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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 14, 2025 has been entered.
DETAILED ACTION
This application is a US national phase PCT/EP2020/081402, filed November 7, 2020, with provisional applications 62/933215 and 62/936977, filed November 8, 2019.
Claims 2-4, 9-11, and 20-31 are canceled, and claims 32-38 are newly added. Claims 1, 5-8, 12-19, and 32-38 are pending and under examination.
Claim Objections
Claim 32 is objected to because of the following informalities: lines 1-2, needs to be changed to “….comprising a combination of substitutions selected from the group consisting of:…a)…, b)…, c)…, d)…, and e)…” for proper Markush claim language. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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, 5-7, 12-13, 18-19, and 37-38 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The Federal Circuit has clarified the application of the written description requirement to inventions in the field of biotechnology. See University of California v. Eli Lilly and Co., 119 F.3d 1559, 1568,43 USPQ2d l398, 1406 (Fed. Cir. 1997). The Court stated that a written description of an invention requires a precise definition, one that defines the structural features of the chemical genus that distinguishes it from other chemical structures. A definition by function does not suffice to define the genus because it is only an indication of what the gene does, rather than what it is. Further, the Court held that to adequately describe a claimed genus, an applicant must describe a representative number of species of the claimed genus, and that one of skill in the art should be able to "visualize or recognize the identity of the members of the genus."
Regarding claim 1, the specification does not sufficiently describe a polypeptide having deoxyribonuclease activity comprising one or more substitutions at the recited amino acid (AA) positions and having at least 95% sequence identity to SEQ ID NO: 1.
The claims require a polypeptide having the deoxyribonuclease activity with at least 95% sequence identity to the SEQ ID NO: 1. However, the specification has failed to sufficiently describe the structural features that must be retained by members of the claimed genus as to establish a structure-function relationship with respect to the activity, only disclosing the variant has one or more specified AA substitutions. For example, SEQ ID: 1 is 260 amino acids long. A protein sharing only 95% identity relative to SEQ ID: 1 could have anywhere from 1 to 13 substitutions, deletions or additions in any combination along any length of SEQ ID: 1. Thus, an enormous genus (2012 = 4.1 x 1015) comprising literally more than trillions of sequences is encompassed by the tremendously broad scope of the claims.
However, while the claims are drawn to a genus that comprises literally trillions of sequences, the specification has only adequately described and successfully reduced to practice the full-length of SEQ ID NO’s: 3-7, 9-10, 12-13,15-18, 20-21, 23-24, 26-29, 31-42. This is not representative of the extremely large genus of sequences claimed, since only 34 other variants of SEQ ID NO: 1 is demonstrated to have deoxyribonuclease activity. At best, the specification contemplates the use of BLAST to identify functional homologs based on sequence homology. However, this is not sufficient to describe members of the claimed genus because such methods access online databases that are continually being updated as sequencing technology improves. As a result, they are not a static source of information. Thus, one of skill in the art would readily appreciate that relying on a non-patent source that is continuously subject to change as a means to identify members of the claimed genus does not sufficiently meet the written description requirement.
Moreover, Friedberg (Brief. Bioinformatics (2006) 7: 225-242, cited in PTO-892 mailed 2/13/2025) teaches that homology-based transfer is not reliable for functional annotation even with high alignment percentages (page 227, second column). Friedberg also teaches that identification of functionally significant sub-regions is critical to functional annotation, and that often addition, deletion, or re-shuffling of domains can lead to errors in annotation (page 227, second column, page 228, first paragraph). Furthermore, Friedberg teaches that sequence-based tools are just not sensitive enough to identify functional protein similarity as databases get larger, and diversity of sequences gets larger (page 228, first full paragraph).
Thorton et al. (Nature structural biology, structural genomics supplement, November 2000, pgs. 991-994, cited in PTO-892 mailed 2/13/2025) teaches that the same protein structure is often seen in apparently different homologous families with different functions. Thorton et al. further describe examples of little correlation between specific enzyme function and overall protein structure (see page 992, right column, at lines 2-10).
