DETAILED ACTION
Status of Application
The amendments, response and IDS filed 03 December 2025 are acknowledged and have been considered in their entireties. Claims 4-6, 15-16 are cancelled; claim 17 is new. Thus, claims 1-3, 7-14 and 17 are pending; Claims 11-14 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Thus, claims 1-3, 7-10 and 17 are subject to examination on the merits.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03 December 2025 has been considered by the examiner. See initialed and signed PTO/SB/08.
Withdrawal of Previous Objections/Rejections
The objection to the specification for having two embedded hyperlinks is withdrawn in view of the amendments to remove them.
The rejection of claims 5-6 and 9-10 under 35 U.S.C. 112(b) is withdrawn in view of the amendments in all the claims to recite “the” amino acid/nucleic acid sequence (rather than “an”).
The rejection of claim 16 under 35 U.S.C. 112(b) is withdrawn in view the cancellation of said claim.
The rejection of claims 1-6, 9-10 and 15-16 under 35 U.S.C. 101 is withdrawn for said claims but maintained for claims 7-8.
The rejection of claims 1-4 and 15-16 under 35 U.S.C. 102(a)(1) as being unpatentable by Oliveira et al (Environmental Microbiology (2016) – cited on IDS) as evidenced by GenBank Accession Number P73409 (strain PCC 6803; 2006) and Synechocystis sp. PCC 6803 DNA, complete genome (GenBank Accession Number NC_000911.1; 2016) is withdrawn in view of the amendments to place the specific sequences in the claims and cancellation of claims 15-16.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 7-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a natural phenomenon) without additional elements that integrate the judicial exception into a practical application. An analysis with respect to the claims as a whole reveals that they do not include additional elements that integrate the judicial exception into a practical application. See MPEP 2106.
Analysis of subject-matter eligibility under 35 U.S.C. § 101 requires consideration of the following steps:
Step (1) whether the claim is directed to one of the four categories recited in §101 (process, machine, manufacture or composition of matter);
Step (Revised 2A - Prong 1) do the claims recite an abstract idea (mathematical concepts, mental processes or method of organizing human activity), law of nature or natural phenomenon;
Step (Revised 2A - Prong 2) do the claims recite additional elements that integrate the judicial exception into a practical application; and
Step (2B) whether the claim as a whole recites something that amounts to significantly more than the judicial exception. (See 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG)).
Step 1: Yes; the claims are directed to a composition of matter.
Step 2A – Prong 1: Yes, the claims recite a natural phenomenon, namely, a naturally occurring cyanobacteria that is evolutionarily modified.
Step 2A – Prong 2: No, the claims do not recite any additional elements that integrate the judicial exception into a practical application because the claims are merely drawn to what already exists in nature. It is first noted, the interpretation of the claim “an electron carrier” of claim 1 is that the electron carrier is the cyanobacterium – it is well documented that said cyanobacterium have this function – see Nishio et al. and Hasan et al. (cited on IDS 05/19/2022). The claims recite an electron carrier that is a cyanobacterium that is modified (notably not defined in the specification) wherein at least a function of a protein involved between an outer membrane and a cell wall of said cyanobacterium is suppressed by deletion or inactivation. This gives rise to any cyanobacterium that has evolved over time to have alternative cell wall binding proteins that bind to the outer membrane or alternative cell wall-pyruvic acid modifying enzyme proteins that differ as compared to one cyanobacterium compared to another. For example, those that differ from Synechocystis PCC6803. For instance, Kowata et al. 2017 (cited on IDS) state: “Thus, outer membrane proteins other than Slr1270, i.e., Slr1841, Slr1908, or Slr0042, were suggested to be responsible for ion permeation in PCC 6803. This appeared plausible, because Slr1841, Slr1908, and Slr0042 are all homologs of SomA and SomB, whose ion-permeating function was demonstrated by Hansel and Tadros (6).” The cited reference is Hansel and Tadros (Curr. Microbiol, 1998 – cited herein) who teach characterization of the SomA and SomB from Synechoccus PCC6301, e.g. a different cyanobacterium. Notably, Slr1841 (e.g. SEQ ID NO: 1 and encoded by SEQ ID NO: 7) does not exist in any other cyanobacterium such as Synechoccus PCC6301and thus it has been interpreted as evolutionarily deleted or inactivated over time, which meets the limitations of the claims. In addition, clearly Synechocystis PCC6803 has three proteins (Slr1841, Slr1908, or Slr0042) that perform the function; however, Synechoccus PCC6301 only has two corresponding proteins (SomA and SomB) meaning that one of the three proteins in the PCC 6803 strain has been deleted or inactivated over time in the PCC 6301 strain. The same can be said for all of the other claimed sequences (e.g. SEQ ID NO: 2 encoded by SEQ ID NO: 8, and SEQ ID NO: 3 encoded by SEQ ID NO: 9), which are derived from different cyanobacterium, and relative to any other cyanobacterium that do not have these sequences (See Supplemental Content, files ending .rup for SEQ ID NOs: 1-3; 7-9). Similarly, the cell wall pyruvic acid modifying enzymes of SEQ ID NOs: 4-6, encoded by nucleic acids SEQ ID NO: 10-12, do not exist at 100% identity in any species other than those that they naturally occur in. Thus, for example, SEQ ID NO: 4, which is annotated as a polysaccharide pyruvyl transferase does not exist in any species/strain other than Synechcystis PCC6803 and thus, it has been evolutionary “lost” in other species such as Synechoccus PCC6301. Thus, these is nothing in the claims which differentiates the different strains of cyanobacterium evolved over time to have various proteins involved in binding between the outer membrane and cell wall of a cyanobacterium wherein the exact and specific proteins have evolved to be deleted or inactivated over time as compared to other cyanobacterium (it is acknowledged these proteins have homologues in other cyanobacterium but they do not have the exact same proteins compared to one another). As such, there is ultimately nothing in the claims which integrates the judicial exception into a practical application.
Step 2B: As noted in answering that of 2A – Prong 2 above, there is nothing in the claims which amounts to significantly more in terms of various cyanobacterium having differing SLH-containing out membrane proteins or cell wall pyruvic acid modifying enzymes, which are naturally deleted or inactivated over time (evolved) as compared to one another. Thus, the claims are drawn to a judicial exception, namely, a naturally occurring product.
Applicant’s Response and Examiner’s Rebuttal:
Applicant’s assert that by deleting the phrase “lost” from claim 1 that this necessitates the withdrawal of said rejection.
The Examiner acknowledges this but as noted in the rejection above, “lost” is interpreted evolutionarily deleted or inactivated over time. The claims are recited at such a high level of generality that they do not integrate the judicial exception into significantly more. As such, the rejection is maintained.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 7-10 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18456037 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘037 application render obvious the instant claims.
