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 .
Withdrawal of Rejections
The response and amendments filed on 07/15/2026 are acknowledged. Any previously applied minor objections and/or minor rejections (i.e., formal matters), not explicitly restated here for brevity, have been withdrawn necessitated by Applicant’s formality correction and/or amendments. For the purposes of clarity of the record, the reasons for the Examiner’s withdrawal, and/or maintaining, if applicable, of the substantive or essential claim rejections are detailed directly below and/or in the Examiner’s Response to Arguments section.
Briefly, the previous claim rejections under 35 U.S.C. 112(b) for indefiniteness have been withdrawn necessitated by Applicant’s amendments. The previous claim rejections under 35 U.S.C. 103 for obviousness have been withdrawn necessitated by Applicant’s amendments; however, new grounds of rejection have been set forth below.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
New Grounds of Rejection Necessitated by Amendments
Claim Rejections - 35 USC § 103, Obviousness
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 11-14, 22-24, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Okhamafe (WO 2011/097335; Date of Publication: August 11, 2011 – previously cited) in view of Novick (US 2020/0017845; Date of Publication: January 16, 2020 – previously cited).
Okhamafe’s general disclosure relates to the production of phenylalanine ammonia-lyase (PAL) variants produced by prokaryotes, wherein the “PAL variant has a greater phenylalanine-converting activity and/or a reduced immunogenicity as compared to a wild-type PAL” (see, e.g., Okhamafe, abstract).
Regarding claim 11 pertaining to the variant PAL enzyme, Okhamafe teaches SEQ ID NO: 4, which is a PAL enzyme from Anabaena variabilis, and which has 100% sequence identity to instant SEQ ID NO: 1 (see, e.g., Office Action Appendix). Additionally, Okhamafe teaches SEQ ID NO: 11, which is the PAL enzyme from Anabaena variabilis and which comprises amino acid substitutions C530S and C565S (see, e.g., Okhamafe, [0011], [0014], and Figure 5E). Additionally, Okhamafe’s SEQ ID NO: 11 has 99.8% sequence identity to instant SEQ ID NO: 2 (see, e.g., Office Action Appendix). Okhamafe teaches “the step of transforming a cDNA or DNA encoding for all or a part of a prokaryotic PAL or a biologically active fragment, mutant, variant or analog thereof into a cell suitable for the expression thereof. In one embodiment, an expression vector is used to transfer the DNA into a suitable cell or cell line for expression thereof. In a specific embodiment, the cDNA or DNA is transformed into E. coli and recombinant prokaryotic PAL is overexpressed” (see, e.g., Okhamafe, [0042]). Pertaining to the method of preparing a variant PAL enzyme, Okhamafe teaches “the step of transforming a cDNA or DNA encoding for all or a part of a prokaryotic PAL or a biologically active fragment, mutant, variant or analog thereof into a cell suitable for the expression thereof. In one embodiment, an expression vector is used to transfer the DNA into a suitable cell or cell line for expression thereof. In a specific embodiment, the cDNA or DNA is transformed into E. coli and recombinant prokaryotic PAL is overexpressed” (see, e.g., Okhamafe, [0042]). Furthermore, Okhamafe teaches isolating the variant PAL enzyme by “(a) lysing bacterial cells containing the AvPAL variant by homogenization to generate a cell lysate; (b) heating the cell lysate to 65°C for 30 to 120 minutes; (c) centrifuging the heated cell lysate, wherein a supernatant comprising the AvPAL variant is retained; (d) filtering the supernatant to remove precipitates; (e) separating the AvPAL variant from contaminating proteins by sequential chromatography over an anion exchange (AIEX) column, such as a Toyopearl Giga Cap Q 650M column, followed by a hydrophobic interaction (HIC) column, such as a Toyopearl Butyl 650M column, wherein the eluate from the HIC column comprises the AvPAL variant; (f) ultrafiltering or ultrafiltering/diafiltering the eluate from the HIC column comprising the AvPAL variant” (see, e.g., Okhamafe, [0046]).
