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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/10/2025 has been entered.
DETAILED ACTION
Claims 4-6, 10-17, and 19-20 are canceled. Claims 22-24 are new. Claims 1-3, 7-9, 18, and 21-24 are pending. Claims 8-9 are withdrawn from consideration as being drawn to a nonelected invention.
Claims 1-3, 7, 18 and 21-24 are under consideration in this action.
The instant claims are entitled to an effective filing date of 11/11/2019.
Specification
The disclosure is objected to because of the following informalities: Paragraph [007] recites “SEQ D NO:” twice and both recitations should be replaced with “SEQ ID NO:”. Appropriate correction is required.
Claim Objections
Claims 2 and 22-24 are objected to because of the following informalities:
Claim 2 recites “operon wherein” in line 7, which should be replaced with “operon, wherein” so that the wherein clause is introduced with a comma.
Claims 22-24 recite “SppA” in line 2, which should be replaced with “SdpA”, the correct spelling.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
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 1-3, 7, 18 and 21-24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for:
a method for producing an increased amount of a ME-3 protease in a modified Bacillus subtilis ZM207 cell comprising: obtaining a B. subtilis ZM207 cell having a yitMOP operon encoding YitM, YitO and YitP polypeptides having SEQ ID NO: 2, SEQ ID NO: 4 and SEQ ID NO: 6, respectively, introducing an expression construct encoding the ME-3 protease into the B. subtilis ZM207 cell, modifying the B. subtilis ZM207 cell by deleting the yitMOP operon or by deleting the yitM gene encoding SEQ ID NO: 2, and fermenting the modified cell under suitable conditions for the production of the ME-3 protease, wherein the modified cell produces an increased amount of ME-3 protease relative to a B. subtilis ZM207 cell prior to the deletion when fermented under the same conditions;
the specification does not reasonably provide enablement for:
producing an increased amount of any enzyme in a modified B. subtilis cell comprising: obtaining a Bacillus subtilis cell having a yitMOP operon encoding YitM, YitO and YitP polypeptides having at least 90% identity to SEQ ID NOs: 2, 4 and 6 respectively, introducing an expression construct encoding the enzyme into the B. subtilis cell, modifying the B. subtilis cell by deleting the yitMOP operon, and fermenting the modified cell under suitable conditions for the production of the enzyme wherein the modified cell produces an increased amount of the enzyme relative to the unmodified b. subtilis cell fermented under the same conditions (relevant to instant claim 1); producing an increased amount of any enzyme in a modified B. subtilis cell comprising: obtaining a Bacillus subtilis cell having a yitMOP operon encoding YitM, YitO and YitP polypeptides having at least 90% identity to SEQ ID NOs: 2, 4 and 6, respectively, introducing an expression construct encoding the enzyme into the B. subtilis cell, modifying the B. subtilis cell by deleting the promoter of the yitMOP operon wherein the cell does not express the YitM, YitO and YitP polypeptides, wherein the promoter comprises a nucleotide sequence having at least 90% identity to SEQ ID NO: 40, and fermenting the modified cell under suitable conditions for the production of the enzyme, wherein the modified cell produces an increased amount of the enzyme relative to the unmodified B. subtilis cell when fermented under the same conditions (relevant to instant claim 2); producing an increased amount of a protein of interest (POI) in a modified B. subtilis cell comprising: obtaining a B. subtilis cell having yitM gene encoding YitM polypeptide having at least 90% identity to SEQ ID NO: 2, introducing an expression construct encoding the enzyme into the B. subtilis cell, modifying the B. subtilis cell by deleting the yitM gene, and fermenting the modified cell under suitable conditions for the production of the enzyme, wherein the modified cell produces an increased amount of the enzyme relative to the unmodified B. subtilis cell when fermented under the same conditions (relevant to instant claim 3). The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
The factors to be considered in determining whether a disclosure would require undue experimentation include:
A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 8 USPQ2d, 1400 (CAFC 1988) and MPEP 2164.01.
