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 .
Claims 1-7, 12-14, have been canceled. Claims 8-9, 15-23 are still at issue and are present for examination.
Claims 10-11 remain withdrawn as drawn to non-elected invention. Applicant must rest assured that once allowable subject matter is identified, the examiner will consider rejoinder of said claims with the elected invention.
Applicants' arguments filed on 3/18/26, have been fully considered and are deemed to be persuasive to overcome some of the rejections previously applied. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.
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.
Claim 22 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. In claim 22, it is recited that a whole fermentation broth of a filamentous fungus has supplemented the enzyme composition of claim 8 to achieve RLPMO ratios from 0.82-0.95. It is unclear which specific “filamentous fungus whole broth” is utilized. If said whole broth comprises Talaromyces emersonii, applicant needs to write said specific fungus in claim 22.
Claims 8-9, 15-23 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 8(and its dependent claims is confusing. This is because, said claim at first glance appears to be generic reciting phrases like “fermentation product” and “lignocellulose material but the body of the claims refers to said products as “alcohol” and “corn stover’ respectively, which are species. Applicant is advised to avoid reciting genus and species in a single claim. This misleading problem continues in claims 9 and 19 wherein applicant refers to “the lignocellulose material” instead of “corn stover”.
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.
Claims 8-9, 15-23 remain rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 8 (and its dependent claims 9, 15-23) is directed to a method of producing alcohol utilizing a genus of enzyme compositions (including mutants and variants of said enzymes), wherein said genus of enzyme compositions result in higher hydrolysis performance as compared to a process utilizing enzyme compositions that comprise enzyme ratios beyond what is claimed (see claim 8), wherein said claimed method is inadequately described in the disclosure.
The specification merely describes few species (see table 3) wherein the hydrolysis performance of some of the enzyme blends of this invention have shown slightly higher hydrolysis results. Applicant is fully aware that alcohol production involves many steps beyond mere hydrolysis.
Further, the hydrolysis results in said table 3 are incomplete. This is because applicant in table 3, has merely shown enzyme blends wherein either all enzyme ratios, namely RAXE, RLPMO and RHC are off range (see blends 0, 1 and 6) or enzyme compositions wherein all said enzyme ratios are within range (2-5). However, applicant fails to show any blends wherein only one or two of said ratios are off range while the other(s) are within range.
Next, in claim 8, the genus of T. emersonii enzyme composition recited in claim 8(a), embraces enzymes which may be recombinant, wild type or a mixture thereof. Regarding the recombinant enzymes, applicant has merely provided a single species, namely: T. emersonii enzymes expressed in A. niger host, which is a totally inadequate to fully describe the genus of filamentous fungi hosts from which instant enzyme compositions originate. This problem is more serious regarding claim 17, which recites a genus of beta-glucosidases and cellobiohydrolases I-II wherein said enzymes may originate from any source or species. But the only source for said enzymes is disclosed to be Talaromyces emersonii (a single species).
Finally, in claim 22 (whose scope is within that of claim 8), it is recited that a whole fermentation broth of a filamentous fungus has supplemented the enzyme composition of claim 8 to achieve RLMPO ratios from 0.82-0.95. However, “a whole fermentation broth” is not merely made up of recombinant or wild type LPMO and will have many other enzymes therein including AXE, HC, lipases, cellobiohydrolases etc. Applicant has not disclosed what filamentous fungi hosts expressing LPMOs are producing AXE and HC enzymes at levels, such that addition of a broth thereof, while maintaining the LPMO ratios of 0.82-0.95, does not push the ratios of RAXE and RHC off range in the resulting enzyme composition. Further claim 8(a) is utilizing an enzyme composition comprising LPMO, AXE, HC and does not exclude other enzymes such as lipases, cellobiohydrolases, beta-glucosidases etc. in the fermentation broth, but applicant has failed to explain how said additional enzymes in the supplemented broth had no impact (such as synergy etc.) on the hydrolysis efficiency of corn stover of this invention and in fact, enhanced hydrolysis obtained here is merely the result of utilizing the specific enzyme ratios claimed.
Therefore, again based on the information provided, one of ordinary skill in the art cannot reasonably conclude that applicant had full possession of the invention, before the effective filing of this application.
No claim is 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 MARYAM MONSHIPOURI whose telephone number is (571)272-0932. The examiner can normally be reached full-flex.
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, Melenie L Gordon can be reached at 571-272-8037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARYAM MONSHIPOURI/Primary Examiner, Art Unit 1651
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