DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1 .114, including the fee set
forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
application is eligible for continued examination under 37 CFR 1 .114, and the fee set
forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on
03/24/2026 has been entered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Applicant’s claim to priority from Foreign Application KR10-2019-0071797 filed 06/17/2019 is hereby acknowledged.
Application Status
This application is a National Stage Entry under 35 U.S.C. § 371 of Application
PCT/KR2020/007858 filed 06/17/2020. Amendments to claims filed 04/07/2025 are hereby acknowledged. Claims 1, 7, 9, and 20 are currently amended.
Claims 4, 12 and 18 are cancelled. Claims 1-3, 5-11, 13-17 and 19-21 are
under examination in this office action.
Any objection or rejection not reiterated herein, has been overcome by
Applicant's amendments and is therefore withdrawn.
Applicant's amendments and arguments have been thoroughly reviewed, but are
not persuasive to place the claims in condition for allowance for the reasons that follow.
The Following are new rejections necessitated by Applicant’s amendments:
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.
Claims 1-3, 6-8, 10-11 and 20-21 are rejected under 35 U.S.C. §103 as being unpatentable over Báez-Viveros (Báez-Viveros, J.L. et al. “ Metabolic engineering and protein directed evolution increase the yield of L-phenylalanine synthesized from glucose in Escherichia coli”. Biotechnology and Bioengineering, Vol. 87, No. 4 (Aug. 20, 2004), pp: 516-524; previously cited), Amann (Amann, E. et al. “Tightly regulated tac promoter vectors useful for the expression of unfused and fused proteins in Escherichia coli”. Gene, Vol. 69 (1988), pp: 301-315; previously cited) and Hallewell (Hallewell, R.A. et al. “ Plasmid vectors containing the tryptophan operon promoter suitable for efficient regulated expression of foreign genes”. Gene, Vol. 9 (1980), pp: 27-47; previously cited).
Regarding claim 1, Báez-Viveros teaches a microorganism (Escherichia coli JM101 strain, see Table 1 and “[M]aterials and methods” section) that is capable of producing L-tyrosine (see Figure 1 and page 520, “[A]nalytical [M]ethods” section), comprising a trp operon regulatory region and an operably linked gene encoding prephenate dehydratase, in the form of a trc promoter and a pheA gene (see figure 2). As evidenced by Amann, the trc promoter is a strong hybrid trp/lac promoter (see “summary” section).
Báez-Viveros teaches three types of cloned prephenate hydratase genes PheAfbr, PheAev1 and PheAev2, in pTrc plasmids to enhance production of aromatic amino acids (see page 518, right column, “Strains and Plasmids” section and page 519, Table 1). Báez-Viveros teaches that modifying via removal of R-domain in a mutant lacking residues 286-386 eliminated the feedback inhibition by phenylalanine and retained C-PDT (CM: chorismate mutase and PDT: prephenate dehydratase) activities; however, the truncation decreased the affinity of CM for chorismate and of PDT for prephenate, resulting in a decrease in the catalytic efficiency of 3-fold for CM and 1.7 fold for PDT; therefore, for reverting the deleterious effects on the catalytic parameters, Báez-Viveros teaches protein evolution of the CM-PDTfbr to produce two mutants pheAev1 and pheAev2, selected because of their capabilities to restore growth in a E.coli mutant (pheA-, tyrA-) (see page 519, left column, lines 1-23).
Therefore, Báez-Viveros teaches prephenate dehydratase resistant to feedback inhibition and having catalytic activity.
Báez-Viveros teaches a microorganism comprising a regulatory region comprising a Trp operon regulatory region in the form of a Trc promoter, as taught by Amann (see Báez-Viveros Table 1, pTrc99A and first reference) . Amann teaches that the Trc promoter is a Trp regulatory region (see summary section). Amann states "the vectors carry a strong hybrid trp/lac promoter" (summary section).
