DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Priority
The priority date of the instant application is the filing date of 11/562,503 which was filed on 11/22/2006.
Final Rejection
Claims 1-13 are pending. Claim 1 is independent. No claim is amended in the response filed 2/202/2026.
The rejection of claims 1, 3-7 under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Levy et al. (GB 1537086) is maintained.
The rejection of claims 1-7 and 13 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Bickerstaff et al. “Immobilization of Enzymes and Cells” in view of Mansfield et al. “Site-specific and random immobilization of thermolysin-like proteases reflected in the thermal inactivation kinetics” is maintained.
The rejection of claims 8-9 under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Bickerstaff et al. “Immobilization of Enzymes and Cells” in view of Mansfield et al. “Site-specific and random immobilization of thermolysin-like proteases reflected in the thermal inactivation kinetics” as applied to claims 1-7 and 13 above, and further in view of Saito et al. JP2006095452A Google Patents Translation is maintained.
The rejection of claims 10-12 under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Bickerstaff et al. “Immobilization of Enzymes and Cells” in view of Mansfield et al. “Site-specific and random immobilization of thermolysin-like proteases reflected in the thermal inactivation kinetics” and Saito et al. JP2006095452A Google as applied to claims 1-9 and 13 above, and further in view of Nakamoto et al. “A lift of method for patterning enzyme immobilized membranes in multi-biosensors” is maintained.
Response to Arguments
Applicant's arguments filed 2/20/2026 have been fully considered but are not persuasive. The remarks dated 2/20/2026 pages 4-7 urge that Levy, pg. 2, line3 109-115) fail to teach covalently binding the enzyme to the substrate with a single covalent bond, it also teaches away from covalent binding at all.
Contrary to Applicant’s arguments, the rejection is maintained below because Levy et al. page 2, left column, lines 7-15 copied herein:
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Thus, Levy teach a method of immobilizing an enzyme comprises a covalent binding in which an enzyme such as glucoamylase, trypsin, papain, pronase, amylase, glucose oxidase, pepsin, rennin, fungal protease or lactase is immobilized by covalent attachment to polymeric material. This method may also be combined with the aforesaid immobilization procedures. See also page 3,ln.72-75 copied herein:
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teaching covalent bonding of enzyme so-adsorbed to pendant functional moieties of said organic polymeric material.
And see page 4,ln.115-120
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teaching the enzyme being covalently bound to the pendant functional moieties, derived from the bifunctional monomer added using the second solution referred to earlier conveniently will comprise such well-known reactive moieties as amino, hydroxyl, carboxy, thiol or carbonyl moieties. Thus, the argument that the cited portions of Levy do not describe a single covalent bond binding any of the claimed active groups cannot be found persuasive, because Levy teach the same enzyme (encompassing the protein of claim 1) covalently bound to the same amino, hydroxyl, carboxy, thiol or carbonyl moieties encompassing the active group categories in claim 1.
On pages 7-9, Applicant’s urge that neither Bickerstaff nor Mansfield teach a single covalent bond directly linking an enzyme to a substrate. Contrary to Applicant’s arguments Bickerstff page 5 under 2.2 Covalent binding copied herein:
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which teaching in Bickerstaff is combined with Mansfield title and page 189, right col. paragraph 2, copied herein teaching
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thus, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed process for stabilizing a protein against thermal inactivation because Bickerstaff et al. disclose methods of immobilizing a protein including by covalent bond as claimed and Mansfield et al. teach both covalent and non-covalent immobilization processes stabilize a protein against thermal inactivation. Accordingly the rejections are maintained below.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-7 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Levy et al. (GB 1537086).
Levy et al. teach the immobilization of the enzymes provides a more favourable or broader environmental stability, a minimum of effluent problems and materials handling as well as the possibility of upgrading the activity of the enzyme itself which teaching encompasses the claim language to stabilizing a protein against thermal inactivation. See page 1, right column, lines 65-75.
Levy et al. encompass claim 1 limitation to binding a protein to the surface of a solid substrate by teaching the enzyme is directly adsorbed on the surface of a support, the binding forces which result between the enzyme and the carrier support are often quite weak, See page 2, left column, lines 22-25.
