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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/20/2025 has been entered.
Priority
This application is a 371 of PCT/EP2020/0829661 filed 1/20/2020. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d) based on GB1917046.3 filed 11/22/2019. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of the Claims
Claims 3, 5-37 and 40-42 are pending. Claims 3, 5-26, 29, 37 and 40-42 are amended. Claims 38 and 39 are cancelled. Claims 21-28 and 30-37 were withdrawn.
Claims 3, 5-20, 29 and 40-42 are pending (claim set as filed on 11/07/2025) and are examined on the merits herein.
Withdrawal of Rejections
The response and amendment filed on 11/07/2025 are acknowledged. All of the amendment and arguments have been thoroughly reviewed and considered.
For the purposes of clarity of the record, the reasons for the Examiner's withdrawal and/or maintaining if applicable, of the substantive or essential claim rejections are detailed directly below and/or in the Examiner's response to arguments section.
The previous claims 5 and 39 rejections under 35 U.S.C.112(b) have been withdrawn necessitated by amendment of claim 5 and cancellation of claim 39.
The previous claims 6-11 rejections under 35 U.S.C.101 have been withdrawn necessitated by amendment of claims 6-11.
The previous claims 3, 5, 12-20, 29, 38-42 rejections under 35 U.S.C.103 have been withdrawn necessitated by amendment of claim 3.
Claim Objections
Claims 1 and 20 are objected to because of the following informalities:
Claim 1 recites in line 12: “stability of the wildtype N-intein domain and variants or the wildtype N-intein domain”. Applicant is suggested to replace recitation with: “stability of the wildtype N-intein domain and variants of the wildtype N-intein domain”.
Claim 20 recites: “is stabile”. Applicant is suggested to replace recitation with: “is stable”
Appropriate correction is required.
New Rejections
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 3, 5, 12-20, 29 and 40-42 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 3 recites: “an amino acid substitution of the asparagine (N) in at least position 36, and, independently, any other asparagine residue, of SEQ ID NO:1”. The recitation has several issues:
It is not clear whether all asparagine residues of SEQ ID NO:1 are required to be substituted. The “at least” points to substitution of asparagine at position 36 only, but “and” indicates requirement for additional substitution.
It is not clear if “any other asparagine residue” refers to one additional asparagine residue or all other asparagine residues in the sequence (which are N35 and N38).
It is also unclear what “independently” refers to, whether it refers to substitution of any other asparagine residue independent of substitution of asparagine at position 36 or type of modification since two substitutions to histidine or glutamine are recited in lines 13-14.
Claims 5, 12-20, 29 and 40-42, dependent on claim 3, do not resolve the issue mentioned above and are rejected.
For examination claim is interpreted as having limitation of substitution of all asparagine residues in SEQ ID NO:1 wherein substitution can be to either histidine or glutamine independently of each other.
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 3, 5, 12-20, 29 and 40-42 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 3 is directed to an N-intein protein variant of the wildtype N-intein domain comprising sequence with SEQ ID NO:1 and only the following substitutions: substitution of cysteine at position 1 to any amino acid and substitution of asparagine at position 36 and any other asparagines with amino acid increasing alkaline stability, which are histidine and glutamine.
The prior art Muir (WO 2017132580 A2 on record in IDS) teaches N-intein of Nostoc punctoforme with SEQ ID NO:5 (paragraph 0067) which has 100% identity to instant SEQ ID NO:1. Muir discloses multiple variants of N-intein one of which has substitution of all asparagine residues, i.e. SEQ ID NO:41 (paragraph 0121), however that variant has other additional substitutions and retains cysteine at position 1. Ohman (WO 2018091424 A1) teaches protein with SEQ ID NO:5 comprising instant N-intein with SEQ ID NO:1 and having cysteine at position 1 substituted, however all other cysteine residues are substituted and asparagine residues are not modified (p. 8, lines 25-26). Thus, the prior art does not teach the instant N-intein variant with only the recited mutations and cannot predict its properties such as stability.
The Specification does not provide working examples evaluating stability of the N-intein variant of claim 3 and the wild-type N-intein with SEQ ID NO:1. The Specification describes alkaline stability for several N-intein variants, i.e. A40, A41 and A48 in Experiment 1 and B22, B72, A48 and A53 in Experiment 2. These variants have substitution of cysteine at position 1 and asparagine substitutions at positions 35 and 38 (though not for histidine or glutamine). The sequence with SEQ ID NO:1 has three asparagines at positions N35, N36 and N38. Variants A48, B22 and B72 have additional N36H substitution. However, all these variants have asparagine at position 25 (R25N) and multiple additional substitutions in the sequence compared to SEQ ID NO:1 and variant of claim 3 (for instance, C59D, Q80E, R90Q) and therefore these variants cannot serve as working examples for claim 3 N-intein variant. Thus, the Specification does not support the increased alkaline stability of the N-intein variant of claim 3 compared to the wildtype N-intein.