The instant claims in their broadest are drawn to an electron carrier comprising:
a modified cyanobacterium in which at least:
(i) a function of a protein involved in binding between an outer membrane and a cell wall of cyanobacterium is suppressed or lost; wherein the modified cyanobacterium performs at least one of supplying electrons to an outside or taking in electrons from the outside.
Dependent claims 4-6 recite, wherein in (i), the protein involved in the binding between the outer membrane and the cell wall is at least one of a surface layer homology (SLH) domain-containing outer membrane protein or a cell wall-pyruvic acid modifying enzyme; wherein the SLH domain-containing outer membrane protein is:
Slr1841 having an amino acid sequence represented by SEQ ID NO: 1;
NIES970_09470 having an amino acid sequence represented by SEQ ID NO: 2;
Anacy_3458 having an amino acid sequence represented by SEQ ID NO: 3; or
a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr1841, the NIES970_09470, and the Anacy_3458; wherein the cell wall-pyruvic acid modifying enzyme is:
Slr0688 having an amino acid sequence represented by SEQ ID NO: 4;
Synpcc7942_1529 having an amino acid sequence represented by SEQ ID NO: 5;
Anacy_1623 having an amino acid sequence represented by SEQ ID NO: 6; or
a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr0688, the Synpcc7942_1529, and the Anacy_1623. Independent claim 7 and dependent claim 8-10 recite wherein a gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is deleted or inactivated; wherein the gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is at least one of a gene encoding an SLH domain-containing outer membrane protein or a gene encoding a cell wall-pyruvic acid modifying enzyme; and wherein he gene encoding the SLH domain-containing outer membrane protein is: slr1841 having a nucleotide sequence represented by SEQ ID NO: 7; nies970_09470 having a nucleotide sequence represented by SEQ ID NO: 8; anacy_3458 having a nucleotide sequence represented by SEQ ID NO: 9; or a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr1841, the nies970_09470, and the anacy_3458; wherein the gene encoding the cell wall-pyruvic acid modifying enzyme is: slr0688 having a nucleotide sequence represented by SEQ ID NO: 10; synpcc7942_1529 having a nucleotide sequence represented by SEQ ID NO: 11; anacy_1623 having a nucleotide sequence represented by SEQ ID NO: 12; or
a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr0688, the synpcc7942_1529, and the anacy_1623. Independent claim 17 similarly recites the combination of instant claims 7-10 as an independent claim.
The claims to the ‘037 application in their broadest are drawn to a modified cyanobacterium in which a total amount of a protein involved in binding between an outer membrane and a cell wall of cyanobacterium is suppressed to at least 30 percent and at most 70 percent of a total amount of the protein in a parent strain. Dependent claims 2-4 recite wherein in (i), the protein involved in the binding between the outer membrane and the cell wall is at least one of a surface layer homology (SLH) domain-containing outer membrane protein or a cell wall-pyruvic acid modifying enzyme; wherein the SLH domain-containing outer membrane protein is:
Slr1841 having an amino acid sequence represented by SEQ ID NO: 1;
NIES970_09470 having an amino acid sequence represented by SEQ ID NO: 2;
Anacy_3458 having an amino acid sequence represented by SEQ ID NO: 3; or
a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr1841, the NIES970_09470, and the Anacy_3458; wherein the cell wall-pyruvic acid modifying enzyme is:
Slr0688 having an amino acid sequence represented by SEQ ID NO: 4;
Synpcc7942_1529 having an amino acid sequence represented by SEQ ID NO: 5;
Anacy_1623 having an amino acid sequence represented by SEQ ID NO: 6; or
a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr0688, the Synpcc7942_1529, and the Anacy_1623. Dependent claims 5-8 recite wherein a gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is deleted or inactivated; wherein the gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is at least one of a gene encoding an SLH domain-containing outer membrane protein or a gene encoding a cell wall-pyruvic acid modifying enzyme; and wherein he gene encoding the SLH domain-containing outer membrane protein is: slr1841 having a nucleotide sequence represented by SEQ ID NO: 7; nies970_09470 having a nucleotide sequence represented by SEQ ID NO: 8; anacy_3458 having a nucleotide sequence represented by SEQ ID NO: 9; or a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr1841, the nies970_09470, and the anacy_3458; wherein the gene encoding the cell wall-pyruvic acid modifying enzyme is: slr0688 having a nucleotide sequence represented by SEQ ID NO: 10;
synpcc7942_1529 having a nucleotide sequence represented by SEQ ID NO: 11;
anacy_1623 having a nucleotide sequence represented by SEQ ID NO: 12; or
a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr0688, the synpcc7942_1529, and the anacy_1623.
Thus, while the claims of the ‘037 application do not recite “an electron carrier” per se; however, as noted above, given the broad and generic aspect of the instant claims, it is interpreted that any cyanobacterium having any such modification is the electron carrier. Thus, the claims of the ‘037 application render obvious the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Applicant’s Response and Examiner’s Rebuttal:
Applicant’s state that because the instant application has an earlier patent term filing date that the rejection should be withdrawn. This is acknowledged and the instant application does have an earlier patent term filing date. However, as Applicant’s themselves point out, withdrawal is necessitated only when the double patenting rejection is the only rejection remaining. Here it is not the only rejection remaining and is thus maintained.
Claims 1-3, 7-10 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18456897 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘897 application anticipate the instant claims.
The instant claims in their broadest are drawn to an electron carrier comprising:
a modified cyanobacterium in which at least:
(i) a function of a protein involved in binding between an outer membrane and a cell wall of cyanobacterium is suppressed or lost; wherein the modified cyanobacterium performs at least one of supplying electrons to an outside or taking in electrons from the outside. Dependent claims 4-6 recite, wherein in (i), the protein involved in the binding between the outer membrane and the cell wall is at least one of a surface layer homology (SLH) domain-containing outer membrane protein or a cell wall-pyruvic acid modifying enzyme; wherein the SLH domain-containing outer membrane protein is:
Slr1841 having an amino acid sequence represented by SEQ ID NO: 1;
NIES970_09470 having an amino acid sequence represented by SEQ ID NO: 2;
Anacy_3458 having an amino acid sequence represented by SEQ ID NO: 3; or
a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr1841, the NIES970_09470, and the Anacy_3458; wherein the cell wall-pyruvic acid modifying enzyme is:
Slr0688 having an amino acid sequence represented by SEQ ID NO: 4;
Synpcc7942_1529 having an amino acid sequence represented by SEQ ID NO: 5;
Anacy_1623 having an amino acid sequence represented by SEQ ID NO: 6; or
a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr0688, the Synpcc7942_1529, and the Anacy_1623. Independent claim 7 and dependent claim 8-10 recite wherein a gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is deleted or inactivated; wherein the gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is at least one of a gene encoding an SLH domain-containing outer membrane protein or a gene encoding a cell wall-pyruvic acid modifying enzyme; and wherein he gene encoding the SLH domain-containing outer membrane protein is: slr1841 having a nucleotide sequence represented by SEQ ID NO: 7; nies970_09470 having a nucleotide sequence represented by SEQ ID NO: 8; anacy_3458 having a nucleotide sequence represented by SEQ ID NO: 9; or a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr1841, the nies970_09470, and the anacy_3458; wherein the gene encoding the cell wall-pyruvic acid modifying enzyme is: slr0688 having a nucleotide sequence represented by SEQ ID NO: 10; synpcc7942_1529 having a nucleotide sequence represented by SEQ ID NO: 11; anacy_1623 having a nucleotide sequence represented by SEQ ID NO: 12; or
a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr0688, the synpcc7942_1529, and the anacy_1623. Independent claim 17 similarly recites the combination of instant claims 7-10 as an independent claim.
