DETAILED ACTION
Status of Application
Claims 1-20 are pending
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s election without traverse of Group 1, claims 1-19, drawn to a method of preparing a carrier on which a denitrifying microorganism and a biofilm-forming microorganism are immobilized, as submitted in communication filed on 06/23/2026 is acknowledged.
Upon further consideration, the previous restriction requirement between Groups I and II is hereby withdrawn. Claim 20 will be rejoined for examination on the merits.
Species Election was made without traverse of the genus Paracoccus as the denitrifying microorganism in the reply filed on 06/23/2026.
Claims 1-20 are at issue and will be examined to the extent they encompass the elected invention.
Priority
Acknowledgment is made of a claim for foreign priority under 35 U.S.C. 119(a)-(d) to KR 10-2023-0191853 filed on 12/26/2023. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 11/05/2024
are acknowledged. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Drawings
The drawings submitted on 11/05/2024 have been reviewed and are accepted by
the examiner for examination purposes.
Claim Rejections - 35 USC § 112(b) or Second Paragraph (pre-AIA )
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 13-14 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.
Claims 13-14 contain the trademark/trade name Tween®. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a surfactant and, accordingly, the identification/description is indefinite. Correction is required.
Claim Rejections - 35 USC § 112(a) or First Paragraph (pre-AIA )
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 1-19 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.
As stated in MPEP 2111.01, during examination, the claims must be interpreted as broadly as their terms reasonably allow.
Claims 1-19 are directed in part to denitrifying microorganisms and biofilm-forming microorganisms, wherein said denitrifying microorganisms are in the genus of Paracoccus, and wherein said biofilm-forming microorganisms are in the of genus Pseudomonas. See claim rejections under 35 usc 112(b) for claim interpretation.
While the specification in the instant application discloses the denitrifying microorganisms, Paracoccus versutus and Paracoccus denitrificans, and the biofilm-forming microorganism, Pseudomonas stutzeri, it provides no clue as to the structural elements required in any microorganism under the Paracoccus genus and any microorganism under the Pseudomonas genus that can be a denitrifying microorganism, a biofilm-forming microorganism, and can be used in the claimed method. No disclosure of a structure/function correlation has been provided which would allow one of skill in the art to recognize which microorganisms under the Paracoccus genus has denitrification activity, which microorganisms under the Pseudomonas genus has biofilm-forming activity, and can be used in the claimed method.
A sufficient written description of a genus of the microorganisms may be achieved by a recitation of structural features common to members of the genus, which features constitute a substantial portion of the genus. However, in the instant case, there is no recited structural feature which is representative of all the members of the genus of Paracoccus and Pseudomonas that can be used in the recited claims, and there is no information as to which are the structural elements of the microorganisms that are (i) essential for the recited denitrification, biofilm-forming activity, and carrier preparation, or (ii) a correlation between structure and function which would provide those unknown structural features. Furthermore, while one could argue that the species disclosed is representative of the structure of all the members of the genus of Paracoccus and Pseudomonas required, it is noted that the art teaches examples of how even microorganisms from the same genus can have different activities. For example, Harker et al. (International journal of systematic and evolutionary microbiology 48.2 (1998): 543-548.) teach that Paracoccus marcusii is unable to reduce nitrate (Abstract), while Saranathan et al. teaches that Paracoccus denitrificans are able to perform the reduction of nitrate (Page 159 [2]). Since minor structural differences may result in changes affecting microorganism function, and no additional information correlating structure with the desired functional characteristics has been provided, one cannot reasonably conclude that the species disclosed, including Paracoccus versutus, Paracoccus denitrificans, and Pseudomonas stutzeri, are representative of the structure of all the microorganisms that can be used by the claimed process. Therefore, one of ordinary skill in the art would not recognize from the disclosure that Applicant was in possession of the claimed invention.
