DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on November 26, 2025, has been entered.
Claims 11-20 are canceled.
Claims 1-10 and 21-30 are pending and examined on the merits.
Notice Re: Prior Art Available Under Both Pre-AIA and AIA
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
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.
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 1-9 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Kajiwara (US 4,978,619. Listed on IDS filed 4/5/24) in view of Yu (Annals of the New York Academy of Sciences. 1998. 864(1): 609-615. Previously cited), and in light of Goodman (US 2002/0006648. Previously cited), Shum (US 2013/0274353), Killion (Journal of the Mechanical Behavior of Biomedical Materials. 2011. 4: 1219-1227. Previously cited), and Menner (Polymer. 2006. 47: 7628-7635).
Kajiwara discloses an entrapping method for the immobilization of an enzyme, wherein the enzyme immobilized can be in the form of live microorganic cells or dried microorganic cells (column 2, lines 52-59; column 3, lines 50-53; column 6, line 66 through column 7, line 2). The enzyme can be in a solution having a polymerizable monomer or a prepolymer (column 2, lines 63-66).
Examples 7 and 8 of Kajiwara meet limitations of the claimed invention. In both examples, cells of Pichia xylosa (IFO 0950) are in a mixture comprising a polyethylene glycol diacrylate (PEGDA #400, see column 10, lines 47-49) to which benzoyl peroxide is added to induce polymerization (column 12, lines 50-66; column 13, lines 35-46). Benzoyl peroxide is a polymerization initiator (column 10, line 53). More specifically, as evidenced by Goodman, benzoyl peroxide is a photoinitiator (paragraph [0064]). Also, emulsions of PEGDA with water are known in the art – this is evidenced by Shum (paragraph [0043]). Therefore, PEGDA is directed to a polymer precursor that is emulsifiable in an aqueous carrier fluid. Moreover, PEGDA is recited in instant claims 2 and 3 as a polymer precursor, thus having the property of instant claim 1 (emulsifiable in an aqueous carrier fluid). It is noted that the recitation in instant claim 1 of ‘at least one polymer precursor that is emulsifiable in an aqueous carrier fluid’ does not require that the at least one polymer precursor is in an emulsion in an aqueous carrier fluid, and instead, sets forth the capability (‘emulsifiable’) of the at least one polymer precursor to emulsify in an aqueous carrier fluid. As such, Kajiwara teaches a mixture comprising at least one polymer precursor that is emulsifiable in an aqueous carrier fluid (polyethylene glycol diacrylate, i.e. PEGDA), at least one photoinitiator (benzoyl peroxide), and a plurality of whole cells. Since the mixture is polymerized for entrapping the cells in the polymer, then the mixture is directed to the claimed ‘mixture for forming polymer-encapsulated whole cells.’
Kajiwara differs from the claimed invention in that Kajiwara does not expressly disclose that the whole cells include a biocatalyst, the biocatalyst being operable to convert a C1-C3 hydrogen-comprising target gas to a product, wherein the C1-C3 hydrogen-comprising target gas is selected from the group consisting of: methane, ethane, ethylene, propane, and propylene.
Yu discloses that the single-step oxidation of methane to methanol is catalyzed by the NADH-dependent methane monooxygenase (MMO) in methanotrophs (page 609, first paragraph). Methane is underutilized as an energy source due to the lack of an efficient method to convert it to liquid form, e.g. methanol, for easy transportation (page 609, second paragraph). The nonspecific nature of MMO may be explored to facilitate the transformation of methane to methanol (page 609, second paragraph). The use of whole cells of methanotrophs has been explored since MMO is advantageously more stable in the cells than in extracts or in the purified form (page 609, second paragraph). In the study of Yu, cells of a methanotroph were immobilized to serve as a biocatalyst in the production of methanol from methane (page 610, second paragraph). The methanotroph with the highest MMO activity of the study was Methylomonas sp. Z201 which was found to have propylene oxidation activity, wherein the product is propylene oxide (page 611, last paragraph; page 613, last paragraph). Thus, the cells of that methanotroph are also operative to catalyze propylene, meeting the limitation of instant claim 26.
