DETAILED CORRESPONDENCE
Application Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Claims 1-25 are pending.
Priority
5. Acknowledgement is made of this divisional application of U.S. Non-provisional Application No. 18/496409, filed on 10/27/2023, which is a continuation of PCT/IB2023/057246, filed on 07/14/2023, which claims domestic priority to U.S. Provisional Application Nos. 63/446,735 and 63/389,369, filed on 02/17/2023 and 07/14/2022, respectively.
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed applications, 63/446,735 and 63/389,369, filed on 02/17/2023 and 07/14/2022, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Particularly, the breadth of claims 1-24 for the terms “antimethanogenic halide compound”, “haloperoxidase”, “halide”, “iodoperoxidase”, “chloroperoxidase”, “vanadium dependent haloperoxidase”, “fluoride”, “bromide”, “iodide”, “chloride”, “methyl bromide”, “methyl chloride”, “methyl iodide”, “methyl fluoride”, “bromodichloromethane”, “trichloroethylene”, “chloroform”, “iodoform”, “fluoroform”, and “dibromomethane”, are not adequately supported in the above prior-filed applications. While the specification does disclose the formation of bromoform by providing a bromoperoxidase, volatile fatty acid, ketone, hydrogen peroxide, and bromine, there is no explicit support for the full breadth of the limitations set forth in the claims. Support for these limitations can first be found in the filing of the PCT/IB2023/057246 on 07/14/2023. In this regard, in order to determine a priority date for prior art purposes, the date of the filing of the PCT application on 07/14/2023, will be used as the priority date of the claimed invention.
Drawings
6. The Drawings filed on 10/27/2023 are acknowledged and accepted by the examiner.
Claim Rejections - 35 USC § 101
7. 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.
8. Claims 1-20 and 22-25 are rejected under 35 U.S.C. 101 because the claimed invention is directed to natural process without significantly more. Claims 1-20 and 22-24 recite(s) a method for producing an antimethanogenic halide compound, said method comprising the steps of: providing a haloperoxidase enzyme; providing a reaction solution, said reaction solution comprising a volatile fatty acid or ketone; hydrogen peroxide; a halide; and contacting the peroxidase enzyme with the reaction solution for a time period sufficient to produce an antimethanogenic halide compound. Claim 25 recites a composition comprising an algal biomass; a reaction solution comprising a volatile fatty acid or ketone; hydrogen peroxide; a halide and a secondary metabolite. This judicial exception is not integrated into a practical application because the method encompasses the natural process of production a halide and a secondary metabolite compound such as bromoform and a natural algae. Thapa et al. (ACS Chem. Biol., 2020; examiner cited, and supplementary materials attached) teach that the marine macroalgae Asparagopsis produces the compound bromoform through the action of a haloperoxidase in the presence of hydrogen peroxide and product of fatty acid biosynthesis [see Abstract; p. 1662; p. 1663, column 2 – top of column 1 p. 1665; p. 1665 column 2]. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the steps of the method are not structurally distinct and markedly different from the natural process that occurs in macroalgae. The dependent claims only further limit the enzyme and the products, which are natural products as a result of the activity of the haloperoxidase. Accordingly, the methods and compositions of claims 1-20 and 22-25 are not markedly different in structure from their natural counterparts. It is suggested that applicants’ amend the claims to transform the method and composition into something that is markedly different from the natural methods and compositions.
Claim Rejections - 35 USC § 102
9. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
10. Claim(s) 1-7, 12, 18-23, and 25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thapa et al. (ACS Chem. Biol., 2020; examiner cited, and supplementary materials attached).
11. Claims 1-7 and 18-23 are drawn to a method for producing an antimethanogenic halide compound, said method comprising the steps of: a) providing a haloperoxidase enzyme; b) providing a reaction solution, said reaction solution comprising: i) a volatile fatty acid or ketone; ii) hydrogen peroxide; iii) a halide; and c) contacting the peroxidase enzyme with the reaction solution for a time period sufficient to produce an antimethanogenic halide compound.
