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 .
Amendment after Non-final office action filed on April 29, 2026 is acknowledged.
Claims 1-9 have been cancelled.
New claims 11-12 have been added.
Applicant added new claim 12 that is drawn to a different invention. If method claim(s) was presented in the original presentation, the claim(s) would have been restricted out as follows:
Group 1, claim(s) 1-11, drawn to a lactic acid bacteria growth promoter comprising at least one peptide.
Group 2, claim(s) 12, drawn to a method for promoting growth of lactic acid bacteria comprising adding at least one peptide to a medium containing the lactic acid bacteria.
Applicant elected without traverse of peptide VPAF (SEQ ID NO: 1) as the species of the peptide and 4 residues as the number of the residues in the reply filed on November 4, 2025. The restriction was deemed to be proper and made FINAL in the previous office action. The elected species, SEQ ID NO: 1 has been searched and a prior art was found. Claim 12 is withdrawn from consideration as being drawn to nonelected invention, not presented in the original presentation. Claims 10-11 are examined on the merits in this office action.
Priority
Applicant filed certified English translation of foreign priority document JP 2020-096288 (6/02/2020). Therefore, the foreign priority has been perfected. The priority of instant application is 06/02/2020.
Withdrawn Objections and Rejections
The objection to the drawing is hereby withdrawn in view of Applicant filing replacement sheets and amendment to the specification.
Rejection of claim 10 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, is hereby withdrawn in view of Applicant’s amendment to the claims.
Rejection of claim 10 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is hereby withdrawn in view of Applicant’s amendment to the claims.
Rejection of claims 1-2 and 6-10 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, is hereby withdrawn in view of Applicant’s amendment to the claims.
Rejection of claim 10 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph (new matter rejection), is hereby withdrawn in view of Applicant’s amendment to the claim.
Rejection of claim(s) 10-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Scholler et al (US Patent No. 10968269, cited in the previous office action), is hereby withdrawn in view of Applicant filing certified English translation of the foreign priority document perfecting the priority. However, the rejection is revised to 35 U.S.C. 102(a)(2) below.
Rejection of claims 1-2 and 6-10 under 35 U.S.C. 102(a)(1) as being anticipated by Imperiali et al (JACS, 1992, 114: 3182-3188, cited in the previous office action), is hereby withdrawn in view of Applicant’s amendment to the claims and in view of Applicant’s arguments.
Rejection of claims 1-2, 6 and 8-9 under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (https://pubchem/ncbi.nlm.nih.gov/compound/Cys-Tyr-Ile-Gln-Asn-Cys-Pro-Leu-Gly-NH2, pp. 1-9, 11/19/2009, cited in the previous office action), is hereby withdrawn in view of Applicant’s amendment to the claims.
Revised New Rejections
35 U.S.C. 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 10-11 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Scholler et al (US Patent No. 10968269, cited in the previous office action). This revised to include the new claim 11 in the rejection.
Scholler et al teach a peptide comprising instant SEQ ID NO: 1 (see SEQ ID NO: 31995, residues 1-4)
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. Since the SEQ ID NO: 31995 of Scholler et al comprises instant SEQ ID NO: 1 (i.e., VPAF), this meets the limitation of instant claims 10-11. Since Scholler et al teach a peptide comprising instant SEQ ID NO: 1, the peptide would inherently have all of the activity and properties of instant SEQ ID NO: 1. The MPEP § 2112 states: “Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the Examiner presents evidence or reasoning tending to show inherency, the burden shifts to the Applicant to show an unobvious difference ‘[t]he PTO can require an Applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)).”
Response to Applicant’s Arguments
Applicant argues that “Scholler teaches a peptide with sequence comprising a sequence of SEQ ID NO: 1.”
Applicant’s arguments have been fully considered but are not found persuasive. The claims explicitly recite the following: “A lactic acid bacteria growth promoter comprising a peptide wherein the amino acid sequence of the peptide is selected from the group consisting of VPAF (SEQ ID NO: 1)…” The amino acid sequence of instant SEQ ID NO: 1 is comprised in the sequence (SEQ ID NO: 31995) of Scholler et al. The “closed” language is the group (i.e., no more than what is listed in the “group consisting of”), but this does not limit the length of the peptide sequence (i.e., the peptide have more than the 4 residues recited in SEQ ID NO: 1). Therefore, it is deemed that the rejection is proper is maintained herein.
New Rejections
35 U.S.C. 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 10-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Evans et al (US Patent No. 5928896).
