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 with traverse of claims 1-4 in the reply filed on 4/28/2026 is acknowledged. The traversal is on the ground(s) that all of claims 1-13 share unity of invention and the cited art does not teach a fermentation medium comprising thiocarboxylate at a concentration of 2 to 20 mg/L. This is not found persuasive because the fermentation medium of claim 1 is obvious in view of Li and Ishihara as set forth below.
The requirement is still deemed proper and is therefore made FINAL.
Claims 5-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 4/28/2026.
Priority
This application is a 371 of PCT/EP2022/076946 (9/28/2022) which claims priority to EP21200133.3 (9/30/2021).
Information Disclosure Statement
The information disclosure statements (IDS) filed on 3/26/2024, 5/9/2024, and 3/13/2026 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 1-4 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.
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Claim 1 recites that the aqueous fermentation medium comprises a thiocarboxylate, with the chemical structure of Formula I:
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The structure of Formula I appears to be the structure of a thiocarboxylic acid, rather than thiocarboxylate, which is the deprotonated conjugate base form. For example, the structure of thioacetic acid (left) and thioacetate (right) are below (see NCBI PubChem references):
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The scope of claim 1 is unclear given the use of the term thiocarboxylate, which indicates the deprotonated form, with Formula I, which represents a thiocarboxylic acid. The claim should be amended to clarify what is required.
Claims 2-4 are included in this rejection because they depend on a rejected claim and do not clarify the issue.
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 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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al., Journal of Industrial Microbiology and Biotechnology. 2018 Jan 1;45(1):61-9, in view of Ishihara et al., US 4,229,535, and as evidenced by National Center for Biotechnology Information "PubChem Compound Summary for CID 10484, Thioacetic acid" PubChem (hereinafter referred to as “NCBI PubChem”).
Regarding claim 1, Li teaches an aqueous fermentation medium comprising a thiocarboxylate, thioacetic acid (Li p. 62 “Strain, medium and seed culture”). Thioacetate is the conjugate base of thioacetic acid, which has a chemical structure according to Formula I. As thioacetic acid has a pKa of 3.62 (see NCBI PubChem Thioacetic acid ref. p. 12 section 3.2.7), it is expected that the thioacetic acid would be deprotonated (thioacetate) in aqueous solution. Li teaches that the thioacetic acid is provided at a concentration of 0.05 g/L, or 50 mg/L (Li p. 62 “Strain, medium and seed culture”).
Li does not teach that the thiocarboxylate is 2 to 20 mg/L in the fermentation medium. However, the concentration of thiocarboxylate would have been routinely optimized by a skilled artisan based on the other assay conditions. Li clearly teaches that the thiocarboxylate is provided in a concentration effective to achieve the result of bacterial growth in the fermentation medium, and is a result-effective variable. Result-effective variables would be optimized through routine experimentation by one having ordinary skill in the art. Furthermore, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. See MPEP 2144.05(II)(A).
Further, Ishihara teaches a fermentation medium comprising a sulfur-containing carboxylic acid or its derivatives (Ishihara col. 4 lines 1-10). Ishihara teaches that the concentration of the sulfur-containing carboxylic acid is 0.0005 to 10% by weight (Ishihara col. 4 lines 4-10). 0.0005% by weight in an aqueous solution is equal to 5 mg/L. It would have been obvious for a skilled artisan to optimize the concentration of thiocarboxylate in a fermentation medium as taught by Li within a range of 2 to 20 mg/L, given the teachings of Ishihara that sulfur-containing carboxylic acids and derivatives can be used in this concentration range in a fermentation medium.
Regarding claims 2 and 3, Li teaches that the thiocarboxylate is thioacetate (Li p. 62 “Strain, medium and seed culture”).
Regarding claim 4, Li teaches that the fermentation medium further comprises iron, nickel, and cobalt salts, FeSO4, CoCl2, and NiCl-2 (Li p. 62 “Strain, medium and seed culture”).
Conclusion
Claims 1-4 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMILY F EIX whose telephone number is (571)270-0808. The examiner can normally be reached M-F 8am-5pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sharmila Landau can be reached at (571)272-0614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EMILY F EIX/Examiner, Art Unit 1653
/JENNIFER M.H. TICHY/Primary Examiner, Art Unit 1653
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