The claims to the ‘897 application in their broadest are drawn to an electron carrier comprising: a modified cyanobacterium in which at least: (i) a total amount of a protein involved in binding between an outer membrane and a cell wall of cyanobacterium is suppressed to at least 30 percent and at most 70 percent of a total amount of the protein in a parent strain; or (ii) a channel protein which improves protein permeability of the outer membrane is expressed, wherein the modified cyanobacterium performs at least one of supplying electrons to an outside or taking in electrons from the outside. . Dependent claims 4-6 recite, wherein in (i), the protein involved in the binding between the outer membrane and the cell wall is at least one of a surface layer homology (SLH) domain-containing outer membrane protein or a cell wall-pyruvic acid modifying enzyme; wherein the SLH domain-containing outer membrane protein is: Slr1841 having an amino acid sequence represented by SEQ ID NO: 1; NIES970_09470 having an amino acid sequence represented by SEQ ID NO: 2; Anacy_3458 having an amino acid sequence represented by SEQ ID NO: 3; or a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr1841, the NIES970_09470, and the Anacy_3458; wherein the cell wall-pyruvic acid modifying enzyme is: Slr0688 having an amino acid sequence represented by SEQ ID NO: 4;Synpcc7942_1529 having an amino acid sequence represented by SEQ ID NO: 5; Anacy_1623 having an amino acid sequence represented by SEQ ID NO: 6; or a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr0688, the Synpcc7942_1529, and the Anacy_1623. Dependent claims 7-10 recite wherein a gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is deleted or inactivated; wherein the gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is at least one of a gene encoding an SLH domain-containing outer membrane protein or a gene encoding a cell wall-pyruvic acid modifying enzyme; and wherein he gene encoding the SLH domain-containing outer membrane protein is: slr1841 having a nucleotide sequence represented by SEQ ID NO: 7; nies970_09470 having a nucleotide sequence represented by SEQ ID NO: 8; anacy_3458 having a nucleotide sequence represented by SEQ ID NO: 9; or a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr1841, the nies970_09470, and the anacy_3458; wherein the gene encoding the cell wall-pyruvic acid modifying enzyme is: slr0688 having a nucleotide sequence represented by SEQ ID NO: 10; synpcc7942_1529 having a nucleotide sequence represented by SEQ ID NO: 11; anacy_1623 having a nucleotide sequence represented by SEQ ID NO: 12; or
a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr0688, the synpcc7942_1529, and the anacy_1623.
Thus, the claims or the ‘897 application necessarily anticipate the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Applicant’s Response and Examiner’s Rebuttal:
Applicant’s state that because the instant application has an earlier patent term filing date that the rejection should be withdrawn. This is acknowledged and the instant application does have an earlier patent term filing date. However, as Applicant’s themselves point out, withdrawal is necessitated only when the double patenting rejection is the only rejection remaining. Here it is not the only rejection remaining and is thus maintained.
Claims 1-3, 7-10 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18339501 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims to the ‘501 application render obvious the instant claims.
The instant claims in their broadest are drawn to an electron carrier comprising:
a modified cyanobacterium in which at least:
(i) a function of a protein involved in binding between an outer membrane and a cell wall of cyanobacterium is suppressed or lost; wherein the modified cyanobacterium performs at least one of supplying electrons to an outside or taking in electrons from the outside. Dependent claims 4-6 recite, wherein in (i), the protein involved in the binding between the outer membrane and the cell wall is at least one of a surface layer homology (SLH) domain-containing outer membrane protein or a cell wall-pyruvic acid modifying enzyme; wherein the SLH domain-containing outer membrane protein is:
Slr1841 having an amino acid sequence represented by SEQ ID NO: 1;
NIES970_09470 having an amino acid sequence represented by SEQ ID NO: 2;
Anacy_3458 having an amino acid sequence represented by SEQ ID NO: 3; or
a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr1841, the NIES970_09470, and the Anacy_3458; wherein the cell wall-pyruvic acid modifying enzyme is:
Slr0688 having an amino acid sequence represented by SEQ ID NO: 4;
Synpcc7942_1529 having an amino acid sequence represented by SEQ ID NO: 5;
Anacy_1623 having an amino acid sequence represented by SEQ ID NO: 6; or
a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr0688, the Synpcc7942_1529, and the Anacy_1623. Independent claim 7 and dependent claim 8-10 recite wherein a gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is deleted or inactivated; wherein the gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is at least one of a gene encoding an SLH domain-containing outer membrane protein or a gene encoding a cell wall-pyruvic acid modifying enzyme; and wherein he gene encoding the SLH domain-containing outer membrane protein is: slr1841 having a nucleotide sequence represented by SEQ ID NO: 7; nies970_09470 having a nucleotide sequence represented by SEQ ID NO: 8; anacy_3458 having a nucleotide sequence represented by SEQ ID NO: 9; or a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr1841, the nies970_09470, and the anacy_3458; wherein the gene encoding the cell wall-pyruvic acid modifying enzyme is: slr0688 having a nucleotide sequence represented by SEQ ID NO: 10; synpcc7942_1529 having a nucleotide sequence represented by SEQ ID NO: 11; anacy_1623 having a nucleotide sequence represented by SEQ ID NO: 12; or
a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr0688, the synpcc7942_1529, and the anacy_1623. Independent claim 17 similarly recites the combination of instant claims 7-10 as an independent claim.