Before the effective filing date of the claimed invention, it would have been obvious to the person of ordinary skill in the art to immobilize whole cells of a methanotroph (e.g. Methylomonas sp. Z201) when performing the invention of Kajiwara. One of ordinary skill in the art would have been motivated to do this because: (i) it would provide the enzyme MMO that catalyzes the transformation of methane to methanol for easy transformation, thereby improving the utilization of methane as an energy source; (ii) the use of whole cells of methanotrophs has been explored to stabilize MMO; and (iii) the immobilization of methanotrophs has been investigated (e.g. Yu). The immobilization of whole cells of a methanotroph to provide an enzyme (MMO) addresses the immobilization of an enzyme in the form of cells that is sought in Kajiwara. There would have been a reasonable expectation of entrapping whole cells of a methanotroph by the invention of Kajiwara since other cells had been successfully immobilized in Kajiwara, and Kajiwara teaches performing their invention with live or dried microorganic cells in general (e.g. column 3, lines 49-55). Whole cells of a methanotroph (e.g. Methylomonas cp. Z201 of Yu) are directed to whole cells that include a biocatalyst, the biocatalyst being operable to convert a C1-C3 hydrogen-comprising target gas to a product, wherein the C1-C3 hydrogen-comprising target gas is selected from methane and propylene, meeting a limitation of instant claim 1. Therefore, Kajiwara in view of Yu (in light of Goodman and Shum, cited as evidence) renders obvious instant claims 1, 2 (polyethylene glycol diacrylate), 3, 7 (methane or propylene is the chemical reactant that is a gas; methanol or propylene oxide is the product which is a liquid), 8, 9 (methanotrophic organism), and 26 are rendered obvious.
Regarding instant claim 4, the references differ from the claimed invention in that Kajiwara does not expressly disclose that the concentration of the PEGDA #4 in Example 7 and 8 (directed to the ‘at least one polymer precursor’) is in a range of about 0.1 weight% to about 90 weight% of a total weight of the mixture. However, Kajiwara discloses that the amount of the polymerizable monomer or prepolymer to be contained in the organic solvent being used as the dispersant for the enzyme powder is in the range of 0.5 to 30% by weight (column 5, lines 61-65). In performing the invention of Kajiwara (in particular, using the polymer precursor and initiator of Examples 7 and 8) in view of Yu, it would have been within the purview of the skilled artisan to apply that teaching of Kajiwara. Given the low weights of the other components in the mixture of Examples 7 and 8 as compared to the mass of the PEGDA (e.g. 5 mg benzoyl peroxide as compared to 400 g of PEGDA #400; see column 12, lines 59-64 and column 13, lines 40-45), then it would have been obvious that modifying the weight percentage of the prepolymer (PEGDA) according to the teaching in column 5, lines 61-65 of Kajiwara would yield a weight percentage of the prepolymer to the total weight of the mixture that falls within the claimed range of about 0.1 weight% to about 90 weight% of the total weight of the mixture. Thus, instant claim 4 is rendered obvious.
Regarding instant claim 5, the references differ from the claimed invention in that Kajiwara does not expressly disclose that the polymer precursor (PEGDA #400) has a molecular weight in a range of about 500 Daltons to about 500,000 Daltons. However, Kajiwara discloses in Example 5 using PEGDA #400 and polyethylene glycol dimethacrylate #600 (PEGDMA #600) for the immobilization of an enzyme in which benzoyl peroxide is included as a polymerization initiator (column 10, lines 45-56). In performing the invention of Kajiwara in view of Yu, it would have been obvious to the person of ordinary skill in the art to substitute PEGDA #400 with PEGDMA #600 in the mixture comprising the cells because PEGDMA #600 was recognized in Example 5 of Kajiwara for immobilization of an enzyme in which the same polymerization initiator, benzoyl peroxide, is used (column 11, lines 16-24) and because Kajiwara discloses polyethylene glycol dimethacrylate as a monomer that may be used for immobilizing an enzyme (as discussed above, the enzyme can be provided as cells); see claims 1 and 7 of Kajiwara. There would have been a reasonable expectation of immobilizing the cells by this modification because of Example 5 of Kajiwara and because of the broader teachings of Kajiwara (e.g. claims 1 and 7 of Kajiwara). As evidenced by Killion, PEGDMA 600 has the molecular weight of 600 Daltons (page 1220, right column, second full paragraph). The molecular weight of 600 Daltons falls within the range of instant claim 5. As evidenced by Menner, PEGDMA has been known for being capable of being in an emulsion with an aqueous phase (abstract; page 7629, right column, second to fourth paragraphs). Therefore, PEGDMA is directed to ‘at least one polymer precursor that is emulsifiable in an aqueous carrier fluid.’ As such, in using PEGDMA #600 in the invention rendered obvious by Kajiwara in view of Yu, then instant claim 5 is rendered obvious.
Regarding instant claim 6, the cells in Example 7 of Kajiwara are live whole cells, and the cells in Example 8 are freeze dried cells (column 13, lines 35-38). Thus, in performing the invention rendered obvious by Kajiwara in view of Yu, it would have been obvious to provide the whole cells of a methanotroph as live whole cells or freeze dried cells. Freeze dried cells meet the claimed limitation of ‘dried whole cells.’ Thus, instant claim 6 is rendered obvious.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Kajiwara, Yu, Goodman, Shum, Killion, and Menner as applied to claims 1-9 and 26 above, and further in view of Morgan (Journal of Microbiological Methods. 2006. 66: 183-193. Listed on IDS filed 6/19/24).
