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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/05/2025 has been entered.
Priority
The instant claims are entitled to an effective filing date of 12/20/2018, because EP18214973.2 was received in English on 06/17/2021.
DETAILED ACTION
Claims 2-19 are canceled. Claims 1 and 20-34 are pending and under consideration in this action.
The objections to claim 1 for minor informalities are obviated in light of the amendment filed 11/05/2025.
Claim Objections
Claim 26 is objected to because of the following informalities:
Claim 26 recites “Chitin Binding Protein” in line 2, which should be in lowercase, chitin binding protein. Appropriate correction is required.
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.
Claims 1 and 20-34 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.
Claim 1 recites “[a] method to detect the presence or the absence, and/or to quantify the amount of glyphosate and glycine in a same sample and at the same time”, which is indefinite because it is unclear which sample is being referenced and it is unclear which time frames are being limited; and consequently there are multiple reasonable interpretations for the preamble of claim 1. In the first reasonable interpretation, the claim requires the glyphosate and glycine to be detected and/or quantified at the same time across multiple samples with the same composition, such that the “same sample” refers to the composition. In the second reasonable interpretation, the claim requires the glyphosate to be detected and/or quantified and the glycine to be detected and/or quantified within one sample at the same time, such that if one sample contains both glyphosate and glycine then the detection and/or quantification of the glyphosate and glycine in that sample is simultaneous. If the “same sample” does intend to reference one sample, then it is further unclear whether that one sample is required to be the same as the “sample containing or susceptible to contain glyphosate and/or glycine” as recited in line 5.
Claim 1 recites “the sample” in line 1 of part a) and it is unclear whether “the sample” intends to reference the “same sample” recited in line 2 and/or the “sample containing or susceptible to contain glyphosate and/or glycine” recited in line 5. As indicated above, it is unclear whether the “same sample” recited in line 2 intends to reference the sample containing or susceptible to contain glyphosate and/or glycine. Therefore, it is unclear which sample is required to be contacted with a composition in part a).
The components of the composition required in part a) of claim 1 is unclear because the claim requires a composition “consisting of” [closed term] the mutated glycine/glyphosate oxidase from B. licheniformis BliGO-SCF-4 having the sequence SEQ ID No. 4, or a tagged BliGO-SCF-4 “comprising” [open-ended term] the sequence SEQ ID No. 4. It is unclear whether claim 1 intends to limit the composition of part a) to the recited elements because the claim recites both the open-ended term “comprising” which allows for additional elements not recited in the claim, and the claim recites the closed term “consisting of” which does not allow for additional elements. Consequently, there are multiple reasonable interpretations of the composition. In the first interpretation, the claim requires the composition to consist of the following: BliGO-SCF-4 having SEQ ID No. 4 or a tagged BliGO-SCF-4 that consists only of a tag and SEQ ID No. 4, the glycine oxidase H244K from B. subtilis, and peroxidase encapsulated in a vesicle with a substrate that can be oxidized. In the second reasonable interpretation, the composition of claim 1 comprises BliGO-SCF-4 having SEQ ID No. 4 or a tagged BliGO-SCF-4 comprising SEQ ID No. 4, the glycine oxidase H244K from B. subtilis, and peroxidase encapsulated in a vesicle with a substrate that can be oxidized. As such, one of ordinary skill in the art cannot ascertain the metes and bounds of the required composition.
Claims 20-34 depend from claim 1 and are rejected for the reason set forth above.
Claim interpretation
Claim 1 is drawn to a method comprising two active steps. The non-limiting intended purpose of the method is to detect the presence or absence, and/or quantify the amount of glyphosate and glycine in the same sample at the same time. In the first method step, a sample containing or susceptible to containing glyphosate and/or glycine is contacted with a composition comprising: BliGO-SCF-2 (SEQ ID NO:4) or a tagged BliGO-SCF-2(SEQ ID NO:4), a glycine oxidase from B. subtilis with a H244K mutation, and an encapsulated peroxidase and peroxidase substrate in a vesicle. The BliGO-SCF-2 (SEQ ID NO: 4) has 6 mutations compared to the instantly disclosed wild-type SEQ ID NO: 2. The second step requires determining a rate and/or level of a specific readable/measurable output signal produced by the composition after step a), the rate and/or level obtained being correlated to the presence or absence and/or the amount of the glyphosate and glycine in the sample. The sample is not required to include glyphosate and glycine because the claim only requires the sample to be susceptible to contain glyphosate and/or glycine.