Claim 25 is drawn to a composition comprising an algal biomass; a reaction solution comprising a volatile fatty acid or ketone; hydrogen peroxide; a halide and a secondary metabolite.
12. With respect to claim 1, Thapa et al. teach a method for production bromoform comprising the steps of providing a vanadium dependent haloperoxidase, providing a reaction solution comprising a ketone such as methyl ketone derived from fatty acid biosynthesis, hydrogen peroxide, bromine and contacting the peroxidase for a time sufficient to produce bromoform [see Abstract; p. 1665; Figure 5; p. 6 of supplemental materials].
With respect to claim 2, Thapa et al. teach the method wherein the haloperoxidase is Mbb1, -3, and -4. Given that Mbb1 and Mbb4 enzymes produced bromoform, these enzymes are interpreted as bromoperoxidase [see Figure 2; p. 1665].
With respect to claim 3, Thapa et al. teach the method wherein the haloperoxidase is a vanadium dependent haloperoxidase [see p. 1665].
With respect to claim 4, Thapa et al. teach the method wherein the haloperoxidase is a recombinant peroxidase [see p. 1665; p. 8-9 of supplemental materials].
With respect to claim 5, Thapa et al. teach the method wherein the halide is selected from bromide [see p. 1665 and p. 6 of supplemental materials].
With respect to claim 6, Thapa et al. teach the method wherein the halide is potassium bromide [see p. 6 of supplemental materials].
With respect to claim 7, Thapa et al. teach the method wherein the antimethanogenic halide compound is bromoform [see p. 6 of supplemental materials].
With respect to claim 18, Thapa et al. teach the method wherein the reaction solution has a pH of 7.6 [see p. 6 of supplemental materials].
With respect to claim 19, Thapa et al. teach the method wherein the time period is at least 90 minutes [see p. 6 of supplemental materials].
With respect to claim 20, Thapa et al. teach the method wherein the reaction time was for 90 minutes and the amount of bromoform measured [see p. 6 of supplemental materials; Figure 2; p. 1665]. The reaction time is interpreted as enriching the amount of bromoform as by allowing the reaction to continue for 90 minutes, more product would be made, therefore, enriching the reaction solution with the bromoform product.
With respect to claim 21, Thapa et al. teach the method further comprising the step of separating the bromoform from the reaction solution [see p. 6 of supplemental materials; Figure 2; p. 1665].
With respect to claim 23, Thapa et al. teach the method wherein the reaction is comprised in Asparagopsis taxiformis (algal biomass) [see Abstract; p. 6 of supplemental materials].
With respect to claim 25, Thapa et al. teach a composition comprising Asparagopsis taxiformis (algal biomass), a vanadium dependent haloperoxidase, a reaction solution comprising a ketone such as methyl ketone derived from fatty acid biosynthesis, hydrogen peroxide, bromine and bromoform (secondary metabolite) [see Abstract; p. 1665; Figure 5; p. 6 of supplemental materials].
13. Claims 1-8, 10, 18-21, and 23-25 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Archer et al. (WO 2023/212121 A2, priority to 04/26/2022; examiner cited).
14. With respect to claim 1, Archer et al. teach a method for producing an antimethanogenic halide compound comprising the steps of providing a haloperoxidase enzyme, providing a reaction solution comprising a ketone, hydrogen peroxide, a halide, and contacting the peroxidase enzyme with the reaction solution for a time period sufficient to produce an antimethanogenic halide compound [see Abstract; p. 2-3].
With respect to claim 2, Archer et al. teach the method wherein the haloperoxidase is a bromoperoxidase, an iodoperoxidase, and a chloroperoxidase [see Abstract; p. 8, lines 18-29].
With respect to claim 3, Archer et al. teach the method wherein the haloperoxidase is a vanadium-dependent haloperoxidase [see p. 8, lines 18-29].
With respect to claim 4, Archer et al. teach the method wherein the haloperoxidase is a recombinant peroxidase [see p. 8, bottom].
