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
This Final Office Action is responsive to the communication received 12/26/2025.
Claim Rejections - 35 USC § 103(a) - maintained
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.
5. Secondary considerations (objective evidence of nonobviousness): a) commercial success; b) long felt need; c) evidence of unexpected results; d) skepticism of experts; and e) copying.
Common Ownership of Claimed Invention Presumed
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the Examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the Examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
Claims 1-6, 9, 12-13 and 16-20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Murakami et al. (09/22/2016) US Patent Application Publication 2016/0272964 A1 (hereinafter referred to as "Murakami") in view of Parajuli et al. (2016) Angewandte Cheme International Edition volume 55 pages 3596 to 3599 cited in the 4/8/2021 IDS (hereinafter known as "Parajuli") and Okada et al. (2016) Organic and Biomolecular Chemistry volume 14 pages 9639 to 9644 cited in the 11/18/2022 IDS (hereinafter referred to as "Okada").
With regards to claims 1, 4-5, 9, 12-13 and 16-20, Murakami teaches:
a) as in claims 1, 4-5, 9, 12-13 and 16-20, a method of producing a peptide library; wherein the peptide library comprises a cyclic peptide; wherein the cyclic peptide has a cyclic structure formed by bonding of two amino acid residues through a peptide bond; a screening method for identifying a peptide binding to a target material, comprising: a step of bringing the peptide library into a target material, and a step of selecting a peptide binding to the target material; wherein: the peptide is a peptide linked to genotype, and the method further comprises a step of preparing a peptide library comprising a peptide linked to genotype; wherein: the step of preparing the peptide library comprises a step of preparing a peptide-mRNA library by mRNA display method; and the step of preparing the peptide-mRNA library comprises: a step of binding a puromycin to a 3′-end of each mRNA of an mRNA library to produce a puromycin-bound mRNA library, and a step of translating the puromycin-bound mRNA library in a cell-free translation system and preparing a peptide-mRNA library comprising a peptide; a screening method for identifying a peptide binding to a target material, comprising: a step of bringing the peptide library into a target material, and a step of selecting a peptide binding to the target material; a screening method for identifying a peptide binding to a target material, comprising: a step of bringing the peptide library into a target material, and a step of selecting a peptide binding to the target material; wherein the peptide library comprises a cyclic peptide; wherein the peptide library comprises a cyclic peptide; comprising, prior to the prenylation step, a step of translating an mRNA library in a cell-free translation system and preparing a peptide library comprising a peptide (see [0086] to [0191]).
Murakami does not explicitly teach:
a) as in claims 1-3, 6, 12-13 and 20, a method of producing a peptide having an amino acid sequence containing at least one Trp or derivative thereof into contact with a prenylation enzyme and prenylating at least one Trp residue or derivative residue thereof; wherein the prenylation enzyme is Enzyme 1; wherein the prenylation enzyme consists of an amino acid sequence having 80% or more homology with an amino acid sequence represented by SEQ ID NO: 1; comprising, prior to the prenylation step, a step of translating an mRNA library in a cell-free translation system and preparing a peptide library comprising a peptide having an amino acid sequence containing at least one Trp or derivative thereof.
With regards to claims 1-3, 6, 12-13 and 20, Parajuli teaches:
a) as in claims 1-3, 6, 12-13 and 20, a method of producing a peptide having an amino acid sequence containing at least one Trp or derivative thereof into contact with a prenylation enzyme and prenylating at least one Trp residue or derivative residue thereof; wherein the prenylation enzyme is Enzyme 1; wherein the prenylation enzyme consists of an amino acid sequence having 80% or more homology with an amino acid sequence represented by SEQ ID NO: 1; comprising, prior to the prenylation step, a step of translating an mRNA library in a cell-free translation system and preparing a peptide library comprising a peptide having an amino acid sequence containing at least one Trp or derivative thereof (see entire document especially Abstract, Figure 2 and pages 3596 to 3597).
One of ordinary skill in the art before the time of the effective filing date of the claimed invention would have had a reasonable expectation of success in arriving at the Applicant's invention as claimed with the above cited references before them. Okada teaches the advantages of use of a prenylation enzyme for prenylating Trp residues in a peptide library to expand the diversity of the library (see entire document, especially page 9642). One of ordinary skill in the art before the time of the effective filing date of the claimed invention would have recognized the advantages of combining Murakami's peptide library with Parajli's use of a prenylation enzyme for prenylating Trp residues to expand the diversity of the library. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the time of the effective filing date of the claimed invention.
Discussion and Answer to Argument
Applicant argues that the Examiner fails to provide any logical reasoning to combine the references in the rejection above (Reply, starting on page 8).
In response, the Examiner disagrees and points the Applicant to review the last paragraph of the above 103 rejection for the clear explanation and reason to combine the references in the 103 rejection.
Conclusion
No claim is allowed.
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 extension fee 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.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Christian Boesen whose telephone number is 571-270-1321. The Examiner can normally be reached on Monday-Friday 9:00 AM to 5:00 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Heather Calamita can be reached at 571-272-2876. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice .
/CHRISTIAN C BOESEN/Primary Examiner, Art Unit 1684