Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Detailed Action
Amended Claims 39-53 (dated 10/15/2024) are pending in this application and are now under consideration for examination.
Priority
Applicants’ claim for the benefit of priority under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. This application is a CON of 18/208,030 filed on 06/09/2023, now US patent 12,146,176, which is a CON of 12/234,589 filed on 09/19/2008, now US patent 11,725,225, which claims benefit of Provisional applications: 60/994,790 filed on 09/20/2007 and 61/049,350 filed on 04/30/2008. However, note that the instant amended claims 39-53 are given the priority date of Provisional application 61/049,350 filed on 04/30/2008, as the claimed subject-matter of amended claims 39-53 is only disclosed in the Provisional application 61/049,350 filed on 04/30/2008.
Information disclosure statement
The information disclosure statement (IDS) submitted on 10/14/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS statement is considered and initialed by the examiner.
Double patenting rejection
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Amended claims 39-53 (dated 10/15/2024) of the instant application are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-15 of reference patent US 12,146,176, (Tsuruta et al.,) in view of Farnesene, 3 pages downloaded on 07/27/2026 from https://en.wikipedia.org. An obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but an examined application claims are not patentably distinct from the reference claims, because the examined claims are either anticipated by, or would have been obvious over reference claims. 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).
Although the conflicting claims are not identical, they are not patentably distinct from each other. Amended claims 39-53 (dated 10/15/2024) of the instant application are directed to “a method for producing a heterologous C5-C20 isoprenoid compound in a yeast host cell, the method comprising: (a) obtaining a plurality of yeast host cells that are capable of making the heterologous C5-C20 isoprenoid compound, each said yeast host cell comprising one or more heterologous nucleic acids capable of expressing each enzyme of the MEV pathway or each enzyme of the DXP pathway; (b) culturing the yeast host cells in media comprising glucose and glucose-converted ethanol and an ethanol-only feed, wherein the culturing includes a period of time where the host cells are carbon-limited to yield a fermentation reaction mixture comprising medium, cells, and the heterologous C5-C20 isoprenoid compound; and (c) recovering the heterologous C5-C20 isoprenoid compound from the medium, wherein the yeast host cells produce from 10 to 40 grams of the heterologous C5-C20 isoprenoid compound per liter of fermentation reaction mixture after 4 to 12 days of culturing, and wherein the heterologous C5-C20 isoprenoid compound is b-farnesene”.
Claims 1-15 of reference patent US 12,146,176, (Tsuruta et al.,) are also directed to “a method for producing a heterologous C5-C20 isoprenoid compound in a yeast host cell, the method comprising: (a) obtaining a plurality of yeast host cells that are capable of making the heterologous C5-C20 isoprenoid compound, each said yeast host cell comprising one or more heterologous nucleic acids capable of expressing each enzyme of the MEV pathway or each enzyme of the DXP pathway; (b) culturing the yeast host cells in media comprising glucose and glucose-converted ethanol and an ethanol-only feed, wherein the culturing includes a period of time where the host cells are carbon-limited to yield a fermentation reaction mixture comprising medium, cells, and the heterologous C5-C20 isoprenoid compound; and (c) recovering the heterologous C5-C20 isoprenoid compound from the medium, wherein the yeast host cells produce from 10 to 40 grams of the heterologous C5-C20 isoprenoid compound per liter of fermentation reaction mixture after 4 to 12 days of culturing, and wherein the heterologous C5-C20 isoprenoid compound is farnesene” (reproduced below):
ODP US 12,146,176 B
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Examiner notes that the claimed pathway enzymes, cellular context and culture conditions of the instant application/claims and the claimed pathway enzymes, cellular context and culture conditions of the allowed US 12,146,176, (Tsuruta et al.,) patent are one and the same, and therefore, the claimed farnesene in the allowed US 12,146,176, (Tsuruta et al.,) patent encompasses and includes b-farnesene. Additionally the following reference, Farnesene, 3 pages downloaded on 07/27/2026 from https://en.wikipedia.org; clearly teaches and provides evidence that farnesene is a mixture of stereoisomers of a-farnesene and b-farnesene.
Therefore, amended claims 39-53 (dated 10/15/2024) of the instant application are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over 1-15 of reference patent US 12,146,176, (Tsuruta et al.,) in view of Farnesene, 3 pages downloaded on 07/27/2026 from https://en.wikipedia.org, when there is specifically disclosed embodiments in the reference patent that supports reference claims of the patent and falls within the scope of the claims 39-53 (dated 10/15/2024) herein i.e., “a method for producing a heterologous C5-C20 isoprenoid compound in a yeast host cell, the method comprising: (a) obtaining a plurality of yeast host cells that are capable of making the heterologous C5-C20 isoprenoid compound, each said yeast host cell comprising one or more heterologous nucleic acids capable of expressing each enzyme of the MEV pathway or each enzyme of the DXP pathway; (b) culturing the yeast host cells in media comprising glucose and glucose-converted ethanol and an ethanol-only feed, wherein the culturing includes a period of time where the host cells are carbon-limited to yield a fermentation reaction mixture comprising medium, cells, and the heterologous C5-C20 isoprenoid compound; and (c) recovering the heterologous C5-C20 isoprenoid compound from the medium, wherein the yeast host cells produce from 10 to 40 grams of the heterologous C5-C20 isoprenoid compound per liter of fermentation reaction mixture after 4 to 12 days of culturing, and wherein the heterologous C5-C20 isoprenoid compound is b-farnesene”, because it would have been obvious to one having ordinary skill in the art to modify claims of cited reference patent by selecting a specifically disclosed embodiment that supports those claims of the reference patent. One of ordinary skill in the art would have been motivated to do this because that embodiment is disclosed as being preferred embodiment within claims of cited reference patent i.e., claims 1-15 of reference patent US 12,146,176, (Tsuruta et al.,) in view of Farnesene, 3 pages downloaded on 07/27/2026 from https://en.wikipedia.org.
Allowable Subject Matter/Conclusion
None of the claims are allowable.
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/GANAPATHIRAMA RAGHU/ Primary Examiner, Art Unit 1652
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