With respect to claim 5, Archer et al. teach the method wherein the halide is selected from the group consisting of fluoride, bromide, iodide, and chloride [see p. 9, bottom; p. 18, top].
With respect to claim 6, Archer et al. teach the method wherein the halide is a small molecule or salt such as potassium bromide [see p. 18, top].
With respect to claim 7, Archer et al. teach the method wherein the halide compound is selected from dichlorobromomethane and bromoform [see p. 4].
With respect to claims 8 and 10, Archer et al. teach the method wherein the ketone is acetone [see p. 2, lines 9-23].
With respect to claim 18, Archer et al. teach the method wherein the reaction solution has pH of between 4-10, which overlaps the claimed pH [see p. 6, bottom].
With respect to claim 19, Archer et al. teach the method wherein the reaction time period is 120 minutes [see p. 121, top].
With respect to claim 20, Archer et al. teach the method comprising the step of enriching the halide compound [see Abstract; p. 2, p. 4, p. 84].
With respect to claim 21, Archer et al. teach the method comprising the step of separating out the halide compound from the reaction solution [see p. 84].
With respect to claim 23, Archer et al. teach the method wherein the haloperoxidase enzyme is derived from an algal species (algal biomass) [see p. 94, bottom].
With respect to claim 24, Archer et al. teach a method for producing an antimethanogenic halide compound comprising the steps of providing a haloperoxidase enzyme wherein the haloperoxidase is a bromoperoxidase, an iodoperoxidase, and a chloroperoxidase, providing a reaction solution comprising a ketone such as acetone, hydrogen peroxide, a halide, and contacting the peroxidase enzyme with the reaction solution for a time period sufficient to produce an antimethanogenic halide compound, wherein the compound is bromoform [see Abstract; p. 2-3; p. 4; p. 8, lines 18-29].
With respect to claim 25, Archer et al. teach a composition comprising an algal biomass, a haloperoxidase enzyme, a reaction solution comprising a ketone, hydrogen peroxide, a halide, and an antimethanogenic halide compound (secondary metabolite) [see Abstract; p. 2-3; p. 94, bottom].
Claim Rejections - 35 USC § 103
15. 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.
16. Claim(s) 9, 12, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thapa et al. (ACS Chem. Biol., 2020; examiner cited, and supplementary materials attached) in view of Tieves et al. (Angew. Chem. Int. Ed., 2019; examiner cited).
17. The relevant teachings of Thapa et al. as applied to claims 1-7, 12, 18-23, and 25 are set forth in the 102(a)(1) rejection above.
With respect to claims 9 and 12, Thapa et al. a method for production bromoform comprising the steps of providing a vanadium dependent haloperoxidase, providing a reaction solution comprising a ketone such as methyl ketone derived from fatty acid biosynthesis, hydrogen peroxide, bromine and contacting the peroxidase for a time sufficient to produce bromoform [see Abstract; p. 1665; Figure 5; p. 6 of supplemental materials].
However, Thapa et al. does not teach the method of claims 9 and 12, wherein the volatile fatty acid or ketone comprises formate; and the method of claim 16, wherein the reaction solution comprises at least 2.4 mM of the volatile fatty acid or ketone.
Tieves et al. teach that an increasing number of biocatalytic oxidation reactions rely on hydrogen peroxide as clean oxidant, and that the poor robustness of most enzymes towards hydrogen peroxide necessitates more efficient systems for in situ hydrogen peroxide generation [see Abstract]. Tieves et al. teach a coupled reaction comprising a formate oxidase and peroxygenase wherein formate is supplied and converted in situ by the formate oxidase to hydrogen peroxide which serves as a substrate for the peroxygenase [see p. 7874; scheme 2]. Tieves et al. further teach that optimum concentration of the formate is 200 mM [see p. 7874, column 2].