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.
Claims 1, 20-23, 25-27, 29-31 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Molina (WO 2017/178896) in view of Zhang (Enzyme and Microbial Technology, 2016 85, 12-18; in IDS 03/21/2024) and Rosini (The FEBS Journal, 2014, 281(15), 3460-3472.) with evidence from Gillezeau (Environ Health. 2019 Jan 7;18(1):2), Dunstan (Nutr J. 2017 Mar 23;16(1):19), Uniprot.org, accessed 8/26/2024 (hereafter Uniprot, as relied upon in the action mailed 09/13/2024), and Ding (The Journal of Physical Chemistry B 2015 119 (49), 15263-15274).
Regarding claims 1 and 34, Molina teaches a method for the identification and/or the quantification of a compound in a sample, comprising the steps of: a) bringing into contact a micro/nanoscale biosynthetic device with a sample susceptible to contain said compound to generate a mixture, b) incubating said mixture in conditions adapted for the performance of at least one biochemical reaction to generate at least said readable/measurable physiochemical output signal, wherein said output signal being indicative of the presence and/or the level of the compound to be analyzed in said sample, c) detecting or measuring the output signal. See claim 9. Molina teaches preparing a non-living micro/nanoscale biosynthetic device capable of giving information on a state of a system to analyze. See claim 1. The device comprises at least two compatible biomolecular elements, for instance two compatible enzymes. See claim 5. Said device comprises at least two different microenvironments, this device being capable of biosensing at least two different biomolecular signals. See claim 6. The biomolecular elements are spatially encapsulated within a liposome (e.g. a vesicle). See claim 7. Molina teaches encapsulated biochemical elements selected from the group consisting of enzymes and/or metabolites preferably selected from a list that includes a horse radish-peroxidase enzyme and metabolites including NADH and ABTS (peroxidase substrates). See claim 15. In table 2, Molina teaches horseradish peroxidase and its substrates NADH, ABTS and amplex red (peroxidase substrates). Molina teaches samples selected from urine, serum, blood, foods, raw materials and environmental sample. See page 11 lines 20-21.
Evidentiary reference Gillezeau discloses that glyphosate may be present in the urine of individuals from the general public. See the abstract, table 1 and figure 3. Evidentiary reference Dustan discloses that the amino acid glycine is present as a urinary amino acid. See the abstract, the first full paragraph on page 5, and table 2. Thus, the urine samples of Molina are inherently susceptible to containing glyphosate and glycine, as evidenced by Gillezeau and Dunstan respectively.
Molina does not teach BliGO-SCF-4 that has the sequence of SEQ ID NO: 4 or is a tagged BliGO-SCF-4 comprising the sequence SEQ ID NO: 4; and glycine oxidase H244K from Bacillus subtilis.
Zhang teaches a BliGO mutant, SCF-4, with six amino acid substitutions. See section 3.2 and table 2. The amino acid substitutions include G51S, A54R, K81R, S202C, I332V and M342V. See table 2. Zhang discloses that the nucleotide sequence of the BliGO gene [wild type] is submitted under the GenBank accession number KCB831746. See section 3.1. As evidenced by UniProt, the corresponding protein sequence of KCB831746 is S5FMM4. The S5MM4 protein sequence is a 98.4% best local similarity match with instant SEQ ID NO:4. The only mismatched amino acid residues correspond to the G51S, A54R, K81R, S202C, I332V and M342V substitutions described for the SCF-4 mutant of Zhang. See the alignment between instant SEQ ID NO:4 (top) and the wild-type BliGO protein sequence S5FMM4 described below, where the boxed residues represent the point mutations for the SCF-4 mutant. Zhang discloses that SCF-4 shows a 7.1-fold increase in substrate affinity and an 8-fold improvement of catalytic efficiency towards glyphosate. See the sentence spanning the left and right columns on page 15. Therefore, Zhang’s SCF-4 mutant (Table 2) is the same as the claimed BliGO-SCF-4.
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Molina and Zhang do not teach the glycine oxidase H244K from Bacillus subtilis.