As discussed above, Kajiwara in view of Yu (in light of Goodman, Shum, Killion, and Menner, cited as evidence) renders obvious claims 1-9 and 26. Regarding claim 23, the invention of Kajiwara in view of Yu meets limitations of the claimed invention (see discussion above with respect to claim 1), wherein benzoyl peroxide of Kajiwara is directed to the claimed ‘at least one initiator.’ The references differ from claim 23 in that they do not expressly disclose that the whole cells of a methanotroph (directed to the claimed ‘whole cells’ that include a biocatalyst) include reconstituted whole cells.
Morgan discloses that freeze drying has been used to preserve microorganisms for decades and is the preferred method for culture collections worldwide (page 187, right column, second full paragraph). Freeze dried material allows easy and inexpensive shipping and handling (page 187, right column, second full paragraph). Furthermore, Morgan teaches that rehydration of freeze dried microorganisms is the final critical step for the revival of cells after drying (page 190, left column, second paragraph).
Before the effective filing date of the claimed invention, it would have been obvious to the person of ordinary skill in the art to use methanotroph cells that had previously been freeze-dried and rehydrated in the mixture rendered obvious by Kajiwara in view of Yu (in light of Goodman, Shum, Killion, and Menner). One of ordinary skill in the art would have been motivated to do this because microorganisms are commonly preserved by freeze drying, freeze drying allows for easy and inexpensive shipping and handling of microorganisms (the methanotroph likely had to be shipped from one site to the skilled artisan performing the method; thus this would have been desirable), and rehydration of freeze-dried microorganisms is necessary in order to revive the cells. Therefore, instant claim 23 is rendered obvious.
Claims 1 and 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over Kajiwara, Yu, Goodman, Shum, Killion, and Menner as applied to claims 1-9 and 26 above, and further in view of Patel (US 4,266,034. Previously cited).
As discussed above, Kajiwara in view of Yu (in light of Goodman, Shum, Killion, and Menner, cited as evidence) renders obvious claims 1-9 and 26. The references differ from claim 24 in that they do not expressly disclose that the whole cells of a methanotroph (directed to the claimed ‘whole cells’ that include a biocatalyst) are operative to catalyze ethylene. The references differ from claim 25 in that they do not expressly disclose that the whole cells of a methanotroph (directed to the claimed ‘whole cells’ that include a biocatalyst) are operative to catalyze ethane.
Patel discloses isolated methylotrophic microorganism strains and their natural and/or artificial mutants which are useful in converting C1-C6 alkanes to alcohols (particularly methane to methanol); C3-C6 alkanes to the corresponding C3-C6 alcohols and methyl ketones; and C2-C4 alkenes selected from a group that includes ethylene and propylene. See Table III in column 17 showing methylotrophic microorganism strains that convert methane to methanol, ethylene to ethylene oxide, and propylene to propylene oxide. See Table XXVII in column 47 showing two methylotrophic microorganism strains that convert methane to methanol, ethane to ethanol, and propane to different propanol products.
Before the effective filing date of the claimed invention, it would have been obvious to the person of ordinary skill in the art to substitute the methanotroph with any of the methylotrophic microorganism strains of Patel when practicing the invention rendered obvious by Kajiwara in view of Yu (in light of Goodman, Shum, Killion, and Menner, cited as evidence). It would have been an obvious matter of simple substitution of one microorganism that converts methane to methanol for another. There would have been a reasonable expectation of entrapping whole cells of the methylotrophic microorganism strains of Patel by the invention rendered obvious by Kajiwara and Yu (in light of Goodman, Shum, Killion, and Menner) since other cells had been successfully immobilized in Kajiwara, and Kajiwara teaches performing their invention with live or dried microorganic cells in general (e.g. column 3, lines 49-55). In making the substitution, then the references render obvious inclusion of whole cells that include a biocatalyst, the biocatalyst being operable to convert a C1-C3 hydrogen-comprising target gas to a product, wherein the C1-C3 hydrogen-comprising target gas is selected from the group consisting of: methane, ethane, ethylene, propane, and propylene (all embodiments of instant claim 1). The references further render obvious the limitations of instant claims 24-26. Thus, instant claims 1 and 24-26 are rendered obvious.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Kajiwara, Yu, Goodman, Shum, Killion, and Menner as applied to claims 1-9 and 26 above, and further in view of Reed (US 2010/0120104. Previously cited).
