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 .
Status of the Claims
Receipt of Remarks/Amendments and a Statement of Deposit of Biological Material filed on 06/29/2026 is acknowledged. Claims 3 and 6 are cancelled. Claims 10-12 have been newly added and have not been previously examined. Claim 8, drawn to an ethyl carbamate degradation agent, is withdrawn as a non-elected group from the restriction requirement. Newly filed Claim 12 depends from withdrawn Claim 8 and is also withdrawn from consideration pursuant to 37 C.F.R. 1.142(b).
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections presently being applied to the instant application.
Modified Rejection As Necessitated by the Amendment Filed 06/29/2026
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 2 and 9-10 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 2 requires that “the embedded product further comprises a chemical or a microbial agent, which comprises an ethyl carbamate degradation agent, an ethyl carbamate adsorbent, an ethyl carbamate inhibitor, an ethyl carbamate decomposing agent, an ethyl carbamate degrading microbial strain, or an ethyl carbamate degrading microbial agent.” Claim 2, depends from Claim 1, which appears to teach that the embedded product being referred to in Claim 2 already comprises R. toruloides cell lysate, i.e. “an ethyl carbamate degrading microbial strain, or an ethyl carbamate degrading microbial agent”. It is therefore unclear if Applicant is claiming that an additional microbial strain or microbial agent may be added. Clarification is required.
Furthermore, it is unclear what the differences are among ethyl carbamate degradation agent, an ethyl carbamate adsorbent, an ethyl carbamate decomposing agent, an ethyl carbamate degrading microbial strain, and an ethyl carbamate degrading microbial agent in Claim 2. The Specification recites these features in [0020] provides no definition, and as such, one skilled in the art would not be able to ascertain the difference among these features. The metes and bounds of the claim is unclear, and the claim rejected.
Claim 9 recites “0.6% CaCl2” when referring to the concentration of the calcium chloride, and but recites “chitosan (2%) solution”. It is unclear what the Applicant means with the use of parentheses, i.e. whether Applicant is limiting the chitosan concentration or not, i.e. if 2% is merely an example concentration. Thus, the metes and bounds of the claims cannot be determined, and the claim are rejected.
Claim 10 recites the limitation "The method of claim 9, wherein the incubating further comprises shaking at 100 rpm." There is insufficient antecedent basis for this limitation in the claim because Claim 9 does not refer to any incubation step. Correction is required.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-2, 4, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (Appl Biochem Biotechnol (2013) 171:2220–2232), hereinafter Wu, and in view of Zhang (CN 113174342 A, machine translated in IP.com), hereinafter Zhang, and Sumino et al. (US 5,000,966, cited in IDS; Of record), hereinafter Sumino.
Wu teaches immobilized Rhodotorula mucilaginosa for degrading ethyl carbamate (EC) (Abstract).
Regarding Claim 1, Wu teaches that Rhodotorula mucilaginosa removed 80% of EC (Abstract). The yeast strain was optimized according to different variables (Table 1). Calcium alginate entrapment was used for the immobilization of whole cells, and chitosan cross-linker was added in order to improve the mechanical strength of the immobilized cells (p. 2223, last paragraph). Alginate slurry (4 %) was mixed with equal volume of cell suspension, which was then added to CaCl2 solution with chitosan, cured, then the cured beads filtered and washed (p. 2224, 1st paragraph). The EC degradation of Chinese rice wine was studied (p. 2224, 2nd and 3rd paragraphs). When it was inoculated in medium containing 5.0 g/L EC, 80 % of EC could be hydrolyzed after 6 days of incubation (p. 2225, Results and Discussion, 1st section).
Wu does not teach the amount of cells and lysing the cells. Wu does not teach Rhodosporidium toruloides DL-XSY01.
Zhang is in the same field of interest teaching the preparation of Agrobacterium tumefaciens strain that efficiently degrades urethane (also EC), with a degradation rate of 95% on ethyl carbamate, and has good degradation capability on EC in fermented food, especially various wines, improving its quality and safety (Abstract). Zhang relates the beneficial effect of its invention includes high-efficiency EC degradation of more than 90% in 24h, more than 95% in 72h (p. 3, 3rd paragraph from bottom). Zhang also recognized how Rhodotorula mucilaginosa was used on Chinese commercial white spirit, which degraded its EC by 51.6% (p. 3, 3rd paragraph from bottom).