Claims 1-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for preparing a carrier by immobilizing denitrifying microorganisms, Paracoccus versutus and Paracoccus denitrificans, and the biofilm-forming microorganism, Pseudomonas stutzeri, does not reasonably provide enablement for immobilizing any Paracoccus for denitrifying and any Pseudomonas for biofilm-forming in the recited method. 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 and/or use the invention commensurate in scope with these claims.
Factors to be considered in determining whether undue experimentation is required are summarized in In re Wands (858 F.2d 731, 737, 8 USPQ2nd 1400 (Fed. Cir. 1988)) as follows: 1) quantity of experimentation necessary, 2) the amount of direction or guidance presented, 3) the presence and absence of working examples, 4) the nature of the invention, 5) the state of 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 claims. The factors which have led the Examiner to conclude that the specification fails to teach how to make and/or use the claimed invention without undue experimentation, are addressed in detail below.
The breadth of the claims. Claims 1-19 broadly encompass a method for preparing a carrier on which a denitrifying microorganism and a biofilm-forming microorganism are immobilized; wherein said denitrifying microorganisms are a genus of Paracoccus, and wherein said biofilm-forming microorganisms are a of genus Pseudomonas. The enablement provided is not commensurate in scope with the claims due to the lack of knowledge regarding the structure/identity of any microorganisms under the Paracoccus genus that has denitrification activity and any microorganisms under the Pseudomonas genus that has biofilm-forming activity and can be used in the recited method to prepare a carrier. In the instant case, the specification enables carrier preparation by immobilizing Paracoccus versutus or Paracoccus denitrificans, and Pseudomonas stutzeri.
The amount of direction or guidance presented and the existence of working examples. The specification discloses immobilizing denitrifying microorganisms, Paracoccus versutus and Paracoccus denitrificans, and the biofilm-forming microorganism, Pseudomonas stutzeri. However, the specification fails to provide any clue as to the structural elements required in any microorganisms under the Paracoccus genus that has denitrification activity and any microorganisms under the Pseudomonas genus that has biofilm-forming activity and can be used in the recited method. No correlation between structure and function has been presented.
The state of prior art, the relative skill of those in the art, and the predictability or unpredictability of the art. The identity of a microorganism determines its structural and functional properties. While the art discloses a limited number of denitrifying microorganisms and biofilm-forming microorganisms that can be used in the claimed invention, neither the specification nor the art provide a correlation between structure and function such that one of skill in the art can envision the structure/identity of any microorganism under the Paracoccus genus that has denitrification activity, and any microorganism under the Pseudomonas genus that has biofilm-forming activity and can be used in the recited method to prepare a carrier. The art clearly teaches that how unpredictable it is to determine the activity and function of a microorganism by its genus. For example, Harker et al. (International journal of systematic and evolutionary microbiology 48.2 (1998): 543-548.) teach that Paracoccus marcusii is unable to reduce nitrate (Abstract), while Saranathan et al. teach that Paracoccus denitrificans are able to perform the reduction of nitrate (Page 159 [2]).
The quantity of experimentation required to practice the claimed invention based on the teachings of the specification. While methods of determining microorganisms’ ability to denitrify, form biofilm, and be used for carrier preparation were known in the art at the time of the invention, it was not routine in the art to screen by a trial and error process for an essentially infinite number of microorganisms to find a microorganism with the desired denitrification activity and further determine which microorganism could be used with the denitrifying microorganism to form biofilm and prepare a carrier for the recited method. In the absence of (i) a rational and predictable scheme for selecting those microorganisms most likely to have the desired functional features, (ii) a correlation between structure and the recited denitrification activity one of skill in the art would have to test an infinite number of microorganisms.
Therefore, taking into consideration the extremely broad scope of the claim, the lack of guidance, the amount of information provided, the lack of knowledge about a correlation between structure and the desired function, the high degree of unpredictability in the prior art, one of ordinary skill in the art would have to go through the burden of undue experimentation in order to practice the claimed invention. Thus, Applicant has not provided sufficient guidance to enable one of ordinary skill in the art to make and use the invention in a manner reasonably correlated with the scope of the claims.