Thus, when taken with the teachings of Friedberg and Thorton, one of skill in the art would readily appreciate that sequence homology alone cannot serve as the basis to describe members of the genus that have the recited function. In the absence of a representative number of examples and any art-recognized structure-function relationship, the specification must at least describe the structural features that are required for the claimed function, in this case to the aforementioned activities. However, as discussed above, the specification fails to describe any substantive structural limitations as to establish a structure-function relationship with respect to the activities. Instead, Applicant merely offers a statement that any polypeptide having the intended activity will work.
Claims 5, 7, and 13 recite specific substitutions S174K, S174R, T177R, T177K, G105R, G105K, I130L, I130V, I130M, P197S, T205R, T205K, P227S, T14K, T14R, H44R, H44K, S75K, S75R, S138K, and S138R of the deoxyribonuclease variant, however only T14K, T14R, H44R, S75K, G105R, I130L, S138K, S174K, T177R, P197R, T205R, and P227S are demonstrated to have deoxyribonuclease activity as disclosed in the specification in Table 1. The Specification mentions conservative and non-conservative amino acid substitutions [0036], but does not indicate whether the conservative substitution at the recited positions would retain function, nor whether or not that position is generally tolerant to substitutions based on structure. Therefore, the specification only demonstrates the single specific substitutions disclosed in Table 1 as having deoxyribonuclease activity, and does not describe possession of variants having alternative substitutions, even if such substitutions may be considered conservative. Claims 18-19 and 37-38 are likewise rejected since they fail to ameliorate the written description requirement of the base claims above upon which they depend.
Accordingly, the claims as currently written are not adequately described and one of skill in the art would readily appreciate that Applicant was not in possession of the claimed genus at the time of filing.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 5, and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Latham et al. (US20110318811A1, IDS 5/30/2023, hereinafter “Latham”) in view of Kishi et al. (Legal Medicine 3 (2001) 69-83, hereinafter “Kishi”) and Yasuda et al. (Biochimica et Biophysica Acta 1672 (2004) 174–183, hereinafter “Yasuda”), as evidenced by Betts et al. (Bioinformatics for Geneticists. Edited by Michael R. Barnes and Ian C. Gray, Copyright ¶ 2003 John Wiley & Sons, Ltd. Chapter 14, pgs. 289-316, hereinafter “Betts”).
Latham teaches compositions and method for making and using a synthetic bovine DNase I (abstract). Latham teaches the bovine DNase I is according to amino acid sequence SEQ ID NO: 2, which has 99.9% sequence identity to instant SEQ ID NO: 1 [0015]. Latham teaches the modified synthetic bovine DNase I exhibits several desirable properties as compared to wild-type DNase I, such as 20-fold lower Km, and is also salt-tolerant [0011]. Latham teaches variants are sequences that may be the combination of sequences from different organisms for the same or closely related sequences to, e.g., modify the functionality of the final protein by directed modifications or even to permit specific recombinant modification or manipulation by the user [0037]. The G-D-F-N-A-x-C-S/A (positions corresponding to AA 167-174 of instant SEQ ID NO: 1) sequence is a DNase I motif that distinguishes this family of enzymes from others as described by, e.g., PROSITE, and may include rat, rabbit, and other DNase I proteins [0037]. Latham teaches a double mutant comprising substitutions E13R and N74K increased the salt tolerance compared to the wild-type, and had a 3.6-fold increase in activity in the presence of 150mM NaCl compared to no added NaCl [0103], which meets the limitation of claim 38. As disclosed by Latham in the sequence alignments of DNase I in different organisms (Table 1), the rat and mouse DNase I has a lysine/K corresponding to the N74 position of the mature bovine DNase I, which when coupled with the E13R substitution conferred a more salt-tolerant enzyme (pg. 7).
Latham does not teach substitution S174K.
