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 .
Election/Restrictions
The present application remains examined per applicant’s election with traverse of Group I in the reply filed on 11/20/2024.
Claims 15-16, 18-19, 21-23, 25-26, and 29 remain withdrawn from further consideration as being directed to a non-elected invention.
Claims 1-2, 4-5, 7-10, and 12-14 are directed to the elected invention and have been examined on their merits.
The claims are further examined under applicant’s election, with traverse, of the heterologous melamine utilization pathway genes atzD, trzE, DUR1, DUR2, trzC, guaD, triA, and ptxD.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 10/20/2025 and 06/08/2026 are in compliance with the provisions of 37 C.F.R. 1.97. All references cited in these IDSs have been fully considered.
Drawings
Previous objection to the drawings
The drawings were previously objected to because FIG. 3 did not comply with 37 CFR 1.84(u)(1).
Applicant has provided the appropriate response and the objection of record is withdrawn.
However, the amended drawing sheets present FIGs. 3A-3C in insufficient quality to be readable when reproduced. Specifically, the text of these figures contains nucleotide sequences which are not “durable, clean, black…, sufficiently dense and dark, and uniformly thick and well-defined” as required by Rule 1.84(l).
Accordingly, a new objection to the drawings is made below.
New objection to the drawings
The drawings are objected to because newly presented Figures 3A-3C are not presented in sufficient quality to be satisfactorily reproduced. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Nucleotide and/or Amino Acid Sequence Disclosures
REQUIREMENTS FOR PATENT APPLICATIONS CONTAINING NUCLEOTIDE AND/OR AMINO ACID SEQUENCE DISCLOSURES
Items 1) and 2) provide general guidance related to requirements for sequence disclosures.
37 CFR 1.821(c) requires that patent applications which contain disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.821(a) must contain a "Sequence Listing," as a separate part of the disclosure, which presents the nucleotide and/or amino acid sequences and associated information using the symbols and format in accordance with the requirements of 37 CFR 1.821 - 1.825. This "Sequence Listing" part of the disclosure may be submitted:
In accordance with 37 CFR 1.821(c)(1) via the USPTO patent electronic filing system (see Section I.1 of the Legal Framework for Patent Electronic System (https://www.uspto.gov/PatentLegalFramework), hereinafter "Legal Framework") as an ASCII text file, together with an incorporation-by-reference of the material in the ASCII text file in a separate paragraph of the specification as required by 37 CFR 1.823(b)(1) identifying:
the name of the ASCII text file;
ii) the date of creation; and
iii) the size of the ASCII text file in bytes;
In accordance with 37 CFR 1.821(c)(1) on read-only optical disc(s) as permitted by 37 CFR 1.52(e)(1)(ii), labeled according to 37 CFR 1.52(e)(5), with an incorporation-by-reference of the material in the ASCII text file according to 37 CFR 1.52(e)(8) and 37 CFR 1.823(b)(1) in a separate paragraph of the specification identifying:
the name of the ASCII text file;
the date of creation; and
the size of the ASCII text file in bytes;
In accordance with 37 CFR 1.821(c)(2) via the USPTO patent electronic filing system as a PDF file (not recommended); or
In accordance with 37 CFR 1.821(c)(3) on physical sheets of paper (not recommended).
When a “Sequence Listing” has been submitted as a PDF file as in 1(c) above (37 CFR 1.821(c)(2)) or on physical sheets of paper as in 1(d) above (37 CFR 1.821(c)(3)), 37 CFR 1.821(e)(1) requires a computer readable form (CRF) of the “Sequence Listing” in accordance with the requirements of 37 CFR 1.824.
If the "Sequence Listing" required by 37 CFR 1.821(c) is filed via the USPTO patent electronic filing system as a PDF, then 37 CFR 1.821(e)(1)(ii) or 1.821(e)(2)(ii) requires submission of a statement that the "Sequence Listing" content of the PDF copy and the CRF copy (the ASCII text file copy) are identical.
