DETAILED ACTION
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 21, 2026 has been entered.
Application Status and Withdrawn Rejections
Applicant’s amendment filed July 21, 2026, amending claim 1 is acknowledged. Claims 1, 3-4, 6-7, 9-10, 14-17 and 20-21 are pending. Claims 9-10 and 14-17 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim.
Accordingly, claims 1, 3-4, 6-7 and 20-21 are under examination.
The amendment to claim 1 incorporates the limitations from claim 20, which was not canceled. Therefore claim 1 as amended is equivalent to claim 20.
Applicant's amendments and arguments have been thoroughly reviewed, but are not persuasive to place the claims in condition for allowance for the reasons that follow.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 20 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 20 depends from claim 1 and recites “wherein the GPCR produced in the first prokaryotic cell is a trace amine associated receptor (TAAR)”. However, claim 1 recites the “GPCR produced in the first prokaryotic cell is an olfactory receptor and wherein the olfactory receptor is a trace amine-associated receptor (TAAR)”. Therefore claim 1 is already limited such that the produced GPCR is an TAAR. Claim 20 does not further limit claim 1 from which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 112(b)
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.
Claim 21 is 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.
Claim 21 recites “wherein the vector encoding the membrane scaffold protein includes…”, which lacks clear antecedent basis. Claim 21 depends from claim 1, which recites producing a membrane scaffold protein in a prokaryotic cell. However, there is no requirement for the membrane scaffold protein to be encoded on a vector. As such, it is not clear what “the vector encoding the membrane scaffold protein” is referring to.
To overcome this rejection, it is suggested that claim 21 recites “The method of claim 1, wherein the membrane scaffold protein is fused to a polyhistidine tag” or preferably since the membrane scaffold protein is limited to ApoA-I, “The method of claim 1, wherein the ApoA-I protein is fused to a polyhistidine tag”.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-4, 6-7 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Yang (Yang and Park, "Characterization of TAAR13c Using Nanodiscs and Cell-Based Assay System for the Selective Detection of Death-Associated Odor.” 2016 Korean Society of Biological Engineering Spring Conference and International Symposium - Conference Materials (April 2016): 270-270), in view of Genbank (NP_001076509.1, trace amine-associated receptor 13c [danio rerio], https://www.ncbi.nlm.nih.gov/protein/131889166 [retrieved January 16, 2026]), Inagaki (Inagaki et al., Journal of Molecular Biology (2012) 417:95-111; of record), White (White et al., FEBS Letters (2004) 564:289-293, of record), Michalke (Michalke et al., Analytical Biochemistry (2009), 386: 147-155; of record), Sligar2008 (Nanodisc Protocols (March 2008); http://publish.illinois.edu/sligar-lab/files/2020/01/Nanodisc_Protocols.pdf, retrieved from internet [retrieved March 28, 2022]; of record), Sligar2004 (US 20040053384 A1; of record) and Sirtori (US 5876968 A1, published March 2, 1999; of record).
Regarding claims 1, 4 and 20, Yang teaches Trace amine-associated receptors (i.e., olfactory receptors), including TAAR13c, are G protein-coupled receptors (GPCRs) (Abstract). Yang teaches expressing and purifying TAAR13c from E. coli cells, and then reconstituting the TAAR13c receptor in a nanodisc (Abstract). Yang teaches confirming the biological characteristics of the TAAR13c-containing nanodisc using a tryptophan fluorescence assay (i.e., confirming maintenance of TAAR13c function in the nanodiscs) (Abstract).
Yang does not teach how the TAAR13c receptor was purified from E. coli. Yang does not teach the components of the nanodisc or how the nanodisc was assembled.
Genbank teaches the amino acid sequence of TAAR13c, which is 341 amino acids in length (pages 1 and 3).