However, Kishi teaches a review of DNase I, and discloses the amino acid sequences of 14 DNase I from man, bovine, snake, newt, inter alia, which highlights differences among the sequences (pg. 70, Fig. 1). Kishi teaches two motifs identified as the mammalian `DNase I signature' sequences, [LIVM](2)-[AP]-L-H-[STA](2)-P-x(5)-E-[LIVM]-[DN]-x-L-x-[DE]-V (signature 1: position 130-150) and GD-F-N-A-x-C-[SA] (signature 2: position 167-174), in which an arbitrary amino acid residue is indicated as ‘x', are found in all DNase-like sequences determined so far, however, snake enzyme lacks signature 2, and all amphibian enzymes lack both of the signatures (pg. 71, sec. 2.2). Kishi teaches the newt DNase has a substitution of S174K (pg. 70, Fig. 1). Kishi also teaches G-actin inhibits the activities of the bovine, human, rabbit and mouse enzymes, but not those of rat, pig, hen, frog, toad, snake, newt and fish (pg. 72, col. 2, para 1). Table 1 in Kishi also shows newt DNase has an optimum pH of 8.0 compared to 6.5 optimum pH of bovine DNase (pg. 72, Table 1). As evidenced by Betts, lysine is commonly substituted with arginine or other polar amino acids (pg. 304, sec. 14.5.11). Kishi teaches substitution residues at position 174 are S/N/K; and substitution residues at position 177 are R/T/Q/S/K, that conserve the catalytic activity of deoxyribonuclease I. See an enlarged section of the sequence alignment map in Figure 1 on page 70 of the Kishi reference, which is reproduced below.
PNG
media_image1.png
502
492
media_image1.png
Greyscale
Yasuda teaches a single amino acid substitution can shift the optimum pH of DNase I for enzyme activity, such as when the His residue at position 44 in the low-pH mammalian enzymes with a pH optimum of 6.5-7.0, replaces Asp corresponding to that position in the high-pH reptile, amphibian, and piscine enzymes group, decreased their optimum pH to a value similar to that of the low-pH group (abstract). Yasuda teaches DNase I alignments between eel, sea bream, Takifugu, and snake (Elaphe climacophora), all showed an Asp/N substitution corresponding to S174 of the human DNase, which would suggest a possible increase in optimum pH exhibited by piscine/snake DNases, inversely similar to the point N44H substitution taught by Yasuda, which substitutes a polar AA (i.e. serine/asparagine) with a positively charged residue (i.e. lysine/arginine/histidine) (pg. 179, Fig. 4).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify a bovine DNase I to enhance desirable enzymatic properties with site-specific mutations as taught by Latham, and substitute an amino acid in the signature 2 motif of the bovine DNase, such as at the S174 position, with the K174 corresponding residue found in newt DNase, which may confer G-actin resistance and high pH tolerance as taught by Kishi and Yasuda. It would have been obvious to substitute another art-recognized amino acid residue at the same position for the amino acid residue disclosed in Latham’s SEQ ID NO:2 to obtain the claimed substitutions S174K and T177K/R with a reasonable expectation of success, since these amino acids of deoxyribonuclease I are known among the animal species, as elucidated by Kishi et al. One of ordinary skill in the art would have been motivated to try different substitutions in the signature 2 motif taught by Latham and Kishi, since substituting polar residues with positively charged AA’s at key positions in the DNase I sequence may confer desirable enzymatic properties, such as increasing halotolerance, G-actin resistance, and a higher optimum pH, as taught by Yasuda.
Claims 6-8, 12-13, 16, and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Latham et al. (US20110318811A1, IDS 5/30/2023) in view of Kishi et al. (Legal Medicine 3 (2001) 69-83) and Yasuda et al. (Biochimica et Biophysica Acta 1672 (2004) 174–183), as applied to claims 1, 5, and 38 above, and further in view of Ramaswamy et al. (US8535925B2, cited in IDS filed 5/30/2023).
Latham, Kishi, and Yasuda teach differences in key amino acid positions of DNase I compared between different organisms, and how site-specific substitutions can confer desirable enzymatic properties to engineered DNase.
Regarding claims 6-7, Ramaswamy teaches a DNase polypeptide sequence comprising SEQ ID NO: 19, which is 80.8% identical to instant SEQ ID NO: 1 and has the mutations I130L and T205K (see sequence comparison below).