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to combine the teachings of Thapa et al. and Tieves et al. to include formate and a formate oxidase enzyme in the method of Thapa et al. because Thapa et al. teach a method for the production of bromoform comprising the steps of providing a vanadium dependent haloperoxidase, hydrogen peroxide, and a ketone. Tieves et al. teach poor robustness of most enzymes towards hydrogen peroxide necessitates more efficient systems for in situ hydrogen peroxide generation and teach a coupled reaction comprising a formate oxidase and peroxygenase wherein formate is supplied and converted in situ by the formate oxidase to hydrogen peroxide which serves as a substrate for the peroxygenase. One of ordinary skill in the art would have had a reasonable expectation of success and a reasonable level of predictability to combine the teachings of Thapa et al. and Tieves et al. because Thapa et al. acknowledge methods for producing bromoform using a haloperoxidase in the presence of hydrogen peroxide and Tieves et al. acknowledge that in situ production of hydrogen peroxide provides efficient production of hydrogen peroxide for peroxygenase reactions. One of ordinary skill in the art would desire to provide in situ production of hydrogen peroxide to provide constant hydrogen peroxide substrate for the peroxygenase reactions of Thapa et al. Therefore, the above invention would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
18. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Thapa et al. (ACS Chem. Biol., 2020; examiner cited, and supplementary materials attached) in view of Tieves et al. (Angew. Chem. Int. Ed., 2019; examiner cited) as applied to claims 9, 12, and 16 above, and further in view of Sigma-Aldrich (Sigma, 2010; examiner cited).
19. The relevant teachings of Thapa et al. and Tieves et al. as applied to claims 9, 12, and 16 are set forth above.
However, the combination of Thapa et al. and Tieves et al. do not teach the method of claim 11, wherein the formate is sodium formate or potassium formate.
Sigma-Aldrich teach the commercial availability of sodium formate as a reagent [see p. 1].
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to combine the teachings of Thapa et al., Tieves et al., and Sigma-Aldrich to use sodium formate in the reactions of Thapa et al. and Tieves et al. because the combination of Thapa et al. and Tieves et al. teach a method for producing bromoform using formate and hydrogen peroxide. Sigma-Aldrich teach the commercial availability of sodium formate. One of ordinary skill in the art recognizing that most in vitro enzymatic reactions occur under aqueous conditions would have a reasonable expectation of success and a reasonable level of predictability to combine the teachings of Thapa et al., Tieves et al., and Sigma-Aldrich because having a salt of formate would enable ease of dissolving the formate into the aqueous solution for the enzymatic reaction. Therefore, the above invention would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
20. Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Thapa et al. (ACS Chem. Biol., 2020; examiner cited, and supplementary materials attached).
21. The relevant teachings of Thapa et al. as applied to claims 1-7, 12, 18-23, and 25 are set forth in the 102(a)(1) rejection above.
With respect to claim 17, Thapa et al. a method for production bromoform comprising the steps of providing a vanadium dependent haloperoxidase, providing a reaction solution comprising a ketone such as methyl ketone derived from fatty acid biosynthesis, hydrogen peroxide, bromine and contacting the peroxidase for a time sufficient to produce bromoform from Asparagopsis algae extracts [see Abstract; p. 1665; Figure 5; p. 6 of supplemental materials].
Although Thapa et al. does not teach the method of claim 17 wherein the reaction solution comprises between 100 mM and 400 mM hydrogen peroxide, MPEP 2144.05.II.A states “[g]enerally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”. In the instant case, one of ordinary skill in the art would desire to optimize the optimal concentration of hydrogen peroxide in order to maximize the production of bromoform. Therefore, the above invention would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
22. Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Thapa et al. (ACS Chem. Biol., 2020; examiner cited, and supplementary materials attached) in view of Magnussen et al. (Algal Research, 2020; examiner cited).
23. The relevant teachings of Thapa et al. as applied to claims 1-7, 12, 18-23, and 25 are set forth in the 102(a)(1) rejection above.