Inagaki teaches a method of making a nanodisc comprising the G-protein coupled receptor (GPCR) protein, NTS1, imbedded in lipids, and surrounded by MSP1D1 (Figure 1; pages 105-106; Abstract). Regarding step i), Inagaki teaches that NTS1 was produced and purified from E. coli (i.e., a prokaryotic host cell) (page 105, ¶4; Figure 1b). Inagaki teaches that NTS1 is tagged with a maltose binding protein (MBP) and a H10 polyhistidine tag (page 105, ¶4). Inagaki teaches the NTS1 was purified as described in White et al., (page 105, ¶4). Regarding step ii), Inagaki teaches that MSP1D1 is a membrane scaffolding protein (page 97, ¶2), which was expressed and purified from BL21Gold(DE3) cells (i.e. a second prokaryotic host cell) (page 105, ¶8 through page 106, ¶2; Figure 1b). Inagaki teaches MSP1D1 is an N-terminal deletion of Apoprotein A-1 (page 105, ¶8). Inagaki teaches MSP1D1 surrounds the lipid-protein complex (Figure 1A). Inagaki demonstrates the purity of NTS1 and MSP1D1 by SDS-PAGE analysis before assembly of the nanodisc (Figure 1b, lanes 2-3). Regarding step iii), Inagaki teaches combining purified NTS1 together with POPC and POPG lipids mixed in a 1:1 ratio to form a mixture (page 106, ¶3-4; Figure 1b). Regarding step iv), Inagaki teaches MSP1D1 was added to the lipid-NTS1 mixture and incubated for 1 hour to form a nanodisc (page 106, ¶4, Figure 1b). Inagaki also teaches "The nanodisc technique has previously been used to study various aspects of GPCR function" (page 96, ¶5). Inagaki also teaches that NTS1 is ~ 35 kDa (Fig. 1). Inagaki teaches NTS incorporated into nanodiscs retains its functions (Figs 4-5).
Regarding step i-1), White teaches that an expression vector encoding NTS1 was introduced into E. coli (Section 2.1). Regarding step i-2), White teaches NTS1 expression was induced by incubating with IPTG (Section 2.1). Regarding steps i-3 and i-4), White teaches NTS1 was purified from E. coli by homogenization and sonication (i.e., released to the outside of the cell) and solubilized in buffer containing the detergent CHAPS (Sections 2.3-2.4). Further regarding step i-4), White teaches NTS1 was purified using an Ni-NTA column (Section 2.3.3).
Regarding the H10-GPCR-expression vector not containing a GST or MBP tag, Michalke teaches expressing GPCRs as inclusion bodies in sufficient quantities for subsequent refolding solubilization and purification (Abstract). Michalke teaches systematically testing purification systems (i.e., fusion tags, bacterial strains, fermentation conditions, etc.) for GPCRs (page 148, ¶6). Michalke teaches cloning the GPCRs in Gateway vectors comprising coding sequences for a polyhistidine tag and no other fusion tag (i.e., the vector encoding the GPCR does not comprise an MBP or GST) (Fig. 1, pDEST17, pDEST17oi, pET15N2, and pET15C2). Michalke teaches GPCRs tagged with only a polyhistidine tag had high expression in several E. coli strains (Table 2, N15, C15, N15+C15, Nis and His-OI rows). Michalke teaches more GPCRs were expressed at higher levels when tagged solely with a polyhistidine tag versus with a His-MBP tag (Table 2, panel A, compare His to His-MBP). Michalke teaches sufficient quantities of His-tagged GPCRs were purified using flask and fermenter conditions (Table 3, pDEST17, pDEST17oi and pET vectors). Michalke teaches that the GPCRs were compartmentalized in inclusions bodies, solubilized, and purified from them (page 152, Fig 4). Michalke teaches the empirical rule that the expression threshold for GPCR expression as IBs in E. coli is ~ 50 kDa (page 154, ¶1).