PNG
media_image2.png
498
666
media_image2.png
Greyscale
Ramaswamy teaches Leu130 and Ser-205 (i.e., inserted between the Ala and Thr in human DNase I, same as the bovine DNase I) induce heat lability in a DNase (col. 12, lines 50-53).
Regarding claims 8, 12-13 and 16, Ramaswamy also teaches hyperactivity mutations at one or more of Q9R, E13R, T14(K/R), H49K, N74K, and T205(K/R) are believed to be positions at the DNA-binding interface of the DNase and therefore replacing the native amino acids with positively charged amino acids increase binding to negative charged DNA, which results in reduced Km of the DNase for DNA and an increased catalytic efficiency. Positively charged amino acids include: histidine (H), arginine (R), lysine (K), asparagine (N) and glutamine (Q) (col. 11, lines 45-66).
Regarding claim 37, Ramaswamy teaches an exemplary reaction mix and reaction protocol for using a heat-labile hyperactive DNase I with standard reverse transcriptase employs removing genomic DNA, add DNase at room temperature (37 ⁰C), then inactivate DNase I by heating at 55-60 ⁰C for 5 min or more (col. 20, lines 18-25)In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to modify a bovine DNase I to enhance desirable enzymatic properties with site-specific mutations as taught by Latham, and mutate S174 in the signature 2 motif of the bovine DNase to the corresponding residue found in newt DNase, K174, which may confer G-actin resistance and high pH tolerance as taught by Kishi and Yasuda, and add substitutional mutations, I130L, T205(K/R), or T14(K/R), to increase catalytic efficiency and/or confer heat lability to the modified DNase as taught by Ramaswamy with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to include these additional mutations to the modified DNase for a more effective, stable, and heat/salt tolerant enzyme for industrial processes.
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Latham et al. (US20110318811A1, IDS 5/30/2023) in view of Kishi et al. (Legal Medicine (2001) 3: 69-83), Yasuda et al. (Biochimica et Biophysica Acta (2004) 1672: 174–183), and Ramaswamy et al. (US8535925B2, IDS 5/30/2023), as applied to claims 6-8, 12-13, 16, and 37 above, and further in view of Lazuras (WO1997047751A1, cited in PTO-892 mailed 8/22/2025).
The teachings of Latham, Kishi, Yasuda, and Ramaswamy are discussed above. Ramaswamy further teaches a DNase polypeptide having an amino acid sequence according to SEQ ID NO: 22, which has 86.0% sequence identity to instant SEQ ID NO: 1 and a mutation at position S138X (See sequence comparison below). Ramaswamy does not specifically teach S138K mutation, although Ramaswamy teaches DNase I enzymes from different species are highly related as shown in Fig. 1 (col. 7, lines 24-25, pgs. 2-4, Figure 1). Position S138 is a highly variable residue among species, including G, L, E, and T (Figure 1).
PNG
media_image3.png
500
646
media_image3.png
Greyscale
Ramaswamy does not teach the DNase comprising the variable S138X substitution has another substitution at S75K.
However, Lazuras teaches sequence variants of human DNase I that have increased DNA-hydrolytic activity (abstract). Figures 2-4 show data for the following variants: Q9R (SEQ. ID. NO: 2), E13K (SEQ. ID. NO: 3), E13R (SEQ. ID. NO: 4), T14K (SEQ. ID. NO: 5), T14R (SEQ. ID. NO: 6), H44 (SEQ. ID. NO: 7), H44R (SEQ. ID. NO: 8), N74K (SEQ. ID. NO: 9), N74R (SEQ. ID. NO: 10), S75K (SEQ. ID. NO: 1 1 ), T205K (SEQ. ID. NO: 12), T205R (SEQ. ID. NO: 13), E13R:N74 (SEQ. ID. NO. 14), Q9R:E13R:N74K (SEQ. ID. NO: 15), E13R:N74K:T205K (SEQ. ID. NO: 16), Q9R:E13R:N74K:T205K (SEQ. ID. NO: 17). Lazuras teaches especially useful mutations that introduce a basic amino acid residue (for example, lysine K, arginine R, or histidine H) at one or more positions within the DNase I where the amino acid side chains are in close proximity to the negatively charged phosphate backbone of the bound DNA substrate, including, for example, at the positions of amino acid residues Gln9, Glu13, Thr14, His44, Asn74, Ser75, and Thr205 of native human DNase I (Pg. 5, lines 9-13). Lazuras teaches a DNase variant comprising a S75K substitution according to SEQ ID NO: 11, which has 79.8% identity to instant SEQ ID NO: 1 (See sequence comparison below).