Regarding claim 12 pertaining to treating a disease or disorder, Okhamafe teaches that the PAL enzyme “has been shown to metabolize phenylalanine and is being developed as an enzyme substitution therapy (EST) for patients disorders or diseases associated with elevated levels of phenylalanine, such as HP A, including PKU, as well as in cancer therapy” (see, e.g., Okhamafe, [0003]). Furthermore, Okhamafe teaches administration of a pegylated recombinant Anabaena variabilis PAL (rAvPAL-PEG), “wherein the rAvPAL protein was derivatized by covalent attachment of polyethylene glycol (PEG) to increase its half-life and optimize its pharmacokinetic profile and/or reduce its immunogenicity” (see, e.g., Okhamafe, [0003]). Pertaining to administration of the variant PAL enzyme, Okhamafe teaches administration of the variant PAL enzyme to subjects that have above normal concentration of plasma phenylalanine (see, e.g., Okhamafe, [0025]-[0029]).
Regarding claim 13 pertaining to administration of the variant PAL enzyme, Okhamafe teaches that the PAL enzyme can be administered subcutaneously (see, e.g., Okhamafe, [0031]).
Regarding claim 14 pertaining to the disease or disorder, Okhamafe teaches that the PAL variant can be administered for therapeutic purposes to treat phenylketonuria (PKU) (see, e.g., Okhamafe, [0001], [0003]).
However, Okhamafe does not teach: one or more amino acid substitutions of (ii) within the PAL enzyme of SEQ ID NO: 1 (claim 11); or wherein the PAL variant further comprises one or more of T102E, M222V, and S23G (claim 22); or wherein ii) is selected from L4P, G218A, G218S, M222L, I268T, I268S, I268N, I268H, I268V, D306G, D306E, G360C, G360N, G360S, N453S, N453A, N453C, N453L, N453M, and N453Q (claim 23); or wherein the PAL variant further comprises one or more of (iii) T102A, T102S, T102P, T102D, T102E, T102F, T102H, T102K, T102R, T102S, T102Y, and M222V (claim 24); or wherein (ii) is selected from L4P, G218A, G218S, M222L, I268T, I268S, I268N, I268H, I268V, D306G, D306E, G360C, G360N, G360S (claim 28).
Novick’s general disclosure relates to engineered PAL enzymes that exhibit enhanced catalytic activity for industrial processes and pharmaceutical compositions (see, e.g., Novick, abstract). Moreover, Novick discloses amino acid substitutions within the PAL enzyme to produce the engineered enzymes with enhanced catalytic activity (see, e.g., Novick, pg. 5, col. 1, lines 15-19).
Regarding claims 11, 23, and 28 pertaining to the amino acid substitutions of (ii), Novick teaches an engineered PAL enzyme that comprises the G218A amino acid substitution (see, e.g., Novick, [0018]-[0019], Tables 8.1 & 9.1). Additionally, Novick teaches SEQ ID NO: 446, which comprises the G218A substitution (see, e.g., Novick, [0018]), and which has 95.5% sequence identity to instant SEQ ID NO: 1 (see, e.g., Office Action Appendix).
Regarding claims 22 and 24 pertaining to additional amino acid substitutions within the PAL enzyme, Novick teaches an engineered PAL enzyme that comprises the T102E substitution (see, e.g., Novick, [0015] & Table 5.1). Additionally, Novick teaches SEQ ID NO: 256, which has 97% sequence identity to instant SEQ ID NO: 1, and which contains the T102E substitution (see, e.g., Office Action Appendix & Novick, pg. 6, col. 4, line 65).
It would have been first obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce Okhamafe’s PAL variant, wherein the PAL variant also contains a G218A substitution, as taught by Novick. One would have been motivated to do so because Novick teaches that a PAL comprising the G218A mutation has increased relative activity compared to the wildtype PAL (see, e.g., Novick, Table 8.1) resulting in enhanced production of EMA401-A1, which is a precursor to angiotensin II type 2 receptor (see, e.g., Novick, [0152] & Table 8.1) Moreover, Okhamafe teaches “PAL variants, including optimization of such compositions to enhance prokaryotic PAL catalytic activity and/or stability, while reducing immunogenicity and/or proteolytic sensitivity of prokaryotic PAL” (see, e.g., Okhamafe, abstract). Furthermore, Okhamafe teaches “the biologically active sites of wild-type prokaryotic PAL are modified to optimize PAL kinetic characteristics”, wherein “the biologically active prokaryotic PAL variant exhibits enzymatic activity that is from about two-fold to about 1000-fold times greater than that of the wild-type PAL” (see, e.g., Okhamafe, [0020]). Therefore, based on the teachings of Okhamafe and Novick, it would have been obvious to produce a PAL variant further comprising a G218A mutation in order to increase the relative activity of the enzyme.