Levy et al. reads upon claim 1 limitation to the protein bound to the surface by one covalent bond directly linking an active group of the protein and an active group of said substrate selected from the group consisting of alcohol, thiol, carboxylic acid, anhydride, epoxy, and ester by Levy teaching a method of immobilizing an enzyme comprises a covalent binding in which an enzyme such as glucoamylase, trypsin, papain, pronase, amylase, glucose oxidase, pepsin, rennin, fungal protease or lactase is immobilized by covalent attachment to polymeric material. This method may also be combined with the aforesaid immobilization procedures. See page 2, left column, lines 7-15. Also see page 3,ln.72-75 teaching covalent bonding of enzyme so-adsorbed to pendant functional moieties of said organic polymeric material and page 4,ln.115-120 teaching the enzyme being covalently bound to the pendant functional moieties, derived from the bifunctional monomer added using the second solution referred to earlier conveniently will comprise such well-known reactive moieties as amino, hydroxyl, carboxy, thiol or carbonyl moieties.
Limitation to wherein said bond of the protein to the solid substrate stabilizes the protein against thermal inactivation is met by Levy et al. teaching the enzyme being covalently bound to the functional group as well as concomitantly adsorbed on the matrix. And Levy et al. teach it will be appreciated from the Examples which follow that a relatively stable enzyme conjugate having high activity and stability. See page 5, left column, lines 1-8.
Levy does not explicitly teach the bond of the protein to the solid substrate stabilizes the protein against thermal inactivation as is required by claim 1.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to arrive at the claimed process for stabilizing a protein as required by claim 1 because Levy et al. teach a method of immobilizing an enzyme comprises a covalent binding in which an enzyme such as glucoamylase, trypsin, papain, pronase, amylase, glucose oxidase, pepsin, rennin, fungal protease or lactase is immobilized by covalent attachment to polymeric material which immobilization upgrades the enzyme activity and provides a more favourable broader environmental stability in general.
Regarding claims 3,5-6, see page 2,ln.97-104 teaching the covalent linkage of the enzyme to the carrier must be accomplished through functional groups on the enzyme which are non-essential for its catalytic activity such as free amino groups (encompassing claim 5 and the N-terminus of claim 6), carboxyl groups, hydroxyl groups, phenolic groups or sulfhydryl groups. These functional groups will also react with a wide variety of other functional groups such as aldehydo, isocyanato, acyl, diazo, azido, anhydro and activated ester (encompassing claim 3), to produce covalent bonds. See page 2,ln.104-107.
The surface of claim 4, is taught by Levy et al. teaching the enzyme being covalently 1 coupled to a glass carrier is commonly known. See the sentence linking pages 2-3.
The enzyme of claim 7 is met by Levy et al. teaching immobilizing an enzyme comprises a covalent binding in which an enzyme such as glucoamylase, trypsin, papain, pronase, amylase, glucose axidase, pepsin, rennin, fungal protease or lactase is immobilized by covalent attachment to polymeric material. See page 2,ln.7-14.
Claims 1-7 and 13 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Bickerstaff et al. “Immobilization of Enzymes and Cells” in view of Mansfield et al. “Site-specific and random immobilization of thermolysin-like proteases reflected in the thermal inactivation kinetics” in view of PDFs are attached.
Bickerstaff et al. teach claim 1 limitation to binding a protein to the surface of a solid substrate by teaching the bond is normally formed between functional groups present on the surface of the support and functional groups belonging to amino acid residues on the surface of the enzyme. See pg.5, under 2.2 Covalent Binding.
Bickerstaff et al. teach claim 1 limitation to the immobilization of enzyme includes protein bound to the surface by one covalent bond directly linking an active group of the protein and an active group of said substrate by teaching on page 6, last paragraph, the enzyme is added in a coupling reaction to form a covalent bond with the support material. Normally the activation reaction is designed to make the functional groups on the support strongly electrophilic (electron deficient). In the coupling reaction, these groups will react with strong nucleophiles (electron donating), such as the ammo (NH*) functional groups of amino acids on the surface of the enzyme, to form a covalent bond.
