 2 of the original German publication of WO02/18612A1):
PNG
media_image1.png
253
574
media_image1.png
Greyscale
Hauer et al also disclose the art-known fact that the enzyme “nitrilase (E.G. 3.5.5.1) can catalyze the conversion of nitriles to the acid directly without the release of the intermediate amide in a one-step process” (see p. 2, 4th paragraph); wherein they also disclose the process of conversion, isolation and/or extraction of the product from the aqueous reaction by acidifying (using mineral acids such as HCl or H2SO4 below pH 2) the amide produced in order to form the carboxylic or monocarboxylic acid, and thereafter extracting and crystallizing to further purify the product (see p. 5, 3rd and 5th paragraphs).
However, the method wherein: the “CN compound being at least partially renewable and non-fossil” having a bio-sourced carbon content of “between 60 wt% and 100 wt% relative to a total carbon weight in the CN compound”, or “derived from a recycling process” (see instant claims 1, 6, 11 and 34); and wherein “CN compound” or the “MO monomer” has “a bio-sourced carbon content of between 5wt% and 100wt% relative to the total carbon weight” (see instant claim 4), has not been specifically disclosed by the cited prior art of Hauer et al, as discussed above.
Beerthuis et al (2015), while reviewing catalytic routes towards monomers such as acrylic acid, adipic acid and epsilon-caprolactam starting from biorenewables (see Title, and Abstract), disclose a route starting from glycerol or glutamic acid as the bio-based feedstock (i.e. bio-renewable, 100% non-fossil source), said route going through the intermediate acrylonitrile (see Table 1; p. 1344, Figure 4; and p. 1347, section “3.2.7. Acrylonitrile to acrylic acid”); wherein they disclose several routes and/or options for conversion of acrylonitrile to acrylic acid monomer, including chemical means such as by acid hydrolysis or by use of borate catalyst, or biological methods such as by microbial biotransformation using Rhodococcus ruber bacteria, or by employing isolated/purified nitrilase enzyme (see p. 1348, left column, last two full paragraphs, and cited references 102-103 therein), where a 92% mol/mol-1 bioconversion yield was achieved, and therefore large scale implementation of such biorenewable processes in order to obtain said monomers on commercial scale, in place of current chemical methods, is recommended and encouraged. They also disclose the disadvantages of some of the chemical hydrogenation processes currently in use, wherein the efficiency of the process primarily depends on recycling of adiponitrile, for instance, to achieve significant extent of conversion (see p. 1355, section 5.2.4), albeit exemplifying conversion of adiponitrile to epsilon-caprolactam.
Haverly et al (2019), while teaching biobased carbon content quantification through accelerator mass spectrometry (AMS) radiocarbon analysis of liquid fuels (see Title and Abstract), disclose the fact that “Radiocarbon analysis is the most viable quantification method for these applications. Radiocarbon analysis distinguishes between biobased carbon and fossil carbon by measuring the ratio of 14C and 12C isotopes in a sample” (see Introduction, 2nd paragraph); wherein using test samples of hydrocarbons having known biobased carbon content ranging from 0 to 10 wt%, and analyzing the using ASTM D6866-16 method B, they conclude the fact that the study supports radiocarbon analysis by AMS as an accurate and reliable method for quantifying the biobased carbon content of hydrocarbons, albeit using the test samples of hydrocarbon transportation fuels.