If the "Sequence Listing" required by 37 CFR 1.821(c) is filed on paper or read-only optical disc, then 37 CFR 1.821(e)(1)(ii) or 1.821(e)(2)(ii) requires submission of a statement that the "Sequence Listing" content of the paper or read-only optical disc copy and the CRF are identical.
Specific deficiencies and the required response to this Office Action are as follows:
Specific deficiency - The Incorporation by Reference paragraph required by 37 CFR 1.821(c)(1) is missing. See item 1) a) or 1) b) above.
Required response – Applicant must provide:
A substitute specification in compliance with 37 CFR 1.52, 1.121(b)(3) and 1.125 inserting the required incorporation-by-reference paragraph, consisting of:
A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
A copy of the amended specification without markings (clean version); and
A statement that the substitute specification contains no new matter.
Specification
Previous objection to the specification
The specification was objected to for containing browser executable code. Applicant has made the appropriate correction and the objection is therefore withdrawn.
Claim Objections
Claims 8 and 12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As discussed in the rejection of record, the closest prior art to each of these claims (South and Lou) do not teach or suggest the use of the gene operons recited in claim 8 or the ptxD gene comprising a polynucleotide sequence having 100% sequence identity, as required by these claims.
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
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.
Previous rejections under 35 U.S.C. § 103
RE: Rejection of claims 1-2, 4-5, 7, and 9 under 35 U.S.C. 103 as being unpatentable over Roessler (US10138489B2, Pub Date 11/27/2018), in view of South (WO2014107660A2) and further in view of Schachtschabel (WO2018011750A1).
Applicant traverses the rejection of record by arguing the following.
First, applicant asserts that Roessler does not teach or suggest using melamine as a selective nutrient source and provides insufficient motivation to change from phosphite to melamine as the nutrient source.
Specifically, applicant asserts that Roessler generally relates to genetically modified cyanobacterial cells that are capable of utilizing phosphite as a phosphorous source and it does not teach or suggest the use of melamine as a selective nutrient source and provides no motivation to engineer a change from phosphite to melamine as the nutrient source.
Additionally, applicant asserts that the Office Action does not appreciate a feature of the claims being the production and selection of engineered plasmids/operons and/or engineered cells without the use of antibiotic selection. Applicant argues that in light of the teachings of Roessler, the engineered cyanobacterial cells contained antibiotic resistance genes.
Second, applicant asserts that South and Schachtschabel are not combinable as South excluded heterologous antibiotic resistance genes in the genetically engineered cyanobacterium and Schachtschabel focuses on plants with herbicide tolerance.
Specifically, applicant argues that South teaches a genetically engineered organism expressing a non-native enzyme and Example 9 discloses the expression of melamine assimilation enzymes but these enzymes are native enzymes without mutation. Moreover, South’s compositions have ampicillin resistant genes which are in contrast to the claimed invention which excludes heterologous antibiotic resistance genes.
Additionally, Schachtschabel relates to a plant comprising a polynucleotide encoding a mutated triA polypeptide, which confers to the plant tolerance to herbicides. This reference allegedly does not relate to melamine utilization at all and there is therefore asserted to be no motivation to consider this reference. And although Schachtschabel teaches L88 as one mutation, it is listed as one of 42 possible positions with no suggestion to specifically select L88. And regarding the specific mutation, Schachtschabel allegedly does not provide the Leu88Phe mutation disclosed in the claimed invention.
Applicant argues that Schachtschabel instead teaches away from the claimed invention because it teaches that the preferred substitutions are those that increase the herbicide tolerance of a plant but leave the biological activity of deaminase substantially unaffected because applicant’s mutation to triA results in improved melamine utilization efficiency.
In summary, applicant asserts that the claimed invention is not only directed to the combination of all six genes of the melamine utilization pathway but more importantly relates to the mutated triA gene which confers improved melamine utilization efficiency compared to native triA expressed from an introduced construct that has no antibiotic resistance genes present.