Bickerstaff et al. teach claim 1 limitation to wherein the active group of said substrate is selected from the group consisting of alcohol, thiol, carboxylic acid, anhydride, epoxy, and ester by teaching on page 5 2.2. Covalent Binding method of immobilization (see Fig. 1) involves the formation of a covalent bond between the enzyme/cell and a support material. The bond is normally formed between functional groups present on the surface of the support and functional groups belonging to amino acid residues on the surface of the enzyme. A number of amino acid functional groups are suitable for participation in covalent bond formation. Those that are most often involved are the amino group (NH*) of lysine or arginine, the carboxyl group (CO*H) of aspartic acid or glutamic acid, the hydroxyl group (OH) of serine or threonine, and the sulfydryl group (SH) of cysteine (14).
Bickerstaff et al. do not teach claim 1 limitation to wherein said covalent bond of the protein to the solid substrate stabilizes the protein against thermal inactivation.
Mansfield et al. teach that site-specific and random immobilization of thermolysin-like proteases reflects in the thermal inactivation kinetics, teaching stronger stabilization including thermal stability. See title and page 189, 2nd paragraph right column) teaching that both covalent and non-covalent immobilization processes stabilize a protein against thermal inactivation.
Bickerstaff et al. and Mansfield et al. are considered to be analogous to the claimed invention because both are in the same field of covalent bond of a protein to a substrate.
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed process for stabilizing a protein against thermal inactivation because Bickerstaff et al. disclose methods of immobilizing a protein including by covalent bond as claimed and Mansfield et al. teach both covalent and non-covalent immobilization processes stabilize a protein against thermal inactivation.
Claim 2 requiring the protein is surface exposed is met by Bickerstaff et al. page 3, section 2.2 teaching the bond is normally formed between functional groups present on the surface of the support and functional groups belonging to amino acid residues on the surface of the enzyme. See also Bickerstaff et al. page 218, teaching enzymes are covalently bound to carbon, because of the presence of surface hydroxyl and carboxylic acid moieties useful for the immobilization of proteins.
Bickerstaff et al. reads upon clam 3 limitation to wherein the active group of said substrate comprises carboxylic acid or ester by teaching immobilization of enzymes can be readily achieved through surface carboxy groups and the carboxylic moieties are the most abundant groups on the surface of proteins. See figure 1 and the paragraph below it on page 218 teaching enzymes can be covalently bound and the presence of surface hydroxyl and carboxylic acid moieties is particularly useful for the immobilization of proteins.
Regarding claim 4, Bickerstaff et al. teach the claimed surfaces are popular supports for enzyme immobilization. See page 6 and fig. 2 on page 7.
Regarding the free amine of claims 5-6 Bickerstaff et al. teach on page 5, section 2.2 Covalent Binding that a number of amino acid functional groups are suitable for participation in covalent bond formation. Those that are most often involved are the amino group (NH*) of lysine or arginine, the carboxyl group (CO*H) of aspartic acid or glutamic acid, the hydroxyl group (OH) of serine or threonine, and the sulfydryl group (SH) of cysteine.
Regarding claim 7, Bickerstaff et al. pages 230-234 teach the immobilization of the claimed proteins.
Regarding the claim 13 limitation to wherein the protein is stabilized against inactivation at 80oC, see Mansfield fig.4 on page 193 and fig 6 on page 194 explaining that the enzymes had residual activity, and thus is stabilized within the higher temperature ranges as claimed. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed process for stabilizing a protein against thermal inactivation at 80cC as required by claim 13, because Bickerstaff et al. disclose methods of immobilizing a protein including by covalent bond in general and Mansfield et al. teach both covalent and non-covalent immobilization processes stabilize a protein against thermal inactivation even at higher temperatures of 80oC the enzymes had high percentage residual activity.
Claims 8-9 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Bickerstaff et al. “Immobilization of Enzymes and Cells” in view of Mansfield et al. “Site-specific and random immobilization of thermolysin-like proteases reflected in the thermal inactivation kinetics” as applied to claims 1-7 and 13 above, and further in view of Saito et al. JP2006095452A Google Patents Translation attached.