The claims to the ‘501 application in their broadest are drawn to a plant acidic invertase activator production method comprising: preparing a modified cyanobacterium in which a function of a protein involved in binding between an outer membrane and a cell wall of cyanobacterium is suppressed or lost; and causing the modified cyanobacteria to secrete a secretion involved in activating an acidic invertase of a plant.
Dependent claims 2-4 recite, wherein in (i), the protein involved in the binding between the outer membrane and the cell wall is at least one of a surface layer homology (SLH) domain-containing outer membrane protein or a cell wall-pyruvic acid modifying enzyme; wherein the SLH domain-containing outer membrane protein is: Slr1841 having an amino acid sequence represented by SEQ ID NO: 1; NIES970_09470 having an amino acid sequence represented by SEQ ID NO: 2; Anacy_3458 having an amino acid sequence represented by SEQ ID NO: 3; or a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr1841, the NIES970_09470, and the Anacy_3458; wherein the cell wall-pyruvic acid modifying enzyme is: Slr0688 having an amino acid sequence represented by SEQ ID NO: 4; Synpcc7942_1529 having an amino acid sequence represented by SEQ ID NO: 5; Anacy_1623 having an amino acid sequence represented by SEQ ID NO: 6; or a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr0688, the Synpcc7942_1529, and the Anacy_1623. Dependent claims 5-8 recite wherein a gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is deleted or inactivated; wherein the gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is at least one of a gene encoding an SLH domain-containing outer membrane protein or a gene encoding a cell wall-pyruvic acid modifying enzyme; and wherein he gene encoding the SLH domain-containing outer membrane protein is: slr1841 having a nucleotide sequence represented by SEQ ID NO: 7; nies970_09470 having a nucleotide sequence represented by SEQ ID NO: 8; anacy_3458 having a nucleotide sequence represented by SEQ ID NO: 9; or a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr1841, the nies970_09470, and the anacy_3458; wherein the gene encoding the cell wall-pyruvic acid modifying enzyme is: slr0688 having a nucleotide sequence represented by SEQ ID NO: 10; synpcc7942_1529 having a nucleotide sequence represented by SEQ ID NO: 11; anacy_1623 having a nucleotide sequence represented by SEQ ID NO: 12; or
a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr0688, the synpcc7942_1529, and the anacy_1623.
Thus, the difference between the claims is the modified cyanobacterium of the ‘501 claims which is utilized in the method is not called “an electron carrier”. However, as noted above, given the broad and generic aspect of the instant claims, it is interpreted that any cyanobacterium having any such modification is the electron carrier. Thus, the claims of the ‘501 application render obvious the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Applicant’s Response and Examiner’s Rebuttal:
Applicant’s state that because the instant application has an earlier patent term filing date that the rejection should be withdrawn. This is acknowledged and the instant application does have an earlier patent term filing date. However, as Applicant’s themselves point out, withdrawal is necessitated only when the double patenting rejection is the only rejection remaining. Here it is not the only rejection remaining and is thus maintained.
Claims 1-3, 7-10 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 17748617 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims to the ‘617 application render obvious the instant claims.
The instant claims in their broadest are drawn to an electron carrier comprising:
a modified cyanobacterium in which at least:
(i) a function of a protein involved in binding between an outer membrane and a cell wall of cyanobacterium is suppressed or lost; wherein the modified cyanobacterium performs at least one of supplying electrons to an outside or taking in electrons from the outside. Dependent claims 4-6 recite, wherein in (i), the protein involved in the binding between the outer membrane and the cell wall is at least one of a surface layer homology (SLH) domain-containing outer membrane protein or a cell wall-pyruvic acid modifying enzyme; wherein the SLH domain-containing outer membrane protein is:
Slr1841 having an amino acid sequence represented by SEQ ID NO: 1;
NIES970_09470 having an amino acid sequence represented by SEQ ID NO: 2;
Anacy_3458 having an amino acid sequence represented by SEQ ID NO: 3; or
a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr1841, the NIES970_09470, and the Anacy_3458; wherein the cell wall-pyruvic acid modifying enzyme is:
Slr0688 having an amino acid sequence represented by SEQ ID NO: 4;
Synpcc7942_1529 having an amino acid sequence represented by SEQ ID NO: 5;
Anacy_1623 having an amino acid sequence represented by SEQ ID NO: 6; or
a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr0688, the Synpcc7942_1529, and the Anacy_1623. Independent claim 7 and dependent claim 8-10 recite wherein a gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is deleted or inactivated; wherein the gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is at least one of a gene encoding an SLH domain-containing outer membrane protein or a gene encoding a cell wall-pyruvic acid modifying enzyme; and wherein he gene encoding the SLH domain-containing outer membrane protein is: slr1841 having a nucleotide sequence represented by SEQ ID NO: 7; nies970_09470 having a nucleotide sequence represented by SEQ ID NO: 8; anacy_3458 having a nucleotide sequence represented by SEQ ID NO: 9; or a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr1841, the nies970_09470, and the anacy_3458; wherein the gene encoding the cell wall-pyruvic acid modifying enzyme is: slr0688 having a nucleotide sequence represented by SEQ ID NO: 10; synpcc7942_1529 having a nucleotide sequence represented by SEQ ID NO: 11; anacy_1623 having a nucleotide sequence represented by SEQ ID NO: 12; or
a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr0688, the synpcc7942_1529, and the anacy_1623. Independent claim 17 similarly recites the combination of instant claims 7-10 as an independent claim.
The claims to the ‘617 application in their broadest are drawn to a modified cyanobacterium in which a function of a protein involved in binding between an outer membrane and a cell wall of cyanobacterium is suppressed or lost. Dependent claims 2-4 recite, wherein in (i), the protein involved in the binding between the outer membrane and the cell wall is at least one of a surface layer homology (SLH) domain-containing outer membrane protein or a cell wall-pyruvic acid modifying enzyme; wherein the SLH domain-containing outer membrane protein is: Slr1841 having an amino acid sequence represented by SEQ ID NO: 1; NIES970_09470 having an amino acid sequence represented by SEQ ID NO: 2; Anacy_3458 having an amino acid sequence represented by SEQ ID NO: 3; or a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr1841, the NIES970_09470, and the Anacy_3458; wherein the cell wall-pyruvic acid modifying enzyme is: Slr0688 having an amino acid sequence represented by SEQ ID NO: 4;
Synpcc7942_1529 having an amino acid sequence represented by SEQ ID NO: 5;
Anacy_1623 having an amino acid sequence represented by SEQ ID NO: 6; or
a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr0688, the Synpcc7942_1529, and the Anacy_1623. Dependent claims 5-8 recite wherein a gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is deleted or inactivated; wherein the gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is at least one of a gene encoding an SLH domain-containing outer membrane protein or a gene encoding a cell wall-pyruvic acid modifying enzyme; and wherein he gene encoding the SLH domain-containing outer membrane protein is: slr1841 having a nucleotide sequence represented by SEQ ID NO: 7; nies970_09470 having a nucleotide sequence represented by SEQ ID NO: 8; anacy_3458 having a nucleotide sequence represented by SEQ ID NO: 9; or a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr1841, the nies970_09470, and the anacy_3458; wherein the gene encoding the cell wall-pyruvic acid modifying enzyme is: slr0688 having a nucleotide sequence represented by SEQ ID NO: 10;
synpcc7942_1529 having a nucleotide sequence represented by SEQ ID NO: 11;
anacy_1623 having a nucleotide sequence represented by SEQ ID NO: 12; or
a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr0688, the synpcc7942_1529, and the anacy_1623.