MPEP 2112, ¶ III, states the “ [A] rejection under 35 U.S.C. §102 and §103 can be made when the prior art product seems to be identical except that the prior art is silent as to an inherent characteristic. The inherent characteristic being the enhanced production of L-tyrosine. In this case, Báez-Viveros teaches the structures and composition required.
Regarding claims 1, and 7, Báez-Viveros teaches an expression cassette comprising a trp operon regulatory region, in the form of a trc promoter (comprising a trp operon regulatory region, see summary of Amann), and a gene encoding a prephenate dehydratase (pheA) operably linked thereto (see figure 2).
Although Báez-Viveros teaches that a regulatory region that is a hybrid with the
lac operon, having a trc promoter, lacl-coded repressor, a lac operator (see keywords
and page 313, right column, line 27), Báez-Viveros does not teach an operon comprising a trp operator, a trp leader peptide and a trp attenuator. Báez-Viveros does not teach SEQ ID NO: 1 either.
However, Hallewell teaches the use of E.coli 's tryptophan operon in plasmid
vectors for efficient regulated expression of foreign genes (see title). Hallewell specifies
that the fragment used in cloning effective plasmid vectors contains pola or (po)La, i.e.
promoter-operator-leader-attenuator (see page 27, "[A]bbreviations" and page 31,
"[R]esults section, "(a) Molecular cloning of the trp regulatory region" paragraph, line 3).
Hallewell also teaches that after induction of the trp operon, gene products increase at least 50-fold, accounting for 55% of the newly synthesized proteins and 30%
of total protein in the cell (see "[S]ummary" section).
It would have been obvious to one with ordinary skills in the art, before the
effective filing date of the claimed invention to have substituted the trc/lac hybrid regulatory region in the vector used by Báez-Viveros/Amann with the trp pola operon taught by Hallewell. One with ordinary skills in the art, motivated in using E.coli regulatory regions in a vector, and motivated in increasing efficiency of the regulatory region as taught by Hallewell and obtaining an enhanced recombinant protein production by 50-fold, could have performed this substitution with a reasonable expectation of success and arrived at the claimed invention.
Regarding claim 2, Báez-Viveros teaches a trp region/trc promoter located upstream of the prephenate dehydratase gene (see figure 2).
Regarding claim 3, Báez-Viveros teaches a pheA gene and pheA derived genes (see “[A]bstract” section and figure 2).
Regarding claims 6, and 10-11, Báez-Viveros teaches a method comprising culturing the microorganism described above and recovering L-tyrosine from the cultured microorganism or the medium. See “[R]esults” section, Báez-Viveros teaches that “[T]hese cultures were started (…). Samples were taken periodically and supernatants were analyzed by HPLC to determine the concentration of D-glucose, (…), L-tyr, (…)” (page 520, right column). Báez-Viveros teaches that L-Tyrosine was isolated for concentration determination using a Supelco Discovery C18 column (page 520, “[A]nalytical [M]ethods” section, left column).
Regarding claim 8, Báez-Viveros teaches a composition, i.e., a culture comprising Escherichia coli genetically modified with vectors pTrcpheAfbr, pTrcpheAev1 and pTrcpheAev2 (see pages 519-520, “Growth media and cultivation conditions” section).
Regarding claims 20 and 21, Báez-Viveros teaches a method for regulating the activity of prephenate dehydratase using a trp operon regulatory region and a gene encoding prephenate dehydratase operably linked thereto (see page 518, “[G]eneration of feedback inhibition resistant versions of the CM-PDT protein (pheAfbr)” section). Báez-Viveros teaches mutating the pheA gene to create a feedback inhibition resistant isoform to regulate the activity of the enzyme, and cloning the modified gene into a trc promoter (comprising a trp operon regulatory region, see Amann, summary section) -controlled expression cassette and a plasmid (see figure 2) and transforming into Escherichia coli JM 101 (see Table 1).
