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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/30/2026 has been entered.
Applicant’s cancellation of claims 2, 5-12, amendment of claims 1, 5-9, 15, 16, 18, and the addition of new claim 19, in the paper of 4/30/2026, is acknowledged. Applicants' arguments filed on 4/30/2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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, 2, 5-9, 13-16, 18 and 19 are still at issue and are present for examination.
Election/Restrictions
Applicant's election without traverse of the invention of Group 1, claims 1-14, to a cleaning composition, in the paper of 7/18/2025, is acknowledged.
It is acknowledged that the previous restriction requirement also required a species election from each of 7 different Species election groups. It is further acknowledged that applicants did not elect any species from any of the previous 7 Species groups, however, applicants did amend the claims to address most of the species election requirements.
Claims 15, 16 and 18 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.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 § 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 1, 2, 5, 6, 7, 8, 9, 13-14 and 19 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 1 (claims 2, 5, 6, 7, 8, 9, 10, 13-14 and 19 dependent from) is indefinite in the recitation “an improved wash performance, comprising a specific activity of Improvement Factor (IF) >1.0, compared to the parent alpha-amylase set forth in SEQ ID NO: 2.” in that it is unclear what this “improved wash performance” is. The recited “improved wash performance” is further indefinite in its reference to it comprises(ing) a specific activity of Improvement Factor (IF) >1.0, as it is unclear what a specific activity of Improvement Factor (IF) >1.0 is. The recited “improved wash performance” is further indefinite in that it is compared to “the parent alpha-amylase set forth in SEQ ID NO: 2” which lacks antecedent basis. Thus based upon each of the preceding cited issues the recitation “an improved wash performance, comprising a specific activity of Improvement Factor (IF) >1.0, compared to the parent alpha-amylase set forth in SEQ ID NO: 2.” is unclear, confusing and for the cited reasons indefinite.
Appropriate correction and/or comment is required.
Claim Rejections - 35 USC § 102
The rejection of claim(s) 1, 2, 5, 6, 7, 8, 9, 11-14 under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Novozymes WO 2018/141707 as evidenced by Igarashi et al. (Biochemical and Biophysical Research Communications, Vol 248, pp 372-377, 1998) is withdrawn based upon applicants amendment of the claims in the paper of 4/30/2026.
Claim Rejections - 35 USC § 103
The rejection of claim(s) 1, 2, 5, 6, 7, 8, 9, 11-14 under 35 U.S.C. 103 as being unpatentable over Novozymes WO 2018/141707 and Igarashi et al. (Biochemical and Biophysical Research Communications, Vol 248, pp 372-377, 1998) is withdrawn based upon applicants amendment of the claims in the paper of 4/30/2026.
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 § 2146 et seq. 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, 2, 5, 6, 7, 8, 9, 10, 13-14 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-29 of copending Application No. 17/781,512 in view Igarashi et al. (Biochemical and Biophysical Research Communications, Vol 248, pp 372-377, 1998). Although the claims at issue are not identical, they are not patentably distinct from each other because 16-29 of copending Application No. 17/781,512, drawn to an alpha-amylase variant of a parent alpha-amylase, wherein said variant comprises a modification at one or more position corresponding to positions: 118 using SEQ ID NO: 1 for numbering, and wherein the said variant has at least 85%, at least 86%, at least 87%, at least 88%, at least 89%, at least 90%, at least 91%, at least 92%, at least 93%, at least 94%, at least 95%, at least 96%, at least 97%, at least 98%, or at least 99%, but less than 100% sequence identity to the SEQ ID NO: 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13 or 14 and wherein said variant has an improved performance, such as an improved wash performance for a measure of specific activity of Improvement Factor (IF) >1.0, when compared to said parent polypeptide, preferably SEQ ID NO: 2 or 3, in view of Igarashi et al. (Biochemical and Biophysical Research Communications, Vol 248, pp 372-377, 1998) for the reasons discussed above anticipate/make obvious instant claims 1-14 drawn to a cleaning composition comprising: (i) an alpha-amylase variant of a parent alpha-amylase, wherein said variant comprises a modification at position 7, and wherein the said variant has at least 60% but less than 100% sequence identity to the SEQ ID NO: 2 and wherein said variant has an improved performance, optionally an improved wash performance, for a measure of specific activity of Improvement Factor (IF) >1.0, when compared to said parent alpha-amylase; and (ii) a cleaning adjunct.
This is a provisional nonstatutory double patenting rejection.
Applicants continue to submit that the claims as set forth herein are distinguishable from those of the 512 application such that the rejection is overcome. This is not found persuasive for the reasons stated previously and repeated above;
Remarks
No claim is allowed.
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 on 6-3 EST Mon-Fri.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Mondesi can be reached on (571) 272-0956. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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rgh
6/15/2026
/RICHARD G HUTSON/Primary Examiner, Art Unit 1652
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