As discussed above, Kajiwara in view of Yu (in light of Goodman, Shum, Killion, and Menner, cited as evidence) renders obvious claims 1-9 and 26. Regarding claim 27, the mixture comprising P. xylosa, PEGDA, and benzoyl peroxide as taught in Examples 7 and 8 of Kajiwara (column 12, lines 50-66; column 13, lines 35-46) necessarily has to be provided in a container – a container is directed to a ‘bioreactor.’ The references differ from claim 27 in that they do not expressly disclose that the bioreactor rendered obvious by the references is configured to catalyze CO2 to a synthetic fuel.
Reed discloses compositions and methods for a multistep biological and chemical process for the capture and conversion of carbon dioxide into organic chemicals including biofuels (abstract). In particular, the invention utilizes obligate or facultative chemoautotrophic microorganisms (paragraph [0060]-[0061]). The chemoautotrophic microorganisms are immobilized within their growth environment, including growing the microorganisms on a matrix, mesh, or membrane made from polymers (paragraph [0104]).
Before the effective filing date of the claimed invention, it would have been obvious to the person of ordinary skill in the art to additionally immobilize whole cells of at least one of the chemoautotrophic microorganisms disclosed by Reed when performing the invention rendered obvious by Kajiwara in view of Yu (in light of Goodman, Shum, Killion, and Menner). One of ordinary skill in the art would have been motivated to do this in order to convert carbon dioxide into biofuels (directed to the claimed ‘synthetic fuel’) which is a desirable product, and because Reed teaches the immobilization of their microorganisms. There would have been a reasonable expectation of entrapping whole cells of at least one of Reed’s chemoautotrophic microorganisms by the invention rendered obvious by Kajiwara and Yu (in light of Goodman, Shum, Killion, and Menner) since other cells had been successfully immobilized in Kajiwara, and Kajiwara teaches performing their invention with live or dried microorganic cells in general (e.g. column 3, lines 49-55). In further immobilizing cells of Reed’s chemoautotrophic microorganism(s), then the bioreactor rendered obvious by the references is configured to catalyze CO2 to a synthetic fuel. Thus, instant claim 27 is rendered obvious.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Oh (Macromol. Rapid Commun. 2013. 34: 1728-1733. Listed on IDS filed 6/19/24) in view of Yu (Annals of the New York Academy of Sciences. 1998. 864(1): 609-615. Previously cited) and Morgan (Journal of Microbiological Methods. 2006. 66: 183-193. Listed on IDS filed 6/19/24).
Oh discloses encapsulating living cells in porous and hollow polydimethylsiloxane (PDMS) beads based on a water-in-oil-in-water emulsion system (abstract). The water-in-oil-in-water (W/O/W) emulsion meets limitations of the claimed invention. In particular, in the method for cell encapsulation in porous PDMS beads, a culture medium containing cells was used as the inner water phase (page 1729, right column, second full paragraph), and this inner water phase was combined with a middle phase that is a PDMS oil comprising PDMS and curing agent to form a water-in-oil (W/O) emulsion (page 1729, left column, last paragraph; Figure 1A on page 1730). The W/O emulsion was then combined with an outer phase comprising an aqueous poly(vinyl alcohol) (PVA) solution to form water-in-oil-in-water (W/O/W) emulsion droplets (page 1729, left column, last paragraph; Figure 1A on page 1730). Also, liquid PEG was added to the oil phase before fabrication (page 1729, left column, last paragraph). PDMS, PVA, and PEG are recited as polymer precursors in instant claim 2, and the curing agent is directed to an initiator. Moreover, PDMS, PVA, and PEG each have the capability of being emulsified in an aqueous carrier fluid since that were provided in a W/O/W emulsion. Therefore, they are each directed to the claimed ‘at least one polymer precursor that is emulsifiable in an aqueous carrier fluid.’ As such, the W/O/W emulsion droplets are directed to a mixture comprising at least one polymer precursor that is emulsifiable in an aqueous carrier fluid (PDMS, PVA, and PEG), an initiator (the curing agent), and a plurality of whole cells (the living cells), thereby meeting limitations of instant claim 23.
Oh differs from the claimed invention in that Oh does not expressly disclose that the living cells include a biocatalyst, the biocatalyst being operable to convert a C1-C3 hydrogen-comprising target gas to a product, wherein the C1-C3 hydrogen-comprising target gas is selected from the group consisting of: methane, ethane, ethylene, propane, and propylene; wherein the living cells (directed to ‘whole cells’) include reconstituted whole cells.
Yu discloses that the single-step oxidation of methane to methanol is catalyzed by the NADH-dependent methane monooxygenase (MMO) in methanotrophs (page 609, first paragraph). Methane is underutilized as an energy source due to the lack of an efficient method to convert it to liquid form, e.g. methanol, for easy transportation (page 609, second paragraph). The nonspecific nature of MMO may be explored to facilitate the transformation of methane to methanol (page 609, second paragraph). The use of whole cells of methanotrophs has been explored since MMO is advantageously more stable in the cells than in extracts or in the purified form (page 609, second paragraph). In the study of Yu, cells of a methanotroph were immobilized to serve as a biocatalyst in the production of methanol from methane (page 610, second paragraph). The methanotroph with the highest MMO activity of the study was Methylomonas sp. Z201 which was found to have propylene oxidation activity, wherein the product is propylene oxide (page 611, last paragraph; page 613, last paragraph).
