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 .
Detailed Action
Applicant’s election of Group I, claims 1-9 without traverse in the reply filed on 07/22/2026 is acknowledged. Thus, claims 1-12 are pending in this application; elected Group I, claims 1-9 is now under consideration for examination, and claims 10-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim.
Priority
Acknowledgment is made of applicants’ claim for foreign priority under 35 U.S.C. 119(a)-(d). This application a 371 of PCT/EP2023/056108 filed on 03/10/2023 and claims the priority date of EPO application 22161688.1 filed on 03/11/2022.
Information disclosure statement
The information disclosure statement (IDS) submitted on 09/10/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS statement is considered and initialed by the examiner.
Objections-Abstract/Specification
The Abstract of the disclosure is objected to because, Abstract should be on a separate sheet of paper. The abstract of the disclosure is objected to because the abstract is presented as part of the first page of a WO publication. The abstract should be presented as a single sheet apart from all other bibliographic material including the information included on the first page of a WO publication. If EFS is used to submit a replacement abstract, the appropriate abstract (ABST) document code should be used for the one-page document. Correction is required. See MPEP § 608.01 (b).
Claim Objections
Applicant is advised that should claim 2 be found allowable, claim 3 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. Examiner takes the position that the scope of claim 2 and the rejected claim 3 are one and the same, as claim 3 is written in an alternative form, and thus requires any one of the recited enzymes i.e., “Process according to claim 1 wherein lactose in said mixture is converted to GOS using a beta-galactosidase enzyme derived from Bifobacterium bifidum, Bacillus circulans, or Papiliotrema terrestris“. See MPEP § 706.03(k).
Double Patenting rejection
Claim 3 is rejected to under 37 CFR 1.75 as being duplicate of claim 2. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 706.03(k). Examiner takes the position that the scope of claim 2 and the rejected claim 3 are one and the same based on the language and the interpretation of claim.
Claim Rejections: 35 USC § 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.
I. Claims 2-3 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 pre-AIA the applicant regards as the invention.
Claims 2-3 are indefinite in the recitation of “derived”. The metes and bounds of the term “derived” is not clear in the context of the claim. It is not clear to the examiner what are the structures encompassed in “derived”? or is a representative member of a genus/merely exemplary. Furthermore, in claims 2-3 are indefinite in the recitation of “derived”; as written, one cannot determine if the term refers to ‘functions of several real variables” or ‘structural variables’ of claimed “derived” genes (unlimited structures or structurally undefined molecules or functionally variable molecules and the extent of variability is unclear). The metes and bounds of the claims are unclear. For examination purposes, no patentable weight will be given to the terms. It is not clear to the examiner as to what the phrase “derived” means in the context of the above claims, is this synonymous with “obtained from specific source or having specific structures? or does it include natural and man-made variants of unlimited/undefined structures thereof from any source? Examiner suggests amending the claims to recite ”obtained from…”. Clarification and correction required.
II. Claims 4 and 6-9 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 pre-AIA the applicant regards as the invention.
Regarding claims 4 and 6-9, the phrase “preferably”; “most preferably” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
In the present instance, claims 4 and 6-9 recite the broad recitation “… concentration in the range of 20-58 wt%... 5-100 U/gram lactose… hours … temperature” and the claims also recite “preferably”; “most preferably, which is the narrower statement of the range/limitation (range within range). It is not clear what the applicants’ intend to encompass in the rejected claims and the metes and bounds of the claims are unclear and as being indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. Correction and clarification is required. Examiner suggests for the following ranges “preferably 30-55%”; “most preferably 40-50wt%... preferably 2-10 hours, most preferably 3-8 hours” applicants’ consider writing additional new claims as dependent claims.
Claim Rejections: 35 USC § 112(a)
The following is a quotation 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.
Enablement
Claims 1-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112, first paragraph, because the specification, while being enabling for a few species in the claimed process i.e., wild-type enzymes obtained from commercial source; cellobiose-2-epimerases from thermophilic bacteria like Dictyoglomus turgidum and Caldicellulosiruptor sacchaolyticus (page 4, lines 20-25 of specification) and b-galactosidase from Bacillus circulans and Bifidumbacterium bifidum (page 3, lines 15-20 of specification), the specification does not reasonably provide enablement for a genera of polypeptides having cellobiose-2-epimerase and b-galactosidase activities including variants and mutants of undefined and unlimited structures in the claimed process. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make/use the invention commensurate in scope with these claims without undue experimentation.