The breadth of the claims and the nature of the invention:
Claim 1 recites a method for producing an increased amount of an enzyme in a modified Bacillus subtilis cell comprising: obtaining a Bacillus subtilis cell having a yitMOP operon encoding YitM, YitO and YitP polypeptides having at least 90% identity to SEQ ID NO: 2, SEQ ID NO: 4 and SEQ ID NO: 6 respectively, introducing an expression construct encoding the enzyme into the B. subtilis cell, modifying the B. subtilis cell by deleting the yitMOP operon, and fermenting the modified cell under suitable conditions for the production of the enzyme, wherein the modified cell produces an increased amount of the enzyme relative to the unmodified B. subtilis cell when fermented under the same conditions. Claim 7 depends from claim 1 and requires the enzyme to be selected from a group consisting of acetyl esterases, aminopeptidases, amylases, arabinases, arabinofuranosidases, carbonic anhydrases, carboxypeptidases, catalases, cellulases, chitinases, chymosins, cutinases, deoxyribonucleases, epimerases, esterases, α - galactosidases, β-galactosidases, α-glucanases, glucan lysases, endo- β-glucanases, glucoamylases, glucose oxidases, α -glucosidases, β -glucosidases, glucuronidases, glycosyl hydrolases, hemicellulases, hexose oxidases, hydrolases, invertases, isomerases, laccases, ligases, lipases, lyases, mannosidases, oxidases, oxidoreductases, pectate lyases, pectin acetyl esterases, pectin depolymerases, pectin methyl esterases, pectinolytic enzymes, perhydrolases, polyol oxidases, peroxidases, phenoloxidases, phytases, polygalacturonases, proteases, peptidases, rhamno-galacturonases, ribonucleases, transferases, transglutaminases, xylanases and hexose oxidases. Claim 22 depends from claim 1 and requires the cell to further comprise a deletion of the sdpABC operon, wherein the sdpABC operon encodes SdpA, SdpB and SdpC polypeptides having at least 90% identity to SEQ ID NO: 43, 45 and 47 respectively. However, claim 22 does not attribute increased enzyme production to the structure of the deleted sdpABC operon. As such, claims 1, 7 and 22 entail a correlation between the structure of the modified B. subtilis cell (with an introduced enzyme expression construct and a deleted yitMOP operon) and the function of increasing enzyme production; wherein the deleted yitMOP operon encodes YitM, YitO and YitP polypeptides having at least 90% identity to SEQ ID NO: 2, SEQ ID NO: 4 and SEQ ID NO: 6 respectively.
Claim 2 recites a method for producing an increased amount of an enzyme in a modified Bacillus subtilis cell comprising: obtaining a Bacillus subtilis cell having a yitMOP operon encoding YitM, YitO and YitP polypeptides having at least 90% identity to SEQ ID NO: 2, SEQ ID NO: 4 and SEQ ID NO: 6 respectively, introducing an expression construct encoding the enzyme into the B. subtilis cell, modifying the B. subtilis cell by deleting the promoter of the yitMOP operon wherein the cell does not express the YitM, YitO and YitP polypeptides, wherein the promoter comprises a nucleotide sequence having at least 90% identity to SEQ ID NO: 40, and fermenting the modified cell under suitable conditions for the production of the enzyme, wherein the modified cell produces an increased amount of the enzyme relative to the unmodified B. subtilis cell when fermented under the same conditions. Claim 18 depends from claim 2 and requires the enzyme to be selected from the same list recited in claim 7, as discussed above. Claim 23 depends from claim 2 and requires the cell to further comprise a deletion of the sdpABC operon, wherein the sdpABC operon encodes SdpA, SdpB and SdpC polypeptides having at least 90% identity to SEQ ID NO: 43, 45 and 47 respectively. However, claim 23 does not attribute increased enzyme production to the structure of the deleted sdpABC operon. As such, claims 2, 18 and 23 entail a correlation between the structure of the modified B. subtilis cell (with an introduced enzyme expression construct and a deleted yitMOP operon promoter comprising at least a 90% identity to SEQ ID NO: 40) and the function of increasing enzyme production.
Claim 3 recites a method for producing an increased amount of a protein of interest (POI) in a modified Bacillus subtilis cell comprising: obtaining a Bacillus subtilis cell having a yitM gene encoding YitM polypeptide having at least 90% identity to SEQ ID NO: 2, introducing an expression construct encoding the enzyme into the B. subtilis cell, modifying the B. subtilis cell by deleting the yitM gene, and fermenting the modified cell under suitable conditions for the production of the enzyme, wherein the modified cell produces an increased amount of the enzyme relative to the unmodified B. subtilis cell when fermented under the same conditions. Claim 21 depends from claim 3 and requires the enzyme to be selected from the same list recited in claim 7 and discussed above. Claim 24 depends from claim 3 and requires the cell to further comprise a deletion of the sdpABC operon, wherein the sdpABC operon encodes SdpA, SdpB and SdpC polypeptides having at least 90% identity to SEQ ID NO: 43, 45 and 47 respectively. However, claim 24 does not attribute increased enzyme production to the structure of the deleted sdpABC operon. As such, claims 3, 21 and 24 entail a correlation between the structure of the modified B. subtilis cell (with an introduced enzyme expression construct and a deleted yitM gene that encodes a YitM polypeptide that has at least 90% identity to SEQ ID NO: 2) and the function of increased enzyme production.