Zhang describes inoculating the strain culture solution into a nutrient broth culture medium to obtain a seed solution, and supplying this into a fermentation tank, until a culture of cells at 1x10-9 cfu/ml is obtained- (p. 6, 12th paragraph; p. 13, Example 8; Claim 6). Zhang also teaches a preferable embodiment wherein the fermentation product comprises a bacterium-containing fermentation liquid, a fermentation liquid supernatant, a bacterium suspension and a cell lysate, i.e. cell-free extract (p. 3, 1st paragraph; p. 13, Example 8; Claim 6). Zhang specifically teaches breaking the cell wall to obtain the cell lysate or cell-free extract, and embedding the cell lysate or cell-free extract in sodium alginate to prepare a cell lysate microcapsule, and also using chitosan calcium chloride, making its method compatible with Wu (p. 3, paragraphs 5-7; p. 13, Example 8; Claim 6).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Zhang with that of Wu, and improve upon the method of Wu by culturing Rhodotorula cells to a population of 1x10-9 cfu/ml, and using i) cell lysate instead of whole cells, or ii) the combination of fermentation product comprising fermentation liquid, a fermentation liquid supernatant, cell suspension and cell lysate, per the teaching of Zhang as a preferable embodiment in order to obtain a more efficient degradation rate. Applying a known technique to a known method ready for improvement to yield predictable results is the rationale supporting obviousness. See MPEP § 2143 and KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007). As such, Claim 4 is also obvious.
Sumino is in the same field and also recognizes that EC in an alcoholic liquor is decomposed by contacting the alcoholic liquor with a culture broth or processed matter thereof obtained from a Gluconobacter, Flavobacterium, Arthrobacter, Achronobacter, Alcaligenes, Pseudomonas, Klebsiella, Rhodotorula, Rhodosporidium, Trichosporon or Candida to give an alcoholic liquor with improved quality, and low ethyl carbamate content (Abstract). Sumino gives specific examples of strains producing enzymes capable of decomposing ethyl carbamate including Rhodosporidium toruloides IFO 10032 (Col. 2, lines 14-36).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Sumino with that of Wu, and substitute the Rhodotorula mucilaginosa on Wu with any of the 20 strains producing enzymes capable of decomposing ethyl carbamate, and therefore also use Rhodosporidium toruloides IFO 10032. The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. See MPEP 2143.
One would then look further into the different databases of yeast, and perform mutation experiments guided by the deposited and known sequences, in order to optimize the ability to decompose ethyl carbamate, and arrive at different mutations. Therefore, the claimed invention of the instant application would have been obvious to one skilled in the art at the time of the invention. The ordinary artisan would have been motivated to simply substitute one known element for another to obtain predictable results. The known work and sequences, specifically R. toruloides DL-XSY01 which was available to the public beginning October 8, 2021, would serve as one of the variations which would be predictable to one of ordinary skill in the art. The Examine has shown how one skilled in the art would use Blastn from NCBI to design different mutations and find R. toruloides DL-XSY01, if it is publicly available. See search documents.
Regarding Claim 2, Sumino studies the activities of different culture broths including R. toruloides IFO 10032, grown in agar media, on decomposing ethyl carbamate (Examples 1 and 2).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine multiple strains or microbial agents, for example one or more of the different broths taught by Sumino along with the Rhodotorula mucilaginosa of Wu to efficiently degrade EC.
Further, as a general principle it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06. In the instant case the Rhodotorula mucilaginosa of Wu and the different strains taught by Sumino may be combined to form a composition comprising two or more strains or agents for degrading EC.
Regarding Claim 7 and 11, Wu teaches EC degradation of Chinese rice wine, which reads on the Huangjiu claimed (p. 2224, 2nd paragraph).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of Zhang and Sumino, as applied to Claim 1, in further view of Feng et al. (CN 111621428 A, machine translation from IP.com; Of record), hereinafter Feng.
Regarding Claim 5, Wu does not teach the sterilization after addition of R. toruloides. Sumino, however, teaches application to foodstuffs including alcoholic liquors, all brewed beverages such as refined sake, beer, wine, samshu or the like, and spirits such as whisky, brandy, shochu or the like (Col. 1, lines 5-10).
Feng is in the same field and also teaches Rhodotorula mucilaginosa for fermenting high-salt dilute soy sauce, and the flavor and the quality of soy sauce products are improved (Abstract; Claim 3). Feng teaches sterile conditions (Claim 3). The method of Feng includes a step of uniformly mixing the finished koji with saline water to obtain sauce mash, performing primary natural fermentation treatment on the sauce mash, then adding the salt-tolerant Rhodotorula mucilaginosa bacterial liquid, performing secondary natural fermentation treatment, sterilizing, filtering and taking filtrate to obtain the soy sauce. As such, a sterilization step is performed after adding the microorganism to obtain a sterile soy sauce.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Feng with Wu, and sterilize after adding the microorganism to obtain a sterile food.
