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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 4 – 5 in the reply filed on July 22, 2026 is acknowledged. Claims 1 – 8 are pending; claims 1 – 3 and 6 – 8 are withdrawn; claims 4 – 5 have been considered on the merits.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on May 20, 2024 and September 15, 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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 4 and 5 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.
Claims 4 – 5 are drawn to a method of producing transesterified fats or oil however are rendered indefinite for reciting “allowing the enzyme agent…to act on” oils and fats because the claim fails to set forth positive steps that must be carried out to meet the scope of the claims. It is unclear what must be carried out “to act on” a fat or oil since the phrase is not specifically defined by the claim language or specification.
Claims 4 – 5 are further indefinite for depending on a withdrawn claim.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 4 – 5 are rejected under 35 U.S.C. 102a1 as being anticipated by CN 106591258 (IDS 05.20.2024, FPD #4) as evidenced by SEQ ID NO 4 Result 3 and Romdhane et al. (IDS 05.20.2024, NPL #1).
Regarding claim 4, CN'258 teaches a lipase (SEQ ID NO:2) that is 99.1% identical to the claimed SEQ ID NO: 4 (see SEQ ID NO 4 Result 3). The reference teaches that lipases function to catalyze transesterification and are used in bioenergy (e.g., biodiesel) and oil processing (p.2, English Translation (ET)), which is interpreted as a teaching to allow lipases to act on oils to produce transesterified oils (see Romdhane et al., in support). In this regard, the reference is interpreted to teach a method comprising allowing a lipase to act on oils, wherein the lipase has an amino acid sequence that is 99.1% identical to claimed SEQ ID NO:4, which would inherently result in a transesterified oil.
Regarding claim 5, CN'258 teaches the lipase is thermophilic (p.2, ET) and active at 20 - 60°C, which is a temperature of 60°C or higher as claimed (p.2).
Thus, the reference anticipates the claimed invention.
Claim 4 is rejected under 35 U.S.C. 102a1 as being anticipated by Romdhane et al. (IDS 05.20.2024, NPL #1) as evidenced by SEQ ID NO 2 Result 1.
Regarding claim 4, Romdhane teaches methods for producing transesterified oils, the method comprising allowing a lipase to act on oils (p.114), and wherein the lipase is 98.7% identical to claimed SEQ ID NO: 2 (See Result ID NO 2 Result 1).
The reference anticipates the claimed subject matter.
Claim Rejections - 35 USC § 103
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.
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 4 – 5 are rejected under 35 U.S.C. 103 as being unpatentable over Romdhane et al. (IDS 05.20.2024, NPL #1) as evidenced by SEQ ID NO 2 Result 1; in view of CN 106591258 (IDS 05.20.2024, FPD #4) as evidenced by SEQ ID NO 4 Result 3.
Regarding claim 4 Romdhane teaches methods for producing transesterified oils for biodiesel production (p, the method comprising allowing a lipase to act on oils (p.112, 114), and wherein the lipase is 98.7% identical to claimed SEQ ID NO: 2 (See Result SEQ ID NO 2 Result 1).
Regarding claim 5, Romdhane does not teach the method wherein the method occurs at a temperature of at least 60°C. However, Romdhane teaches high activity lipases that are active and stabile at 60°C (p.112). Further, CN'258 teaches a lipase capable of catalyzing transesterification and making biodiesel, wherein the lipase is 99.1% identical to claimed SEQ ID NO: 4 (see SEQ ID NO 4 Result 3) and active at 60°C (p.2, ET). CN'258 teaches thermostable lipases derived from thermophilic bacteria (e.g., both lipases disclosed by the cited references) are advantageous in that they demonstrate strong solvent stability, have good potential for biotechnology and industrial applications, and have high enzyme activity (p.2). In this regard, at the time the claims were filed, it would have been obvious to one of ordinary skill in the art to practice the methods of Romdhane at 60°C since lipases with high thermal stability were already known in the art and that these lipases demonstrate higher stability under these stronger conditions. Moreover, at the time the claims were filed, one of ordinary skill in the art would have been motivated to allow the lipase of CN'258 to act on an oil at 60°C with a reasonable expectation for successfully producing transesterified oils.
Thus, the invention as a whole is prima facie obvious over the references, especially in the absence of evidence to the contrary.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUTH A DAVIS whose telephone number is (571)272-0915. The examiner can normally be reached Monday - Friday (8am - 4pm).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at 571-272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUTH A DAVIS/Primary Examiner, Art Unit 1699