Thus, the difference between the claims is the modified cyanobacterium of the ‘617 application is not called “an electron carrier”. However, as noted above, given the broad and generic aspect of the instant claims, it is interpreted that any cyanobacterium having any such modification is the electron carrier. Thus, the claims of the ‘617 application render obvious the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Applicant’s Response and Examiner’s Rebuttal:
Applicant’s traverse the rejection and state the Examiner’s interpretation that the modified cyanobacterium is the electron carrier as instantly claimed is unreasonable.
The Examiner acknowledges this argument but does not find it convincing. The Examiner’s interpretation of the modified cyanobacterium being the actual electron carrier is taken from the instant specification and what constitutes an electron carrier. While the passage noted by Applicant’s states that the electron carrier may include additional substances, nowhere is this required. In addition, what actually is defined in the instant specification which constitutes an electron carrier suggests it is the modified cyanobacterium: For example, instant paragraphs 0044-0049 state the following (PG-Pub):
[0044] An electron carrier according to an aspect of the present disclosure includes a modified cyanobacterium in which at least: (i) a function of a protein involved in binding between an outer membrane and a cell wall of cyanobacterium is suppressed or lost; or (ii) a channel protein which improves protein permeability of the outer membrane is expressed, wherein the modified cyanobacterium performs at least one of supplying electrons to an outside or taking in electrons from the outside.
[0045] Owing to the (i), the binding (e.g., binding level and binding force) between the cell wall and the outer membrane is partially reduced in the modified cyanobacterium. This facilitates partially detaching the outer membrane from the cell wall. Hence, intracellularly generated electrons or electron-containing substance or molecule easily leaks out to the outside of the outer membrane, i.e., the outside of the cell. Owing to the (ii), the protein permeability of the outer membrane is improved in the modified cyanobacterium. This improves the material permeability of the outer membrane. The modified cyanobacterium can thereby perform at least one of secreting intracellularly generated electrons or electron-containing substance or molecule to the outside of the cell or taking electrons or an electron-containing substance or molecule from the outside of the cell into the cell. Hence, the modified cyanobacterium has improved extracellular electron transfer efficiency. Thus, the electron carrier according to an aspect of the present disclosure has improved efficiency of electron transfer with the outside.
[0046] The outside is a substance or a molecule that exists as an individual different from the electron carrier, and is, for example, a redox substance involved in electron migration between materials, or a molecule having a redox reactive group.
[0047] For example, in the electron carrier according to an aspect of the present disclosure, the modified cyanobacterium may: under light, generate an electron; and release the electron generated to an outside of the outer membrane.
[0048] The modified cyanobacterium thereby releases electrons or an electron-containing substance or molecule to the outside of the cell under light. Hence, the electron carrier according to an aspect of the present disclosure can generate electrons in the inside upon light irradiation and supply electrons or an electron-containing substance or molecule to the outside.
[0049] For example, in the electron carrier according to an aspect of the present disclosure, the modified cyanobacterium may: take an electron present outside the outer membrane into an inside of the cell wall; and use the electron inside the cell wall.
Thus, in all of these paragraphs, the modified cyanobacterium clearly is the one generating or taking in electrons, e.g. it is the electron carrier.
The rejection is maintained.
Claims 1-3, 7-10 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 17845022 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims to the ‘022 render obvious the instant claims.
The instant claims in their broadest are drawn to an electron carrier comprising:
a modified cyanobacterium in which at least:
(i) a function of a protein involved in binding between an outer membrane and a cell wall of cyanobacterium is suppressed or lost; wherein the modified cyanobacterium performs at least one of supplying electrons to an outside or taking in electrons from the outside. Dependent claims 4-6 recite, wherein in (i), the protein involved in the binding between the outer membrane and the cell wall is at least one of a surface layer homology (SLH) domain-containing outer membrane protein or a cell wall-pyruvic acid modifying enzyme; wherein the SLH domain-containing outer membrane protein is:
Slr1841 having an amino acid sequence represented by SEQ ID NO: 1;
NIES970_09470 having an amino acid sequence represented by SEQ ID NO: 2;
Anacy_3458 having an amino acid sequence represented by SEQ ID NO: 3; or
a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr1841, the NIES970_09470, and the Anacy_3458; wherein the cell wall-pyruvic acid modifying enzyme is:
Slr0688 having an amino acid sequence represented by SEQ ID NO: 4;
Synpcc7942_1529 having an amino acid sequence represented by SEQ ID NO: 5;
Anacy_1623 having an amino acid sequence represented by SEQ ID NO: 6; or
a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr0688, the Synpcc7942_1529, and the Anacy_1623. Independent claim 7 and dependent claim 8-10 recite wherein a gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is deleted or inactivated; wherein the gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is at least one of a gene encoding an SLH domain-containing outer membrane protein or a gene encoding a cell wall-pyruvic acid modifying enzyme; and wherein he gene encoding the SLH domain-containing outer membrane protein is: slr1841 having a nucleotide sequence represented by SEQ ID NO: 7; nies970_09470 having a nucleotide sequence represented by SEQ ID NO: 8; anacy_3458 having a nucleotide sequence represented by SEQ ID NO: 9; or a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr1841, the nies970_09470, and the anacy_3458; wherein the gene encoding the cell wall-pyruvic acid modifying enzyme is: slr0688 having a nucleotide sequence represented by SEQ ID NO: 10; synpcc7942_1529 having a nucleotide sequence represented by SEQ ID NO: 11; anacy_1623 having a nucleotide sequence represented by SEQ ID NO: 12; or
a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr0688, the synpcc7942_1529, and the anacy_1623. Independent claim 17 similarly recites the combination of instant claims 7-10 as an independent claim.