Rosini teaches engineering glycine oxidase from Bacillus subtilis (GO) to improve its kinetic efficiency on glycine and sarcosine in biological fluids. See the first 5 lines on page 3461. Rosini discloses that the kinetic efficiency on glycine increased from 860 M-1·S-1 for the wild-type to 9650 M-1·S-1 -for the H244K GO variant. See the first full paragraph on page 3462, table 2 and figure 2a. Rosini teaches a schematic representation of the biosensor for fluorometric determination of glycine and sarcosine, where the yellow working cuvette contains 0.1 µM GO variants (e.g. H244K variant) and the substrate glycine/sarcosine. See figures 4a, 4c and the left column on page 3467.
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to substitute the SCF-4 of Zhang and the H244K GO of Rosini for the at least two compatible biomolecular elements (e.g. enzymes) in the device of Molina. One would be motivated to use the SCF-4 of Zhang as a biomolecular element in the device of Molina because Zhang discloses that the SCF-4 shows an 8-fold improvement of catalytic efficiency towards glyphosate. There would be a reasonable expectation of success because Molina teaches identifying and/or the quantifying a compound in a sample, such as a urine sample, which is inherently susceptible to containing glyphosate as evidenced by Gillezeau. One would be further motivated to use the H244K GO of Rosini as a biomolecular element in the device of Molina because Rosini indicates that the H244K GO variant exhibits increased kinetic efficiency on glycine compared to the wild-type GO. There would be a reasonable expectation of success because Rosini demonstrates detecting glycine in a yellow working cuvette (i.e. a yellow dyed liquid) via fluorimetric determination, and Molina teaches using the device to identify and/or quantify a compound in a sample, such as a urine sample (e.g. a yellow liquid).
Regarding claim 20, Molina teaches encapsulated biochemical elements selected from the group consisting of enzymes and/or metabolites preferably selected from a list that includes a horse radish-peroxidase enzyme (e.g. a peroxidase) and metabolites including NADH and ABTS (e.g. peroxidase substrates). See claim 15. In table 2, Molina teaches horseradish peroxidase and its substrates NADH, ABTS and amplex red (e.g. peroxidase substrates). The full name for ABTS is 2,2′-Azino-bis(3-ethylbenzothiazoline-6-sulfonic acid). The full name for the Amplex Red substrate is 10-acetyl-3,7-dihydroxyphenoxazine.
Molina does not explicitly teach encapsulated in a vesicle, a peroxidase and a 10-Acetyl-3,7-dihydroxyphenoxaxine (i.e. Amplex™ Red) substrate.
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to select the amplex™ red (in table 2) of Molina as the horse radish-peroxidase enzyme metabolite within the encapsulant. Doing so is merely pursuing the known options. A person of ordinary skill in the art has good reason to pursue the known options within his/her technical grasp. There would be a reasonable expectation of success because Molina suggests encapsulating metabolites such as NADH and ABTS, and Molina also suggests that amplex™ red, NADH and ABTS are all interchangeable as substrates for horseradish peroxidase.
Regarding claims 21 and 22, Molina teaches a sample selected from a list that includes a urine sample (e.g. a fluid sample and a physiologic fluid). See page 11 lines 20-21.
Regarding claim 23, Molina teaches an output signal that is a chemical, biological, electronic or photonic signal, or a physicochemical output signal, capable of carrying out a mechanical action or the synthesis and/or output secretion of a compound of interest. See claim 18. A signal which can be used as an output signal includes, for example colorimetric, fluorescent, luminescent or electrochemical signal. See page 7 lines 21-28. In example 6, Molina teaches performing multiple experiments and measuring the generation of output signals, fluorescence or absorbance. See lines 11-14 on page 44.
Zhang teaches screening evolved mutants (e.g. SCF-4) using an enzyme-coupled colorimetric assay. See section 2.4. Zhang teaches evaluating enzyme activity by monitoring the absorbance change with a Multiskan™ Spectrum spectrophotometer (e.g. spectroscopy). See section 2.5.
Rosini teaches using a fluorimeter to record the fluorescence intensity emission of a dye transducer, which is modulated by the different intensity of light absorbed by the GO enzyme in the free (oxidized) and substrate bound (reduced state). See the first full paragraph on page 3467 and figures 4a-4c.