MPEP 2112, ¶ III, states the “ [A] rejection under 35 U.S.C. §102 and §103 can be made when the prior art product seems to be identical except that the prior art is silent as to an inherent characteristic. The inherent characteristic being the enhanced production of L-tyrosine. In this case, a method of producing aromatic amino acids production using a transformed organism with a gene encoding a polypeptide having prephenate dehydratase activity, wherein the gene is operably linked to a trp operon regulatory region is taught by Báez-Viveros.
It would have been obvious to one with ordinary skills in the art, before the
effective filing date of the claimed invention to have substituted the trc/lac hybrid regulatory region in the vector used by Báez-Viveros/Amann with the trp pola operon taught by Hallewell. One with ordinary skills in the art, motivated in a method of producing L-tyrosine using E.coli regulatory regions in a vector, and motivated in increasing efficiency of the regulatory region as taught by Hallewell and obtaining an enhanced recombinant protein production by 50-fold, could have performed this substitution with a reasonable expectation of success and arrived at the claimed invention.
Claims 9, 14 and 19 are rejected under 35 U.S.C. §103 as being
unpatentable over Báez-Viveros (Báez-Viveros, J.L. et al. “ Metabolic engineering and protein directed evolution increase the yield of L-phenylalanine synthesized from glucose in Escherichia coli”. Biotechnology and Bioengineering, Vol. 87, No. 4 (Aug. 20, 2004), pp: 516-524; previously cited), Amann (Amann, E. et al. “Tightly regulated tac promoter vectors useful for the expression of unfused and fused proteins in Escherichia coli”. Gene, Vol. 69 (1988), pp: 301-315; previously cited) and Hallewell (Hallewell, R.A. et al. “ Plasmid vectors containing the tryptophan operon promoter suitable for efficient regulated expression of foreign genes”. Gene, Vol. 9 (1980), pp: 27-47; previously cited) as applied to claim 1 above, and in further view of Ikeda (Ikeda, M. et al. “Metabolic engineering to produce tyrosine or phenylalanine in a tryptophan-producing Corynebacterium glutamicum strain”. Applied and Environmental Microbiology, Vol.58, (1992), pp: 781-785; previously cited).
Regarding claims 9, 14 and 19, the combination of Báez-Viveros, Amann and Hallewell renders elements of claim 1 obvious.
The rejection of claim 1 is described above.
Regarding claims 9 and 19, the combination of Báez-Viveros, Amann and Hallewell does not teach a microorganism of the genus Corynebacterium.
However, Ikeda teaches a Corynebacterium (see title). Ikeda produced a recombinant strain of Corynebacterium glutamicum (C. glutamicum) that can produce tyrosine or phenylalanine, by metabolic engineering (see title). Ikeda cloned chromosomal fragments comprising a desensitized to end-product (phenylalanine and tyrosine) inhibition prephenate dehydratase gene (Chorismate Mutase-deficient) into pCA3, pKY1 and pKF1 recombinant plasmids (see figure 2), and obtained recombinant C. glutamicum bacteria with increased production of tyrosine or phenylalanine (see page 784, left column, line 14).
It would have been obvious to one with ordinary skills in the art, before the
effective filing date of the claimed invention to have substituted the host, E.coli, taught by Báez-Viveros with a Corynebacterium taught by Ikeda. One motivated in using C. glutamicum for a higher production of L-tyrosine, could have performed this modification with a reasonable expectation of success and arrived at the claimed invention.
Regarding claim 14, The combination of Báez-Viveros, Amann and Hallewell
teaches a method for producing L-tyrosine, with an expression cassette comprising a trp
operon regulatory region and a gene encoding prephenate dehydratase operably linked
thereto, wherein the trp operon regulatory region includes a trp promoter, a trap
operator , a trp leader peptide, and a trp attenuator.
The obviousness of combining the references Báez-Viveros, Amann and Hallewell is described above.
Therefore, it would have been obvious to one with ordinary skills in the art, before the effective filing date of the claimed invention to substitute the microorganism taught by the combination of Báez-Viveros, Amann and Hallewell, with a corynebacterium as taught by Ikeda . One with ordinary skills in the art motivated in increasing tyrosine production using C. glutamicum could have performed this modification with a reasonable expectation of success and arrived at a method of enhancing L-tyrosine production using in C. glutamicum as claimed.
