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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/14/25 has been entered.
Election/Restrictions and Claim Status
Applicants’ amendments and arguments filed 11/14/25 are acknowledged. Any objection or rejection from the 7/16/25 office action that is not addressed below is withdrawn based on the amendments. Previously, SEQ ID NO:5, streptavidin and AVL were elected.
Claims to the elected species are rejected as set forth below. Any relevant art that was uncovered during the search for the elected species is cited herein in order to advance prosecution.
Claim 15 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/10/24.
Claims 1-11 and 13 have been canceled.
Claims 12, 14 and 16-21 are being examined.
Priority
The priority information is found in the filing receipt dated 12/6/22.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/30/25 has been considered by the examiner.
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.
Claims 12, 14 and 16-21 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 12 recites that first and second subjects are bound together and the first subject is released with a separating peptide. The scope of releasing the first subject from the second subject is unclear. Claim 12 does not identify the second subject. It is unclear if the second subject could be water or a small molecule or DNA or something else. Without knowing the second subject, it is unclear how to determine what is bound or how they are bound. Further, there are many known types of bonds including covalent, ionic, hydrogen and metallic. It is unclear if releasing includes protease cleavage of a peptide bond. It is unclear if dissociation associated with equilibrium binding would be considered releasing a subject. None of the dependent claims clarify the claim scope. Further, Ohara et al. (cite 14 of IDS 1/18/22) suggests that the mechanism of action is due to the LB medium (page 554 last paragraph). However, it is unclear how such mechanism of action would relate to releasing for any and all types of bonds.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 12, 14, 16-17 and 20-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
This rejection is a ‘new matter’ rejection. Section 2163 of the MPEP states: ‘While there is no in haec verba requirement, newly added claim limitations must be supported in the specification through express, implicit, or inherent disclosure’.
Claim 12 refers to ‘90% identical to the amino acid sequence of positions 22 to 50 and 161 to 175 in SEQ ID NO:1 and at least 70% identical to the amino acid sequence of positions 2 to 258 in SEQ ID NO:1’. The instant specification (page 11 first paragraph) refers to amino acid positions 22-50 and 161-175 as being loop structures. However, reciting loop structures is not support for the instant claims. There does not seem to be support in the instant specification for multiple identities over different regions of the same polypeptide as recited in claim 12. None of dependent clams 14, 16-17 and 20-21 clarify the claim scope.
As such, there is no reason to conclude that claims 12, 14, 16-17 and 20-21 are supported in the specification through express, implicit, or inherent disclosure for at least the reasons discussed above.
Claims 12, 14 and 16-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The MPEP states that the purpose of the written description requirement is to ensure that the inventor had possession, as of the filing date of the application, of the specific subject matter later claimed by him. The courts have stated:
“To fulfill the written description requirement, a patent specification must describe an invention and do so in sufficient detail that one skilled in the art can clearly conclude that “the inventor invented the claimed invention.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997); In re Gostelli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989) (“[T]he description must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.”). Thus, an applicant complies with the written description requirement “by describing the invention, with all its claimed limitations, not that which makes it obvious,” and by using “such descriptive means as words, structures, figures, diagrams, formulas, etc., that set forth the claimed invention.” Lockwood, 107 F.3d at 1572, 41 USPQ2d at 1966.” Regents of the University of California v. Eli Lilly & Co., 43 USPQ2d 1398.
The MPEP lists factors that can be used to determine if sufficient evidence of possession has been furnished in the disclosure of the Application. These include “level of skill and knowledge in the art, partial structure, physical and/or chemical properties, functional characteristics alone or coupled with a known or disclosed correlation between structure and function, and the method of making the claimed invention. Disclosure of any combination of such identifying characteristics that distinguish the claimed invention from other materials and would lead one of skill in the art to the conclusion that the applicant was in possession of the claimed species is sufficient.” MPEP § 2163. While all of the factors have been considered, a sufficient amount for a prima facie case are discussed below.
Further, to provide evidence of possession of a claimed genus, the specification must provide sufficient distinguishing identifying characteristics of the genus. The factors to be considered include: a) the scope of the invention; b) actual reduction to practice; c) disclosure of drawings or structural chemical formulas; d) relevant identifying characteristics including complete structure, partial structure, physical and/or chemical properties, and structure/function correlation; e) method of making the claimed compounds; f) level of skill and knowledge in the art; and g) predictability in the art.
(1) Scope of the invention/Partial structure/disclosure of drawings:
Claim 12 requires at least a first subject, a second subject and a separating peptide.