Regarding claim 25-27, Zhang teaches tagging wild type BliGO genes with GST. See section 2.5. Specifically, plasmids carrying the wild type BliGO gene and its resulting mutants (e.g. SCF-4) are transformed into E. coli for protein expression. The transformants are cultured, and harvested to obtain a supernatant that is mixed with FAD and 2-mercaptoethanol to gain GST-tagged enzymes. See section 2.5. Thus, Zhang indicates that a GST tag is fused to the SCF-4 enzyme of Zhang.
Regarding claim 29, Molina teaches biomolecular elements that are spatially encapsulated within a liposome (e.g. a vesicle). See claim 7. Molina discloses that the encapsulation of biochemical networks can be achieved using natural bilayer membranes, e.g. phospholipid bilayers, liposomes. See page 61 lines 23-24.
Regarding claim 30, Molina teaches encapsulating biochemical networks using natural bilayer membranes, e.g. phospholipid bilayers, liposomes. See page 61 lines 23-24.
Evidentiary reference Ding discloses that bilayer membranes typically contain varying amounts of lamellar (e.g. unilamellar or multilamellar) and nonlamellar lipids. See the abstract. Thus, the natural bilayer membrane of Molina is considered to be a unilamellar or multilamellar vesicle, which is a lipid vesicle.
Regarding claim 31, Molina teaches a micro/nanoscale biosynthetic device preferably having a size diameter comprised between 5 nm (i.e. 0.005 µm) and 20 µm. See page 6 lines 1-4. Molina teaches phospholipidic protocells encapsulating biochemical species. See page 21 lines 4-5 and page 48 line 19. Molina teaches a protocell diameter of 10 µm. See page 23 line 24. Molina teaches a 10 µm diameter vesicle. See page 28 line 22. Thus, Molina teaches an average vesicle diameter within the instantly claimed 0.05 µm to 500 µm and 0.1 µm and 100 µm ranges.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Molina (WO 2017/178896) in view of Zhang (Enzyme and Microbial Technology, 2016 85, 12-18; in IDS 03/21/2024) and Rosini (The FEBS Journal, 2014, 281(15), 3460-3472.), as applied to claims 1 and 20-23, 25-27, and 29-31 above, and further in view of De Góes (Sensors, 2017 17(5), 954, hereafter Góes).
The teachings of Molina, Zhang, and Rosini with respect to instant claim 1 and 23 are discussed above.
Regarding claim 24, Molina discloses that examples of readable/measurable signals can include colorimetric measurement, mass spectroscopy or another signal well known by the skilled person. See the paragraph spanning pages 13-14.
Molina, Zhang and Rosini do not teach infa-red or raman spectroscopy.
Góes suggests that glyphosate water analyses of drinking water can demand expensive equipment and labored process. See the paragraph spanning pages 1-2. Góes teaches investigating two transduction principles: colorimetric, using UV-Vis, and Surface Enhanced Raman Spectroscopy (SERS) that carries information not only about the analyte concentration but also about the interaction between the analyte and colloid silver substrate. See the first full paragraph on page 3. Góes suggests using SERS for transduction with higher specificity. Moreover, Góes suggests that the proposed approach of simultaneously evaluating chemometric data from UV-Vis and SERS can be useful for a pre-qualification of samples regarding the presence of glyphosate. See the conclusion section.
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to apply the SERS technique of Góes to the sample of Molina (e.g. urine sample) in the identification and/or quantification method of Molina as modified by Zhang and Rosini. One would be motivated to use the SERS technique of Góes because Góes suggests that the SERS technique can be useful for pre-qualifying samples regarding the presence of glyphosate. Furthermore, Góes suggests that the SERS technique may be less expensive and labor intensive compared to other techniques. There would be a reasonable expectation of success because Molina suggests reading colorimetric measurement signals and Góes suggests that SERS can be simultaneously with a colorimetric UV-Vis technique.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Molina (WO 2017/178896) in view of Zhang (Enzyme and Microbial Technology, 2016 85, 12-18; in IDS 03/21/2024) and Rosini (The FEBS Journal, 2014, 281(15), 3460-3472.), as applied to claims1 and 20-23, 25-27, and 29-31 above, and further in view of Cottier US 2009/0029369 (previously relied upon), with evidence from Cube Biotech (as relied upon in the action mailed 09/13/2024).
The teachings of Molina, Zhang, and Rosini with respect to instant claim 1 are discussed above.