It would have been secondly obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce Okhamafe’s PAL variant, wherein the PAL variant also contains a T102E substitution, as taught by Novick. One would have been motivated to do so because Novick teaches that the sequences that contain the T102E substitution, such as, for example, SEQ ID NOs: 103-110, have significantly increased catalytic activity over the positive control (see, e.g., Novick, Table 5.1). Moreover, Okhamafe teaches “PAL variants, including optimization of such compositions to enhance prokaryotic PAL catalytic activity and/or stability, while reducing immunogenicity and/or proteolytic sensitivity of prokaryotic PAL” (see, e.g., Okhamafe, abstract). Furthermore, Okhamafe teaches “the biologically active sites of wild-type prokaryotic PAL are modified to optimize PAL kinetic characteristics”, wherein “the biologically active prokaryotic PAL variant exhibits enzymatic activity that is from about two-fold to about 1000-fold times greater than that of the wild-type PAL” (see, e.g., Okhamafe, [0020]). Therefore, based on the teachings of Okhamafe and Novick, it would have been obvious to produce a variant PAL enzyme, wherein the enzyme contains C503S, C565S, and T102E substitutions because this would result in a PAL enzyme with enhanced catalytic activity and stability. One would have expected success because Okhamafe and Novick both teach the generation of variant PAL enzymes with enhanced activity.
Claims 15, 17, 25-27, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Weiner (US 2011/0027346; Date of Publication: February 3, 2011 – previously cited) in view of Okhamafe (previously cited) and Novick (previously cited).
Weiner’s general disclosure relates to the synthesis of polypeptides have lyase activity, such as PAL enzymes, for use in pharmaceutical, agricultural, and industrial contexts (see, e.g., Weiner, abstract). Additionally, Weiner discloses methods of producing PAL variants to degrade phenylalanine (see, e.g., Weiner, [0002]-[0003]).
Regarding claim 15 pertaining to a method of obtaining a PAL enzyme variant, Weiner teaches “a transformed cell comprising a nucleic acid sequence of the invention, e.g., a sequence encoding an ammonia lyase, e.g., phenylalanine ammonia lyase, tyrosine ammonia lyase and/or histidine ammonia lyase enzyme of the invention, or a vector of the invention. The host cell may be any of the host cells familiar to those skilled in the art, including prokaryotic cells, eukaryotic cells, such as bacterial cells, fungal cells, yeast cells, mammalian cells, insect cells, or plant cells” (see, e.g., Weiner, [0186]). Moreover, Weiner teaches culturing a transformed cell in minimal media supplemented with phenylalanine (see, e.g., Weiner, [0672]). Additionally, Weiner teaches “Made competent cells and transformed with PAL vector to generate a positive control for selection development” (see, e.g., Weiner, [0674]). Furthermore, Weiner teaches “The sequence of potentially homologous polypeptides or fragments may be determined by ammonia lyase, e.g., phenylalanine ammonia lyase, tyrosine ammonia lyase and/or histidine ammonia lyase enzyme assays (see, e.g., Examples 1, 2 and 3, below), gel electrophoresis and/or microsequencing. The sequence of the prospective polypeptide or fragment of the invention can be compared to an exemplary polypeptide of the invention, or a fragment” (see, e.g., Weiner, [0483]).
Regarding claim 17 pertaining to transformed cells, Weiner teaches transformed cells and codon optimization of the PAL enzyme in E. coli (see, e.g., Weiner, [0434]-[0435]).
However, Weiner does not teach: wherein the variant of PAL enzyme is a variant of Anabaena variabilis (claim 15); or wherein the variant PAL enzyme comprises amino acid substitutions to SEQ ID NO: 1 that comprise C503S and C565S (claim 15); or wherein there is one or more amino acid substitution of (ii) within the PAL enzyme of SEQ ID NO: 1 (claim 15); or wherein the PAL variant further comprises one or more of T102E, M222V, and S23G (claim 25); or wherein ii) is selected from L4P, G218A, G218S, M222L, I268T, I268S, I268N, I268H, I268V, D306G, D306E, G360C, G360N, G360S, N453S, N453A, N453C, N453L, N453M, and N453Q (claim 26); or wherein the PAL variant further comprises one or more of (iii) T102A, T102S, T102P, T102D, T102E, T102F, T102H, T102K, T102R, T102S, T102Y, and M222V (claim 27); or wherein (ii) is selected from L4P, G218A, G218S, M222L, I268T, I268S, I268N, I268H, I268V, D306G, D306E, G360C, G360N, G360S (claim 29).