Claim 12 and dependents 16-21 provide no description at all of the second subject. Claim 14 refers to variants with 90% identity. Streptavidin and avidin are over 100 amino acids in length so at least 10 positions are not required to be identical. When 10 of the amino acids are varied to any of the 20 standard amino acids there are at least 2010 (10240000000000) different possible polypeptides.
With respect to the first subject, claim 12 refers to various identities including 90%. SEQ ID NO:1 is 3518 amino acids in length. Varying 10% of the sequence allows for many possible polypeptides.
(2) Level of skill and knowledge in the art/predictability in the art:
The level of skill in the art is high.
With respect to the mechanism of action, Ohara et al. (cite 14 of IDS 1/18/22) suggests that inhibition is due to the LB medium (page 554 last paragraph). However, it is unclear how such mechanism of action would relate to releasing for any and all types of bonds such as separating a bond by protease cleavage.
(3) Physical and/or chemical properties and (4) Functional characteristics:
Instant claim 12 recites ‘bound together’ and ‘release’.
Although unclear (see 112 rejection above), it would seem that the language is open to any type of bond (for example covalent, ionic, hydrogen and metallic) at any location within the first and second subject.
There is no adequate specific disclosed correlation between structure and function particularly related to what structures are adequate to result in the functions as recited in the claims. Further, it is unclear what variants would allow for the required function. With respect to the mechanism of action, Ohara et al. (cite 14 of IDS 1/18/22) suggests that inhibition is due to the LB medium (page 554 last paragraph). However, it is unclear how such mechanism of action would relate to releasing for any and all types of bonds such as separating a bond by protease cleavage. It is unclear for example what features of a second subject or what residues of streptavidin are required to result in the desired functionality. There is no adequate disclosure of what positions can be substituted and how they can be substituted and what can be varied for the first and second subjects. One of skill in the art would reasonably conclude that the disclosure fails to provide a representative number of species to describe the genus and that there is a lack of the predictability in the art thus that the applicant was not in possession of the claimed genus.
One of skill in the art would reasonably conclude that the disclosure fails to provide a representative number of species to describe the genus and that there is a lack of the predictability in the art thus that the applicant was not in possession of the claimed genus.
(5) Method of making the claimed invention/actual reduction to practice:
The specification (figure 2) provides a specific example. However, a limited number of examples does not show what substitutions, deletions, insertions or additions would have the same function. Further, the example is not representative of any and all types of bonds or second subjects or modified sequences of SEQ ID NO:1.
The description requirement of the patent statue requires a description of an invention, not an indication of a result that one might achieve if one made that invention. See In re Wilder, 736, F.2d 1516, 1521, 222 USPQ 369, 372-73 (Fed. Cir. 1984) (affirming rejection because the specification does “little more than outlin[e] goals appellants hope the claimed invention achieves and the problems the invention will hopefully ameliorate.”) Accordingly, it is deemed that the specification fails to provide adequate written description for the genus of the claims and does not reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the entire scope of the claimed invention.
Response to Arguments - 112
Applicant's arguments filed 11/14/25 have been fully considered but they are not persuasive with respect to the rejections set forth above.
Although applicants argue about claim amendments, the amended claims are addressed above.
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.
Claim(s) 12 and 16-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hori (US 2016/0046923; cited with IDS 1/18/22; ‘Hori’) in view of Sezonov et al. (‘Escherichia coli physiology in luria-bertani broth’ Journal of Bacteriology Dec 2007 pages 8746-8749; ‘Sezonov’) in view of Nass et al. (NPL cite 13 of IDS 1/18/22; ‘Nass’).
Hori teach that the protein AtaA is represented by SEQ ID NO:2 (section 0061; the sequence listing on page 16-25 recites the sequence) which is from the Acinetobacter Tol5 strain (section 0057). Hori teach the polypeptide as oligomeric (section 0056). Hori teach that the Tol5 strain was cultured and ataA gene was expressed in LB medium (section 0108). Hori recognizes the inclusion of casein hydrolysate (section 0081). Hori teach that the protein is secreted and appears on the surface of bacteria (section 0055).
Hori does not recite a method using a separating peptide as claimed.
Sezonov teach that Luria-Bertani (LB) broth is popular because it permits fast growth and good yields of many species (first paragraph after abstract on page 8746). Sezonov teach that the recipe includes tryptone as a digest of casein from cow’s milk (first paragraph after abstract on page 8746).
