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 .
Applicant’s amendment of claims 1, in the paper of 3/3/2026, is acknowledged. Applicants' arguments filed on 3/3/2026, have been fully considered and are deemed to be persuasive to overcome some of the rejections previously applied. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. Claims 1, 3-14, 17-22 are at issue and are present for examination.
Election/Restrictions
Applicants election without traverse of Group 1, claims 1-10, 18 and 19, drawn to an enzyme for reducing acrylamide in a preparation, in the paper of 4/1/2025, is acknowledged. Applicants election without traverse of the following species:
Species Group 1: SEQ ID NO:22;
Species Group 2: position A74;.
Claims 11-14, 17, 20-22 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Rejections - 35 USC § 102
The rejection of claims 1-10, 18 and 19 under 35 U.S.C. 102(a)(1) as being anticipated by Watabe et al., JP2006340630A (IDS of 3/17/2025) is withdrawn based upon applicants amendment of the claims and applicants arguments presented in the paper of 7/8/2025.
Claim Rejections - 35 USC § 103
The rejection of claims 1-10, 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watabe et al., JP2006340630A (IDS of 3/17/2025) is withdrawn based upon applicants amendment of the claims and applicants arguments presented in the paper of 7/8/2025.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 3-10, 18 and 19 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-3, 7-9, 11, 37, 52-55 and 64 of copending Application No. 17/794,358 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 1-10, 18 and 19 drawn to an enzyme for reducing the amount of acrylamide in a preparation comprising an amino acid consensus sequence according to SEQ ID NO. 1, wherein said amino acid sequence is not a sequence according to SEQ ID NO. 2 and wherein said enzyme comprises an amino acid sequence having a sequence identity of at least 95%, 96%, 97%,98% or 99% to the total length of an enzyme having a sequence selected from the group consisting of sequences according to SEQ ID NO. 3 to SEQ ID NO.41, and wherein the amino acid sequence has: at position 33 an arginine or a tyrosine or a histidine or a phenylalanine, and/or at position 41 a tyrosine, and/or at position 68 an asparagine, and/or at position 74 a tyrosine, and/or at position 94 an isoleucine, and/or at position 175 an alanine, and/or at position 201 a phenylalanine, and/or at position 217 an arginine, and/or at position 221 a glycine, and/or at position 225 a threonine, and/or at position 229 a cysteine, and/or at position 317 an isoleucine, and/or at position 328 an arginine, and/or at position 424 a valine, and/or at position 445 an arginine or a serine, and/or at position 448 a histidine, and/or at position 453 an aspartate or a cysteine or an asparagine or a glutamine or a glutamate or a lysine or an arginine or a serine, and/or at position 454 an asparagine, and/or at position 457a glycine, and/or at position 507 a proline anticipate and are anticipated by claims 1-3, 7-9, 11, 37, 52-55 and 64 drawn to an enzyme for reducing the amount of acrylamide in a preparation, comprising an amino acid sequence having a sequence identity of at least 86% to the total length of an enzyme having a sequence according to SEQ ID NO. 2, wherein the amino acid sequence has, compared to SEQ ID NO. 2, at least one amino acid substitution at a position located in one of the following sequence segments of SEQ ID NO. 2: (a) Position L424 to position A507; (b) position S33 to position A74; or (c) Position G175 to position L229; wherein the amino acid sequence has, compared to SEQ ID NO. 2, at least one of the amino acid substitutions selected from positions S33, D68, A74, G175, S225, L424, G445, A453,and A507.
This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Applicants have asked that this rejection be held in abeyance until allowable subject matter is identified.
Remarks
No claim is allowed.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD G HUTSON whose telephone number is (571)272-0930. The examiner can normally be reached 6-3 EST Mon-Fri.
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, Robert Mondesi can be reached on (408) 918-7584. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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rgh
5/8/2026
/RICHARD G HUTSON/Primary Examiner, Art Unit 1652
Prosecution Insights