Applicant’s arguments have been fully considered but are not sufficient to overcome the rejection of record for the following reasons.
With respect to the first argument, although it is appreciated that Roessler does not teach at least one polynucleotide molecule comprising heterologous melamine utilization pathway genes, South provides sufficient motivation to arrive at this modification because, as discussed in the rejection of record, it teaches that these heterologous genes can allow organisms to have the ability to metabolize atypical nitrogen sources and to arrive at selected mutations in a compatible cyanobacterial host cell.
And although some of Roessler’s examples use kanamycin as a selectable marker, that does not mean that the disclosure, as a whole, requires that the engineered cyanobacterium has a selectable marker such as a kanamycin resistant gene. As discussed in the rejection of record, Roessler suggests using “cyanobacteria…designed to effectively utilize alternative nutrient components that are not utilized by many contaminants” as an alternative to “the use of costly antibiotics” (col. 8, lines 50-57). Accordingly, Roessler in view of South provides sufficient motivation to arrive at the melamine utilization pathway in that it provides a problem (costly antibiotics) and a solution (atypical nutrient metabolism as a selection method).
With respect to the second argument, although Schachtschabel is directed to modification in plants and plant parts, it is nonetheless analogous art because it is directed to modifications of bacterial-derived triA (see, for example, p. 1, lines 35-37). The examiner disagrees with applicant’s contention that Schachtschabel teaches away by teaching leaving “the biological activity of the deaminase substantially unaffected”. Schachtschabel’s teachings indicate that the mutation should not affect the triA deaminase activity (i.e., should not be substantially deleterious to its activity such as by denaturing the enzyme) and although applicant characterizes Example 2 of the instant specification as teaching an improved melamine utilization efficiency, the observed improvement of melamine efficiency is in the comparison of “Mel” mutants to wild-type strains. Thus, it was not the specific mutation which imparted the improvement in melamine utilization but rather was the inclusion of melamine metabolism genes which caused the effect. In other words, it would be expected that a wild-type strain not having melamine metabolism genes would be inferior in melamine metabolism when compared to mutant strains having these genes. And although Schachtschabel teaches L88 as one of many mutations, it nonetheless teaches that residue 88 is a preferable location in which to substitute “any other amino acid” (p. 22, line 34).
For at least these reasons, the rejection of record as applied is proper and has been maintained.
It is noted that the previous office action erroneously did not contain claims 13-14 in the heading of the rejection despite rejecting claims 13-14 in the body of the rejection. This error has been corrected.
RE: Rejection of claim 10 under 35 U.S.C. 103 as being unpatentable over Roessler (US10138489B2, Pub Date 11/27/2018), in view of South (WO2014107660A2) and Schachtschabel (WO2018011750A1) as applied to claims 1-2, 4-5, 7, and 9 above and further in view of Herrera-Estrella (WO2010058298A2).
Without arguing the merits of the rejection of record, applicant asserts that Herrera-Estrella does not remedy the alleged deficiencies of Roessler in view of South and Schachtschabel. For the reasons discussed above, there is no deficiency in the above references as applied to claims 1-2, 4-5, 7, and 9 and therefore the rejection over each of these references and further in view of Herrera-Estrella is maintained.
Maintained rejections under 35 U.S.C. § 103
Claims 1-2, 4-5, 7, 9, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Roessler (US 10,138,489 B2), in view of South (WO 2014/107660A2) and further in view of Schachtschabel (WO 2018/011750A1).