Sligar2008 teaches general guidelines for making nanodiscs (page 4). Sligar2008 teaches "[t]he general idea is quite simple - cholate-solubilized phospholipids are mixed with MSP and detergent solubilized membrane protein, everything is incubated together, then the detergents are removed (usually with BioBeads), and the self-assembly takes place." (page 4, ¶1). Sligar2008 teaches "the important parameters are: (1) lipid to MSP ratio, (2) temperature, (3) choice of detergent and (4) the final lipid and detergents concentrations in the reconstitution mixture." (page 4, ¶1). Sligar2008 also teaches that "the choice and concentration of the secondary detergent depend entirely on the membrane protein, and have to be worked out for every new target." (page 4, ¶2). Sligar2008 also teaches "[s]ince the entire procedure can be executed quickly, it is not necessary that the target protein be stable in the detergent for very long periods of time (page 4, ¶2). Sligar2008 also teaches mixing the nanodisc reconstitution mixture (page 5, ¶1) and incubating (i.e., settling) the mixture for up to 2 hours (page 5, ¶2). Finally, Sligar2008 teaches that removing some detergents like triton requires more BioBeads for removal (page 5, ¶2).
Sligar2004 teaches methods of producing nanodiscs comprising membrane proteins (Abstract). Sligar2004 teaches producing and purifying tethered and embedded membrane proteins and membrane scaffold proteins from E. coli ([0120]-[0125], [0129] and [0138]). Sligar2004 assembling a nanodisc by mixing the membrane proteins, MSP and lipids together ([0138]). Sligar2004 lists a variety of GPCRs that can be incorporated into nanodiscs, including olfactory receptors ([0066]-[0067], [0149]). Sligar2004 also teaches GPCRs that can bind amines ([0066]).
Sirtori teaches reconstituting high-density lipoproteins by mixing ApoA-I protein with phospholipids (Col. 14, lines 23-43). Sirtori teaches that protein was added to the phospholipid/cholate mixture and the resulting mixture was stirred at room temperature and then incubated overnight at 4 °C (Col. 14, lines 36-39).
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to have produced Yang’s TAARC13c in E. coli and incorporated into the nanodisc using the nanodisc-assembly method of Inagaki modified by 1) having removed the MBP tag from the MBP/His10-tag on the receptor and 2) using Michalke’s His-GPCR purification method. It would have amounted to producing a known GPCR by known methods using a simple substitution of one known tag set and purification method for producing purified GPCRs from E. coli for another known tag and method to yield predictable results. One would have been motivated to use the His tag, without the MBP, and purification method of Michalke to produce Yang’s TAARC13c in E. coli because Michalke teaches that a sole His tag is sufficient for GPCR expression and purification from E. coli and sometimes is even superior to a dual MBP-His tag. The skilled artisan would have a reasonable expectation that His-TAAR13c could be expressed in inclusion bodies and purified from them in E. coli because Michalke teaches that proteins below 50 kDa are predicted to be amenable to such expression/purification. Based on the amino acid sequence from Genbank, TAAR13c is 38.5 kDa. It also would have been predictable that His-TAARC13c purified from inclusion bodies could be integrated into Inagaki’s nanodisc because Inagaki’s NTS1 is similar in size to TAAR13c and also contained a polyhistidine tag.
It also would have been obvious to have allowed the GPCR - lipid mixture to settle. The additional step would have amounted to a simple combination of known method steps for the common purpose of reconstituting membrane proteins. Both Sligar2008 and Sirtori teach "incubating" the mixtures or proteins and lipids, which is substantially the same as "settling". One would have a reasonable expectation that a nanodisc would self-assemble once the surfactant was removed if the receptor-lipid mixture were allowed to settle because Sligar2008 identifies other instances in the "quite simple" method where the mixtures are incubated and mixed together.
Finally, the skilled artisan would have a reasonable expectation that the expression, purification and assembly method rendered obvious above would maintain TAAR13c’s function in the nanodisc because 1) SIigar2004 generally teaches that olfactory receptors can be imbedded in nanodiscs and retain function, and 2) Inagaki demonstrates a different GPCR of approximately the same size as TAAR13c integrated into a nanodisc and retaining its receptor function.