PNG
media_image4.png
496
674
media_image4.png
Greyscale
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify a bovine DNase I to enhance desirable enzymatic properties with site-specific mutations as taught by Latham, and substitute an amino acid in the signature 2 motif of the bovine DNase, such as at the S174 position, with the K174 corresponding residue found in newt DNase, which may confer G-actin resistance and high pH tolerance as taught by Kishi and Yasuda, and further add substitutions at I130L, T205(K/R), or T14(K/R) to induce hyperactive mutants and/or confer heat lability to the modified DNase as well as include a substitution at a known variable amino acid position, S138, to any of the other AA residues including K, as suggested by Ramaswamy, and add the substitutional mutation S75K that increases substrate-product conversion activity as taught by Lazuras. There would have been a reasonable expectation of success because Lazuras teaches that the S75K single mutation variant had one of the highest Vmax/Km ratios, indicating this variant is more efficient converting substrate to product than the wild-type (pg. 42, Fig. 3). One of ordinary skill in the art would have been motivated to modify the DNase according to known sequences in the art with the specified substitutions at S75K and S138X to design a more effective DNase.
Claims 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Latham et al. (US20110318811A1, IDS 5/30/2023) in view of Kishi et al. (Legal Medicine (2001) 3: 69-83), Yasuda et al. (Biochimica et Biophysica Acta (2004) 1672: 174–183), and Ramaswamy et al. (US8535925B2, IDS 5/30/2023), as applied to claims 1, 5, and 38 above, and further in view of Alzbutas et al. (US20170107501A1).
Latham, Kishi, and Yasuda do not teach the polypeptide further comprises a heterologous sequence-non-specific double-stranded DNA binding domain, wherein the binding domain comprises a ComEA protein helix-hairpin-helix sequence.
However, Alzbutas teaches DNase comprising an eukaryotic DNase I and an amino acid sequence capable of binding nucleic acid non-specifically comprising at least one helix-hairpin-helix motif, wherein the motif is a ComEA protein helix-hairpin-helix sequence (abstract, claims 1 and 5).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify a bovine DNase I to enhance desirable enzymatic properties with site-specific mutations as taught by Latham, and introduce substitutional mutation S174K in the signature 2 motif of the bovine DNase, based on the K174 corresponding residue found in newt DNase, which may confer G-actin resistance and high pH tolerance, as taught by Kishi and Yasuda, and further include an amino acid sequence capable of binding nucleic acid non-specifically comprising a helix-hairpin-helix motif, the ComEA protein, as taught by Alzbutas with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to fuse a modified DNase with a ComEA protein domain to improve the deoxyribonuclease activity of the enzyme, particularly at high salt concentrations, as disclosed by Alzbutas [0007].
Allowable Subject Matter
Claim 17 is allowed. Claim 17 is free of prior art. As disclosed in the Specification, SEQ ID NO’s: 37-41 are genetically engineered deoxyribonucleases, which are synthetic mutants constructed and cloned by the inventor ([0059] & [0071]).
Claims 32-36 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Newly amended claim 32 is free of prior art; specifically, a deoxyribonuclease variant comprising substitutions P197S and P227S are not obvious over the prior art.
Response to Arguments
Applicant's arguments filed November 14, 2025 have been fully considered but they are not persuasive.