Nass teach hydrolysates from bovine casein (abstract) and specifically teach FPPQSVL as a known peptide in casein hydrolysate (Table 2). Nass teach hydrolysates that are prepared by adding HCl and enzymes for example (last paragraph of column 1 on page 4988). Nass recognize various lengths of peptides including tripeptides (Table 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Hori because Hori teach ataA gene was expressed in LB medium (section 0108) and teach the inclusion of casein hydrolysate (section 0081). Since Sezonov teach that Luria-Bertani (LB) broth is popular because it permits fast growth and good yields of many species (first paragraph after abstract on page 8746) and teach that the recipe includes tryptone as a digest of casein from cow’s milk (first paragraph after abstract on page 8746) one would have been motivated to use the known digest of casein as taught by Nass which contains FPPQSVL as a known peptide in casein hydrolysate (Table 2). Since Nass teach hydrolysates that are prepared by adding HCl and enzymes for example (last paragraph of column 1 on page 4988) one would have been motivated to optimize the conditions and obtain peptides of various lengths. One would have had a reasonable expectation of success since expression methods were known (Hori teach that the Tol5 strain was cultured and ataA gene was expressed in LB medium (section 0108)).
In relation to the separated peptide recited in claims 12, 16-17 and 21, Hori teach that the Tol5 strain was cultured and ataA gene was expressed in LB medium (section 0108) and recognizes the inclusion of casein hydrolysate (section 0081). One would have been motivated to use the known digest of casein as taught by Nass which contains FPPQSVL as a known peptide in casein hydrolysate (Table 2). FPPQSVL comprises SVL. Further, since Nass teach hydrolysates that are prepared by adding HCl and enzymes for example (last paragraph of column 1 on page 4988) one would have been motivated to optimize the conditions and obtain peptides of various lengths including tripeptides. Since the prior art teach peptides as claimed, it is interpreted as functioning as claimed.
In relation to the first and second subjects of claims 12 and 18-20, Hori teach that the Tol5 strain was cultured and ataA gene was expressed in LB medium (section 0108). Hori teach that the protein AtaA is represented by SEQ ID NO: which comprises the instant AtaA protein (SEQ ID NO:1). Hori teach the polypeptide as oligomeric (section 0056).
In relation to the contacting step of claim 12, Hori teach that the Tol5 strain was cultured and ataA gene was expressed in LB medium (section 0108). Hori teach that the protein is secreted and appears on the surface of bacteria (section 0055) thus the LB media is in contact with the protein.
Although unclear, since the prior art teach components as claimed they are interpreted as functioning as claimed.
Claim(s) 12, 14 and 16-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hori (US 2016/0046923; cited with IDS 1/18/22; ‘Hori’) in view of Sezonov et al. (‘Escherichia coli physiology in luria-bertani broth’ Journal of Bacteriology Dec 2007 pages 8746-8749) in view of Nass et al. (NPL cite 13 of IDS 1/18/22) in view of Lichty et al. (‘Comparison of affinity tags for protein purification’ Protein Expression and Purification v41 2005 pages 98-105; ‘Lichty’ first cited 7/16/25).
Hori teach that the protein AtaA is represented by SEQ ID NO:2 (section 0061; the sequence listing on page 16-25 recites the sequence) which is from the Acinetobacter Tol5 strain (section 0057). Hori teach the polypeptide as oligomeric (section 0056). Hori teach that the Tol5 strain was cultured and ataA gene was expressed in LB medium (section 0108). Hori recognizes the inclusion of casein hydrolysate (section 0081). Hori teach that the protein is secreted and appears on the surface of bacteria (section 0055).
Hori does not recite a method using a separating peptide as claimed or the second subject of claim 14.
Sezonov teach that Luria-Bertani (LB) broth is popular because it permits fast growth and good yields of many species (first paragraph after abstract on page 8746). Sezonov teach that the recipe includes tryptone as a digest of casein from cow’s milk (first paragraph after abstract on page 8746).
Nass teach hydrolysates from bovine casein (abstract) and specifically teach FPPQSVL as a known peptide in casein hydrolysate (Table 2). Nass teach hydrolysates that are prepared by adding HCl and enzymes for example (last paragraph of column 1 on page 4988). Nass recognize various lengths of peptides including tripeptides (Table 2).