The state of the prior art and the level of predictability in the art:
With respect to the state of the art on Bacillus strains containing the yitMOP operon, Kobayashi (PLoS Genetics, 2019, 15(10), e1008232) teaches an undomesticated B. subtilis strain NCIB3610, referred to as the wild-type strain or 3610, that encodes yitPOM (e.g. parental Bacillus). See the first 2 lines of the results section. The yitPOM operon is a paralog of the sdpABC operon; however, these operons are under different control and play distinct roles. See the first 2 lines in the second paragraph of the discussion section on page 20. According to table S1 of Kobayashi, not all B. subtilis strains have a yitPOM operon. See the paragraph spanning pages 18-19 and table S1. For example, table S1 of Kobayashi indicates that B. subtilis Bs916 does not have yitPOM. Yet, B. subtilis Bs916 is a wild-type strain, as evidenced by Zhou (PLoS One, 11(5), e0156247, 2016). See table 1 of Zhou. Thus, the state of the art indicates that the yitPOM operon is not ubiquitous to all Bacillus strains.
With respect to the state of the art of on deleting the yitMOP operon or yitM gene, Kobayashi teaches derivatives of wild-type B. subtilis strain NCIB3610, such as N1263 with ΔyitR-yitM::tet and N1290 with a ΔnprB-yitM. See table 1 and the first paragraph of the materials and methods section. As shown in figure 2C, the deleted regions in both ΔyitR-yitM and ΔnprB-yitM include the operon yitPOM. Kobayashi teaches maintaining B. subtilis strain NCIB3610 and derivatives (e.g. NCIB3610 and N1263) in LB and growing the B. subtilis strains on LB plates overnight. See the first paragraph in the materials and methods section. Thus, Kobayashi teaches genetically modifying a parental NCIB3610 B. subtilis cell by deleting the yitMOP operon, which includes the yitM gene, and fermenting the modified cells. However, Kobayashi is silent regarding an increased production of an enzyme.
Fu (CN118406709, published 07-30-2024), a past filing date reference, teaches a method for enhancing the secretory expression of B. subtilis characterized by silencing the genes ytxE, ytrF, trpP, gabP, fliP, thiT, yyaD, motB-2, fliQ, flhA, yvcS, sipV, yitP, ecsB, fliR, fliF, ceA, yvrO,oxaAB, and flhB in the originating bacteria; or overexpressing the genes yxdM, secDF, cydD, sdpB,pomA, skfF, yvbW, motA, crh, spoiIIQ, comEA, and ytnA. See claim 1. Thus, Fu indicates that silencing the yitP gene or overexpressing the sdpB gene in B. subtilis may contribute to enhancing secretory expression, but Fu is silent regarding the way in which secretory expression would be affected by deleting the yitMOP operon, deleting the yitMOP promoter, deleting the yitM gene, or deleting the sdpABC operon.
The amount of direction provided by the inventor and the existence of working examples:
Example 3 describes the production of a protease ME-3 in B. subtilis cells. A parental ZM207 cell and modified cells are fermented under identical conditions in Grants II medium at 42˚C for forty hours. See paragraph [0272]. The parental ZM207 cell comprises a deleted alanine racemase gene (ΔalrA) and an introduced expression cassette encoding a ME-3 protease. See [0086] The modified cells include the following ZM207 daughter strains: ZM336 comprising ΔyitMOP, ZM268 comprising ME-3 protease +ΔsdpABC +ΔyitMOP, and ZM434 comprising ΔyitM. See paragraph [0272] and table 14 and 15. Subsequently, fermentation supernatants are taken and ME-3 protease activity is determined. The parental ZM207 strain produces a ME-3 protease titer of 46.2 ± 1.7 mOD/min, while the ZM336 daughter strain (ΔyitMOP) has a titer of 68.4± 0.3, the ZM268 daughter strain (ME-3 protease +ΔsdpABC +ΔyitMOP) has a titer of 74.2± 0.8 and the ZM434 daughter strain (ΔyitM) had a titer of 78.7 ± 0.3. See paragraph [0273] and table 15. Thus, the instant disclosure teaches B. subtilis cells lacking the yitMOP operon (i.e. the ZM336 and ZM268 strains) and a genetically modified B. subtilis cell lacking yitM (i.e. ZM434) that are able to produce increased amount of a heterologous ME-3 protease, as compared to the ZM207 parental strain.