The claims to the ‘022 application in their broadest are drawn to a plant growth promoter production method comprising: preparing a modified cyanobacterium in which a function of a protein involved in binding between an outer membrane and a cell wall of cyanobacterium is suppressed or lost; and causing the modified cyanobacteria to secrete a secretion involved in promoting growth of a plant. Dependent claims 2-4 recite wherein in (i), the protein involved in the binding between the outer membrane and the cell wall is at least one of a surface layer homology (SLH) domain-containing outer membrane protein or a cell wall-pyruvic acid modifying enzyme; wherein the SLH domain-containing outer membrane protein is: Slr1841 having an amino acid sequence represented by SEQ ID NO: 1; NIES970_09470 having an amino acid sequence represented by SEQ ID NO: 2; Anacy_3458 having an amino acid sequence represented by SEQ ID NO: 3; or a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr1841, the NIES970_09470, and the Anacy_3458; wherein the cell wall-pyruvic acid modifying enzyme is: Slr0688 having an amino acid sequence represented by SEQ ID NO: 4;
Synpcc7942_1529 having an amino acid sequence represented by SEQ ID NO: 5;
Anacy_1623 having an amino acid sequence represented by SEQ ID NO: 6; or
a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr0688, the Synpcc7942_1529, and the Anacy_1623. Dependent claims 5-8 recite wherein a gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is deleted or inactivated; wherein the gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is at least one of a gene encoding an SLH domain-containing outer membrane protein or a gene encoding a cell wall-pyruvic acid modifying enzyme; and wherein he gene encoding the SLH domain-containing outer membrane protein is: slr1841 having a nucleotide sequence represented by SEQ ID NO: 7; nies970_09470 having a nucleotide sequence represented by SEQ ID NO: 8; anacy_3458 having a nucleotide sequence represented by SEQ ID NO: 9; or a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr1841, the nies970_09470, and the anacy_3458; wherein the gene encoding the cell wall-pyruvic acid modifying enzyme is: slr0688 having a nucleotide sequence represented by SEQ ID NO: 10;
synpcc7942_1529 having a nucleotide sequence represented by SEQ ID NO: 11;
anacy_1623 having a nucleotide sequence represented by SEQ ID NO: 12; or
a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr0688, the synpcc7942_1529, and the anacy_1623.
Thus, the difference between the claims is the modified cyanobacterium of the ‘022 claims which is utilized in the method is not called “an electron carrier”. However, as noted above, given the broad and generic aspect of the instant claims, it is interpreted that any cyanobacterium having any such modification is the electron carrier. Thus, the claims of the ‘022 application render obvious the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Applicant’s Response and Examiner’s Rebuttal:
Applicant’s state that because the instant application has an earlier patent term filing date that the rejection should be withdrawn. This is acknowledged and the instant application does have an earlier patent term filing date. However, as Applicant’s themselves point out, withdrawal is necessitated only when the double patenting rejection is the only rejection remaining. Here it is not the only rejection remaining and is thus maintained.
Claims 1-3, 7-10 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18457500 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘500 patent render obvious the instant application.
The instant claims in their broadest are drawn to an electron carrier comprising:
a modified cyanobacterium in which at least:
(i) a function of a protein involved in binding between an outer membrane and a cell wall of cyanobacterium is suppressed or lost; wherein the modified cyanobacterium performs at least one of supplying electrons to an outside or taking in electrons from the outside. Dependent claims 4-6 recite, wherein in (i), the protein involved in the binding between the outer membrane and the cell wall is at least one of a surface layer homology (SLH) domain-containing outer membrane protein or a cell wall-pyruvic acid modifying enzyme; wherein the SLH domain-containing outer membrane protein is:
Slr1841 having an amino acid sequence represented by SEQ ID NO: 1;
NIES970_09470 having an amino acid sequence represented by SEQ ID NO: 2;
Anacy_3458 having an amino acid sequence represented by SEQ ID NO: 3; or
a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr1841, the NIES970_09470, and the Anacy_3458; wherein the cell wall-pyruvic acid modifying enzyme is:
Slr0688 having an amino acid sequence represented by SEQ ID NO: 4;
Synpcc7942_1529 having an amino acid sequence represented by SEQ ID NO: 5;
Anacy_1623 having an amino acid sequence represented by SEQ ID NO: 6; or
a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr0688, the Synpcc7942_1529, and the Anacy_1623. Independent claim 7 and dependent claim 8-10 recite wherein a gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is deleted or inactivated; wherein the gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is at least one of a gene encoding an SLH domain-containing outer membrane protein or a gene encoding a cell wall-pyruvic acid modifying enzyme; and wherein he gene encoding the SLH domain-containing outer membrane protein is: slr1841 having a nucleotide sequence represented by SEQ ID NO: 7; nies970_09470 having a nucleotide sequence represented by SEQ ID NO: 8; anacy_3458 having a nucleotide sequence represented by SEQ ID NO: 9; or a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr1841, the nies970_09470, and the anacy_3458; wherein the gene encoding the cell wall-pyruvic acid modifying enzyme is: slr0688 having a nucleotide sequence represented by SEQ ID NO: 10; synpcc7942_1529 having a nucleotide sequence represented by SEQ ID NO: 11; anacy_1623 having a nucleotide sequence represented by SEQ ID NO: 12; or
a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr0688, the synpcc7942_1529, and the anacy_1623. Independent claim 17 similarly recites the combination of instant claims 7-10 as an independent claim.
The claims to the ‘500 application in their broadest are drawn to plant acidic invertase activator production method comprising: preparing a modified cyanobacterium in which a total amount of a protein involved in binding between an outer membrane and a cell wall of cyanobacterium is suppressed to between 30 percent and 70 percent, inclusive, of a total amount of the protein in a parent strain; and causing the modified cyanobacteria to secrete a secretion involved in activating an acidic invertase of a plant. Dependent claims Dependent claims 2-4 recite, wherein in (i), the protein involved in the binding between the outer membrane and the cell wall is at least one of a surface layer homology (SLH) domain-containing outer membrane protein or a cell wall-pyruvic acid modifying enzyme; wherein the SLH domain-containing outer membrane protein is: Slr1841 having an amino acid sequence represented by SEQ ID NO: 1; NIES970_09470 having an amino acid sequence represented by SEQ ID NO: 2; Anacy_3458 having an amino acid sequence represented by SEQ ID NO: 3; or a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr1841, the NIES970_09470, and the Anacy_3458; wherein the cell wall-pyruvic acid modifying enzyme is: Slr0688 having an amino acid sequence represented by SEQ ID NO: 4; Synpcc7942_1529 having an amino acid sequence represented by SEQ ID NO: 5; Anacy_1623 having an amino acid sequence represented by SEQ ID NO: 6; or a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr0688, the Synpcc7942_1529, and the Anacy_1623. Dependent claims 5-8 recite wherein a gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is deleted or inactivated; wherein the gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is at least one of a gene encoding an SLH domain-containing outer membrane protein or a gene encoding a cell wall-pyruvic acid modifying enzyme; and wherein he gene encoding the SLH domain-containing outer membrane protein is: slr1841 having a nucleotide sequence represented by SEQ ID NO: 7; nies970_09470 having a nucleotide sequence represented by SEQ ID NO: 8; anacy_3458 having a nucleotide sequence represented by SEQ ID NO: 9; or a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr1841, the nies970_09470, and the anacy_3458; wherein the gene encoding the cell wall-pyruvic acid modifying enzyme is: slr0688 having a nucleotide sequence represented by SEQ ID NO: 10; synpcc7942_1529 having a nucleotide sequence represented by SEQ ID NO: 11; anacy_1623 having a nucleotide sequence represented by SEQ ID NO: 12; or
a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr0688, the synpcc7942_1529, and the anacy_1623.