Claims 5, 13 and 15-17 are rejected under 35 U.S.C. §103 as being
unpatentable over Báez-Viveros (Báez-Viveros, J.L. et al. “ Metabolic engineering and protein directed evolution increase the yield of L-phenylalanine synthesized from glucose in Escherichia coli”. Biotechnology and Bioengineering, Vol. 87, No. 4 (Aug. 20, 2004), pp: 516-524; previously cited), Amann (Amann, E. et al. “Tightly regulated tac promoter vectors useful for the expression of unfused and fused proteins in Escherichia coli”. Gene, Vol. 69 (1988), pp: 301-315; previously cited) and Hallewell (Hallewell, R.A. et al. “ Plasmid vectors containing the tryptophan operon promoter suitable for efficient regulated expression of foreign genes”. Gene, Vol. 9 (1980), pp: 27-47; previously cited) as applied to claim 1 above, and in further view of Ikeda (Ikeda, M. et al. “Metabolic engineering to produce tyrosine or phenylalanine in a tryptophan-producing Corynebacterium glutamicum strain”. Applied and Environmental Microbiology, Vol.58, (1992), pp: 781-785; previously cited), Liebl (Liebl, W. et al. International Journal of Systematic bacteriology, Vol. 41, No. 2(1991), pp: 255-260; previously cited) and NCBl-pdf Brevibacterium lactofermentum tryptophan operon GenBank Accession No. X04960 (published April 18, 2005; downloaded from internet, NCBI website on 12/14/2024; previously cited).
Regarding claims 5, 13 and 15-17, the combination of Báez-Viveros, Amann and Hallewell renders elements of claim 1 obvious.
The rejection of claim 1 is described above.
Regarding claims 5, 13 and 15-17, claim 1 requires a microorganism comprising a trp regulatory region. Claim 5 recites “the trp operon regulatory region consists of the nucleotide sequence of SEQ ID NO: 1”. Therefore, the nucleotide sequence cannot be a fragment of SEQ ID NO: 1. Báez-Viveros teaches a plasmid named pTrc99A as the vector for expression of the pheA gene. According to Amann, pTrc99A contains a sequence fragment (“GGCTCGTA”) found in SEQ ID NO:1 (See figure 3 of Amann).
Therefore, the combination of Báez-Viveros, Amann and Hallewell does not teach the full sequence of SEQ ID NO: 1, nor a sequence at least 90% or 95% identical to SEQ ID NO: 1.
The combination of Báez-Viveros, Amann and Hallewell is silent on specific sequence and gene accession number. Hallewell relates to sequences isolated from E.coli.
Ikeda teaches a Corynebacterium (see title). Ikeda produced a recombinant strain of Corynebacterium glutamicum (C. glutamicum) that can produce tyrosine or phenylalanine, by metabolic engineering (see title).
Therefore, one motivated in substituting the host to C. glutamicum would have considered the sequence from trp operon taught by NCBl-pdf, since it teaches the sequence of Brevibacterium lactofermentum's tryptophan operon.
Brevibacterium lactofermentum is also known as a subspecies of Corynebacterium spp and C. glutamicum, as taught by Liebl (see abstract).
The operon described in NCBl.pdf shows a 100% identity with SEQ ID NO: 1.
It would have been obvious to one of ordinary skills in the art, before the effective filing date of the claimed invention to have substituted the trp operon cloned and taught by Báez-Viveros, Amann and Hallewell with the nucleotide sequence taught by NCBl-pdf, since both sequences could be used as regulatory region within a gene expression cassette comprising a pheA gene.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention have substituted the composition comprising E.coli modified by trp operon taught by the combination of Báez-Viveros, Amann and Hallewell, with a composition comprising C. glutamicum as taught by Ikeda and modified the operon region as taught by NCBl.pdf. One motivated in C. glutamicum for the enhanced production of L-tyrosine could have performed this modification with a reasonable expectation of success, and arrived at the claimed invention.