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.
Claims 1-5 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hobel et al. (WO 2022/229224 A1 published 11/03/2022; hereby “Hobel”).
Claims 1-5 and 20 as interpreted is directed in part to a method of preparing a carrier on which a denitrifying microorganism and a biofilm-forming microorganism are immobilized, the method comprising: mixing a polyvinylalcohol, a denitrifying microorganism, and a biofilm-forming microorganism to prepare a mixture; and contacting the mixture and a solution containing a crosslinking agent to prepare the carrier on which a denitrifying microorganism and a biofilm-forming microorganism are immobilized; wherein the denitrifying microorganism is a microorganism of the genus Paracoccus; wherein the biofilm-forming microorganism is a microorganism of the genus Pseudomonas; wherein the mixing comprises preparing a solution containing polyvinylalcohol dissolved by heating a polyvinylalcohol-containing solution, wherein the mixing comprises contacting the denitrifying microorganism and the biofilm-forming microorganism and a liquid medium to prepare a microbial mixture, and a polyvinylalcohol carrier on which a denitrifying microorganism and a biofilm-forming microorganism are immobilized, wherein the denitrifying microorganism is Paracoccus versutus, and the biofilm-forming microorganism is Pseudomonas stutzeri.
Hobel teaches an invention that relates to microorganisms immobilized on a polymer support for nitrogen removal from drinking water or wastewater (Page 1 [1]).
Hobel teaches a method of denitrifying water comprising adding to the wastewater a polymer support of immobilized microorganisms, wherein the polymer support comprises said microorganisms immobilized within a polymer hydrogel; wherein the polymer hydrogel comprises polyvinyl alcohol (PVA) polymeric chains cross linked with glutaraldehyde; and water or an aqueous solution, typically wherein the microorganism is selected from the group consisting of Pseudomonas lini, Paracoccus pantotrophus, Paracoccus versutus and combinations thereof (Page 3 [8]- Page 4). Hobel teaches that the microorganisms immobilized within the polymer hydrogel may also be selected from the group consisting of Paracoccus versutus, Paracoccus denitrificans, Pseudomonas nitroreducens, and Pseudomonas stutzeri (Page 15 [5]). Hobel teaches the mixing of said water and polymer support of immobilized microorganisms (Page 3 [5]). Hobel teaches that the microbial biomass (bacteria) can be in the form of activated sludge or a fixed biofilm on a carrier or bearing material (Page 31 [3]). Hobel teaches that the PVA was autoclaved to be dissolved in preparation of the polymer/microbe solution (Page 39, Example 1 [1]).
Therefore, the teachings of Hobel et al. anticipate the instant claims as written/interpreted.
Claim Rejections - 35 USC § 103 (AIA )
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.
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 (i.e., changing from AIA to pre-AIA ) 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 6-9, 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Hobel et al. (WO 2022/229224 A1 published 11/03/2022; hereby “Hobel”), as applied to claims 1-5 and 20 above, and in view of Guo et al. (RSC advances 8.38 (2018): 21558-21565; hereby “Guo”), in further view of Song et al. (Enzyme and Microbial Technology 37.6: 567-573. published 07/12/2005; hereby “Song”).
As shown above, Hobel teaches the method and product of claims 1-5 and 20.
Additionally, Hobel teaches a solution of PVA and Na-alginate and microorganisms (75% w/w polymer + 25% w/w microbes) (FIG 2).
Hobel teaches that the concentration of microorganisms within the polymer hydrogel, known as the microbial load, is typically in the range of 5 g/kg bead to 250 g/kg, typically 10 g/kg to 150 g/kg (Page 15 [3]).
Regarding claim 6-7, Hobel does not expressly teach the exact microorganism ratios.