Lichty teach that affinity tags are known and include Strep II and teach that the results suggest that Strep II tag may provide an acceptable compromise of excellent purification with good yields at a moderate cost (abstract). Lichty teach that the Strep II tag appears to be an excellent candidate for purification since it is a short tag that produces high purity material in good yields at moderate costs (page 104 last complete paragraph). Lichty teach that Strep II is known to bind streptavidin (page 100 last paragraph).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Hori because Hori teach ataA gene was expressed in LB medium (section 0108) and teach the inclusion of casein hydrolysate (section 0081). Since Sezonov teach that Luria-Bertani (LB) broth is popular because it permits fast growth and good yields of many species (first paragraph after abstract on page 8746) and teach that the recipe includes tryptone as a digest of casein from cow’s milk (first paragraph after abstract on page 8746) one would have been motivated to use the known digest of casein as taught by Nass which contains FPPQSVL as a known peptide in casein hydrolysate (Table 2). Since Nass teach hydrolysates that are prepared by adding HCl and enzymes for example (last paragraph of column 1 on page 4988) one would have been motivated to optimize the conditions and obtain peptides of various lengths. One would have had a reasonable expectation of success since expression methods were known (Hori teach that the Tol5 strain was cultured and ataA gene was expressed in LB medium (section 0108)). In addition, Lichty teach advantages of using a Strep II based tag. Thus one would have been motivated to use the Strep II based tag of Lichty for the expression and purification of the protein. Since Lichty teach that Strep II is known to bind streptavidin (page 100 last paragraph) one would have been motivated to contact with such protein. One would have had a reasonable expectation of success since Nakatani teach that methods of expression and purification were known (sections 2.1, 2.4 and 3.4).
In relation to the separated peptide recited in claims 12, 16-17 and 21, Hori teach that the Tol5 strain was cultured and ataA gene was expressed in LB medium (section 0108) and recognizes the inclusion of casein hydrolysate (section 0081). One would have been motivated to use the known digest of casein as taught by Nass which contains FPPQSVL as a known peptide in casein hydrolysate (Table 2). FPPQSVL comprises SVL. Further, since Nass teach hydrolysates that are prepared by adding HCl and enzymes for example (last paragraph of column 1 on page 4988) one would have been motivated to optimize the conditions and obtain peptides of various lengths including tripeptides. Since the prior art teach a peptide as claimed, it is interpreted as functioning as claimed.
In relation to the first and second subjects of claims 12 and 18-20, Hori teach that the Tol5 strain was cultured and ataA gene was expressed in LB medium (section 0108). Hori teach that the protein AtaA is represented by SEQ ID NO: which comprises the instant AtaA protein (SEQ ID NO:1). Hori teach the polypeptide as oligomeric (section 0056).
In relation to the second subject of claims 12 and 14, Lichty teach streptavidin (page 100 last paragraph).
In relation to the contacting step of claim 12, Hori teach that the Tol5 strain was cultured and ataA gene was expressed in LB medium (section 0108). Hori teach that the protein is secreted and appears on the surface of bacteria (section 0055) thus the LB media is in contact with the protein.
Although unclear, since the prior art teach components as claimed they are interpreted as functioning as claimed.
Claim(s) 12, 14 and 16-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakatani et al. (‘On-fiber display or a functional peptide at sites distant from the cell surface using a long bacterionanofiber of a trimeric autotransporter adhesion’ Biotechnology and Bioengineering v116 2019 pages 239-249; ‘Nakatani’; first cited 7/16/25) in view of Sezonov et al. (‘Escherichia coli physiology in luria-bertani broth’ Journal of Bacteriology Dec 2007 pages 8746-8749; ‘Sezonov’) in view of Nass et al. (NPL cite 13 of IDS 1/18/22; ‘Nass’) in view of Lichty et al. (‘Comparison of affinity tags for protein purification’ Protein Expression and Purification v41 2005 pages 98-105; ‘Lichty’ first cited 7/16/25).
The journal web site for the Nakatani reference (retrieved from https://analyticalsciencejournals.onlinelibrary.wiley.com/doi/10.1002/bit.26857 on 7/2/25, 37 pages) lists the publication date as November 5 2018 (first page before abstract).
Nakatani teach Acinetobacter trimeric autotransporter adhesin (AtaA) and a his-tagged full length version thereof called HisA (abstract and figure 1). Nakatani teach that the His-tag on the longer fiber was more functional than on the shorter one (abstract). Nakatani teach an on-fiber display system (abstract). Nakatani teach that AtaA has possible advantages over conventional surface display systems (page 240 paragraph connecting columns 1-2). Nakatani teach that the HisA was expressed (figure 2 and section 3.4) and specifically teach the use of LB media (sections 2.1, 3.3 and figure 4).
Nakatani does not teach a method of using a separated peptide or the inclusion of a second subject as recited in claim 14.
Sezonov teach that Luria-Bertani (LB) broth is popular because it permits fast growth and good yields of many species (first paragraph after abstract on page 8746). Sezonov teach that the recipe includes tryptone as a digest of casein from cow’s milk (first paragraph after abstract on page 8746).