Factors to be considered in determining whether undue experimentation is required are summarized in In re Wands (858 F.2d 731, 8 USPQ 2nd 1400 (Fed. Cir. 1988) as follows: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claim(s).
Claims 1-9 broadly encompass: a genera of polypeptides having cellobiose-2-epimerase and b-galactosidase activities including variants and mutants of undefined and unlimited structures in the claimed process. Predictability of which genera of enzymes requires a knowledge of biochemical and biological characteristics of the claimed enzymes in the claimed process, and guidance with regard to how said enzymes relates to the desired outcome, as recited in the claimed process and claims. However, in this case the disclosure is limited to a few species in the claimed process i.e., wild-type enzymes obtained from commercial source; cellobiose-2-epimerases from thermophilic bacteria like Dictyoglomus turgidum and Caldicellulosiruptor sacchaolyticus (page 4, lines 20-25 of specification) and b-galactosidase from Bacillus circulans and Bifidumbacterium bifidum (page 3, lines 15-20 of specification).
While some use of specific enzymes with specific structures are known, it is not routine in the art to screen an essentially unlimited genera of enzymes of undefined and unlimited structures and method of use to produce lactulose from lactose with a reasonable expectation of success remain unpredictable in the claimed process.
Examiner finds support for his position in the following reference:
Julio-Gonzalez et al., Separation and Purification Technology 224 (2019) 475-480, in IDS (see Abstract; Fig. 2, page 477; and entire document) studied the further purification of a commercial, i.e. chemically produced, lactulose syrup using various ß-galactosidase enzymes. The study showed that ß-galactosidases from Bacillus circulans and Bifidumbacterium bifidum were more selective towards lactose hydrolysis than those obtained from Kluyveromyces lactis and Aspergillus oryzae.
Hence, the specification does not support the broad scope of the claims which encompass a genera of polypeptides having cellobiose-2-epimerase and b-galactosidase activities including variants and mutants of undefined and unlimited structures in the claimed process in the claimed process, because the specification does not establish: (A) a rational and predictable scheme for selecting enzymes for the production of desired chemicals and optimal conditions; and (B) the specification provides insufficient guidance as to which of the essentially infinite possible choices is likely to be successful. The claims 1-9 remains not commensurate in scope with the enabled invention and therefore for the rejected claims, this would clearly constitute undue experimentation. While enablement is not precluded by the necessity for routine screening, if a large amount of screening is required, the specification must provide a reasonable amount of guidance with respect to the direction in which the experimentation should proceed. Such guidance has not been provided in the instant specification or in the prior art. Thus, applicants’ have not provided sufficient guidance to enable one of ordinary skill in the art to make and use the claimed invention in a manner reasonably correlated with the scope of the claims broadly including a genera of polypeptides having cellobiose-2-epimerase and b-galactosidase activities including variants and mutants of undefined and unlimited structures in the claimed process. The scope of the claim must bear a reasonable correlation with the scope of enablement (In re Fisher, 166 USPQ 19 24 (CCPA 1975)). Without sufficient guidance, determination of enzymes with the desired biological characteristics is unpredictable and the experimentation left to those skilled in the art is unnecessarily, and improperly, extensive and undue. See In re Wands 858 F.2d 731, 8 USPQ2nd 1400 (Fed. Cir, 1988).
In view of the great breadth of the claims, amount of experimentation required to make and use the claimed enzymes in the claimed method, the lack of guidance, working examples, and unpredictability of the art in predicting the use in the claimed process in the present invention would require undue experimentation. As such, the specification fails to teach one of ordinary skill how to use the full scope of the claimed composition and method encompassed by the claims. Without such guidance in the specification and lack of correlative working examples, the claims would require an improperly extensive and undue amount of experimentation without a predictable degree of success on the part of the skilled artisan. (See In re Wands 858 F.2d 731, 8 USPQ 2nd 1400 Fed. Cir. 1988).
Written Description
Claims 1-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112, first paragraph, as containing subject matter which was not disclosed in the specification in such a way as to reasonably convey to one of skilled in the relevant art that the invention(s), at the time the application was filed, had possession of the claimed invention.