With respect to claims 9 and 12, Thapa et al. a method for production bromoform comprising the steps of providing a vanadium dependent haloperoxidase, providing a reaction solution comprising a ketone such as methyl ketone derived from fatty acid biosynthesis, hydrogen peroxide, bromine and contacting the peroxidase for a time sufficient to produce bromoform from Asparagopsis algae extracts [see Abstract; p. 1665; Figure 5; p. 6 of supplemental materials].
However, Thapa et al. does not teach the method of claim 22, wherein the reaction solution comprises a layer of oil on top.
Magnusson et al. teach that Asparagopsis taxiformis inhibits the production of enteric methane ruminants and the next critical step in the implementation of this technology is the delivery of naturally-derived product that maximizes the concentration and longer term retention of bromoform [see Abstract]. Mangnussen et al. teach that the most effective method for achieving long term retention of bromoform is homogenise the algae in oil, which resulted in the highest concentration of bromoform and a shelf life of at least 12 weeks [see Abstract].
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to combine the teachings of Thapa et al. and Magnusson et al. according to the teachings of Magnusson et al. to include a layer of oil in the production of bromoform methods of Thapa et al. because Thapa et al. teach production of bromoform from algae. Magnussen et al. teach that the most effective method for achieving long term retention of bromoform is homogenise the algae in oil, which resulted in the highest concentration of bromoform and a shelf life of at least 12 weeks. One of ordinary skill in the art would have had a reasonable expectation of success and a reasonable level of predictability to combine the teachings of Thapa et al. and Magnusson et al. because Magnusson et al. acknowledges the presence of oil results in high and stable concentrations of bromoform for reduction of methane in ruminants. Therefore, the above invention would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
24. Claim(s) 9 and 12-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Archer et al. (WO 2023/212121 A2, priority to 04/26/2022; examiner cited) in view of Tieves et al. (Angew. Chem. Int. Ed., 2019; examiner cited).
25. The relevant teachings of Archer et al. as applied to claims 1-8, 10, 18-21, and 23-25 are set forth in the 102(a)(2) rejection above.
With respect to claims 9 and 12-16, a method for producing an antimethanogenic halide compound comprising the steps of providing a haloperoxidase enzyme, providing a reaction solution comprising a ketone, hydrogen peroxide, a halide, and contacting the peroxidase enzyme with the reaction solution for a time period sufficient to produce an antimethanogenic halide compound [see Abstract; p. 2-3]. Archer et al. teach the method wherein the haloperoxidase is a bromoperoxidase, an iodoperoxidase, and a chloroperoxidase [see Abstract; p. 8, lines 18-29]. Archer et al. teach the method wherein the halide is selected from the group consisting of fluoride (fluoroform), bromide (bromoform), iodide (iodoform), and chloride (chloroform) [see p. 9, bottom; p. 18, top].
However, Archer et al. does not teach the method of claims 9 and 12, wherein the volatile fatty acid or ketone comprises formate; and the method of claim 16, wherein the reaction solution comprises at least 2.4 mM of the volatile fatty acid or ketone.
Tieves et al. teach that an increasing number of biocatalytic oxidation reactions rely on hydrogen peroxide as clean oxidant, and that the poor robustness of most enzymes towards hydrogen peroxide necessitates more efficient systems for in situ hydrogen peroxide generation [see Abstract]. Tieves et al. teach a coupled reaction comprising a formate oxidase and peroxygenase wherein formate is supplied and converted in situ by the formate oxidase to hydrogen peroxide which serves as a substrate for the peroxygenase [see p. 7874; scheme 2]. Tieves et al. further teach that optimum concentration of the formate is 200 mM [see p. 7874, column 2].
