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 .
Response to Arguments
Applicant’s arguments, filed on 09/02/2026, with respect to title have been fully considered and are persuasive. The objection of the specification has been withdrawn.
Applicant’s arguments, filed on 09/02/2026, with respect to Claims 1, 3-11, and 13-17 rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Khor et al. (US 2016/0222280 A1) have been fully considered and are persuasive. The rejection of the claims has been withdrawn.
Applicant's arguments filed 09/02/2026 with respect to claims 1 and 17 rejected under 35 USC 101 have been fully considered but they are persuasive. The rejection of the claims has been withdrawn.
Applicant's arguments filed on 09/02/2026 with respects to claim 1 rejected under 35 USC 112 1st have been fully considered but they are not persuasive.
With regards to claims, the applicant further argues that “The China General Microbiological Culture Collection Center (CGMCC) operates as an International Depositary Authority (IDA) under the global framework of the Budapest Treaty. See www.cgmcc.net/english/deposit A CGMCC number will not be updated or changed once it has been officially assigned to a specific biological strain. Because these numbers serve as permanent legal and scientific references for patents, academic literature, and regulatory approvals, they remain completely static. Therefore, the CGMCC access number in the pending claims are sufficient to identify the recited strain. Applicant further submits that amendments to the remainder of the pending claims cured the deficiencies and requests the withdrawal of the rejections.” (See arguments , page 10, 1st para.)
The examiner respectfully disagrees.
The applicant must applicant must clearly state that the deposit was made under the Budapest Treaty. In addition, under US regulations, the applicant must comply with 37 CFR 1.808(a) (1) and (2).
a) A deposit must be made under conditions that assure that:
• (1) Access to the deposit will be available during pendency of the patent application referring to the deposit to one determined by the Director to be entitled thereto under § 1.14 and 35 U.S.C. 122, and
• (2) Subject to paragraph (b) of this section, all restrictions imposed by the depositor on the availability to the public of the deposited material will be irrevocably removed upon the granting of the patent.
Therefore, the rejection has been maintained.
Applicant's arguments filed on 09/02/2026 with respects to claims rejected under 35 USC 112 2nd have been fully considered but they are not persuasive. (see rejection below).
Claim Rejections - 35 USC § 112
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.
Claims 3, 17, and 18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
It is apparent that pseudomonas strain CGMCC No. 22583, is required to practice the claimed invention. As such the biological material must be both known and readily available or obtainable by a repeatable method set forth in the specification, or otherwise both known and readily available to the public. If it is not so obtainable or available, the requirements of 35 USC 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, may be satisfied by a deposit of the pseudomonas strain CGMCC No. 22583.
The process disclosed in the specification does not appear to be repeatable, it is not clear that the invention will work with commonly available material, and it is not apparent if the biological materials considered necessary to make and use the invention is both known and readily available to the public.
The invention clearly recites that a thallus of a pseudomonas strain CGMCC No. 22583 containing extracellular metabolite and an intracellular metabolite of the pseudomonas strain CGMCC No. 22583 must be present in the oil-extraction bacterial solution for recovery of oil. Furthermore, the invention also recites inoculating the pseudomonas strain CGMCC No. 22583 into a nutrient medium for fermentation; subjecting a resulting fermentation product to a thallus lysis operation, or separating a thallus from the fermentation product, and subjecting the obtained thallus to lysis for the oil-extraction bacterial solution.
In conclusion, a person of ordinary skill in the art, could not make or use the invention defined in, and commensurate with, the claims without access to the specific biological material in which in which a deposit has been made but the evidence is incomplete of the pseudomonas strain deposited at the China General Microbiological Culture Collection Center with Accession Number CGMCC No. 22583, and there is there is no indication in the specification as to public availability.
Therefore, a deposit at a recognized depository may be made to obviate this rejection.
If the deposit is made under the terms of the Budapest Treaty, then a statement, affidavit or declaration by Applicants, or by an attorney of record over his or her signature and registration number, or by someone in a position to corroborate the facts of the deposit, that the instant invention will be irrevocably and without restriction released to the public upon the issuance of a patent, would satisfy the deposit requirement made herein.
If the deposit is a non-Budapest Treaty deposit, then in order to certify that the deposit meets the requirements set forth in 37 CFR 1.801-1.809 and MPEP 2402-2411.05, a statement, affidavit or declaration by Applicant or by an attorney of record over his or her signature and registration number, or by someone in a position to corroborate the facts of the deposit would satisfy the requirements herein by stating and providing that:
(a) During the pendency of the application, access to the invention will be afforded to the Commissioner upon request;
(b) All restrictions upon availability to the public will be irrevocably removed upon granting of the patent;
(c) The deposit will be maintained in a public depository for a period of 30 years, or 5 years after the last request or for the enforceable life of the patent, whichever is longer; and
(d) Provide evidence of the test of the viability of the biological material at the time of deposit (see 37 CFR 1.807).
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 3, 17, and 18 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.
The claims as written contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention, therefore, the claims fail to comply with the enablement requirement, making the claims indefinite.
All the claims dependent of claims 3, 17 and 18 are also rejected.
Conclusion
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 SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SILVANA C RUNYAN/Primary Examiner, Art Unit 1616 10/10/2026
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