Regarding claim 8, Hobel does not expressly teach the exact w/v of polyvinylalcohol.
Regarding claim 9, Hobel does not expressly teach a PVA solution comprising xanthan gum and the exact w/v of xanthan gum based on a total volume of the polyvinylalcohol-containing solution.
Regarding claims 12-14, Hobel does not expressly teach a solution containing a crosslinking agent that comprises a surfactant; wherein the surfactant is Tween; wherein; wherein the solution containing the crosslinking agent contains about 0.1 %(w/v) to about 0.5 %(w/v) of Tween®, based on a total volume of the solution.
Guo teaches the co-culturing of two denitrifying bacterial strains (Acinetobacter sp. GA and Pseudomonas sp. GP) to investigate the synergy of carbon and nitrogen removal (abstract). Guo teaches that the optimal inoculation ratio of strain GA to strain GP was about 50 (Page 21564 [2]). Guo teaches that the co-culture of different functional bacteria can is a method for improving the performance of denitrifying microorganisms for pollutant removal (abstract).
Song teaches microorganism immobilization methods including cell suspension in distilled water mixed with PVA aqueous solution wherein the final concentration of PVA solution was from 2.5 to 15% (Page 569, Section 2.2. Immobilization methods). Song teaches microorganism immobilization methods wherein Xanthan gum was added into the PVA solution to form spherical beads (Page 569, Section 2.2. Immobilization methods). Song teaches that the final concentration of Xanthan gum was 0-0.5% (Page 569 Section: 2.2. Immobilization methods). Song teaches microorganism immobilization methods wherein Xanthan gum was added into the PVA solution to form spherical beads; wherein the resulting mixture was dropped into the saturated boric acid solution, to form spherical gel beads (Page 569 Section: 2.2. Immobilization methods). Song teaches that Tween 20, a non-toxic and non-ionic surfactant, was also added into boric acid solution to improve the permeability of the membrane capsule wall (Page 569 Section: 2.2. Immobilization methods). Song teaches that the final concentration of Tween 20 was 0–0.3% (Page 569 Section: 2.2. Immobilization methods).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Guo with the teachings of Hobel by selecting an optimal ratio for the denitrifying microorganism and the biofilm forming organism. A person of ordinary skill in the art is motivated to prepare a carrier taught by Hobel and optimize the denitrifying microorganism to biofilm-forming microorganism ratios because Guo teaches that the ratio of microorganisms in a co-culture affects denitrification performance. Accordingly, one of ordinary skill in the art would recognize that the relative proportion of microorganisms in a mixed culture is a result effecting variable that can be optimized to improve dentification removal. One of ordinary skill in the art has a reasonable expectation of success at arriving to the claimed ratios because all that is required is employing routine optimization for carrier performance.
It would have been further obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the immobilization methods of Song with the teachings of Hobel to use Xanthan gum with a final concentration of 0-0.5%, Tween 20 with a final concentration of 0–0.3%, and a final concentration of PVA solution that is 2.5-15%. A person of ordinary skill in the art is motivated to add Xanthan gum and Tween 20 to the PVA solution because Xanthan gum helps form the spherical bead carriers in the PVA solution and Tween 20 improves cell permeability as taught by Song. Furthermore, one of ordinary skill could optimize the PVA, Tween 20, and Xanthan gum concentration to also arrive at the recited concentrations through routine experimentation. One of ordinary skill in the art has a reasonable expectation of success at arriving to adding Xanthan gum with the claimed concentration and Tween 20 with the claimed concentration, to the PVA solution with the claimed because all that is required is employing the known immobilization method of Song to prepare the carrier beads for the immobilization method taught in Hobel. Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention.
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Hobel et al. (WO 2022/229224 A1 published 11/03/2022; hereby “Hobel”), as applied to claims 1-5 and 20 above, in view of Dinh et al. (International Journal of Science and Engineering 7.1: 41-47 published 07/08/2014; hereby “Dinh”).