Regarding claim 28, Zhang teaches a BliGO mutant, SCF-4, with six amino acid substitutions. See section 3.2 and table 2. The amino acid substitutions include G51S, A54R, K81R, S202C, I332V and M42V. See table 2 a. Zhang discloses that the nucleotide sequence of the BliGO gene is submitted under the GenBank accession number KCB831746. See section 3.1. As evidenced by UniProt, the corresponding protein sequence of KCB831746 is S5FMM4. The S5MM4 protein sequence is a 98.4% best local similarity match with residues 232-600 of SEQ ID NO: 8. The only mismatched amino acid residues correspond to the G51S, A54R, K81R, S202C, I332V and M42V substitutions explicitly disclosed by Zhang. See the alignment above. Zhang also teaches tagging BliGO with GST, and removing the GST tag by 3C protease solution digestion. See section 2.5. Evidentiary reference Cube Biotech provides the GST tag sequence. As shown in the alignment below, the SCF-4 mutant with an N-terminus GST tag is a 97.8% query match and 98.2% best local similarity match to instant SEQ ID NO: 8. The only mismatches correspond a “LEVLFQGPLGS” sequence gap between the GST tag and the BliGO SCF-4 mutant sequence of Zhang.
Molina, Zhang and Rosini do not teach a sequence that is 100% identical to SEQ ID NO: 8.
Cottier teaches proteases and their cognate cleavage sequences in table 1 on page 3. The Rhinovirus 3C protease cleavage sequence is LEVLFQ*GPLG.
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to insert the Rhinovirus 3C protease cleavage sequence of Cottier in between the GST tag and the BliGO-SCF-4 sequences in the GST tagged SCF-4 BliGO mutant of Zhang. Doing so is merely combining known prior art elements. In the process, one could reasonably arrive at a sequence comprising: [the GST of Zhang/Cube Biotech]-[the 3C protease cleavage sequence of Cottier]-[the SCF4 or Zhang], which would be identical to instant SEQ ID NO: 8. One would be motivated to include a protease cleavage sequence because Zhang explicitly teaches removing the GST tag with a 3C protease solution. There would be a reasonable expectation of success because Zhang demonstrates tagging BliGO mutants with GST tags and removing the tags with a 3C protease solutions, and Cottier discloses a Rhinovirus 3C protease cleavage sequence.
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Claims 32 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Molina (WO 2017/178896) in view of Zhang (Enzyme and Microbial Technology, 2016 85, 12-18; in IDS 03/21/2024) and Rosini (The FEBS Journal, 2014, 281(15), 3460-3472), as applied to claims 1 and 20-23, 25-27, and 29-31 above, and further in view of Bianco-Peled (WO 2017/221251).
The teachings of Molina, Zhang, and Rosini with respect to instant claim 1 are discussed above.
Regarding claims 32 and 33, Molina teaches spatially encapsulating biochemical elements, such as horse radish-peroxidase and metabolites within a liposome. See claims 7 and 15. Molina teaches encapsulation within the pores of a gel. See page 4 lines 7-8. Molina teaches a preferred biosynthetic device in which the synthetic biochemical network is compartmentalized or encapsulated in for example a porous gel, a porous polymetric bead, and a liposome. See page 5 lines 19-25. Molina teaches biomolecular elements that are spatially confined with a synthetic, semi-synthetic or naturally occurring membrane or polymeric support. See claim 8.
Molina, Zhang and Rosini do not teach vesicles trapped in a porous polymeric gel (relevant to instant claim 32).
Molina, Zhang and Rosini do not teach a porous polymeric gel selected from alginate, chitosan, PVP (polyvinylpyrrolidone), PVA (polyvinyl-alcohol), agarose, gel or mixture thereof (relevant to instant claim 33).
Bianco-Peled teaches a composition comprising one or more nano-carriers entrapped within a muco-adhesive polymer and said one or more nano-carriers comprise at least one therapeutic or diagnostic agent. See claim 1 on page 62. Bianco-Peled indicates that the one or more nano-carriers are entrapped within the internal pores of the muco-adhesive matrix. See claims 2-3. The muco-adhesive polymer is selected from a group that consists of alginate, chitosan, or any derivative or a combination thereof. See claim 12. Bianco-Peled teaches one or more nano-carriers that are lipid-based particles, wherein the lipid-based particles are liposomes or micelles. See claims 15 and 16. Bianco-Peled teaches examples of therapeutically active agents including an enzyme. See paragraph [0126] and [0127]. Bianco-Peled suggests that combining mucoadhesion with the advantages of liposomal drug delivery allows the pharmaceuticals to be protected against degradation and improves the drug bioavailability. See [074]. In example 10, Bianco-Peled teaches encapsulating proteins into liposomes. See [0382].