Regarding claim 1, Roessler is drawn to an invention related to genetically modified cyanobacterial cells that are capable of utilizing phosphite as a primary phosphorus source, and can out-compete contaminant organisms for certain forms of phosphorus more effectively (Abstract). Roessler teaches that the genetically modified cyanobacteria can more effectively produce a product of interest (col 2, paragraph 2). Roessler teaches that the host cell or recombinant host cell comprises a cell suitable of metabolic manipulation which incorporates heterologous polynucleotide sequences, e.g. which is transformed (col 9, paragraph 6). Roessler teaches that genes (or polynucleotides) involved in a biosynthetic pathway for the production of a product of interest can be inserted into cyanobacterial host cell (col 39, paragraph 1). Roessler also teaches that a DNA region containing one or more of the genes (i.e. polynucleotides encoding multiple products) can be combined with transcriptional and other regulatory sequences (i.e. operably linked to promoters) which direct the transcription of the gene or genes in the transformed cyanobacteria (col 25, paragraph 4). Roessler teaches that the recombinant gene (in this case encoding for phosphite dehydrogenase) is operably linked to a constitutive promoter (col 2, paragraph 4). Roessler teaches that an alternative use of costly antibiotic cyanobacteria can be designed to effectively utilize alternative nutrient components that are not utilized by many contaminants (i.e. interpreted as avoiding the use of antibiotic resistance genes) (col 8, paragraph 7).
Roessler does not teach melamine utilization pathway genes atzD, trzE, DUR1,2, trzC, guaD and triA, transformed into cyanobacterium and the triA gene comprising one or more mutations which encode amino acid substitutions at selected positions as recited in claim 1 (i).
However, one of ordinary skill in the art would have considered the teachings of South and Schachtschabel as both references are analogous prior art pertaining to the engineered organisms or cells transformed with polynucleotides to produce desired products.
South is drawn to an invention related to genetically engineered organisms, such as yeast and bacteria, that have the ability to metabolize atypical nitrogen sources, such as melamine and cyanamide (Abstract). South teaches that a genetically engineered organism is transformed by a nucleic acid molecule comprising a non-native gene (i.e. heterologous) encoding for an enzyme such as melamine deaminase (pg. 22, lines 1-6). South teaches that genes and gene products may be introduced into microbial host cells wherein suitable host strains include but are not limited to bacterial species, such as member of the proteobacteria and actinomycetes as well as the specific genera Acinetobacter, Arthrobacter, Brevibacterium, Acidovorax, Bacillus, Clostridia, Streptomyces , Escherichia, Salmonella, Pseudomonas, and Corynebacterium (pg. 11, lines 29-30; pg. 12, lines 2-5). South teaches that the non-native or heterologous gene is selected from atzD, trzE, DUR1,2, trzC, guaD and triA wherein any organism can be used as a source of the non-native gene as long as the organism has the desired enzymatic activity (i.e. enzyme such as melamine deaminase used in melamine utilization pathway) (pg. 22, lines 8-16). South teaches that these genes in a recombinant vector are operably linked to a promoter (pg. 21, lines 7-8). South further teaches that Melamine assimilation genes, or a subset of them, can be expressed in E. coli (i.e. interpreted as the technique can be extended to wider range of species while both E. coli and cyanobacterium are closely related as being gram negative bacteria) (pg. 36, Example 6).
Schachtschabel is drawn to an invention related to a plant or plant part comprising a polynucleotide encoding a mutated triA polypeptide wherein the expression of the polynucleotide confers to the plant or plant part tolerance to herbicides (Abstract). Schachtschabel teaches specific amino acid substitutions to generate variant or derivative of the mutated TriA polypeptide (pg. 22, lines 15-18). Schachtschabel teaches that by substituting one or more of the key amino acid residues of the TriA enzyme or by mutating the TriA encoding nucleic acids, the tolerance or resistance to particular herbicides could be remarkably increased while preferred substitutions of mutated TriA are those that increase the herbicide tolerance of the plant, but leave the biological activity of the deaminase activity substantially unaffected (pg. 21, lines 22-27). Schachtschabel teaches that one of the positions comprises the amino acid at position 88 that is substituted by any other amino acid (pg. 22, line 34) wherein the corresponding amino acid is Leu that is substituted by any other amino acid (i.e. interpreted as substitutions of Leu at position 88 by any other amino acids including Leu88Phe) (pg. 23, line 37).