Claims 1-9 as interpreted are directed to a genera of polypeptides having cellobiose-2-epimerase and b-galactosidase activities including variants and mutants of undefined and unlimited structures in the claimed process. The specification discloses and is limited to a few species in the claimed process i.e., wild-type enzymes obtained from commercial source; cellobiose-2-epimerases from thermophilic bacteria like Dictyoglomus turgidum and Caldicellulosiruptor sacchaolyticus (page 4, lines 20-25 of specification) and b-galactosidase from Bacillus circulans and Bifidumbacterium bifidum (page 3, lines 15-20 of specification), which is insufficient to put one of skill in the art in possession of the attributes and features of all species within the claimed genus i.e., a genera of polypeptides having cellobiose-2-epimerase and b-galactosidase activities including variants and mutants of undefined and unlimited structures in the claimed process.
A sufficient written description of a genus of may be achieved by a recitation of structural features common to members of genus, which features constitute a substantial portion of the genus. There is no recited structural feature of the genus in the specification, i.e., a genera of polypeptides having cellobiose-2-epimerase and b-galactosidase activities including variants and mutants of undefined and unlimited structures in the claimed process. Therefore, one skilled in the art cannot reasonably conclude that the applicant had possession of the claimed invention at the time the instant application was filed.
In University of California v. Eli Lilly & Co., 43 USPQ2d 1938, the Court of Appeals for the Federal Circuit has held that “A written description of an invention involving a chemical genus, like a description of a chemical species, ‘requires a precise definition, such as by structure, formula, [or] chemical name,’ of the claimed subject matter sufficient to distinguish it from other materials”. As indicated in MPEP § 2163, the written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show that Applicant was in possession of the claimed genus. In addition, MPEP § 2163 states that a representative number of species means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus.
The Federal Circuit in Lilly, Fiers, Rochester and many other cases has determined that the written description issue applies to situations where the definition of the subject matter of the claims fails to provide description commensurate with the genus. Case law directly supports this rejection. As the District Court in University of Rochester v. G.D. Searle & Co., Inc. (2003 WL 759719 W.D.N.Y., 2003. March 5, 2003) noted “In effect, then, the '850 patent claims a method that cannot be practiced until one discovers a compound that was not in the possession of, or known to, the inventors themselves. Putting the claimed method into practice awaited someone actually discovering a necessary component of the invention.”
This is similar to the current situation, since the breadth of the current claims comprises a genera of polypeptides having cellobiose-2-epimerase and b-galactosidase activities including variants and mutants of undefined and unlimited structures in the claimed process which the present inventors were not in the possession of, or which were not known to the inventors.
Hence, claims are reading on significant numbers of inoperative embodiments would render claims non-enabled/lack of written-description, when the specification does not clearly identify the operative embodiments or evidence of possession and undue experimentation is involved in determining those that are operative.” Atlas Powder Co. v. E.I. duPont de Nemours & Co., 750 F.2d 1569, 1577, 224 USPQ 409, 414 (Fed. Cir. 1984); In re Cook, 439 F.2d 730, 735, 169 USPQ 298, 302 (CCPA 1971); MPEP 2164.08(b).
Therefore, claims 1-9 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. Applicants are referred to the revised guidelines concerning compliance with the written description requirement of 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, published in the Official Gazette and also available at www.uspto.gov.
Claim Rejections: 35 USC § 102 (AIA )
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.
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 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.
Claims 1-9 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Cao et al., (EP 20160860; published 03/05/2020).
Cao et al., (EP 20160860; published 03/05/2020) disclose an integrated process for conversion of lactose to lactulose and epilactose utilizing cellobiose-2-epimerases from thermophilic bacteria and b-galactosidase from Bacillus circulans and Bifidumbacterium bifidum
See page 6
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said reference process utilizes (see page 1)
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See page 3
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See page 7; incubation temperature and time
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See page 9
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See Claims 7 and 8
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Applicants’ are also directed to Table 2 (page 12); Table 3 (page 13); Claims and entire document.
Hence, claims 1-9 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Cao et al., (EP 20160860; published 03/05/2020).
Since the Office does not have the facilities for examining and comparing applicants’ process with the process of the prior art, the burden is on the applicant to show a novel or unobvious difference between the claimed process of the prior art (i.e., that the process of the prior art does not possess the same material structural and functional characteristics of the process of the instant invention). See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald et al., 205 USPQ 594.
Claim Rejections: 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
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 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.