Regarding claim 13, the combination of Báez-Viveros, Amann and Hallewell
does teach producing L-tyrosine and recovering L-tyrosine from a cultured microorganism or the medium. Báez-Viveros teaches a method of producing L-tyrosine
comprising culturing a microorganism and recovering L-tyrosine from the cultured
microorganism or the medium (see page 520, left column, “Analytical methods” section).
Ikeda also teaches a method of producing L-tyrosine (see page 782, section
"[C]ultivations for production of amino acids", Table 3, and page 784, left column,
second and third ,rand figure 3). Ikeda teaches that L-tyrosine was recovered from the
cultured microorganisms or the medium and analyzed by HPLC (see figure 3, and page
782, right column, "[A]nalysis" paragraph).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the E.coli modified by trp operon taught by the combination of Báez-Viveros, Amann and Hallewell, with a C. glutamicum as taught by Ikeda and modified the operon region as taught by NCBl.pdf. One motivated in C. glutamicum for the enhanced production of L-tyrosine could have performed this modification with a reasonable expectation of success, and arrived at a method comprising culturing the microorganism thereby producing L-tyrosine and recovering L-tyrosine from the cultured microorganism or the medium as claimed.
Response to Arguments
Applicant’s arguments, see Remarks, filed 03/24/2026, with respect to the rejections of claims 1-3, 5-11, 13-17 and 19-21 under 35 U.S.C. §103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
However, upon further consideration, a new ground(s) of rejection is made in view of Báez-Viveros (Báez-Viveros, J.L. et al. “ Metabolic engineering and protein directed evolution increase the yield of L-phenylalanine synthesized from glucose in Escherichia coli”. Biotechnology and Bioengineering, Vol. 87, No. 4 (Aug. 20, 2004), pp: 516-524; previously cited), Amann (Amann, E. et al. “Tightly regulated tac promoter vectors useful for the expression of unfused and fused proteins in Escherichia coli”. Gene, Vol. 69 (1988), pp: 301-315; previously cited) and Hallewell (Hallewell, R.A. et al. “ Plasmid vectors containing the tryptophan operon promoter suitable for efficient regulated expression of foreign genes”. Gene, Vol. 9 (1980), pp: 27-47; previously cited), and in further view of Ikeda (Ikeda, M. et al. “Metabolic engineering to produce tyrosine or phenylalanine in a tryptophan-producing Corynebacterium glutamicum strain”. Applied and Environmental Microbiology, Vol.58, (1992), pp: 781-785; previously cited), Liebl (Liebl, W. et al. International Journal of Systematic bacteriology, Vol. 41, No. 2(1991), pp: 255-260; previously cited) and NCBl-pdf Brevibacterium lactofermentum tryptophan operon GenBank Accession No. X04960 (published April 18, 2005; downloaded from internet, NCBI website on 12/14/2024; previously cited).
Báez-Viveros is applicable, since the reference teaches a microorganism (Escherichia coli JM101 strain, see Table 1 and “[M]aterials and methods” section) that is capable of producing L-tyrosine (see Figure 1 and page 520, “[A]nalytical [M]ethods” section), comprising a trp operon regulatory region and an operably linked gene encoding prephenate dehydratase, in the form of a trc promoter and a pheA gene (see figure 2). As evidenced by Amann, the trc promoter is a strong hybrid trp/lac promoter (see “summary” section).
Báez-Viveros teaches three types of cloned prephenate hydratase genes PheAfbr, PheAev1 and PheAev2, in pTrc plasmids, encoding for prephenate dehydratase with retained activity, to enhance production of aromatic amino acids (see page 518, right column, “Strains and Plasmids” section and page 519, Table 1).
Conclusion
No claim is allowed.
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/A.D./Examiner, Art Unit 1636
/NANCY J LEITH/Primary Examiner, Art Unit 1636
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