Regarding claim 3, Inagaki teaches removing the cholate/detergent from the mixture by mixing it with Bio Beads for 2 hours at 4 °C followed by centrifugation (page 106, ¶4; Figure 1a). Inagaki also teaches after centrifugation, the mixture was comprised of nanodiscs containing NFT and empty nanodiscs, indicating that unassembled proteins were removed (page 106, ¶4).
Regarding claim 6, Inagaki teaches incubating the GPCR and the lipids together at 4 °C for 1 hour.
Regarding claim 7, Inagaki teaches the lipids were POPC and POPG mixed in a 1:1 ratio (page 106, ¶3).
Regarding claim 21, Inagaki teaches the MSP1D1 expression vector includes a coding sequence for heptahistidine (H7, i.e., polyhistidine) tag fused to the MSP1D1 coding sequence (page 105, last ¶).
Response to Arguments - §103
Applicant argues that no cited reference teaches or suggests performing the complete claimed method. Applicant then summarizes what each of Inagaki, Michalke, White, Sligar2004, Sligar2008, Genbank and Sirtori disclose (Remarks, section A). This argument has been fully considered but is not persuasive. The rejection is a §103 rejection for obviousness based on combining the references’ teachings. If a single reference had taught or suggested “the complete claimed method”, then the rejection would have been a rejection under §102 or a one-reference §103. As such, Applicant’s arguments do not address the merits of the rejection. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues that Yang’s method only discloses that a TAAR13c was expressed and purified from E. coli and reconstituted using nanodiscs, without disclosing the method steps. Applicant argues that Examiner cannot simultaneously acknowledged that Yang’s methods are entirely undisclosed while also using Yang’s successful outcome as evidence of a reasonable expectation of success for the specific combination of Michalke’s inclusion body purification method and Inagaki’s NTS1-based nanodisc assembly protocol (Section B). This argument has been fully considered but is now moot. Yang’s success of manufacturing TAAR13c-containing nanodiscs was removed from the functional predictability analysis (paragraph 29 above). Nevertheless, the functionality of a TAAR in a nanodisc is still predictable based on 1) Sligar2004’s teachings that olfactory receptors can be imbedded in nanodiscs and retain function, and 2) Inagaki’s success of incorporating a functional GPCR of approximately the same size as TAAR13c into a nanodisc.
Applicant argues that the combination reflects impermissible hindsight because the rejection relies on eight references to reconstruct the method for producing a function TAAR-containing nanodisc, and that the cited art provides no motivation to use the claimed method to produce Yang’s nanodiscs (Section C). This argument has been fully considered but is not persuasive. First, in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, each of the steps in the claimed method are well-known steps for GPCR purification from bacterial cells, well-known steps for MSP purification from bacterial cells, and well-known steps for nanodisc assembly. Thus, no knowledge gleaned only from applicant’s disclosure was used. Second in response to applicant's argument that the examiner has combined an excessive number of references, reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991). Finally, the rejection provides ample motivations for use and/or combination of each purification/assembly step. For instance, in regards to a single His tag, Michalke teaches it is sufficient for GPCR purification and sometimes provides superior yield over MBP-His dual tag.
Applicant argues that TAARs are a phylogenetically and functionally distinct subfamily of olfactory GPCRs and their expression and purification in prokaryotic systems presents distinct challenges form other GPCRs, including domain stability, inclusion body solubilization requirements, and refolding behavior (Section D). This argument has been fully considered but is not persuasive. First, it is merely arguments of counsel without evidence. Arguments of counsel cannot take the place of factually supported objective evidence. MPEP 716.01(c). Applicant should provide evidence of the challenges and/or differences between purification methods of the different GPCRs. Second, it does not appear that any of the “differences” in purification method or solubilization steps are recited in the claims. Each of the claimed steps were taught in the prior art for different GPCRs. It does not appear that TAARs require new and/or nonobvious purification or assembly steps, since each of the claimed method steps are taught in the prior art for other GPCR proteins.
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE KONOPKA whose telephone number is (571)272-0330. The examiner can normally be reached Mon - Fri 7- 4.
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/CATHERINE KONOPKA/Primary Examiner, Art Unit 1635
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