Okhamafe’s general disclosure is discussed above.
Regarding claim 15 pertaining to the variant PAL enzyme, Okhamafe teaches a PAL enzyme from Anabaena variabilis (see, e.g., Okhamafe, [0003]). Additionally, Okhamafe teaches SEQ ID NO: 4, which is a PAL enzyme from Anabaena variabilis, and which has 100% sequence identity to instant SEQ ID NO: 1 (see, e.g., Office Action Appendix). Additionally, Okhamafe teaches SEQ ID NO: 11, which is the PAL enzyme from Anabaena variabilis and which comprises amino acid substitutions C530S and C565S (see, e.g., Okhamafe, [0011], [0014], and Figure 5E).
Novick’s general disclosure is discussed above.
Regarding claims 15, 26, and 29 pertaining to the amino acid substitutions of (ii), Novick teaches an engineered PAL enzyme that comprises the G218A amino acid substitution (see, e.g., Novick, [0018]-[0019], Tables 8.1 & 9.1). Additionally, Novick teaches SEQ ID NO: 446, which comprises the G218A substitution (see, e.g., Novick, [0018]), and which has 95.7% sequence identity to instant SEQ ID NO: 1 (see, e.g., Office Action Appendix).
Regarding claims 25 and 27 pertaining to additional amino acid substitutions within the PAL enzyme, Novick teaches an engineered PAL enzyme that comprises the T102E substitution (see, e.g., Novick, [0015] & Table 5.1). Additionally, Novick teaches SEQ ID NO: 256, which has 97% sequence identity to instant SEQ ID NO: 1, and which contains the T102E substitution (see, e.g., Office Action Appendix & Novick, pg. 6, col. 4, line 65).
It would have been first obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce Weiner’s PAL enzyme, wherein the PAL enzyme comprises C503S and C565S amino acid substitutions, as taught by Okhamafe. One would have been motivated to do so because Okhamafe teaches that the PAL enzyme derived from Anabaena variabilis is a prokaryotic PAL enzyme that can be manipulated via amino acid substitutions and pegylated to form a PAL enzyme variant with “improved specific activity, enhanced stability, reduced immunogenicity and/or proteolytic sensitivity” (see, e.g., Okhamafe, [0016]). Additionally, Okhamafe teaches “PAL variants, including optimization of such compositions to enhance prokaryotic PAL catalytic activity and/or stability, while reducing immunogenicity and/or proteolytic sensitivity of prokaryotic PAL” (see, e.g., Okhamafe, abstract). Moreover, Weiner teaches PAL enzymes that have thermostable and thermotolerant activity (see, e.g., Weiner, abstract), and wherein the PAL variants are produced in increase degrade phenylalanine (see, e.g., Weiner, [0002]-[0003]). Therefore, based on the teachings of Weiner and Okhamafe, it would have been obvious to produce Weiner’s PAL enzyme comprising C503S and C565S amino acid substitutions, as taught by Okhamafe because this would produce a PAL enzyme with thermostable and thermotolerant activity, as well as improved specific activity, enhanced stability, reduced immunogenicity and/or proteolytic sensitivity. One would have expected success because Weiner and Okhamafe both teach variant PAL enzymes.
It would have been secondly obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce Weiner’s PAL variant, wherein the PAL variant also contains a G218A substitution, as taught by Novick. One would have been motivated to do so because Novick teaches that a PAL comprising the G218A mutation has increased relative activity compared to the wildtype PAL (see, e.g., Novick, Table 8.1) resulting in enhanced production of EMA401-A1, which is a precursor to angiotensin II type 2 receptor (see, e.g., Novick, [0152] & Table 8.1) Moreover, Weiner teaches PAL enzymes that have thermostable and thermotolerant activity (see, e.g., Weiner, abstract), and wherein the PAL variants are produced in increase degrade phenylalanine (see, e.g., Weiner, [0002]-[0003]). Therefore, based on the teachings of Weiner and Novick, it would have been obvious to produce a PAL variant further comprising a G218A mutation in order to increase the relative activity of the enzyme.