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Wu in view of Zhang and Sumino, as applied to Claim 1, in further view of Dong et al. (Foods 2022, 11, 937.), hereinafter Dong.
Regarding Claim 9, both Wu (p. 2227, last paragraph; Fig. 3) and Zhang (Examples 5-7) teaches the process of embedding with alginate, CaCl2, and chitosan. Wu also teaches washing the resulting cured beads (p. 2224, 1st paragraph). However, both Wu and Zhang do not employ boric acid solution, and does not teach the claimed concentration of CaCl2.
Dong also teaches degrading EC in Chinese liquor, and teaches immobilizing a novel ethyl carbamate hydrolase (ECH) to resist extreme environmental conditions in industrial production application (Abstract). Dong teaches adding the mixture comprising the enzyme dropwise into the hardening liquid (0.6% CaCl2 and 5% boric acid, w/v) for 5 h. Then, the beads were dropped into 2% (w/v) chitosan solution for 40 min (p. 4, Section 2.7).
Employing 0.6% CaCl2 these are known conditions in the art and it is well within the skills of an ordinary artisan to optimize the techniques according to what is being used in the field for many reasons e.g. to obtain stronger beads and/or better preservation of enzyme activity. As such, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to use the conditions of Dong to prepare the beads. Applying a known technique to a known method ready for improvement to yield predictable results is the rationale supporting obviousness. See MPEP § 2143 and KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007).
Regarding Claim 10, which depends from Claim 9, Wu teaches the process of EC degradation of Chinese rice wine involving keeping the reaction at 30˚C, 100 rpm for 7 days (p. 2224, 2nd paragraph).
Regarding Claim 11, Dong teaches that EC is most abundant in fermented food including Cachaca, Shaoxing wine, and Chinese liquor (baijiu) (Abstract). Shaoxing wine is Chinese rice wine, which Wu already teaches supra. Dong teaches that Baijiu is one of the world’s oldest and most widely drunk distilled spirits, and that some countries limits the EC concentration in distilled spirits must be less than 150 µg/L (p. 2, 2nd paragraph). As such, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to use the method of Wu in lowering the EC content in baijiu. Further, the rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. See MPEP 2143.
Response to Remarks:
The crux of Applicant’s argument appears to be that one skilled in the art would not be able to arrive from Yan’s teaching of R. mucilaginosa to the instantly claimed strained by substituting the R. mucilaginosa with any of the strains of Sumino including R. toruloides IFO 10032, and then look further into different databases of yeast and perform mutations to arrive at the instantly claimed strain.
The Examiner notes that Yan is no longer the primary art, as necessitated by the amendment. Nevertheless, Wu still teaches the Rhodotorula mucilaginosa, and Applicant’s argument was still considered, but found unpersuasive. Based on the teachings of Wu on Rhodotorula mucilaginosa, it would be natural for one skilled in the art to start with related yeasts, and therefore start with the 4 Rhodotorula strains of Sumono including Rhodotorula toruloides, which is the same as Rhodosporidium toruloides, per Wang et al. (STUDIES MYCOLOGY 81: 149–189. 2015), which proposes to rename Rhodosporidium to Rhodotorula, which is its older name, and shows R. Toruloides being in the same clade as R. mucilaginosa (p. 33, 4th paragraph; Fig. 2D, topmost left clade below). One skilled in the art would be capable of identifying related species, and looking at enzyme active sites for mutation purposes in order to optimize efficiency. This is what research biochemists and/or molecular biologists do – modify the sequences and evaluate and enrich mutant strains, and therefore would be well within the ability of one of ordinary skill in the art.
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Applicant identified flaws in Yan in rendering obvious the amended claims.
As indicated supra, the new ground of rejection necessitated by the amendment does not rely on Yan for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Li et al. (Bioprocess Biosyst Eng (2015) 38:189–197). Li teaches 0.6% CaCl2, and that lower concentration leads to cell leakage and low mechanical strength whereas increasing the concentration increases the mechanical strength of the bead but decreases the enzyme activity.
No claims are 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 JANICE Y SILVERMAN whose telephone number is (571)272-2038. The examiner can normally be reached on M-F, 10-6 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached on (571) 270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.Y.S./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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