Based on the unpredictability taught by the prior art and absence of working examples and directions provided by inventors, one of ordinary skill in the art would have to undergo undue experimentation to practice the invention. Therefore, claim 3 is rejected under 35 U.S.C. 112(a) for failing to disclose sufficient supporting information to enable a person of skill in the art to use an N-intein protein variant with increased alkaline stability.
Claims 5, 12-20, 29 and 40-42, dependent on claim 3, do not resolve the issue mentioned above and are rejected.
Claims 6-11 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 6 is directed to an N-intein protein variant comprising sequence with SEQ ID NO:2 and recited substitutions for variable amino acid residues (marked as X). Claims 7-11 are directed to variants of N-intein with SEQ ID NO:2 with specific substitutions for the variable amino acid residues.
The prior art of Muir and Ohman described above does not teach N-intein variant with the sequence of SEQ ID NO:2 and hence does not predict the alkaline stability of N-intein with SEQ ID NO: 2 or its variants.
The Specification provides working examples of alkaline stability for several N-intein variants, i.e. A40, A41 and A48 in Experiment 1 and B22, B72, A48 and A53 in Experiment 2. A48 correspond to variant of claim 7, B22 – of claim 8, B72 – of claim 9, A40 – of claim 10 and A41 – of claim 11. Experiments 1 and 2 do not contain data on alkaline stability of N-intein with SEQ ID NO:1 relative to which alkaline stability of variants in claims 6-11 is required to be increased. Experiment 1 shows that alkaline stability of variant of claim 7 (A48) is higher than that of variants of claims 10 and 11 (A40 and A41) (Figure 1, p. 49). Additionally, regarding Experiment 1 the Specification recites: “The alkaline stability was further improved compared to native sequences.” (p. 49). However, the “native sequences” are not specified and since Table 1 provides multiple naturally occurring N-inteins, that does not provide information whether alkaline stability is improved relative to SEQ ID NO:1. Additionally, the Specification recites: “In addition, a N36H mutation significantly improved alkali stability as compared to wild type Npu N-intein sequence (A52 with a C1A mutation as compared to SEQ ID NO: 1).” (p. 49). That statement is not supported by experimental data and the sequence of A52 is not provided. Experiment 2 shows increased alkaline stability for A53 < B72 < B22 < A48 (Figure 2, p. 49). The results indicate that N36H mutation present in B72, B22 and A48 and not in A53 increases alkaline stability. However, the results are not compared to the wildtype N-intein with SEQ ID NO:1. The variant A53 is different from the wildtype N-inteins, for instance, it has R25N, N35K and N38F substitutions. Therefore, experimental data do not support the increase in alkaline stability of N-intein variants of claims 6-11 relative to the wildtype N-intein with SEQ ID NO:1.
Based on the unpredictability taught by the prior art and absence of working examples and directions provided by inventors, one of ordinary skill in the art would have to undergo undue experimentation to practice the invention. Therefore, claims 6-11 are rejected under 35 U.S.C. 112(a) for failing to disclose sufficient supporting information to enable a person of skill in the art to use an N-intein protein variant of claims 6-11 with increased alkaline stability.
Response to Arguments
Applicant’s arguments, filed 11/07/2025, with respect to 35 U.S.C. 101 rejection have been fully considered and are persuasive. The previous claims 6-11 rejections under 35 U.S.C.101 have been withdrawn necessitated by amendment of claims 6-11. Amended claims 6-11 are directed to N-intein protein variants and now recite the physical structure and not the abstract idea.
Applicant’s arguments, filed 11/07/2025, with respect to 35 U.S.C. 103 rejection have been fully considered and are persuasive. The previous claims 3, 5, 12-20, 29, 38-42 rejections under 35 U.S.C.103 have been withdrawn necessitated by amendment of claim 3. Amended claim 3 limits N-intein variant to sequence with SEQ ID NO:1 and only the recited substitutions, i.e. cysteine at position 1 and all asparagine residues.
The prior art Muir (WO 2017132580 A2) teaches N-intein of Nostoc punctoforme with SEQ ID NO:5 (paragraph 0067) which has 100% identity to instant SEQ ID NO:1. Muir discloses multiple variants of N-intein one of which has substitution of all asparagine residues, i.e. SEQ ID NO:41 (paragraph 0121), however that variant has other additional substitutions and retains cysteine at position 1. Ohman (WO 2018091424 A1) teaches protein with SEQ ID NO:5 comprising instant N-intein with SEQ ID NO:1 and having cysteine at position 1 substituted, however all other cysteine residues are substituted as well and asparagine residues are not modified (p. 8, lines 25-26). Thus, the prior art does not teach the instant N-intein variant with only the recited mutations.
Therefore, the 35 U.S.C. 101 and 35 U.S.C. 103 rejections were withdrawn necessitated by amendment of the claims. Upon further consideration new rejections were applied as described above.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIOUBOV G KOROTCHKINA whose telephone number is (571)270-0911. The examiner can normally be reached Monday-Friday: 8:00-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sharmila G Landau can be reached at (571)272-0614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/L.G.K./Examiner, Art Unit 1653
/SHARMILA G LANDAU/Supervisory Patent Examiner, Art Unit 1653