It would have been thirdly obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce Weiner’s PAL variant, wherein the PAL variant also contains a T102E substitution, as taught by Novick. One would have been motivated to do so because Novick teaches that the sequences that contain the T102E substitution, such as, for example, SEQ ID NOs: 103-110, have significantly increased catalytic activity over the positive control (see, e.g., Novick, Table 5.1). Moreover, Weiner teaches PAL enzymes that have thermostable and thermotolerant activity (see, e.g., Weiner, abstract), and wherein the PAL variants are produced in increase degrade phenylalanine (see, e.g., Weiner, [0002]-[0003]). Therefore, based on the teachings of Okhamafe and Novick, it would have been obvious to produce a variant PAL enzyme, wherein the enzyme contains C503S, C565S, and T102E substitutions because this would result in a PAL enzyme with enhanced catalytic activity and stability. One would have expected success because Okhamafe and Novick both teach the generation of variant PAL enzymes with enhanced activity.
Claims 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Weiner, Okhamafe, and Novick as applied to claims 15, 17, 20, 25-27, and 29 above, and further in view of Falb (US 2019/0282628; Date of Publication: September 19, 2019 – previously cited).
The references of Weiner, Okhamafe, and Novick are discussed above.
Regarding claim 20 pertaining to the minimal media, Weiner teaches that the minimal media is supplemented with phenylalanine (see, e.g., Weiner, [0672]).
However, these references do not teach: wherein the minimal media does not comprise glycerol (claim 19); or wherein the phenylalanine is at a concentration of 20-40 mM (claim 20); or wherein culturing comprises subculturing the transformed cells by removing the cells from the culture media after the culture media reaches an OD600 of at least about 1.8-2.2 and placing the transformed cells into fresh minimal media supplemented with phenylalanine (claim 21).
Falb’s general disclosure relates to “recombinant bacterial cells that have been engineered with genetic circuitry which allow the recombinant bacterial cells to sense a patient's internal environment and respond by turning an engineered metabolic pathway on or off” (see, e.g., Falb, abstract). Additionally, Falb discloses methods of treating phenylketonuria (PKU) and disorders characterized by hyperphenylalaninemia (see, e.g., Falb, [0076]-[0080]).
Regarding claim 19 pertaining to the minimal media, Falb teaches M9 minimal medium supplemented with glucose (see, e.g., Falb, [1370]). M9 minimal medium contains salts; therefore, the disclosed minimal medium by Falb does not contain glycerol.
Regarding claim 20 pertaining to the phenylalanine concentration within the minimal media, Falb teaches that the minimal medium contains 4 mM phenylalanine (see, e.g., Falb, [1368]).
Regarding claim 21 pertaining to culturing the transformed cells, Falb teaches “Cultures of E. coli Nissle transformed with a plasmid comprising the PAL gene driven by the Tet promoter were grown overnight and then diluted 1:100 in LB. The cells were grown with shaking (200 rpm) to early log phase. Anhydrous tetracycline (ATC) was added to cultures at a concentration of 100 ng/mL to induce expression of PAL, and bacteria were grown for another 2 hrs. Bacteria were then pelleted, washed, and resuspended in minimal media, and supplemented with 4 mM phenylalanine” (see, e.g., Falb, [1368]).
It would have been first obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce Weiner, Okhamafe, and Novick’s PAL variant through expression by a transformed cell, wherein the cell is grown in minimal media that is supplemented with phenylalanine, as taught by Falb. One would have been motivated to do so because Falb teaches that growth of transformed cells in phenylalanine allows for phenylalanine catabolism to be displayed, which also allows for the verification of positively transformed cells that are expressing a PAL enzyme or PAL enzyme variant (see, e.g., Falb, [1368]). Moreover, Okhamafe teaches “PAL variants, including optimization of such compositions to enhance prokaryotic PAL catalytic activity and/or stability, while reducing immunogenicity and/or proteolytic sensitivity of prokaryotic PAL” (see, e.g., Okhamafe, abstract). Weiner teaches PAL enzymes that have thermostable and thermotolerant activity (see, e.g., Weiner, abstract), and wherein the PAL variants are produced in increase degrade phenylalanine (see, e.g., Weiner, [0002]-[0003]). Novick discloses amino acid substitutions within the PAL enzyme to produce the engineered enzymes with enhanced catalytic activity (see, e.g., Novick, pg. 5, col. 1, lines 15-19). Therefore, based on the teachings of Weiner, Okhamafe, Novick and Falb, it would be obvious to grow cells expressing a PAL enzyme in media containing phenylalanine because this would allow for one to select for cells that are positively transformed and that are expressing a PAL for expression of a PAL variant with enhanced activity
It would have been secondly obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to culture Weiner, Okhamafe, and Novick’s transformed cells by subculturing the transformed cells, as taught by Falb. One would have been motivated to do so because Falb teaches that first culturing the cells to a specific OD allows for expression of the PAL enzyme in the transformed cells, and placing the transformed cells into fresh media supplemented with phenylalanine allows for phenylalanine catabolism to be displayed, which also allows for the verification of positively transformed cells that are expressing a PAL enzyme or PAL enzyme variant (see, e.g., Falb, [1368]). Moreover, Weiner teaches expression of PAL enzymes with thermostability and thermotolerant properties (see, e.g., Weiner, abstract). Okhamafe and Novick teach expressing a PAL variant in a transformed host cell, wherein the transformed host cell can be prokaryotic or eukaryotic (see, e.g., Okhamafe, [0042] & Novick, [0137]), Therefore, based on the teachings of Weiner, Okhamafe, Novick, and Falb, it would be obvious to subculture the transformed cells in media up to a specific OD, followed by placing the transformed cells into fresh minimal media supplemented with phenylalanine because this would allow for one to confirm the presence of positively transformed cells that are expressing Weiner’s PAL enzyme. One would have expected success because Weiner, Okhamafe, Novick, and Falb all teach expression of PAL enzymes.