Before the effective filing date of the claimed invention, it would have been obvious to the person of ordinary skill in the art to encapsulate whole cells of a methanotroph (e.g. Methylomonas sp. Z201) when performing the invention of Oh. One of ordinary skill in the art would have been motivated to do this because: (i) it would provide the enzyme MMO that catalyzes the transformation of methane to methanol for easy transformation, thereby improving the utilization of methane as an energy source; (ii) the use of whole cells of methanotrophs has been explored to stabilize MMO; and (iii) the immobilization of methanotrophs has been investigated (e.g. Yu). There would have been a reasonable expectation of encapsulating whole cells of a methanotroph by the invention of Oh since other living cells had been successfully encapsulated in Oh, and Oh discusses the aim of cell encapsulation to enclose living cells within semi-permeable constructs capable of facilitating molecules (including cellular products) that are essential for cell survival (page 1728, first paragraph). Whole cells of a methanotroph (e.g. Methylomonas cp. Z201 of Yu) are directed to whole cells that include a biocatalyst, the biocatalyst being operable to convert a C1-C3 hydrogen-comprising target gas to a product, wherein the C1-C3 hydrogen-comprising target gas is selected from methane and propylene, meeting a limitation of instant claim 23.
Further still, before the effective filing date of the claimed invention, it would have been obvious to the person of ordinary skill in the art to use methanotroph cells that had previously been freeze-dried and rehydrated in the mixture rendered obvious by Oh in view of Yu. One of ordinary skill in the art would have been motivated to do this because microorganisms are commonly preserved by freeze drying, freeze drying allows for easy and inexpensive shipping and handling of microorganisms (the methanotroph likely had to be shipped from one site to the skilled artisan performing the method; thus this would have been desirable), and rehydration of freeze-dried microorganisms is necessary in order to revive the cells.
Therefore, instant claim 23 is rendered obvious.
Claims 1-10, 26, 28, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Franco (Acta Biomaterialia. 2011. 7: 3267-3276) in view of Yu (Annals of the New York Academy of Sciences. 1998. 864(1): 609-615. Previously cited).
Franco discloses a novel, dual-photoinitiator technique for encapsulation of cells within hydrogel microspheres (abstract). For the microencapsulation of a cell culture, cells were suspended in a sterile polymer solution comprising 10% PEG-PQ-PEG in HBS (HEPES buffered saline, see page 3268, right column, third paragraph) and eosin Y, and further containing PEG-RGDS (page 3270, left column, second paragraph). PEG-PQ-PEG and PEG-RGDS are each directed to a ‘polymer precursor’ as claimed. Also, eosin Y is a photoinitiator (page 3268, right column, third paragraph).
After preparation of the suspension in polymer solution, microspheres were generated using an I651 stock solution in the mineral oil and purified with media washes according to Franco’s described protocol (page 3270, left column, second paragraph). I651, i.e. 2,2-dimethoxy-2-phenyl acetophenone, is a photoinitiator used to initiate crosslinking (page 3269, left column, first full paragraph). When describing their protocol, Franco teaches that microspheres are generated by generating an emulsion of the liquid polymer solution in mineral oil via vortexing (page 3268, left column, third paragraph and right column, last paragraph). See also Figure 3 on page 3271. Since an emulsion was prepared of the polymer precursors of Franco (PEG-PQ-PEG, PEG-RGDS) that are in an aqueous carrier fluid (HBS, i.e., HEPES buffered saline), then the polymer precursors of Franco have the ability of being emulsified in an aqueous carrier fluid. Therefore, they are directed to ‘at least polymer precursor that is emulsifiable in an aqueous carrier fluid’ of the instant claims. It is noted that the recitation in instant claim 1 of ‘at least one polymer precursor that is emulsifiable in an aqueous carrier fluid’ does not require that the at least one polymer precursor is in an emulsion in an aqueous carrier fluid, and instead, sets forth the capability (‘emulsifiable’) of the at least one polymer precursor to emulsify in an aqueous carrier fluid.
As such, Franco meets limitations of the claimed invention by disclosing a mixture for forming polymer-encapsulated whole cells, the mixture comprising at least one polymer precursor that is emulsifiable in an aqueous carrier fluid (PEG-PQ-PEG, PEG-RGDS); at least one photoinitiator (eosin Y); and a plurality of whole cells.