Example 4 describes the production of heterologous protease (V42) in parental and modified B. subtilis cells under large scale fermentation conditions. A B. subtilis strain named “JL77” comprises an introduced expression cassette encoding a V42 protease and a combined deletion of the yitMOP operon and the sdpABC operon (ΔyitMOP +ΔsdpABC). As shown in figure 2, the JL77 produces more heterologous V42 protease as compared to CB24-12 parental strain. See [0277]. The CB24-12 strain comprises a deleted alanine racemase gene and an introduced expression cassette encoding the V42 protease. See [0092]. Thus, the instant specification indicates that a daughter strain lacking both yitMOP and sdpABC (i.e. the JL77 strain) is capable of producing increased amounts of a V42 protease, as compared to a parental cell. Yet, the specification does not indicate whether the ΔyitMOP structure alone, i.e. without the ΔsdpABC, is solely responsible for the increased production of V42 protease.
In summation, the specification provides guidance for producing one enzyme, ME-3 protease, at increased amounts by genetically modifying B. subtilis ZM207 cells comprising a deleted alanine racemase gene (ΔalrA) and a deleted yitMOP operon or a deleted yitM gene, where the deleted yitMOP operon encodes YitM protein (SEQ ID NO: 2), YitO (SEQ ID NO: 4) and YitP (SEQ ID NO: 6) and the deleted yitM gene encodes YitM protein (SEQ ID NO: 2). See paragraph [0257] of the specification. As such, the specification does not reduce to practice deleting a yitMOP operon that encodes YitM, YitO, and YitP polypeptides having less than 100% identity (e.g. at least 90%) to SEQ ID NOs: 2, 4 and 6 respectively or promoters thereof, nor does the specification reduce to practice deleting a yitM gene that encodes a polypeptide that has less than 100% identity to SEQ ID NO: 2.
The quantity of experimentation needed to make or use the invention:
In view of the nature of the invention, the breadth of the claims, the guidance and
working examples in the specification, and the level of predictability within the art, as
evidenced above, one skilled in the art could not use the disclosed method to increase the production of any enzyme in any B. subtilis strain, without undue experimentation. Prior to the effective filing date of the instantly claimed invention, it was well known that not all wild-type B. subtilis strains encode the yitPOM operon as evidenced by Kobayashi and Zhou. The working examples in the instant specification demonstrate increasing ME-3 protease production by deleting the yitMOP operon or the yitM gene in the parental B. subtilis ZM207 strain. Although the instant specification also demonstrates increasing the production of heterologous protease (V42), the increased production is the result of the combined deletion of the yitMOP operon and the sdpABC operon (ΔyitMOP +ΔsdpABC) in the B. subtilis JL77 strain. Consequently, there is no indication that deleting the yitMOP operon or the yitM gene in other B. subtilis strains besides B. subtilis ZM207 will result in an increased amount of any protein besides ME-3 protease relative to a parental strain. Furthermore, there is no indication that deleting any yitMOP operon that encodes polypeptides YitM, YitO, and YitP having at least 90% identity to SEQ ID NOs: 2, 4 and 6 respectively (relevant to instant claim 1), deleting a promoter of such yitMOP operon that is at least 90% identical to SEQ ID NO: 40 (relevant to instant claim 2), or deleting any yitM gene that encodes a YitM polypeptide that has at least 90% identity to SEQ ID NO: 2 (relevant to instant claim 3) will result in an increased production an enzyme.
Accordingly, the claims are enabled for a method for producing an increased amount of ME-3 protease in a modified Bacillus subtilis ZM207 cell comprising: obtaining a Bacillus subtilis ZM207 cell having a yitMOP operon encoding YitM, YitO and YitP polypeptides having SEQ ID NO: 2, SEQ ID NO: 4 and SEQ ID NO: 6 respectively, introducing an expression construct encoding ME-3 protease into the B. subtilis ZM207 cell, modifying the B. subtilis ZM207 cell by deleting the yitMOP operon or by deleting the yitM gene encoding SEQ ID NO: 2, and fermenting the modified cell under suitable conditions for the production of ME-3 protease, wherein the modified cell produces an increased amount of the ME-3 protease relative to the unmodified B. subtilis ZM207 cell when fermented under the same conditions.