Therefore, 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 heterologous polynucleotide sequences of Roessler such that it could transform the cyanobacterial host cell to express melamine pathway genes wherein the genes comprises one or more mutations encoding amino acid substitutions as described by South and Schachtschabel. A person of ordinary skill in the art would have been motivated to do so in order to successfully express the desired gene products such that they could have selected mutations in a compatible cyanobacterial host cell. A person of ordinary skill in the art would have had a reasonable expectation of success because Roessler teaches introduction of heterologous polynucleotides encoding an enzyme for metabolizing a compound or a selective benefit and both South and Schachtschabel teach that the engineered microorganisms that are transformed by recombinant polynucleotides encoding different enzymes (i.e. used in melamine utilization pathway) comprise a wide range of bacterial host including E. coli which is closely related to cyanobacterium for being a gram-negative bacterium. Therefore, modifying the heterologous polynucleotide sequences of Roessler such that it could transform the cyanobacterial host cell to express melamine pathway genes wherein the genes comprises one or more mutations encoding amino acid substitutions as described by South and Schachtschabel, would have resulted in the predicable outcome of success.
Regarding claim 2, Roessler does not teach the genetically engineered cyanobacterium, wherein the triA gene encodes an amino acid sequence selected from the group comprising SEQ ID NO: 56 (claim 2).
Schachtschabel teaches SEQ ID NO: 56 with 100% sequence identity and indicated that the TriA polypeptide comprising the sequence set forth in SEQ ID NO: 56 (see attached SEQ ID search results, pg. 21, lines 29-30).
Therefore, 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 heterologous polynucleotide sequence of Roessler with the specific TriA sequence ( that is set forth in SEQ ID 56 as taught by Schachtschabel) such that it could transform the cyanobacterial host cell to express melamine pathway genes wherein the genes comprises one or more mutations encoding amino acid substitutions as described by South and Schachtschabel. A person of ordinary skill in the art would have been motivated to do so in order to successfully express the desired gene products such that they could have selected mutations in a compatible cyanobacterial host cell. A person of ordinary skill in the art would have had a reasonable expectation of success because both South and Schachtschabel teach that the engineered microorganisms that are transformed by recombinant polynucleotides comprise a wide range of bacterial host including E. coli which is closely related to cyanobacterium for being a gram-negative bacterium. Therefore, modifying the heterologous polynucleotide sequences of Roessler with the specific TriA sequence ( that is set forth in SEQ ID 56 as taught by Schachtschabel) such that it could transform the cyanobacterial host cell to express melamine pathway genes wherein the genes comprises one or more mutations encoding amino acid substitutions as described by South and Schachtschabel, would have resulted in the predicable outcome of success.
Regarding claim 4, Roessler does not teach the sequences of heterologous genes TrzE, TrzC, DUR1,2, atzD, guaD (claim 4).
South teaches the SEQ ID NO: 71 (TrzE), SEQ ID NO: 73 (TrzC), SEQ ID NO: 75 (DUR1,2), SEQ ID NO: 77 (atzD), SEQ ID NO: 79 (guaD) sequences with 100% identity (see SEQ ID search results, pg. 43-44).
Therefore, 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 heterologous polynucleotide sequences of Roessler with the specific sequences of TrzE, TrzC, DUR1,2, atzD, guaD genes as taught by south such that it could transform the cyanobacterial host cell to express melamine pathway genes wherein the genes comprises one or more mutations encoding amino acid substitutions as described by South and Schachtschabel. A person of ordinary skill in the art would have been motivated to do so in order to successfully express the desired gene products such that they could have selected mutations in a compatible cyanobacterial host cell. A person of ordinary skill in the art would have had a reasonable expectation of success because both South and Schachtschabel teach that the engineered microorganisms that are transformed by recombinant polynucleotides comprise a wide range of bacterial host including E. coli which is closely related to cyanobacterium for being a gram-negative bacterium. Therefore, modifying the heterologous polynucleotide sequences of Roessler with the specific sequences of TrzE, TrzC, DUR1,2, atzD, guaD genes as taught by south such that it could transform the cyanobacterial host cell to express melamine pathway genes wherein the genes comprises one or more mutations encoding amino acid substitutions as described by South and Schachtschabel, would have resulted in the predicable outcome of success.