Franco differs from the claimed invention in that Franco does not expressly disclose that the whole cells include a biocatalyst, the biocatalyst being operable to convert a C1-C3 hydrogen-comprising target gas to a product, wherein the C1-C3 hydrogen-comprising target gas is selected from the group consisting of: methane, ethane, ethylene, propane, and propylene.
Yu discloses that the single-step oxidation of methane to methanol is catalyzed by the NADH-dependent methane monooxygenase (MMO) in methanotrophs (page 609, first paragraph). Methane is underutilized as an energy source due to the lack of an efficient method to convert it to liquid form, e.g. methanol, for easy transportation (page 609, second paragraph). The nonspecific nature of MMO may be explored to facilitate the transformation of methane to methanol (page 609, second paragraph). The use of whole cells of methanotrophs has been explored since MMO is advantageously more stable in the cells than in extracts or in the purified form (page 609, second paragraph). In the study of Yu, cells of a methanotroph were immobilized to serve as a biocatalyst in the production of methanol from methane (page 610, second paragraph). The methanotroph with the highest MMO activity of the study was Methylomonas sp. Z201 which was found to have propylene oxidation activity, wherein the product is propylene oxide (page 611, last paragraph; page 613, last paragraph). Thus, the cells of that methanotroph are also operative to catalyze propylene, meeting the limitation of instant claim 26.
Before the effective filing date of the claimed invention, it would have been obvious to the person of ordinary skill in the art to encapsulate whole cells of a methanotroph (e.g. Methylomonas sp. Z201) when performing the invention of Franco. One of ordinary skill in the art would have been motivated to do this because: (i) it would provide the enzyme MMO that catalyzes the transformation of methane to methanol for easy transformation, thereby improving the utilization of methane as an energy source; (ii) the use of whole cells of methanotrophs has been explored to stabilize MMO; and (iii) the immobilization of methanotrophs has been investigated (e.g. Yu). There would have been a reasonable expectation of encapsulating whole cells of a methanotroph by the invention of Franco since other cells had been successfully immobilized in Franco. Whole cells of a methanotroph (e.g. Methylomonas cp. Z201 of Yu) are directed to whole cells that include a biocatalyst, the biocatalyst being operable to convert a C1-C3 hydrogen-comprising target gas to a product, wherein the C1-C3 hydrogen-comprising target gas is selected from methane and propylene, meeting a limitation of instant claim 1. Therefore, Franco in view of Yu renders obvious instant claims 1, 6 (live whole cells), 7 (methane or propylene is the chemical reactant that is a gas; methanol or propylene oxide is the product which is a liquid), 8, 9 (methanotrophic organism), and 26 are rendered obvious.
Regarding instant claims 2 and 3, Franco discloses that PEG-PQ-PEG comprises an MMP-sensitive peptide PQ (page 3268, right column, second paragraph). Franco explains that in the PEG-PQ-PEG, the MMP-sensitive peptide was embedded in the backbone of the PEGDA chains (page 3274, left column, second paragraph). Therefore, PEG-PQ-PEG is directed to polyethylene glycol diacrylate (PEGDA) of instant claims 2 and 3. Also, Franco discloses that PEG-RGDS comprises RGDS peptide (page 3268, right column, first paragraph). Given PEG in the polymer precursor, PEG-RGDS is directed to polyethylene glycol (PEG) of instant claim 2. Additionally, Franco teaches another embodiment of microencapsulation of cells in which the polymer solution comprises 10% PEGDA in HBS (i.e. HEPES buffered saline) instead of PEG-PQ-PEG (page 3270, left column, first paragraph). That embodiment also meets the polyethylene glycol diacrylate limitation of instant claims 2 and 3. Thus, instant claims 2 and 3 are rendered obvious.
Regarding instant claim 4, PEG-PQ-PEG is present at 10 wt.% concentration of the HBS (page 3269, left column, third paragraph; page 3268, right column, third paragraph describing the hydrogel precursor solution of Franco). Since 10 wt.% falls within the claimed range, then instant claim 4 is rendered obvious.
Regarding instant claim 5, Franco teaches another embodiment of microencapsulation of cells in which the polymer solution comprises 10% PEGDA in HBS (i.e. HEPES buffered saline) instead of PEG-PQ-PEG (page 3270, left column, first paragraph). The PEGDA has a molecular weight of 10 kDa, i.e. 10,000 Da (page 3269, left column, first full paragraph). Since the molecular weight of 10,000 Da falls within the claimed range, then instant claim 5 is rendered obvious.
Regarding instant claim 10, since I651 initiates crosslinking in Franco (page 3269, left column), then I651 is directed to a ‘crosslinking initiator’ as claimed. In providing the cell suspension (comprising the polymer solution) in I651 stock solution in mineral oil (page 3270, left column, second paragraph), then the mixture further comprises a crosslinking initiator (I651). Thus, instant claim 10 is rendered obvious.