Response to Arguments
Applicant's arguments filed 11/10/2025 have been fully considered but they are not persuasive.
§112(a) enablement rejection
Applicant asserts that claims 1-3 are commensurate with the working examples and data of the present application, which demonstrate increased production of enzymes (e.g. proteases such as ME-3 and V42), under the recited genetic modifications and fermentation conditions. Applicant argues that the specification provides sufficient guidance to support the genus “enzyme”, including detailed protocols, strain backgrounds and fermentation conditions. See the first paragraph on page 6 of the remarks.
This argument is not persuasive because examples 3 and 4 in the specification do not provide support commensurate in scope with the instant claims. As discussed above, example 3 teaches increasing the production of ME-3 protease in B. subtilis ZM207 by deleting the yitMOP operon (encoding SEQ ID NOs: 2, 4 and 6) or by deleting the yitM gene (100% identical to instant SEQ ID NO: 2). See example 3. Yet, the claims indicate that the production of any enzyme can also be increased by: deleting any yitMOP operon that encodes polypeptides that are at least 90% identical to SEQ ID NOs: 2, 4 and 6 (relevant to instant claim 1); deleting any yitMOP operon promoter that is at least 90% identical to instant SEQ ID NO: 40 (relevant to instant claim 2); or deleting only the yitM gene that encodes any polypeptide that is at least 90% identical to SEQ ID NO: 2 (relevant to instant claim 3). Thus, the claims attribute the function of increasing enzyme production to a wide breadth of B. subtilis structures, whereas example 3 attributes the function of increasing ME-3 protease production to two different specific modifications, i.e. the deletion of the yitMOP operon (encoding SEQ ID NOs: 2, 4 and 6) or the yitM gene (100% identical to instant SEQ ID NO: 2). Although example 4 demonstrates increasing V42 protease production, example 4 does not attribute the increase in V42 production solely to the deletion of the yitMOP operon because the JL77 strain used comprises a combined deletion of the yitMOP operon and the sdpABC operon (ΔyitMOP +ΔsdpABC). See [0277]. New claims 22-24 require the cell to further comprise a deletion of a sdpABC operon that encodes SdpA, SdpB, and SdpC having at least 90% identity to SEQ ID NOs: 43, 45, and 47 respectively. However, the claim as a whole does not indicate that such deletion is necessary for increased enzyme production. Furthermore, in example 4 the deleted yitMOP operon is understood as encoding SEQ ID NOs: 2, 4 and 6 and the deleted sdpABC operon is understood to encode polypeptides SdpA, SdpB, and SdpC having 100% identity to SEQ ID NOs: 43, 45 and 47 respectively.
Applicant argues that claim 2 now recites “modifying the B. subtilis cell by deleting the promoter of the yitMOP operon wherein the cell does not express the YitM, YitO and YitP polypeptides”, which is enabled by the instant application. See the second paragraph on page 6.
This argument is not persuasive because the specification does not reduce to practice the steps of deleting a yitMOP operon promoter and, consequently, producing an increased amount of an enzyme. Although the specification reduces to practice the step of deleting a yitMOP operon such that the YitM, YitO and YitP polypeptides are not expressed, the specification does not provide sufficient support for deleting a promoter comprising at least 90% identity to SEQ ID NO: 40 and increasing enzyme production.
Applicant argues that
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ΔalrA is not a causative factor, but a constant background used for selection via the aprE;;P-enzyme-alrA cassette. The observed increases are attributable to the yitMOP/yitM deletions. See the third paragraph on page 6 of the remarks.
This argument is not persuasive because the rejection does not intend to insinuate that the ΔalrA contributes to increased enzyme production. The ΔalrA modification was mentioned previously in the rejection for context. The examples describe comparing the ME-3 protease or V42 protease production of modified daughter B. subtilis cells to parental B. subtilis strains that include modifications, e.g. the ΔalrA deletion prior to the cassette integration. In contrast, the instant claims encompass comparing the enzyme production of modified B. subtilis cells to any unmodified B. subtilis cell. In other words, the parental strains described in examples 3 and 4 are not explicitly unmodified B. subtilis cells. The rejection above is edited for clarity.
