DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Arguments
Applicant's arguments filed 16 January 2026 have been fully considered but they are not persuasive. Applicant’s arguments are directed to rebuttals of the Office’s rebuttals of Applicant’s declaration filed 26 June 2025.
In response, the Office concedes to Applicant’s argument with respect to the first rebuttal. The totality of the record shows that any differences between dissolved carbon dioxide gas and bicarbonate anions in terms of reactivity are small enough as to be insufficient to add potential error to the chemical analysis.
Regarding the second and third rebuttals, it is unclear how Applicant’s remarks are useful in overcoming the rejections under 35 U.S.C. 101 and 112(a). Applicant’s remarks essentially state that it is impossible to detect glucose in water using absorption spectra. Thus, the inclusions of the spectra in the declaration clearly do not support Applicant’s position that glucose is produced by the presently claimed method.
Regarding the fourth rebuttal, Applicant’s remarks are unpersuasive. The Office has not contended the ability of the melanin molecule to function as a photocatalyst. The Office has instead contended that the melanin, when acting as a photocatalyst in the presence of water and carbon dioxide, was capable of producing glucose or other chiral compounds. All of the analytical tests shown by Applicant have been demonstrated on the record as producing false positive results from non-chiral products, such as hydrogen peroxide and formic acid. The record indicates that those are expected products of the reactants as utilized in the claimed invention.
Further, there are readily available analytical chemistry tests, such as high performance liquid chromatography (HPLC) or liquid chromatography-mass spectroscopy (LCMS), that are capable of distinguishing different chemical compounds present in solution that do not rely on the reactivity of a compound to demonstrate the presence or absence of the compound. These known analytical techniques would easily show the products of the claimed process as being either hydrogen peroxide and formic acid as argued by the Office or glucose/sucrose as argued by the Applicant.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-6 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.
Regarding claim 1, based upon the limited disclosure of the present application, and combined with the common general knowledge of the person skilled in the art, the presence of enzymes is typically required for forming complex organic molecules such as glucose. The disclosure of the present application with respect to the system and method is minimal and does not disclose a general principle that makes it credible that melanin by itself is capable of forming glucose from H2, O2, and CO2. Melanin itself is a compound which has no chirality. It is completely unknown how a compound devoid of any chiral centers can lead selectively to the production of glucose (a complex sugar which possesses 5 separate chiral centers) from just O=C=O (a non-chiral compound), and no additional reagents other than hydrogen and oxygen (non-chiral compounds). Producing enantiomeric organic compounds from non-chiral compounds photochemically requires photolysis with magnetism, use of circularly polarized light, or the presence of a chiral sensitizer, chiral host, use of zeolites or crystals, or a chiral auxiliary or chiral space group in the solid state [see US 9,023,182 B1 col. 5, lines 60-66 and Griesbeck et al, “Asymmetric Photochemistry and Photochirogenesis,” Angew. Chem. Int. Ed. 2002, 41, No. 17, pp. 3147 right col. para. 3]. See also Lu et al disclosing the multiple steps required to synthesize glucose from carbon dioxide.
Based upon the disclosed method for testing glucose, a glucose oxidase assay has been
utilized, which subsequently aims to correlate the amount of glucose present with the amount of hydrogen peroxide. However, the test does not appear to discount that alternative possibility that the reaction mixture itself could have contained hydrogen peroxide and little or no glucose. The subsequent analysis would thereby have given a false positive as only hydrogen peroxide has in fact been detected, in this regard, the previous disclosure of Felix et al suggests that the presence of melanin and water in an enclosed container exposed to light produces hydrogen peroxide. Accordingly, if the process or system does in fact produce glucose, it appears that the specific examples neglect to mention additional reagents, steps or features which are critically essential to provide the process that is claimed.
Note that the amended portion of claim 1 which is considered to not be enabled is “convert dissolved carbon dioxide and reformed water molecules to form glucose”. The evidence already of record, such as Felix et al, shows that it was known that melanin in the presence of water and sunlight could produce hydrogen gas, oxygen gas and hydrogen peroxide.
Claims 2-6 are rejected as inheriting the lack of enablement of claim 1.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-6 are rejected under 35 U.S.C. 101 because the claimed invention lacks patentable utility. The claims are directed to the production of glucose. However, the examples themselves do not unambiguously identify the product as being obtained. It is also noted that glucose at no point is disclosed to have been isolated, separated or observed directly. A claim directed to a method "for producing glucose" would need to actually demonstrate the method is capable of producing what is claimed in a useful and substantial amount, i.e. for the method to be supported, the specification must enable glucose to be prepared and accurately identified as being present. The Examples do not actually identify or detect the presence of glucose. The presence of glucose is only inferred by measuring the amount of hydrogen peroxide.
However, the Applicant's previous work of US2011/0244345 already demonstrated that melanin can separate water and the products include hydrogen peroxide.
Felix et al also show that it was known that melanin in the presence of water and exposure to light was capable of producing hydrogen peroxide, which would yield a false positive for detection of glucose in the standard glucose oxidase assay.
Therefore, for the present application, the experimental assessment using glucose oxidase appears to give a false positive. The subsequent determination of the amount of hydrogen peroxide actually seems to provide no valid measurement of the amount or presence of glucose.
Conclusion
THIS ACTION IS MADE FINAL. 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 HARRY D WILKINS III whose telephone number is (571)272-1251. The examiner can normally be reached M-F 9:30am -6:00pm.
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/HARRY D WILKINS III/Primary Examiner, Art Unit 1794