Regarding claim 1 from which claim 8 depends, Bickerstaff et al. teach the immobilization of enzymes with covalent bonds, and Manfield et al. teach that both covalent and non-covalent immobilization processes stabilize a protein against thermal inactivation. Bickerstaff et al. and Mansfield et al. fail to teach the spin coating binding of the protein on to the surface required in claims 8 and the polystyrene surface required in claim 9.
Saito et al. teach spin coating (see abstract) with a coating solution that is a hydrophobic polymer solution including polystyrene (see page 3, paragraphs 5-7 in the middle of page 3). Saito et al. teach enzyme proteins also immobilized on the substrate. See page 4, paragraph 6. Saito et al. teach the surface modification layer has a functional group capable of generating a covalent bond. See page 2 of the Google Patents Translation pdf, 5 paragraphs from the bottom of page 2.
Bickerstaff et al. Mansfield et al. and Saito et al. are considered to be analogous to the claimed invention because all are in the same field of covalent bond of a protein to a substrate.
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed spin coating binding of the protein on to the surface comprising polystyrene as required in claims 8-9 because Saito et al. teach a spin coating with a coating solution that is a hydrophobic polymer solution including polystyrene which surface modification has a functional group capable of generating a covalent bond in general and Bickerstaff et al. disclose methods of immobilizing a protein including by covalent bond as claimed and Mansfield et al. teach both covalent and non-covalent immobilization processes stabilize a protein against thermal inactivation.
Claims 10-12 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Bickerstaff et al. “Immobilization of Enzymes and Cells” in view of Mansfield et al. “Site-specific and random immobilization of thermolysin-like proteases reflected in the thermal inactivation kinetics” and Saito et al. JP2006095452A Google as applied to claims 1-9 and 13 above, and further in view of Nakamoto et al. “A lift of method for patterning enzyme immobilized membranes in multi-biosensors”. PDF of abstract is attached. Examiner notes that USPTO does not subscribe to the entirety of the article on Science Direct.
Regarding claim 1 from which claim 10 depends, Bickerstaff et al. teach the immobilization of enzymes with covalent bonds, and Manfield et al. teach that both covalent and non-covalent immobilization processes stabilize a protein against thermal inactivation. Saito et al. teach the covalent binding is performed by spin coating in general. However, Saito et al., Bickerstaff et al. and Mansfield et al. fail to teach the spin coating a first solution and a second solution comprising the protein and glutaraldehyde as required in claims 10-12.
Nakamoto et al. teach a method for preparing enzyme-immobilized membranes of multi- biosensors where the enzyme protein solution containing glutaraldehyde, is spin coated onto a water covered with a patterned photoresist. See abstract.
Bickerstaff et al., Mansfield et al., Saito et al. and Nakamoto et al. are considered to be analogous to the claimed invention because all are in the same field of binding of a protein
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed spin coating binding as required by claims 10-12 wherein the binding comprises spin coating a first solution comprising the protein onto the surface, and subsequently spin coating onto the first solution a second solution comprising the protein and glutaraldehyde as required in claim 10 because Nakamoto et al. teach an enzyme protein solution containing glutaraldehyde spincoating solution for enzyme-immobilize where the solution is spin coated. One of ordinary skill is motivated to arrive at the claimed sequential method, because Saito et al. teach a spin coating with an enzymatic coating solution which surface modification has a functional group capable of generating a covalent bond and Nakamoto et al. establish that the claimed protein and glutaraldehyde spin coating solution is well-known. Repetition of spin coating step of claim 11 and the drying of claim 12 is also well within the skill set of PHOSITA and do not amount to a patentable difference from the art disclosing spin coating with the same enzyme and glutaraldehyde. Because Saito et al. teach covalent binding is performed by spin coating and Nakamoto et al. establish that the claimed protein and glutaraldehyde spin coating solution is known in immobilizing proteins which the Bickerstaff et al. and Mansfield et al. references have established that both covalent and non-covalent immobilization processes stabilize a protein against thermal inactivation.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/PREETI KUMAR/Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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