Thus, the difference between the claims is the modified cyanobacterium of the ‘500 claims which is utilized in the method is not called “an electron carrier”. However, as noted above, given the broad and generic aspect of the instant claims, it is interpreted that any cyanobacterium having any such modification is the electron carrier. Thus, the claims of the ‘500 application render obvious the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Applicant’s Response and Examiner’s Rebuttal:
Applicant’s state that because the instant application has an earlier patent term filing date that the rejection should be withdrawn. This is acknowledged and the instant application does have an earlier patent term filing date. However, as Applicant’s themselves point out, withdrawal is necessitated only when the double patenting rejection is the only rejection remaining. Here it is not the only rejection remaining and is thus maintained.
Claims 1-3, 7-10 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18458443 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘443 application render obvious the instant claims.
The instant claims in their broadest are drawn to an electron carrier comprising:
a modified cyanobacterium in which at least:
(i) a function of a protein involved in binding between an outer membrane and a cell wall of cyanobacterium is suppressed or lost; wherein the modified cyanobacterium performs at least one of supplying electrons to an outside or taking in electrons from the outside. Dependent claims 4-6 recite, wherein in (i), the protein involved in the binding between the outer membrane and the cell wall is at least one of a surface layer homology (SLH) domain-containing outer membrane protein or a cell wall-pyruvic acid modifying enzyme; wherein the SLH domain-containing outer membrane protein is:
Slr1841 having an amino acid sequence represented by SEQ ID NO: 1;
NIES970_09470 having an amino acid sequence represented by SEQ ID NO: 2;
Anacy_3458 having an amino acid sequence represented by SEQ ID NO: 3; or
a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr1841, the NIES970_09470, and the Anacy_3458; wherein the cell wall-pyruvic acid modifying enzyme is:
Slr0688 having an amino acid sequence represented by SEQ ID NO: 4;
Synpcc7942_1529 having an amino acid sequence represented by SEQ ID NO: 5;
Anacy_1623 having an amino acid sequence represented by SEQ ID NO: 6; or
a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr0688, the Synpcc7942_1529, and the Anacy_1623. Independent claim 7 and dependent claim 8-10 recite wherein a gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is deleted or inactivated; wherein the gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is at least one of a gene encoding an SLH domain-containing outer membrane protein or a gene encoding a cell wall-pyruvic acid modifying enzyme; and wherein he gene encoding the SLH domain-containing outer membrane protein is: slr1841 having a nucleotide sequence represented by SEQ ID NO: 7; nies970_09470 having a nucleotide sequence represented by SEQ ID NO: 8; anacy_3458 having a nucleotide sequence represented by SEQ ID NO: 9; or a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr1841, the nies970_09470, and the anacy_3458; wherein the gene encoding the cell wall-pyruvic acid modifying enzyme is: slr0688 having a nucleotide sequence represented by SEQ ID NO: 10; synpcc7942_1529 having a nucleotide sequence represented by SEQ ID NO: 11; anacy_1623 having a nucleotide sequence represented by SEQ ID NO: 12; or
a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr0688, the synpcc7942_1529, and the anacy_1623. Independent claim 17 similarly recites the combination of instant claims 7-10 as an independent claim.
The claims to the ‘443 application in their broadest are drawn to A plant growth promoter production method comprising: preparing a modified cyanobacterium in which a total amount of a protein involved in binding between an outer membrane and a cell wall of cyanobacterium is suppressed to between 30 percent and 70 percent, inclusive, of a total amount of the protein in a parent strain; and causing the modified cyanobacteria to secrete a secretion involved in promoting growth of a plant. Dependent claims 2-4 recite, wherein in (i), the protein involved in the binding between the outer membrane and the cell wall is at least one of a surface layer homology (SLH) domain-containing outer membrane protein or a cell wall-pyruvic acid modifying enzyme; wherein the SLH domain-containing outer membrane protein is: Slr1841 having an amino acid sequence represented by SEQ ID NO: 1; NIES970_09470 having an amino acid sequence represented by SEQ ID NO: 2; Anacy_3458 having an amino acid sequence represented by SEQ ID NO: 3; or a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr1841, the NIES970_09470, and the Anacy_3458; wherein the cell wall-pyruvic acid modifying enzyme is: Slr0688 having an amino acid sequence represented by SEQ ID NO: 4; Synpcc7942_1529 having an amino acid sequence represented by SEQ ID NO: 5; Anacy_1623 having an amino acid sequence represented by SEQ ID NO: 6; or
a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr0688, the Synpcc7942_1529, and the Anacy_1623. Dependent claims 5-8 recite wherein a gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is deleted or inactivated; wherein the gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is at least one of a gene encoding an SLH domain-containing outer membrane protein or a gene encoding a cell wall-pyruvic acid modifying enzyme; and wherein he gene encoding the SLH domain-containing outer membrane protein is: slr1841 having a nucleotide sequence represented by SEQ ID NO: 7; nies970_09470 having a nucleotide sequence represented by SEQ ID NO: 8; anacy_3458 having a nucleotide sequence represented by SEQ ID NO: 9; or a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr1841, the nies970_09470, and the anacy_3458; wherein the gene encoding the cell wall-pyruvic acid modifying enzyme is: slr0688 having a nucleotide sequence represented by SEQ ID NO: 10;
synpcc7942_1529 having a nucleotide sequence represented by SEQ ID NO: 11;
anacy_1623 having a nucleotide sequence represented by SEQ ID NO: 12; or
a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr0688, the synpcc7942_1529, and the anacy_1623.