As shown above, Hobel teaches the method and product of claims 1-5 and 20.
Regarding claim 10-11, Hobel does not expressly teach a crosslinking agent comprising boric acid; wherein the crosslinking agent contains about 3%(w/v) to about 15%(w/v) of boric acid, based on a total volume of the solution.
Dinh teaches a method for bacterial immobilization wherein Boric acid solution was used to crosslink the PVA, which a simpler and less energy-intensive method for PVA immobilization and produced elastic beads of high strength and durability (Page 42 [1]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the crosslinking agent, glutaraldehyde, taught in Hobel with Boric acid as taught by Dinh.
A person of ordinary skill in the art is motivated to substitute glutaraldehyde with Boric acid because Dinh teaches that Boric acid less energy-intensive method for PVA immobilization. Specifically, regarding claim 11, one of ordinary skill could optimize the w/v of boric acid to arrive at the recited w/v of boric acid through routine experimentation, as the w/v of boric acid needed would depend on the microorganism used. One of ordinary skill in the art has a reasonable expectation of success at arriving to substituting glutaraldehyde with Boric acid for a crosslinking agent because all that is required is switching out one crosslinking agent with another known crosslinking agent, boric acid. Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention.
Claims 15-19 is rejected under 35 U.S.C. 103 as being unpatentable over Hobel et al. (WO 2022/229224 A1 published 11/03/2022; hereby “Hobel, in view of Zhang et al. (Bioresource technology 260: 321-328 published 03/31/2018; hereby “Song”), and in further view of Nadeem et al. (FEMS microbiology ecology 83.3: 672-684 published 10/29/2012; hereby “Nadeem”), and as evidenced by Ferguson et al. (Antonie van Leeuwenhoek 66.1 (1994): 89-110 published March 1994; hereby “Ferguson”).
The teaching of Hobel is discussed above.
Regarding claims 15-19, Hobel does not expressly teach reducing an amount of nitric oxide to molecular nitrogen.
Regarding claim 19, Hobel does not expressly teach incubating the polyvinylalcohol carrier on which the denitrifying microorganism and the biofilm-forming microorganism are immobilized under anaerobic conditions.
Hobel teaches denitrification (reduction of nitrate and/or nitrite to elemental nitrogen (N2) by a community of denitrifying microorganisms), thereby removing the nitrogen from the water (Page 2 [2]). Denitrification in bacteria comprises a series of four reduction reactions; for nitrate, nitrite, nitric oxide and nitrous oxide; wherein Nitrogen gas is the final product as evidenced by Ferguson (abstract). Denitrification is generally taken to be an anaerobic process as evidenced by Ferguson (Page 89 [1]).
Nadeem teaches the denitrification of NO in Paracoccus denitrificans to produce N2 (abstract).
Zhang teaches that Paracoccus versutus exhibit excellent aerobic and anaerobic denitrification (abstract). Zhang teaches that Paracoccus versutus exhibit higher anaerobic denitrification compared to aerobic denitrification (abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Hobel to reduce NO in a sample using Paracoccus versutus. A person of ordinary skill in the art is motivated to reduce NO in a sample using Paracoccus versutus because Nadeem teaches that denitrifying bacteria metabolize NO during denitrification, while Zhang teaches that Paracoccus versutus effectively performs denitrification under anaerobic conditions. Since the teachings of Hobel provides an immobilized denitrification method, Nadeem establishes NO as a substrate in the denitrification pathway, and Zhang shows Paracoccus versutus to be well suited for denitrification under anaerobic conditions, one of ordinary skill in the art has a reasonable expectation of success at arriving to reducing nitric oxide in a sample using Paracoccus versutus. Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention.
Conclusion
No claim is in condition for allowance.
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/S.L.S./Examiner, Art Unit 1652
/ROBERT B MONDESI/Supervisory Patent Examiner, Art Unit 1652
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