Regarding instant claim 28, HBS (HEPES buffered saline) of the cell suspension in polymer solution of Franco (page 3270, left column, second paragraph) is directed to an aqueous carrier fluid. Thus, instant claim 28 is rendered obvious.
Regarding instant claim 29, Franco in view of Yu does not expressly disclose that the aqueous carrier fluid (HBS, with or without the other components, TEOA and NVP; see page 3270, left column, second paragraph of Franco) comprises water present in an amount from about 50 wt% to about 60 wt% of a total weight of the aqueous carrier fluid. However, it would have been an obvious matter of routine experimentation to vary the amount of water in the aqueous carrier fluid to ensure that an appropriate emulsion is obtained. Thus, instant claim 29 is rendered obvious.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Franco and Yu as applied to claims 1-10, 26, 28, and 29 above, and further in view of Morgan (Journal of Microbiological Methods. 2006. 66: 183-193. Listed on IDS filed 6/19/24).
As discussed above, Franco in view of Yu renders obvious claims 1-10, 26, 28, and 29. Regarding claim 23, the invention of Franco in view of Yu meets limitations of the claimed invention (see discussion above with respect to claim 1), wherein eosin Y of Franco is directed to the claimed ‘at least one initiator.’ The references differ from claim 23 in that they do not expressly disclose that the whole cells of a methanotroph (directed to the claimed ‘whole cells’ that include a biocatalyst) include reconstituted whole cells.
Morgan discloses that freeze drying has been used to preserve microorganisms for decades and is the preferred method for culture collections worldwide (page 187, right column, second full paragraph). Freeze dried material allows easy and inexpensive shipping and handling (page 187, right column, second full paragraph). Furthermore, Morgan teaches that rehydration of freeze dried microorganisms is the final critical step for the revival of cells after drying (page 190, left column, second paragraph).
Before the effective filing date of the claimed invention, it would have been obvious to the person of ordinary skill in the art to use methanotroph cells that had previously been freeze-dried and rehydrated in the mixture rendered obvious by Franco in view of Yu. One of ordinary skill in the art would have been motivated to do this because microorganisms are commonly preserved by freeze drying, freeze drying allows for easy and inexpensive shipping and handling of microorganisms (the methanotroph likely had to be shipped from one site to the skilled artisan performing the method; thus this would have been desirable), and rehydration of freeze-dried microorganisms is necessary in order to revive the cells. Therefore, instant claim 23 is rendered obvious.
Claims 1 and 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over Franco and Yu as applied to claims 1-10, 26, 28, and 29 above, and further in view of Patel (US 4,266,034. Previously cited).
As discussed above, Franco in view of Yu renders obvious claims 1-10, 26, 28, and 29. The references differ from claim 24 in that they do not expressly disclose that the whole cells of a methanotroph (directed to the claimed ‘whole cells’ that include a biocatalyst) are operative to catalyze ethylene. The references differ from claim 25 in that they do not expressly disclose that the whole cells of a methanotroph (directed to the claimed ‘whole cells’ that include a biocatalyst) are operative to catalyze ethane.
Patel discloses isolated methylotrophic microorganism strains and their natural and/or artificial mutants which are useful in converting C1-C6 alkanes to alcohols (particularly methane to methanol); C3-C6 alkanes to the corresponding C3-C6 alcohols and methyl ketones; and C2-C4 alkenes selected from a group that includes ethylene and propylene. See Table III in column 17 showing methylotrophic microorganism strains that convert methane to methanol, ethylene to ethylene oxide, and propylene to propylene oxide. See Table XXVII in column 47 showing two methylotrophic microorganism strains that convert methane to methanol, ethane to ethanol, and propane to different propanol products.
Before the effective filing date of the claimed invention, it would have been obvious to the person of ordinary skill in the art to substitute the methanotroph with any of the methylotrophic microorganism strains of Patel when practicing the invention rendered obvious by Franco in view of Yu. It would have been an obvious matter of simple substitution of one microorganism that converts methane to methanol for another. There would have been a reasonable expectation of encapsulating whole cells of the methylotrophic microorganism strains of Patel by the invention rendered obvious by Franco and Yu since other cells had been successfully immobilized in Franco. In making the substitution, then the references render obvious inclusion of whole cells that include a biocatalyst, the biocatalyst being operable to convert a C1-C3 hydrogen-comprising target gas to a product, wherein the C1-C3 hydrogen-comprising target gas is selected from the group consisting of: methane, ethane, ethylene, propane, and propylene (all embodiments of instant claim 1). The references further render obvious the limitations of instant claims 24-26. Thus, instant claims 1 and 24-26 are rendered obvious.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Franco and Yu as applied to claims 1-10, 26, 28, and 29 above, and further in view of Reed (US 2010/0120104. Previously cited).