Thus, the difference between the claims is the modified cyanobacterium of the ‘443 claims which is utilized in the method is not called “an electron carrier”. However, as noted above, given the broad and generic aspect of the instant claims, it is interpreted that any cyanobacterium having any such modification is the electron carrier. Thus, the claims of the ‘443 application render obvious the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Applicant’s Response and Examiner’s Rebuttal:
Applicant’s state that because the instant application has an earlier patent term filing date that the rejection should be withdrawn. This is acknowledged and the instant application does have an earlier patent term filing date. However, as Applicant’s themselves point out, withdrawal is necessitated only when the double patenting rejection is the only rejection remaining. Here it is not the only rejection remaining and is thus maintained.
Claims 1-3, 7-10 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18974875 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘875 application render obvious the instant claims.
The instant claims in their broadest are drawn to an electron carrier comprising:
a modified cyanobacterium in which at least:
(i) a function of a protein involved in binding between an outer membrane and a cell wall of cyanobacterium is suppressed or lost; wherein the modified cyanobacterium performs at least one of supplying electrons to an outside or taking in electrons from the outside. Dependent claims 4-6 recite, wherein in (i), the protein involved in the binding between the outer membrane and the cell wall is at least one of a surface layer homology (SLH) domain-containing outer membrane protein or a cell wall-pyruvic acid modifying enzyme; wherein the SLH domain-containing outer membrane protein is:
Slr1841 having an amino acid sequence represented by SEQ ID NO: 1;
NIES970_09470 having an amino acid sequence represented by SEQ ID NO: 2;
Anacy_3458 having an amino acid sequence represented by SEQ ID NO: 3; or
a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr1841, the NIES970_09470, and the Anacy_3458; wherein the cell wall-pyruvic acid modifying enzyme is:
Slr0688 having an amino acid sequence represented by SEQ ID NO: 4;
Synpcc7942_1529 having an amino acid sequence represented by SEQ ID NO: 5;
Anacy_1623 having an amino acid sequence represented by SEQ ID NO: 6; or
a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr0688, the Synpcc7942_1529, and the Anacy_1623. Independent claim 7 and dependent claim 8-10 recite wherein a gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is deleted or inactivated; wherein the gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is at least one of a gene encoding an SLH domain-containing outer membrane protein or a gene encoding a cell wall-pyruvic acid modifying enzyme; and wherein he gene encoding the SLH domain-containing outer membrane protein is: slr1841 having a nucleotide sequence represented by SEQ ID NO: 7; nies970_09470 having a nucleotide sequence represented by SEQ ID NO: 8; anacy_3458 having a nucleotide sequence represented by SEQ ID NO: 9; or a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr1841, the nies970_09470, and the anacy_3458; wherein the gene encoding the cell wall-pyruvic acid modifying enzyme is: slr0688 having a nucleotide sequence represented by SEQ ID NO: 10; synpcc7942_1529 having a nucleotide sequence represented by SEQ ID NO: 11; anacy_1623 having a nucleotide sequence represented by SEQ ID NO: 12; or
a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr0688, the synpcc7942_1529, and the anacy_1623. Independent claim 17 similarly recites the combination of instant claims 7-10 as an independent claim.
The claims to the ‘875 application in their broadest are drawn to a plant disease resistance inducing agent comprising a secretion product of a cyanobacterium (claims 1); The plant disease resistance inducing agent according to claim 1, wherein
the cyanobacterium is a modified cyanobacterium in which a function of a protein involved in binding between an outer membrane and a cell wall is suppressed or eliminated (claim 2). Dependent claims 3-5 recite, wherein in (i), the protein involved in the binding between the outer membrane and the cell wall is at least one of a surface layer homology (SLH) domain-containing outer membrane protein or a cell wall-pyruvic acid modifying enzyme; wherein the SLH domain-containing outer membrane protein is: Slr1841 having an amino acid sequence represented by SEQ ID NO: 1; NIES970_09470 having an amino acid sequence represented by SEQ ID NO: 2; Anacy_3458 having an amino acid sequence represented by SEQ ID NO: 3; or a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr1841, the NIES970_09470, and the Anacy_3458; wherein the cell wall-pyruvic acid modifying enzyme is: Slr0688 having an amino acid sequence represented by SEQ ID NO: 4; Synpcc7942_1529 having an amino acid sequence represented by SEQ ID NO: 5; Anacy_1623 having an amino acid sequence represented by SEQ ID NO: 6; or a protein having an amino acid sequence that is at least 50 percent identical to the amino acid sequence of any one of the Slr0688, the Synpcc7942_1529, and the Anacy_1623. Dependent claims 6-9 recite wherein a gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is deleted or inactivated; wherein the gene which causes expression of the protein involved in the binding between the outer membrane and the cell wall is at least one of a gene encoding an SLH domain-containing outer membrane protein or a gene encoding a cell wall-pyruvic acid modifying enzyme; and wherein he gene encoding the SLH domain-containing outer membrane protein is: slr1841 having a nucleotide sequence represented by SEQ ID NO: 7; nies970_09470 having a nucleotide sequence represented by SEQ ID NO: 8; anacy_3458 having a nucleotide sequence represented by SEQ ID NO: 9; or a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr1841, the nies970_09470, and the anacy_3458; wherein the gene encoding the cell wall-pyruvic acid modifying enzyme is: slr0688 having a nucleotide sequence represented by SEQ ID NO: 10; synpcc7942_1529 having a nucleotide sequence represented by SEQ ID NO: 11; anacy_1623 having a nucleotide sequence represented by SEQ ID NO: 12; or
a gene having a nucleotide sequence that is at least 50 percent identical to the nucleotide sequence of any one of the slr0688, the synpcc7942_1529, and the anacy_1623.
Thus the difference between the two sets of claims is the claims to the ‘875 application recite a plant resistance inducing agent and the instant claims recite an electron carrier. However, given both expressly recite utilization of the exact same modified cyanobacterium, then they are inherently one and the same thing.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Applicant’s Response and Examiner’s Rebuttal:
Applicant’s state that because the instant application has an earlier patent term filing date that the rejection should be withdrawn. This is acknowledged and the instant application does have an earlier patent term filing date. However, as Applicant’s themselves point out, withdrawal is necessitated only when the double patenting rejection is the only rejection remaining. Here it is not the only rejection remaining and is thus maintained.
** It is noted in all the Non-statutory double patenting rejections above, instant SEQ ID NOs: 1-12 have 100% sequence identity to each of SEQ ID NOs: 1-12 in the noted applications. See Supplemental Content, files ending in.rapbm for the amino acids sequences, Results #1 and duplicates thereof; and files ending in .rnpbm for nucleic acid sequences, Results #1 and duplicates thereof.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/SUZANNE M NOAKES/Primary Examiner, Art Unit 1656 20 February 2026