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
In reply to a restriction requirement, Applicant elected Group I directed towards claims 1, 4-6 and 9. As to the requirement for election of species, Applicant elects species (A-1) a PPR motif consisting of the sequence of SEQ ID NO: 9 from claim 1; and species (1st A-1) a PPR motif consisting of the sequence of SEQ ID NO: 402 having the defined substitutions from claim 6. Claims 1, 4-6 and 9 read on the elected species. Claims 1, 4-6 and 9 are hereby examined on the merits. Claims 2, 3, 7, 8, 10-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Election was made without traverse in the reply filed on 11/04/2025.
Priority
The instant application filed 11/24/2021 is a National Stage entry of PCT/JP2020/021472, international filing date, 05/29/2020 and claims foreign priority to 2019-100551, filed 05/29/2019 but no certified copy has been provided.
Information Disclosure Statement
The information disclosure statements (IDS) submitted 02/23/2022, 10/18/2022, 08/28/2023, 10/20/2023, 12/14/2023, 05/13/2024, 08/15/2024, 03/10/2025, 09/24/2025 complies with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form ofbrowser-executable code. See page 13, lines 3 and 4. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim Interpretation
Claim 1 is directed to a PPR motif consisting of the sequence of SEQ ID NO: 9. Applicant elected species (A-1), a PPR motif consisting of the sequence of SEQ ID NO: 9 from claim 1. The Examiner interprets the transitional phrase “consisting of” as excluding any element, step, or ingredient not specified in the claim (see MPEP § 2111.03). Accordingly, SEQ ID NO: 9 requires the full-length sequence with 100% identity to SEQ ID NO: 9 without any N/C terminal additions.
Claim 6 is directed to PPR motif consisting of the sequence of SEQ ID NO: 402. Applicant elected species (1st A-1), a PPR motif consisting of the sequence of SEQ ID NO: 402 having the defined substitutions from claim 6. Examiner interprets the transitional phrase “consisting of” as excluding any element, step, or ingredient not specified in the claim (see MPEP § 2111.03). Accordingly, SEQ ID NO: 402 requires the full-length sequence with 100% identity to SEQ ID NO: 402 without any N/C terminal additions.
Claim Objections
Claim 5 is objected to because of the following informalities: Examiner respectfully requests correction of the word ‘larger’, and instead recommends use of the word ‘greater’ for grammatical correctness, as the said word makes reference to a number. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 4 is 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 4 recites the limitation “comprising n of PPR motifs”. Does the Applicant mean PPR motifs comprising ‘n’? or does the Applicant mean “comprising ‘n’ number of PPR motifs”? Examiner interprets the claim as the latter.
Claim 5 is 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 5 is dependent on claim 4 and recites the limitation "n" in line 1. It is unclear which ‘n’ the Applicant is making reference to. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 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 6 recites the limitation "such substitutions" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 (lines 9, 16, 24, 32) recites the broad recitation “provided that the amino acids at positions 1, 4, 6, 9 and 34 are identical”, and the claim also recites “at least 80%”, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 9 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.
The limitation in Claim 9, wherein “a fusion protein of at least one selected from the group
consisting of:” refers to ‘fluorescent protein’, ‘nuclear localization signal peptide’, and ‘a tag protein’, and ‘the protein according to claim 4’ that can be interpreted as a list of potential alternatives which
can vary, and ambiguity arises. Does the applicant mean that the Markush group is ‘fluorescent protein’ and ‘nuclear localization signal peptide’ and ‘a tag protein’ with ‘the protein according to claim 4’
being a second component or does the applicant mean a group consisting of ‘fluorescent protein’, ‘nuclear localization signal peptide’, and ‘a tag protein’, and ‘the protein according to claim 4’.
Claim 9 is indefinite as it is unclear as to what limitation it is referring to. For examination the claim will be interpreted to be a Markush group, where the amino acid sequence is selected from the group consisting of: ‘fluorescent protein’, ‘nuclear localization signal peptide’, ‘a tag protein’ (see MPEP 2117).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Applicant elected the PPR motif (A-1), consisting of the sequence of SEQ ID NO: 9 from claim 1; and species (1st _A-1) a PPR motif consisting of the sequence of SEQ ID NO: 402 having the defined substitutions from claim 6. In addition to SEQ ID NO: 9 and SEQ ID NO: 402, the search was expanded to include SEQ ID NO: 401 (A-2), SEQ ID NO: 403 (1st _C-1), SEQ ID NO: 403 (1st _C-2) , SEQ ID NO: 403 (1st _C-3), SEQ ID NO: 404 (1st _G-1), SEQ ID NO: 404 (1st _G-2), SEQ ID NO: 404 (1st _G-3), SEQ ID NO: 405 (1st _U-1), SEQ ID NO: 405 (1st _U-2), SEQ ID NO: 405 (1st _U-3), SEQ ID NO: 10, SEQ ID NO: 11, SEQ ID NO: 12, for compact prosecution.
As noted by the Examiner, SEQ ID NO: 9 (A-1), (A-2) and (A-3) has 91.7% identity with Repeat A (Shen, C., et al. Nat Commun 7, 11285 (2016); reference provided in IDS) but does not meet the limitation of the claim. Therefore, SEQ ID NO: 9 is free of the prior art.
SEQ ID NO: 10 (C-2) and SEQ ID NO: 10 (C-3) has a 77.8% identity with Repeat C (Shen, C., et al. Nat Commun 7, 11285 (2016)) and meets the limitation of the claim. Therefore, SEQ ID NO: 10 (C-2) and SEQ ID NO: 10 (C-3) is not free of the prior art. SEQ ID NO: 10 (C-1) is free of the prior art.
SEQ ID NO: 11 (G-3) has 80.6% identity with Repeat G (Shen, C., et al. Nat Commun 7, 11285 (2016)) and meets the limitation of the claim. Therefore, SEQ ID NO: 11 (G-3) is not free of the prior art. SEQ ID NO: 11 (G-1) and SEQ ID NO: 11 (G-2) are free of the prior art.
SEQ ID NO: 12 (U-1), (U-2) and (U-3) has 80.6% identity with Repeat U (Shen, C., et al. Nat Commun 7, 11285 (2016)) and meets the limitation of the claim. Therefore, SEQ ID NO: 12 (U-1), (U-2) and (U-3) are not free of the prior art.
SEQ ID NO: 402 compared to Repeat A (Shen, C., et al. Nat Commun 7, 11285 (2016)) has a 69.4% identity and is free of the prior art.
SEQ ID NO: 403 compared to Repeat C (Shen, C., et al. Nat Commun 7, 11285 (2016)) has a 72.2% identity (Shen, C., et al. Nat Commun 7, 11285 (2016)) and is free of the prior art.
SEQ ID NO: 404 compared to Repeat G (Shen, C., et al. Nat Commun 7, 11285 (2016)) has a 75.0% identity and is free of the prior art.
SEQ ID NO: 405 (U-1), (U-2) and (U-3) compared to Repeat U (Shen, C., et al. Nat Commun 7, 11285 (2016)) has an 80.6% identity and meets the limitations of the claim. Therefore, SEQ ID NO: 405 is not free of the prior art.
Conclusion
No claim is allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARCHANA VARADARAJ whose telephone number is (571)272-2366. The examiner can normally be reached Monday-Friday 10:00am-5:00pm.
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, Melissa Fisher can be reached at 5712707430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ARCHANA VARADARAJ/Examiner, Art Unit 1658
/LIANKO G GARYU/Supervisory Patent Examiner, Art Unit 1654