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to combine the alginate or chitosan muco-adhesive matrix of Bianco-Peled with the liposome of Molina containing the horseradish peroxidase and metabolite. One would be motivated to do so because Bianco-Peled suggests that combining mucoadhesion with liposomes may protect the contents within the liposome from degradation. There would be a reasonable expectation of success because Bianco-Peled teaches a composition in which liposomal nano-carriers containing enzyme therapeutic agents are entrapped within alginate or chitosan muco-adhesive matrixes.
Response to Arguments
Applicant' s arguments filed 11/05/2025 have been fully considered but they are unpersuasive.
The 103 rejection
Applicant argues that claim 1 has been amended to clarify that the present claim is directed to a method to detect the presence or the absence, and/or to quantify the amount of glyphosate and glycine in the same sample and at the same time. See the third paragraph on page 6 of the remarks. Applicant asserts that Molina discloses a method for preparing a biosynthetic device, but does not disclose a method for detecting the presence or absence of, and/or quantifying “the amount of glyphosate and glycine in the same sample and at the same time”. See the sixth paragraph on page 6 of the remarks. Applicant argues that it would not have been obvious to a person of ordinary skill in the art prior to the effective filing date of the present application to incorporate the SCF-4 of Zhang and the H244K GO of Rosini in the device of Molinia to detect in the same sample and at the same time, the presence/absence and/or to quantify the amounts of the glyphosate and glycine. See the paragraph spanning pages 6-7 of the remarks.
This argument is not persuasive because a recitation of the intended purpose of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. In the instant case, claim 1 is drawn to a method for the intended purpose of detecting the presence or the absence, and/or to quantify the amount of “glyphosate and glycine in a same sample and at the same time”. This intended purpose recited in the preamble of claim 1 does not structurally alter the instantly claimed method, because the body of the claim does not require the sample to contain glyphosate and glycine nor does claim 1 limit the timing of the determination step in part b). Molina teaches the active method step of bringing into contact a micro/nanoscale biosynthetic device, e.g. a composition comprising at least two enzymes, with a sample, such as urine; urine is susceptible to containing glyphosate and glycine as evidenced by Gillezeau and Dustan respectively; and the micro/nanoscale biosynthetic device of Molina as modified by Zhang and Rosini meets every structural limitation of the claimed composition of part a). Therefore, the prior art structure of Molina, Zhang and Rosini is capable of performing the recited intended purpose, absent evidence to the contrary.
Applicant argues that Zhang discloses a BliGO SCF-4 mutant sequence, SCF-4, that is similar but not the same as the claim sequence of SEQ ID No. 4. See paragraph 7 of the remarks.
This argument is not persuasive because Applicant has not pointed to a claimed structural element of SEQ ID NO:4 that is not taught by Zhang. The BliGO SCF-4 mutant protein of Zhang is identical to instant SEQ ID NO: 4. Zhang teaches mutating the wild-type BliGO gene KCB831746, which encodes the S5MM4 protein as evidenced by UniProt. With the six amino acid substitutions G51S, A54R, K81R, S202C, I332V and M342V taught by Zhang, the S5MM4 protein is identical to instant SEQ ID NO: 4 as discussed above.
Applicant asserts that Rosini discloses an H244K GO variant; however, Rosini only teaches engineering the GO from B. subtilis to improve its kinetic efficiency on glycine and sarcosine in biological fluids, where a yellow working cuvette containing 0.1M GO variants, e.g. H244K variant, and the substrate glycine/sarcosine is used. See the last full paragraph on page 6 of the remarks.