Claims 1-9 are rejected under 35 U.S.C. 103(a) as being unpatentable Buthe et al., (US 2021/0076724 A1) and further in view of Saburi et al., (Biosci. Biotechnol. Biochem., 2010, Vol. 74(8): 1736-1737) and Kim et al., (Biores. Technol., 2012, Vol. 104: 668-672).
Regarding claims 1 and 4-9, Buthe et al., (US 2021/0076724 A1) teach production of functional carbohydrates like GOS, FOS, lactulose and epilactose; for example, lactose as such is also the carbohydrate feedstock for the enzymatic production of galacto-oligosaccharides (Abstract; ¶ [0007], [0022], [0025], [077], [0130], [0428], [0432]; Claims; and entire document); said reference enzymes utilized in the reference method to produce lactulose and epilactose are cellobiose-2-epimerase and b-galactosidase (¶ [0007], [0011], [0022-0024], [0025], [0405], [0428], [0432], Examples 2-3, [0563-0564]); and temperature range of incubation is 50C-700C (¶ [084]); incubation time 0-6 hours or 1-672 hours (¶ [0202-0205], [0447], [0453]); carbohydrate conversion rate of 5-100% (¶ [0511], [0515]).
However, Buthe et al., are silent regarding wherein beta-galactosidase enzyme derived from Bifobacterium bifidum, Bacillus circulans, or Papiliotrema terrestris (as in claims 3-4).
Regarding claims 3-4 the following references provide teaching, suggestion and motivation including structural and functional elements of the instant invention:
Saburi et al., (Biosci. Biotechnol. Biochem., 2010, Vol. 74(8): 1736-1737) teach a practical purification method for the production of epilactose from lactose, said reference method comprises the use of cellobiose-2-epimerase and b-galactosidase wherein b-galactosidase enzyme is obtained from Bifobacterium bifidum or Bacillus circulans in a step-wise manner with purity (91.1%) and yield (42.5%); said reference method includes inactivation of cellobiose-2-epimerase after step (i); isolation of epilactose and subjecting the unreacted lactose with Bacillus circulans b-galactosidase (entire document).
See Saburi et al., Abstract reproduced below:
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Regarding claims 3-4, Kim et al., (Biores. Technol., 2012, Vol. 104: 668-672) also provide teaching, suggestion and motivation for producing lactulose, and epilactose utilizing cellobiose-2-epimerase and b-galactosidase (see Table 1, page 671; col. 1, ¶ 2 page 672; and entire document).
As such, disclosure of strategy and methods for “practical purification method for the production of lactulose and epilactose from lactose in a step-wise manner, said reference methods comprises the use of cellobiose-2-epimerase and b-galactosidase wherein b-galactosidase enzyme is obtained from Bifobacterium bifidum or Bacillus circulans”, as in claims 1-9 of the instant invention, such as that of references of Saburi et al., and Kim et al., teaching the advantages of said modifications, clearly suggests to a skilled artisan to modify the teachings of Buthe et al., and incorporate the structural and functional elements of Saburi et al., and Kim et al., in the claimed method of producing lactulose, and epilactose as claimed in the instant invention. One of ordinary skill in the art would have a reasonable expectation of success, since method of producing lactulose, and epilactose are well known in the art.
Regarding specific choice of enzymes, incubation conditions are also provided/suggested in the combination of references, and examiner also takes the position the following position; optimization of known variables, and the examiner finds support in: MPEP 2144.05 [R-5]: A. Optimization Within Prior Art Conditions or Through Routine Experimentation Generally, differences in choice of enzymes, incubation conditions will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such choice of enzymes, incubation conditions 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". As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re Aller, 220 F2d 454,456,105 USPQ 233,235 (CCPA 1955). Furthermore, "it is prima facie obvious to combine two or more methods each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition or third method to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980)”. 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.
Therefore, claims 1-9 are rejected under 35 U.S.C. 103(a) as being unpatentable Buthe et al., (US 2021/0076724 A1) and further in view of Saburi et al., (Biosci. Biotechnol. Biochem., 2010, Vol. 74(8): 1736-1737) and Kim et al., (Biores. Technol., 2012, Vol. 104: 668-672).
Allowable Subject Matter/Conclusion
None of the claims are allowable.
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/GANAPATHIRAMA RAGHU/ Primary Examiner, Art Unit 1652