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 .
DETAILED ACTION
Application Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicants' claim to priority of 06/21/2021 is acknowledged.
Applicants' amendment to the claims filed on 6/20/2025 is acknowledged. This listing of claims replaces all prior listings of claims in the application.
Claims 1 and 3-19 are pending.
Claim 2 is cancelled.
Claims 10-13, 15, and 16 are withdrawn as drawn to a nonelected invention. Claims 1, 3-9, 14, 17, 18 and 19 are presently under examination.
Priority
Acknowledgement is made of applicant's claim for domestic priority under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) to US Provisional Patent Application 63/212,896, filing date 06/21/2021. The certified copy has been electronically retrieved by the USPTO on 06/30/2022.
Applicant’s response and amended set of claims filed on 6-20-2025 have been considered and entered. Objections and rejections not reiterated from the previous Office action have all been overcome by the applicant.
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 1, 3-9, 14, and 17-18 are rejected under 35 U.S.C. 101 because the claimed
invention is directed to a nature-based product without significantly more. The claims recite a recombinant polymerase comprising an amino acid sequence having at least 98% sequence identity to SEQ ID NO: 2 (or SEQ ID NO: 1) and further to a sequence that is at least 99% identical to SEQ ID NO:2. Applicant is referred to the previous office action for the entire rejection.
Response to Applicant’s remarks
In response to the above rejection, applicant argues that the newly submitted claim amendments overcome the pending rejection under 35 USC 101. While examiner agrees that some of the amendments made does overcome the rejection, there is still claim and claim language that do not over come the rejection. For example claims 1 and 3 recites the phrase “at least 98% sequence identity”. It should be noted that this phrase does not limit the claim to sequences that are just 99% identical to the enzyme sequence. The use of the phrase “at least” encompasses sequences that are 100% identical to the naturally occurring sequences and therefore continue to read on the natural enzyme sequence. Similarly new claim 19 is directly drawn to a polymerase comprising SEQ ID NO:1 or 2 which again reads on naturally occurring enzyme sequence.
Amending claims 1 and 3 to delete the phrase “at least” and cancelling claim 19 would overcome this rejection.
Since the above rejection is the only outstanding rejection, examiner invited the applicants to either file a new set of amended claims addressing the above or give authorization to the examiner to make these amendments and move the case towards allowance. However, such a request was not entertained by the applicant and the applicant insisted for an office action.
Conclusion
Claims 1, 3-9, 14, 17, 18 and 19 are rejected.
Claims 10-13, 15, and 16 are withdrawn as drawn to a nonelected invention.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Manjunath Rao whose telephone number is 571-272-0939. The examiner can normally be reached Mon - Fri 7:30 - 5:00.
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, Jennifer Michener can be reached on (571) 272-0939. 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 ttps://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.
/MANJUNATH N RAO/ Supervisory Patent Examiner, Art Unit 1656
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