This argument is not persuasive because Rosini teaches selecting the H244K GO variant to develop a biosensor to specifically assay glycine. See the right column on page 3466. Rosini discloses that a biosensor for detecting glycine in biological fluids is important. See the first paragraph of the discussion section. Thus, Rosini provides motivation for using the H244K GO variant in a biosensor for detecting of glycine. Molina teaches biomolecular elements that support biochemical reactions to achieve biosensing of at least one biomolecular signal in a complex biological matrix. See, e.g., claim 8 of Molina. Thus, Rosini and Molina are in the same field of endeavor because both teach biosensing of compounds in a biological matrix.
Applicant argues that the citations of record provide no motivation to modify the method of Molina to specifically combine both the SCF-4 of Zhang and the H244K glycine oxidase of Rosini in the same method to detect and/or quantify glyphosate and glycine. Because the citations of record to not provide a rationale for why a person of ordinary skill in the art would modify the teachings of Molina to utilize the elements disclosed in Zhang and Rosini for the purpose of detecting and/or quantifying glyphosate and glycine at the same time and in the same sample, such rationale could only have been gleaned from the present application. See the first and second full paragraphs on page 7 of the remarks.
This argument is not persuasive because MPEP 2145(X)(A) states that there is no requirement that an "express, written motivation to combine must appear in prior art references before a finding of obviousness." Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1276, 69 USPQ2d 1686, 1690 (Fed. Cir. 2004). To the extent that Applicant asserts that the rationale is based on impermissible hindsight, it is not persuasive. 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 the instant case, every required limitation is accounted for in the prior art, so nothing is gleaned from the instant disclosure. Applicant indicates that the prior art does not teach detecting and/or quantifying glyphosate and glycine at the same time and in the same sample; however ‘detecting and/or quantifying glyphosate and glycine at the same time and in the same sample’ is the non-limiting intended purpose of the claimed method. Since Applicant has not pointed to a specifically claimed structural element gleaned from the instant specification, the argument that the rationale is based on impermissible hindsight reasoning is not persuasive.
Applicant argues that the use of at least one of these particular glycine/glyphosate oxidases in a method for specifically detecting/quantifying in the same sample the presence or absence of glyphosate and/or other glycine/glyphosate oxidase substrate or inhibitor greatly improves the specificity of such a method and that such improvements in specificity could not have been expected from the teachings of the cited references. See the last full paragraph on page 7 of the remarks.
This argument is not persuasive because it is not commensurate in scope with the instant claims and because arguments of counsel cannot take the place of factually supported objective evidence (MPEP 2145 or 716.01(c)). See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Applicant’s argument is not commensurate in scope with the claims because the instant claims require two particular oxidases (BliGO-SCF-4 having SEQ ID NO: 4 or a tagged BliGO-SCF-4 comprising SEQ ID NO: 4, and the H244K glycine oxidase from B. subtilis) and not at least one particular glycine/glyphosate oxidase, as argued. Furthermore, Applicant only provides a statement that “such improvements in specificity could not have been expected from the teachings of the cited references” without any established factual evidence. As such, the argument is not persuasive because unexpected results must be established by factual evidence.
Applicant argues that Fig. 12 of the present application clearly demonstrates that the observed signal is absent (background very low) if no glycine and no glyphosate are present in the sample. Further, the signal observed in the presence of glycine alone and glyphosate alone are different (significantly less for glycine alone than for glyphosate alone) and in the presence of both glycine and glyphosate, the signal is significantly higher. Thus, the combination demonstrates the ability to specifically detect/quantify the presence or absence of glycine and glyphosate at the same time and in the same sample. Applicant argues that the data set forth in Fig. 12 are practically significant – a difference of approximately 20% of the signal observed at 60 min between the signal for glycine alone, glyphosate alone and both glycine and glyphosate. These differences could not have been expected. See the last paragraph on page 8.
This argument is not persuasive because the data set forth in figure 12 appear to show the additive effect of the glycine and glyphosate on the fluorescence output. In other words, the fluorescence signals observed in the presence of glycine alone or glyphosate alone are low, but in the presence of both glycine and glyphosate the fluorescence signal is higher due to the additive effect of combining the fluorescence signals from both the glycine and glyphosate. As such, the alleged unexpected results constitute mere argument because the results presented in figure 12 are merely an additive outcome. Accordingly, no objective evidence of non-obviousness has been provided. Thus, the argument that the instant results were unexpected is not persuasive.
Conclusion
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/LOUISE W HUMPHREY/Supervisory Patent Examiner, Art Unit 1657
/K.C.B./Examiner, Art Unit 1657