Thus, given the detailed teachings from Beerthuis et al for the use of biobased feedstock for making monomers such as acrylic acid, starting from biorenewable resources (see Beerthuis et al, as discussed above), and for the accurate analytical method of for quantification of biobased carbon contents in hydrocarbons (such as “ASTM D6866 method B”; see teachings from Haverly et al, above), an artisan of ordinary skill in the art would have been motivated to employ the environmentally friendly, biobased, renewable resources and/or feed stocks (that may also include recycled biobased feedstocks) in the process of preparing acrylic acid monomers as disclosed by Hauer et al in order to effectively reduce cost and toxic waste products (see advantages disclosed by Beerthuis et al, p. 1434, section “2. Implementing biorenewable chemicals”, for instance) because “…biomass is readily available, stable in supply and (depending on type) can be cheap. What is more, biobased chemicals can often be produced under milder conditions and with less toxic reagents and waste, than the petrobased equivalents, being more ‘green’ with lower processing costs”. Since, the fossil based carbon content for the biobased resources can be accurately quantified as per ASTM D6866 method B as taught to be superior by Haverly et al, an artisan of ordinary skill in the art would have been motivated for such substitution in biobased chemical resources in order to employ them as feedstock for preparing the desired monomers using biotransformation reaction of Rhodococcus sp. as already disclosed in details by Hauer et al, as discussed above. The extent of nitrile compounds and monomers produced as being at least partially or “fully renewable and non-fossil” (see instant claims 1, 4, 6 and new claim 34) would therefore have been obvious and/or fully contemplated by an artisan of ordinary skill in the art given the advantages already taught and/or suggested by Beerthuis et al.
It is noted that the enzymatic bioconversion reaction with same chemical substrates (irrespective of the source- non-fossil biobased, recycled, and/or otherwise) acted upon by the same enzymes or biocatalysts would necessarily produce the same product monomer(s) as already taught by Hauer et al, as discussed above, wherein the specific contents of the bio-based carbon in substrate as well as product can be accurately estimated using art-known methods (as disclosed by Haverly et al, above) as per need. Unless the specific source of the substrate CN compound comprising factors (and/or specific reaction conditions, which are not recited in the claim 1) that inhibit and/or alter the activity of the biocatalysts or the enzymes used for such biotransformation is identified on record, the process as claimed would have been obvious to an artisan of ordinary skill in the art as per the combined disclosure from the cited prior art references as discussed above. In the absence of any critical features disclosed on record, the process as generically claimed fails to distinguish itself over the combined teachings and/or suggestions from the cited prior art references as discussed above.
Claim 10 (as amended) is rejected under 35 U.S.C. 103 as being unpatentable over Hauer et al (2002; WO 02/18612 A1; PTO English machine translation previously made of record) in view of Beerthuis et al (2015; NPL cited in applicant’s IDS dated 11/30/2023, citation no. 16) and Haverly et al (2019; NPL previously made of record), as applied to claims 1, 4, 6, 7, 11 and 34 above, and further in view of Ghisleiri et al (WO 2020/078798 A1; FOR cited in IDS dated 11/30/2023, citation no. 14).
Claim 10 has been reproduced below:
“10. (Currently Amended) The method according to claim 1 [[9]], further comprising: ammonium acrylate or methacrylate
The detailed teachings and/or suggestions from the cited prior art references of Hauer et al taken with Beerthuis et al and Haverly et al as they pertain to claims 1, 4, 6, 7, 11 and 34 above, have been discussed above, and are further relied upon in the same manner hereinafter.
However, the specific method step of converting acrylate or methacrylate respectively into acrylic acid or methacrylic acid, has not been explicitly stated/exemplified by Hauer et al taken with Beerthuis et al and Haverly et al, as discussed above.
Ghisleiri et al (2020) disclose the single step process for producing acrylic acid or salts thereof, including ammonium acrylate starting from acrylonitrile using a nitrilase enzyme as a biocatalyst produced in a recombinant bacteria such as Rhodococcus rhodocrous (see Abstract, Examples 2- 3, and Claims 3-7, 13); and wherein they also state that it would be desirable to obtain acrylic acid and its derivatives from renewable resources, rather than from fossil fuels (see p. 1, lines 17-19).
Thus, it would have been obvious to an artisan of ordinary skill in the art to prepare acrylic acid from compounds comprising at least one nitrile function such as acrylonitrile (from renewable resources, for instance) by incorporating the step of nitrilase reaction (or as a single step method) as demonstrated by Ghisleiri et al, in the process disclosed by Hauer et al when taken with Beerthuis et al and Haverly et al, as discussed above. The conversion of acrylate or ammonium salt thereof into acrylic acid would have been therefore obvious as already shown using suitable acidification step (by decreasing pH below 2, for instance) from the disclosure of Hauer et al, as discussed above (see Hauer et al, p. 5, 3rd and 5th paragraphs; also see instant specification, p.49, Example 6 for such step of acid neutralization). Therefore, giving the detailed teachings and suggestions from the cited prior art references, the invention as generically claimed would have been obvious and/or fully contemplated by an artisan of ordinary skill in the art, unless evidence/data provided on record to the contrary (which is currently lacking for the entire scope of the claims as currently presented; see instant specification, Examples 1-2 and 4-6).
