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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/26/2025 has been entered.
Status of Claims
Receipt of Arguments/Remarks filed on 10/27/2025 is acknowledged. Claims 1-12, 14-18, 20-21, and 23-26 are pending. Claims 17 and 18 were amended. Claims 1-12 and 14-16 are withdrawn as being directed to a nonelected invention. Claims 17-18, 20-21, and 23-26 are under examination herein.
Withdrawn Rejections
The rejection of claims 17-18, 20, 23, and 25 under 35 U.S.C. § 103 is withdrawn.
The rejection of claims 17-18, 20, 23, and 25 on the grounds of non-statutory double patenting is withdrawn.
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 17-18, 20-21, and 23-26 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 17 recites: at least one selected from the group consisting of a transformant comprising a DNA encoding a protein derived from Tumebacillus sp. NITE BP-02779 and having peptidoglycan-degrading activity and a culture thereof to act on a target microorganism.
Claim 18 recites: at least one selected from the group consisting of a transformant comprising a vector comprising a DNA encoding a protein derived from Tumebacillus sp. NITE BP-02779 and having peptidoglycan-degrading activity and a culture thereof to act on a target microorganism.
The methods of claims 17 and 18 are directed to allowing either a transformant or a culture thereof to act on a target microorganism. It is not clear if “a culture thereof” is required to contain the transformant, the vector, or the protein derived from Tumebacillus sp. NITE BP-02779. Under broadest reasonable interpretation, “a culture thereof” is not necessarily required to contain the claimed transformant, vector, or protein.
The examiner is interpreting “a culture thereof” to require a transformant/vector comprising a DNA encoding a protein derived from Tumebacillus sp. NITE BP-02779. However, this is not clear in the claims as written. To overcome this rejection, the following amendments to claims 17 and 18 are suggested:
17. (Currently Amended) A method for degrading a microorganism, comprising
allowing at least one selected from the group consisting of:
A transformant comprising a DNA encoding a protein derived from Tumebacillus sp. NITE BP-02779 and having peptidoglycan-degrading activity; and
A culture thereof which includes a transformant comprising a DNA encoding a protein derived from Tumebacillus sp. NITE BP-02779 and having peptidoglycan-degrading activity;
to act on a target microorganism;
wherein the protein is any one of the following proteins (A1) to (A3) or (B1) to (B3):
18. (Currently Amended) A method for degrading a microorganism, comprising
allowing at least one selected from the group consisting of:
A transformant comprising a vector comprising a DNA encoding a protein derived from Tumebacillus sp. NITE BP-02779 and having peptidoglycan-degrading activity; and
A culture thereof which includes a transformant comprising a vector comprising a DNA encoding a protein derived from Tumebacillus sp. NITE BP-02779 and having peptidoglycan-degrading activity;
to act on a target microorganism;
wherein the protein is any one of the following proteins (A1) to (A3) or (B1) to (B3):
Regarding claims 21 and 24, it is not clear how the proteins of options (a1)-(a4) or options (b1)-(b4) relate to options (A1)-(A3) and (B1)-(B3) in claim 17. Claims 21 and 24 recite “the protein”, but as there are multiple options for a protein in claim 17, it is unclear which protein of claim 17 corresponds to each option in claims 21 and 24.
It appears that option (a1) corresponds to (A1), and (a2)-(a4) correspond to (A2); and that option (b1) corresponds to (B1), and (b2)-(b4) correspond to (B2). However, it is unclear if this is the case, rendering the scope of claims 21 and 24 indefinite. Suggested amendments to overcome this rejection are provided below, following the rejection under 35 U.S.C. § 112(d).
Claims 20, 23, and 25-26 are included in the rejection under 35 U.S.C. § 112(b) because they depend on a rejected claim and do not clarify the issue.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 21 and 24 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 21 and 24 are directed to the method according to claim 17, wherein the protein is (a1)-(a4) or (b1)-(b4). Options (a1)-(a4) and (b1)-(b4) do not further limit the subject matter of claim 17. Claim 17 requires that the proteins of (A1)-(A3) or (B1)-(B3) have peptidoglycan-degrading activity. This activity is not recited in options (a1)-(a4) and (b1)-(b4), and as the correlation of these proteins to the proteins recited in claim 17 is unclear as set forth above, claims 21 and 24 are broader than claim 17. It is suggested that applicant amend the claims to clarify that the proteins in options (a1)-(a4) and (b1)-(b4) include the limitation of peptidoglycan-degrading activity as recited in claim 17 (A1)-(A3) and (B1)-(B3).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
To overcome the rejections of claims 21 and 24 under 35 U.S.C. § 112(b) and (d), the following amendments are suggested:
21. (Currently Amended) The method according to claim 17, wherein the protein according to (A1) further comprises:
(a1) a protein consisting of the amino acid sequence at positions 1 to 164 of SEQ ID NO: 2;
and wherein the protein according to (A2) further comprises any one of the following:
(a2) a protein consisting of the amino acid sequence at positions 1 to 164 of SEQ ID NO:
2 with a substitution of Ala at position 1 with Met;
(a3) a protein consisting of the amino acid sequence at positions 1 to 164 of SEQ ID NO:
2 with a substitution of Ala at position 1 with Met and addition of the amino acid sequence represented by SEQ ID NO: 21 to the N-terminus of the Met; and
(a4) a protein consisting of the amino acid sequence at positions 1 to 164 of SEQ ID NO:
2 with addition of Met to the N-terminus of Ala at position 1.
24. (Currently Amended) The method according to claim 17, wherein the protein according to (B1) further comprises:
(b1) a protein consisting of the amino acid sequence at positions 1 to 493 of SEQ ID NO: 4;
and wherein the protein according to (B2) further comprises any one of the following:
(b2) a protein consisting of the amino acid sequence at positions 1 to 493 of SEQ ID NO:
4 with a substitution of Glu at position 1 with Met;
(b3) a protein consisting of the amino acid sequence at positions 1 to 493 of SEQ ID NO:
4 with a substitution of Glu at position 1 with Met and addition of the amino acid sequence
represented by SEQ ID NO: 21 to the N-terminus of the Met; and
(b4) a protein consisting of the amino acid sequence at positions 1 to 493 of SEQ ID NO:
4 with addition of Met to the N-terminus of Glu at position 1.
Allowable Subject Matter
If “a culture thereof” in claims 17 and 18 is interpreted as set forth above by the examiner to require the protein derived from Tumebacillus sp. NITE BP-02779, it appears that the instant claims are free of the prior art. The prior art does not teach a protein according to (A1)-(A3) or (B1)-(B3). If the claims are amended as suggested above to overcome the issues under 35 U.S.C. § 112(b) and (d), the claims would be allowable.
Response to Arguments
In light of amendments to the claims, the rejection of claims 17-18, 20, 23, and 25 under 35 U.S.C. § 103 and on the grounds of non-statutory double patenting have been withdrawn.
However, as discussed above, new rejections of claims 17-18, 20-21, and 23-26 are made under 35 U.S.C. § 112(b) and (d). Suggested amendments are provided to overcome these rejections.
Conclusion
Claims 17-18, 20-21, and 23-26 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMILY F EIX whose telephone number is (571)270-0808. The examiner can normally be reached M-F 8am-5pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sharmila Landau can be reached at (571)272-0614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EMILY F EIX/Examiner, Art Unit 1653
/JENNIFER M.H. TICHY/Primary Examiner, Art Unit 1653