Nass teach hydrolysates from bovine casein (abstract) and specifically teach FPPQSVL as a known peptide in casein hydrolysate (Table 2). Nass teach hydrolysates that are prepared by adding HCl and enzymes for example (last paragraph of column 1 on page 4988). Nass recognize various lengths of peptides including tripeptides (Table 2).
Lichty teach that affinity tags are known and include HIS and Strep II and teach that the results suggest that Strep II tag may provide an acceptable compromise of excellent purification with good yields at a moderate cost (abstract). Lichty teach that the Strep II tag appears to be an excellent candidate for purification since it is a short tag that produces high purity material in good yields at moderate costs (page 104 last complete paragraph). Lichty teach that Strep II is known to bind streptavidin (page 100 last paragraph).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Nakatani because Nakatani specifically teach the use of LB media (sections 2.1, 3.3 and figure 4) in expression of a particular polypeptide. Since Sezonov teach that Luria-Bertani (LB) broth is popular because it permits fast growth and good yields of many species (first paragraph after abstract on page 8746) and teach that the recipe includes tryptone as a digest of casein from cow’s milk (first paragraph after abstract on page 8746) one would have been motivated to use the known digest of casein as taught by Nass which contains FPPQSVL as a known peptide in casein hydrolysate (Table 2). Since Nass teach hydrolysates that are prepared by adding HCl and enzymes for example (last paragraph of column 1 on page 4988) one would have been motivated to optimize the conditions and obtain peptides of various lengths. One would have had a reasonable expectation of success since expression methods were known. In addition, Lichty teach advantages of using a Strep II based tag as compared to a his based tag. Thus one would have been motivated to substitute the Strep II based tag of Lichty for the his-tag taught by Nakatani. Since Lichty teach that Strep II is known to bind streptavidin (page 100 last paragraph) one would have been motivated to contact with such protein. One would have had a reasonable expectation of success since Nakatani teach that methods of expression and purification were known (sections 2.1, 2.4 and 3.4).
In relation to the separated peptide recited in claims 12, 16-17 and 21, Nakatani specifically teach the use of LB media (sections 2.1, 3.3 and figure 4) in expression of a particular polypeptide. One would have been motivated to use the known digest of casein as taught by Nass which contains FPPQSVL as a known peptide in casein hydrolysate (Table 2) of the LB media. FPPQSVL comprises SVL. Further, since Nass teach hydrolysates that are prepared by adding HCl and enzymes for example (last paragraph of column 1 on page 4988) one would have been motivated to optimize the conditions and obtain peptides of various lengths including tripeptides. Since the prior art teach a peptides as claimed, it is interpreted as functioning as claimed.
In relation to the first and second subjects of claims 12 and 18-20, Nakatani teach Acinetobacter trimeric autotransporter adhesin (AtaA) and a his-tagged full length version thereof called HisA (abstract and figure 1). The protein AtaA comprises the instant AtaA protein (SEQ ID NO:1). Nakatani teach that the HisA was expressed (figure 2 and section 3.4). Since the ataA gene was expressed multiple copies of the protein would be present so that the first and second subject correspond to AtaA.
In relation to the second subject of claims 12 and 14, Lichty teach streptavidin (page 100 last paragraph).
In relation to the contacting step of claim 12, Nakatani teach that the HisA was expressed (figure 2 and section 3.4) and specifically teach the use of LB media (sections 2.1, 3.3 and figure 4). Nakatani teach that the protein is displayed on the surface (abstract) thus the LB media is in contact with the protein.
Although unclear, since the prior art teach components as claimed they are interpreted as functioning as claimed.
Response to Arguments - 103
Applicant's arguments filed 11/4/25 have been fully considered but they are not persuasive with respect to the rejections set forth above.
Although applicants argue that Hori does not anticipate the claims, the instant rejection is a 103 rejection.
Although applicants argue that based on foreign priority that the priority date is July 18, 2019 and a grace period exception occurs, MPEP 2153.01(a) 2nd paragraph states: “If, however, the application names fewer joint inventors than a publication (e.g., the application names as joint inventors A and B, and the publication names as authors A, B and C), it would not be readily apparent from the publication that it is an inventor-originated disclosure and the publication would be treated as prior art under AIA 35 U.S.C. 102(a)(1) unless there is evidence of record that an exception under AIA 35 U.S.C. 102(b)(1) applies”. In the instant case, the reference (Nakatani) recites Nakatani and Kanie who are not listed as joint inventors. Thus, the publication is treated as prior art.
Conclusion
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RONALD T. NIEBAUER
Primary Examiner
Art Unit 1658
/RONALD T NIEBAUER/Examiner, Art Unit 1658