Thus, the claim as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the invention as claimed.
As per MPEP 2111.01, during examination, the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, F.3d, 2004 WL 1067528 (Fed. Cir. May 13, 2004)(The USPTO uses a different standard for construing claims than that used by district courts; during examination the USPTO must give claims their broadest reasonable interpretation.). This means that the words of the claim must be given their plain meaning unless applicant has provided a clear definition in the specification. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Examiner’s Response to Arguments
Applicant's arguments filed dated 07/27/2026 (see REM, p. 7-13) have been fully considered but they are moot in view of new grounds of objection/rejection made in this office action as discussed above, and are not persuasive at least for the following reasons of record:
Applicant main arguments appear to be centered around the premise that “the cited reference teaches away from Claim 1 and provides no reasonable expectation of success in reaching its subject-matter. Accordingly, the cited combination of references would not have led one having ordinary skill in the art to the presently claimed invention” (see REM, P. 7-9, p. 9, in particular), which is duly noted and considered. However, it is not found to be persuasive because, as already noted in the rejection of record, the process as claimed would have been obvious to an artisan or ordinary skill in the art because the combined disclosure from the cited prior art teaches the same enzymatic bioconversion reaction with same chemical substrates (irrespective of the source- non-fossil biobased, recycled, and/or otherwise) acted upon by the same enzymes or biocatalysts (such as nitrile hydratase or nitrilase enzymes) that would necessarily produce the same product monomer(s) as already taught by Hauer et al, wherein the specific contents of the bio-based carbon in substrate as well as product can be accurately estimated using an art-known method (as already disclosed by Haverly et al, discussed in the rejection above) as per need. It is re-iterated that unless the specific source of the substrate CN compound (comprising contaminants and/or factors; and/or specific reaction conditions, which are currently not recited in the claim 1 or new claim 34) that inhibit and/or alter the activity of the biocatalysts or the enzymes used for such biotransformation is identified on record, an artisan in the art would have had a reasonable expectation of success in performing the process as claimed for obtaining the MO monomers (starting from CN compounds of any such origin or source, including bio-renewable, non-fossil, or recycled sources, as required by claims 1 and 34), and therefore would have been deemed obvious and/or fully contemplated by an artisan of ordinary skill in the art given the combined disclosure from the cited prior art as discussed above.
Applicants also appear to argue unexpected technical effects, and unpredictable superior results (see REM, p. 9-12) based on the disclosure (SPEC, Tables 2-3 results, for instance) of record that employs “organic tall oil” or “recycled cooking oil” as origin of acrylonitrile in the comparative examples. However, it is noted to applicants that the scope of the showing must be commensurate with the scope of claims to consider evidence probative of unexpected results, for example. In re Dill, 202 USPQ 805 (CCPA, 1979), In re Lindner 173 USPQ 356 (CCPA 1972), In re Hyson, 172 USPQ 399 (CCPA 1972), In re Boesch, 205 USPQ 215, (CCPA 1980), In re Grasselli, 218 USPQ 769 (Fed. Cir. 1983), In re Clemens, 206 USPQ 289 (CCPA 1980). It should be clear that the probative value of the data on record is not commensurate in scope with the degree of protection sought by the instant claims (see instant claims 1 and 34, in particular).
Thus, the 103(a) rejection of record over the amended claims of record as discussed above is properly made and/or maintained.
Conclusion
NO claims are currently allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SATYENDRA K. SINGH whose telephone number is (571)272-8790. The examiner can normally be reached M-F 8:00- 5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, LOUISE W HUMPHREY can be reached at 571-272-5543. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
SATYENDRA K. SINGH
Primary Examiner
Art Unit 1657
/SATYENDRA K SINGH/Primary Examiner, Art Unit 1657
Prosecution Insights