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to combine the teachings of Archer et al. and Tieves et al. to include formate and a formate oxidase enzyme in the method of Archer et al. because Archer et al. teach a method for the production of halide compounds comprising the steps of providing a vanadium dependent haloperoxidase, hydrogen peroxide, and a ketone. Tieves et al. teach poor robustness of most enzymes towards hydrogen peroxide necessitates more efficient systems for in situ hydrogen peroxide generation and teach a coupled reaction comprising a formate oxidase and peroxygenase wherein formate is supplied and converted in situ by the formate oxidase to hydrogen peroxide which serves as a substrate for the peroxygenase. One of ordinary skill in the art would have had a reasonable expectation of success and a reasonable level of predictability to combine the teachings of Archer et al. and Tieves et al. because Archer et al. acknowledge methods for producing halide compounds using a haloperoxidase in the presence of hydrogen peroxide and Tieves et al. acknowledge that in situ production of hydrogen peroxide provides efficient production of hydrogen peroxide for peroxygenase reactions. One of ordinary skill in the art would desire to provide in situ production of hydrogen peroxide to provide constant hydrogen peroxide substrate for the peroxygenase reactions of Archer et al. Therefore, the above invention would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
26. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Archer et al. (WO 2023/212121 A2, priority to 04/26/2022; examiner cited) in view of Tieves et al. (Angew. Chem. Int. Ed., 2019; examiner cited) as applied to claims 9 and 12-16 above, and further in view of Sigma-Aldrich (Sigma, 2010; examiner cited).
27. The relevant teachings of Archer et al. and Tieves et al. as applied to claims 9 and 12-16 are set forth above.
However, the combination of Archer et al. and Tieves et al. do not teach the method of claim 11, wherein the formate is sodium formate or potassium formate.
Sigma-Aldrich teach the commercial availability of sodium formate as a reagent [see p. 1].
Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to combine the teachings of Archer et al., Tieves et al., and Sigma-Aldrich to use sodium formate in the reactions of Archer et al. and Tieves et al. because the combination of Archer et al. and Tieves et al. teach a method for producing halide compounds using formate and hydrogen peroxide. Sigma-Aldrich teach the commercial availability of sodium formate. One of ordinary skill in the art recognizing that most in vitro enzymatic reactions occur under aqueous conditions would have a reasonable expectation of success and a reasonable level of predictability to combine the teachings of Archer et al., Tieves et al., and Sigma-Aldrich because having a salt of formate would enable ease of dissolving the formate into the aqueous solution for the enzymatic reaction. Therefore, the above invention would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
28. Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Archer et al. (WO 2023/212121 A2, priority to 04/26/2022; examiner cited).
29. The relevant teachings of as applied to claims 1-8, 10, 18-21, and 23-25 are set forth in the 102(a)(2) rejection above.
With respect to claim 17, a method for producing an antimethanogenic halide compound comprising the steps of providing a haloperoxidase enzyme, providing a reaction solution comprising a ketone, hydrogen peroxide, a halide, and contacting the peroxidase enzyme with the reaction solution for a time period sufficient to produce an antimethanogenic halide compound [see Abstract; p. 2-3]. Archer et al. teach the method wherein the haloperoxidase is a bromoperoxidase, an iodoperoxidase, and a chloroperoxidase [see Abstract; p. 8, lines 18-29].
Although Archer et al. does not teach the method of claim 17 wherein the reaction solution comprises between 100 mM and 400 mM hydrogen peroxide, MPEP 2144.05.II.A states “[g]enerally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”. In the instant case, one of ordinary skill in the art would desire to optimize the optimal concentration of hydrogen peroxide in order to maximize the production of bromoform. Therefore, the above invention would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Double Patenting
30. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
31. Claims 1-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,116,608. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-16 of the ‘608 patent recite a method for producing an antimethanogenic halide compound, said method comprising the steps of: a) providing a haloperoxidase enzyme; b) providing a reaction solution, said reaction solution comprising formate; hydrogen peroxide, and bromide; contacting the haloperoxidase enzyme with the reaction solution for a time period sufficient to produce an antimethanogenic halide compound, and separating the antimethanogenic halide compound from the reaction solution.
Conclusion
32. Status of the claims:
Claims 1-25 are pending.
Claims 1-25 are rejected.
No claims are in condition for an allowance.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL J HOLLAND whose telephone number is (571)270-3537. The examiner can normally be reached Monday to Friday from 8AM to 5PM.
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/PAUL J HOLLAND/Primary Examiner, Art Unit 1656
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