As discussed above, Franco in view of Yu renders obvious claims 1-10, 26, 28, and 29. Regarding claim 27, Figure 3 on page 3271 of Franco shows that the mixture comprising cells and polymer solution is provided in a glass test tube – a glass test tube is directed to a ‘bioreactor.’ The references differ from claim 27 in that they do not expressly disclose that the bioreactor rendered obvious by the references is configured to catalyze CO2 to a synthetic fuel.
Reed discloses compositions and methods for a multistep biological and chemical process for the capture and conversion of carbon dioxide into organic chemicals including biofuels (abstract). In particular, the invention utilizes obligate or facultative chemoautotrophic microorganisms (paragraph [0060]-[0061]). The chemoautotrophic microorganisms are immobilized within their growth environment, including growing the microorganisms on a matrix, mesh, or membrane made from polymers (paragraph [0104]).
Before the effective filing date of the claimed invention, it would have been obvious to the person of ordinary skill in the art to additionally encapsulate whole cells of at least one of the chemoautotrophic microorganisms disclosed by Reed when performing the invention rendered obvious by Franco in view of Yu. One of ordinary skill in the art would have been motivated to do this in order to convert carbon dioxide into biofuels (directed to the claimed ‘synthetic fuel’) which is a desirable product, and because Reed teaches the immobilization of their microorganisms. There would have been a reasonable expectation of encapsulating whole cells of at least one of Reed’s chemoautotrophic microorganisms by the invention rendered obvious by Franco in view of Yu since other cells had been successfully immobilized in Franco. In further immobilizing cells of Reed’s chemoautotrophic microorganism(s), then the bioreactor rendered obvious by the references is configured to catalyze CO2 to a synthetic fuel. Thus, instant claim 27 is rendered obvious.
Response to Arguments
Applicant’s arguments, filed November 26, 2025, with respect to the rejection under 35 U.S.C. 112(b) of claim 27; the rejection under 35 U.S.C. 103 of claims 1, 2, 4-10, 26, 28, and 29 as being unpatentable over Oh in view of Yu and in light of Wang; the rejection under 35 U.S.C. 103 of claims 1 and 24-26 as being unpatentable over Oh, Yu, and Wang in further view of Patel; and the rejection under 35 U.S.C. 103 of claim 27 as being unpatentable over Oh, Yu, and Wang in further view of Reed, have been fully considered and are persuasive. In particular, the rejection under 35 U.S.C. 112(b) has been overcome by the amendment to claim 27. Said rejections under 35 U.S.C. 103 have been overcome by the amendment to claim 1 since Oh does not disclose that their mixture comprises a photoinitiator. Therefore, these rejections have been withdrawn.
However, Applicant’s arguments are unpersuasive with respect to the rejections under 35 U.S.C. 103 of claims 1-10 and 26 as being unpatentable over Kajiwara in view of Yu (in light of Killion and Goodman, cited as evidence), the rejection under 35 U.S.C. 103 of claim 23 as being unpatentable over Kajiwara, Yu, Killion, and Goodman in further view of Morgan, the rejection under 35 U.S.C. 103 of claims 1 and 24-26 as being unpatentable over Kajiwara, Yu, Killion, and Goodman and further in view of Patel, the rejection under 35 U.S.C. 103 of claim 27 as being unpatentable over Kajiwara, Yu, Killion, and Goodman and further in view of Reed, and the rejection under 35 U.S.C. 103 of claim 23 as being unpatentable over Oh, Yu, and Wang in further view of Morgan. These rejections have been modified as necessitated by the amendments to the claims, using different evidentiary references. Additionally, the amendments to the claims necessitated new grounds of rejection under 35 U.S.C. 103 over the newly cited reference Franco in view of the previously cited reference Yu.
Regarding the rejections under 35 U.S.C. 103 of Kajiwara as the primary reference, Applicant argues that the art does not disclose the unique combination of features claimed. However, as explained in the modified grounds of rejection as necessitated by the amendments to the claims, Kajiwara meets limitations of the amended claims. Applicant has not explained which specific limitations of the claims are not met by Kajiwara and the other references combined with Kajiwara.
Regarding the rejection under 35 U.S.C. 103 of claim 23 over Oh in view of Yu and Morgan (modified rejection since claim 23 has been amended to be an independent claim and with a new limitation regarding the at least one polymer precursor), Applicant argues that the art does not disclose the unique combination of features claimed. However, Applicant has not explained which specific limitations of claim 23 are not met by Oh in view of Yu and Morgan.
Conclusion
Claims 1-10 and 23-29 are rejected.
Claim 30 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 21 and 22 are allowed.
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/SUSAN E. FERNANDEZ/ Examiner, Art Unit 1651