Regarding claim 5, Roessler teaches that the recombinant polynucleotide comprises regulatory elements such as promoter, origin of replication, ribosome-binding site (col 12, paragraph 4). Roessler also teaches that the recombinant gene (in this case encoding for phosphite dehydrogenase) is operably linked to a constitutive promoter (col 2, paragraph 4).
Regarding claim 7, Roessler teaches that a single operon comprises a promoter and the production genes (col 23, paragraph 5).
Regarding claim 9, Roessler teaches that the genes for phosphite utilization, as well as the genes encoding proteins involved in phosphite uptake into the cell, have been identified and transferred to cyanobacterial strains and the phosphite utilizing organisms also typically contain genes that encode a phosphite dehydrogenase enzyme (PtxD) that can catalyze the conversion of phosphite to phosphate (col 19, paragraphs 1-2).
Regarding claim 13, Roessler teaches that the genetically engineered cyanobacterium strain comprises recombinant genes encoding enzymes of product of interest and can be used in a vector where exogenous polynucleotide is introduced for the production of a product of interest (col 38, paragraph 2). Roessler also teaches that an exogenously derived gene encoding an enzyme of interest (i.e. a protein product) can be inserted into the plasmid vector or integrated into the genome of the cyanobacteria (col 42, paragraph 5).
Regarding claim 14, Roessler teaches that cyanobacteria that can be transformed with the constructs, include but are not limited to Synechococcus (col 44, paragraph 6).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Roessler (US 10,138,489 B2), in view of South (WO 2014/107660A2) and Schachtschabel (WO 2018/011750A1) as applied to claims 1-2, 4-5, 7, 9, and 13-14 above and further in view of Herrera-Estrella (WO 2010/058298A2).
The teachings of Roessler, South, and Schachtschabel are discussed above and applied herein.
Regarding claim 10, Roessler does not teach the ptxD gene comprising the SEQ ID NO: 89.
However, one of ordinary skill in the art would have considered the teachings of Herrera-Estrella as both references are analogous prior art pertaining to the engineered organisms or cells transformed with polynucleotides to produce desired products.
Herrera-Estrella is drawn to an invention related to a system, including methods and compositions, for making and using transgenic plants and/or transgenic fungi that metabolize phosphite as a source of phosphorus for supporting growth (Abstract). Herrera-Estrella teaches that a construct comprising at least a chimeric gene that confers on a plant cell and/or fungal cell a capability to metabolize at least one reduced form of phosphorus to phosphate wherein the nucleic acid encodes for ptxD (pg. 6, lines 11-18). Herrera-Estrella teaches the ptxD gene comprising the SEQ ID NO: 89 with 100% identity (pg. 18, lines 5-8).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute ptxD sequence of Roessler for ptxD sequence of Herrera-Estrella. A person of ordinary skill in the art would have had a reasonable expectation of success because Herrera-Estrella teaches ptxD sequence that is specific for producing an enzyme that metabolizes phosphite by converting phosphorus to phosphate. Therefore, since Roessler teaches the genes encoding ptxD for phosphite utilization, as well as the genes encoding proteins involved in phosphite uptake into the cell that have been identified and transferred to cyanobacterial strains and Herrera-Estrella teaches the ptxD sequence, simply substituting the ptxD sequence of Roessler for ptxD sequence of Herrera-Estrella would have resulted in the predictable outcome of success.
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GRANT C CURRENS whose telephone number is (571)272-0053. The examiner can normally be reached Monday - Thursday: 7:00-5:00.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melenie Gordon can be reached at (571) 272-8037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GRANT C CURRENS/Examiner, Art Unit 1651
/MELENIE L GORDON/Supervisory Patent Examiner, Art Unit 1651
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