Claim Rejections - 35 USC § 112(b)
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 1-3, 18, 21, and 23-24 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.
Claims 1-3 recite “the unmodified B. subtilis cell” in the last 2 lines. There is insufficient antecedent basis for this limitation in the claims. Specifically, claims 1-3 require the modified cell to produce an increased amount of an enzyme relative to “the unmodified B. subtilis cell”. However, it is unclear which unmodified B. subtilis cell is being referenced, so there are multiple reasonable interpretations for this limitation. In the first interpretation, the claims require the modified cell to produce increased amounts of the enzyme relative to any unmodified or wild-type B. subtilis cell. In the second reasonable interpretation, “the unmodified B. subtilis cell” refers to the obtained B. subtilis cell before the introduction of the expression construct encoding the enzyme. In the third interpretation, “the unmodified B. subtilis cell” refers to the obtained B. subtilis cell after the introduction of the expression construct encoding the enzyme, but before the recited modifying step.
Claims 7, 18, and 21-24 depend from claim 1, 2 or 3 and are rejected for the reason set forth above.
Claim 2 recites “the cell” in line 7, which is indefinite because it is unclear whether “the cell” refers to the obtained Bacillus subtilis cell (line 3) or the modified B. subtilis cell (line 6). Consequently, there are multiple reasonable claim interpretations. Specifically, claim 2 requires “wherein the cell does not express the YitM, YitO and YitP polypeptides”. In the first interpretation, claim 2 requires obtaining a B. subtilis cell that has a yitMOP operon encoding YitM, YitO and YitP polypeptides but does not express the YitM, YitO and YitP polypeptides. In the second interpretation, the claim requires modifying the B. subtilis cell that has a yitMOP operon by deleting the promoter of the yitMOP operon such that the modified B. subtilis cell does not express the YitM, YitO and YitP polypeptides. For compact prosecution, the claim is interpreted in accordance with the second reasonable interpretation.
Claims 18 and 23 depend from claim 2 and is rejected for the reason set forth above.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation “protein of interest” in line 1, and the claim also recites “the enzyme” in lines 4-5 and 7 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 21 and 24 depend from claim 3 and is rejected for the reason set forth above.
Claims 22-24 depend from claims 1-3 respectively and recite “the cell” in line 1, which is indefinite because it is unclear whether “the cell” refers to the obtained Bacillus subtilis cell (line 3 of claim 1-3), the modified B. subtilis cell (line 5 or 6 of claims 1-3) or the unmodified B. subtilis cell (last 2 lines of claims 1-3). Consequently, there are multiple reasonable claim interpretations. In the first interpretation, the claims require obtaining a B. subtilis cell that comprises a deletion of a sdpABC operon that encodes SdpA, SdpB and SdpC having at least 90% sequence identity matches to SEQ ID NOs:43, 45 and 47 respectively. However, in this interpretation it is further unclear whether the claims intend to encompass obtaining any B. subtilis cell that lacks the specific sdpABC operon that encodes sequences that are at least 90% identical to SEQ ID NOs: 43, 45 and 47, or whether the claims intend to encompass only B. subtilis cells that had such sdpABC operon deleted. In the second interpretation, claims 22-24 require the modified B. subtilis cell to further comprise a deletion of the sdpABC operon encoding sequences at least 90% identical to SEQ ID NOs: 43, 45 and 47. However, in this interpretation it is further unclear whether the claims require the active method step of deleting the sdpABC from the modified B. subtilis cell. In the third interpretation, “the cell” refers to the unmodified cell, such that the modified cell produces an increased amount of the enzyme relative to an unmodified B. subtilis cell that does not comprise the instantly claimed sdpABC operon. As such, one of ordinary skill in the art cannot ascertain the metes and bounds of the cell required in claims 22-24.
Claims 22-24 depend from claims 1-3 respectively and recite “the sdpABC operon” in lines 1-2. There is insufficient antecedent basis for this limitation in the claims. It is unclear which sdpABC operon claims 22-24 intend to limit because there is no earlier recitation of a sdpABC operon in claims 1-3.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIMBERLY C BREEN whose telephone number is (571)272-0980. The examiner can normally be reached M-Th 7:30-4:30, F 8:30-1:30 (EDT/EST).
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/LOUISE W HUMPHREY/Supervisory Patent Examiner, Art Unit 1657
/K.C.B./Examiner, Art Unit 1657