Regarding claim 20’s concentration of phenylalanine, those working in the biological and/or pharmaceutical arts would understand that the adjustments of particular conventional working conditions (e.g., concentration or amount of a compound) is deemed a matter of judicious selection and routine optimization, which is within the purview of the skilled artisan. For example, Falb teaches that the PAL enzyme is able to efficiency degrade 4 mM phenylalanine, alone and in combination with expression of a phenylalanine transporter, PheP (see, e.g., Falb, [1368]). Additionally, Weiner states “culture conditions, such as temperature, pH and the like, are those previously used with the host cell selected for expression and will be apparent to the ordinarily skilled artisan” (see, e.g., Weiner, [0194]). Therefore, one of ordinary skill in the art would reasonably understand that the amount of phenylalanine added to the culture selects for transformed cells that can grow in the presence of phenylalanine, and furthermore, degrade phenylalanine if the transformants express the PAL enzyme. This is motivation for someone of ordinary skill in the art to practice or test the parameter widely to find those that are functional or optimal which then would be inclusive or cover the steps as instantly claimed. Absent any teaching of criticality by the Applicant concerning the concentration, it would be prima facie obvious that one of ordinary skill in the art would recognize these limitations are result effective variables which can be met as a matter of routine optimization.
Regarding claim 21’s OD limitation, those working in the biological and/or pharmaceutical arts would understand that adjustments of particular conventional working conditions is deemed a matter of judicious selection and routine optimization, which is within the purview of the skilled artisan (see, e.g., MPEP 2144.05). For example, Falb teaches that the cultures were grown to early log phase and then grown for another 2 hours after addition of ATC; therefore, OD600 levels could be around 0.2-0.3. However, measuring cell growth to an OD600=0.2-0.3 is a matter of routine optimization. Weiner states “culture conditions, such as temperature, pH and the like, are those previously used with the host cell selected for expression and will be apparent to the ordinarily skilled artisan” (see, e.g., Weiner, [0194]). Therefore, one of ordinary skill in the art would reasonably understand that the higher the OD600 value results in greater growth and a higher concentration of transformed cells. This is motivation for someone of ordinary skill in the art to practice or test the parameter widely to find those that are functional or optimal which then would be inclusive or cover the steps as instantly claimed. Absent any teaching of criticality by the Applicant concerning the range/bacterial concentration, it would be prima facie obvious that one of ordinary skill in the art would recognize these limitations are result effective variables which can be met as a matter of routine optimization.
Examiner’s Response to Arguments
Applicant's arguments filed 07/15/2026 have been fully considered but they are not persuasive.
Regarding Applicant’s arguments that the amended claims are free of the art as the art does not teach any of the remaining substitution mutations (remarks, pages 7-8), this argument is not persuasive because Novick is cited in the 35 U.S.C. 103 rejection above for teaching the G218A mutation in a PAL variant. Therefore, the claimed invention is not free of the art because Novick teaches the claimed G218A substitution mutation.
Conclusion
Claims 11-15, 17, and 19-29 are rejected.
No claims are allowed.
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.
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/NATALIE IANNUZO/ Examiner, Art Unit 1653
/SHARMILA G LANDAU/ Supervisory Patent Examiner, Art Unit 1653
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