Applicant argues one of ordinary skill in the art would not have a motivation to combine the cited references, nor have a reasonable expectation of success in combining the references to arrive at the claimed subject matter. In addition, or in the alternative, the claimed subject matter is not obvious in view of superior, unexpected results. Applicant argues Latham fails to teach or suggest the S174 substitution. The addition of Kishi and/or Yasuda do not remedy this deficiency because neither Kishi nor Yasuda teach or suggest that a S174 substitution is associated with, or can confer, any beneficial property to DNase I. Since none of the references teach or suggest that a S174 substitution can confer a benefit, there is no motivation to combine the substitutions allegedly taught by Kishi and Yasuda with the synthetic bovine DNase I of Latham, nor is there a reasonable expectation of success that combining such teachings would produce a DNase I having superior properties. Applicant points to the newt species with the S174K substitution also includes over 40 other substitutions disclosed by Kishi, and provides no evidence that the higher optimum pH is conferred by the S174 substitution as opposed to any of the 40 other substitutions. Applicant argues even if Latham teaches the GDFNAxC(S/A) motif, it fails to teach or suggest modifying any amino acid in the motif let alone S174 will result in improved DNase I properties. Applicant argues he mere presence of S174 in a DNase I motif is insufficient to suggest that substituting this amino acid will confer a beneficial property, particularly when Kishi also teaches that snake and all amphibian (e.g., newt) enzymes lack the G-D-F-N-A-x-C-S/A motif. Thus, even if a person of ordinary skill could specifically predict that the S174 modification is responsible for increasing the optimal pH for newt DNase, it could not be expected that the same substitution would the same or similar effect in bovine DNase. Applicant argues Yasuda concludes that only five amino acid residues (Asp44, Met118, Gln134, Glu190 and Met236) in eel DNase 1 were found to be different from the residues of the mammalian enzymes. None of these candidate residues are in the G-D-F-N-A-x-C-S/A motif, nor are any S174. The teachings of Yasuda, even in combination with Kishi and Latham, provide no reason for a person of ordinary skill in the art to expect that a S174 substitution would have any beneficial effect like the Asp44His substitution. On the contrary, in view of the teachings of Yasuda, a person of ordinary skill in the art interested in increasing the optimum pH of DNase I would simply select and modify H44, not K174.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Latham teaches DNase I variants with 99.9% identity to SEQ ID NO: 1, and discloses a double mutant E13R and N75K confers increased salt tolerance compared to the wild type. Furthermore Kishi discloses substitution residues at position 174 are S/N/K; and substitution residues at position 177 are R/T/Q/S/K, that conserve the catalytic activity of deoxyribonuclease I. (See above an enlarged section of the sequence alignment map in Figure 1). It would have been obvious to substitute another art-recognized amino acid residue at the same position for the amino acid residue in Latham’s SEQ ID NO:2 to obtain the claimed substitutions S174K and T177K/R, since these amino acids of deoxyribonuclease I are known among the animal species, as elucidated by Kishi et al.
Applicant argues the claims are not obvious in view of unexpected, superior results. Table 1 of the application as filed shows that a S174K mutation increases thermolability (an 85% reduction in activity after 70 °C for 20 minutes relative to wild-type) and confers salt tolerance (145% increase in activity at 100 mM NaCl relative to wild-type). None of the cited references suggest or hint that substituting the S174 residue with another amino acid could or would increase thermolability or confer salt tolerance of DNase I, therefore the observed activity is a superior and unexpected result. This is evidence that the claimed invention yields unexpectedly improved properties or properties not described in the prior art, which overcomes the alleged prima facie obviousness (see, MPEP §2145).
As described in the updated 103 rejections above, Latham discloses a salt-tolerant variant with E13R and N75K conferring a 3.6-fold increase in activity in the presence of 150mM NaCl compared to no added NaCl, which would fall within the scope of the claimed deoxyribonuclease of claim 1. Similarly, Ramas teaches a heat-labile hyperactive DNase I that is inactivated at temperatures above 55 ⁰C with mutations at the specified claimed positions, which also fall within the scope of the claimed deoxyribonuclease. Thus, the unexpected results are not commensurate with the scope of the claims, therefore does not overcome obviousness.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA EDWARDS whose telephone number is (571)270-0938. The examiner can normally be reached M-F 8am-5pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Louise Humphrey can be reached at (571) 272-5543. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LOUISE W HUMPHREY/Supervisory Patent Examiner, Art Unit 1657
/JESSICA EDWARDS/
Examiner, Art Unit 1657