Evans et al teach a peptide comprising instant SEQ ID NO: 1 (see SEQ ID NO: 105, residues 1-4), meeting the limitation of instant claims 10-11. The claims explicitly recite the following: “A lactic acid bacteria growth promoter comprising a peptide wherein the amino acid sequence of the peptide is selected from the group consisting of VPAF (SEQ ID NO: 1)…” The amino acid sequence of instant SEQ ID NO: 1 is comprised in the sequence (SEQ ID NO: 105) of Evans et al. The “closed” language is the group (i.e., no more than what is listed in the “group consisting of”), but this does not limit the length of the peptide sequence (i.e., the peptide have more than the 4 residues recited in SEQ ID NO: 1). Since Evans et al teach a peptide comprising instant SEQ ID NO: 1, the peptide would inherently have all of the activity and properties of instant SEQ ID NO: 1. The MPEP § 2112 states: “Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the Examiner presents evidence or reasoning tending to show inherency, the burden shifts to the Applicant to show an unobvious difference ‘[t]he PTO can require an Applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)).”
Claim(s) 10-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Evans et al (US Patent No. 5948887).
Evans et al teach a peptide comprising instant SEQ ID NO: 1 (see SEQ ID NO: 105, residues 1-4), meeting the limitation of instant claims 10-11. The claims explicitly recite the following: “A lactic acid bacteria growth promoter comprising a peptide wherein the amino acid sequence of the peptide is selected from the group consisting of VPAF (SEQ ID NO: 1)…” The amino acid sequence of instant SEQ ID NO: 1 is comprised in the sequence (SEQ ID NO: 105) of Evans et al. The “closed” language is the group (i.e., no more than what is listed in the “group consisting of”), but this does not limit the length of the peptide sequence (i.e., the peptide have more than the 4 residues recited in SEQ ID NO: 1). Since Evans et al teach a peptide comprising instant SEQ ID NO: 1, the peptide would inherently have all of the activity and properties of instant SEQ ID NO: 1. The MPEP § 2112 states: “Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the Examiner presents evidence or reasoning tending to show inherency, the burden shifts to the Applicant to show an unobvious difference ‘[t]he PTO can require an Applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)).”
Claims 10-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ren et al (Molecular Informatics, 2014, 33(1): 43-52, abstract and table s1 used and enclosed herein).
Ren et al teach a tetrapeptide that is the same as instant SEQ ID NO: 1 (see VPAF, throughout the reference, Table s1, yellow highlighted tetrapeptide), meeting the limitation of instant claims 10-11. Since Ren et al teach a peptide comprising instant SEQ ID NO: 1, the peptide would inherently have all of the activity and properties of instant SEQ ID NO: 1. The MPEP § 2112 states: “Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the Examiner presents evidence or reasoning tending to show inherency, the burden shifts to the Applicant to show an unobvious difference ‘[t]he PTO can require an Applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)).”
U.S.C. 103
30. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
31. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
32. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
33. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
34. Claim(s) 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over
Imperiali et al (JACS, 1992, 114: 3182-3188, cited in the previous office action).
35. Imperiali et al teach a tetrapeptide Ac-Val-Pro-D-Ala-Phe-NH2 (see p. 3184, left column, top, and Table 1). Since Imperiali et al teach a peptide of instant SEQ ID NO: 1, the peptide would inherently have all of the activity and properties of instant SEQ ID NO: 1. The MPEP § 2112 states: “Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the Examiner presents evidence or reasoning tending to show inherency, the burden shifts to the Applicant to show an unobvious difference ‘[t]he PTO can require an Applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)).”
The difference between the reference and the instant claims is that the reference teaches the D-amino acid of the alanine residue (A).
36. However, the MPEP 2144.09 states that “A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilizes. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one of skilled in the art to make a claimed compound. IN the expectation that compounds similar in structures will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ43 (CCPA 1963)” (MPEP 2144.09 I). Additionally, the MPEP 2144.09 II states that “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious). Aventis Pharma Deutschland v. Lupin Ltd., 499 F.3d 1293, 84 USPQ2d 1197 (Fed. Cir. 2007) (5(S)stereoisomer of ramipril obvious over prior art mixture of stereoisomers of ramipril.)” Therefore, Imperiali et al is prima facie obvious over instant claims.
MARKUSH
37. Claim 11 is rejected on the judicially created basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F. 2d 716, 721-22 (CCPA 1980) and Ex parte Hazumi, 3 USPQ 2d 1059, 1060 (BPAI 1984). The improper Markush grouping includes species of the claimed invention that do not share both a substantial structural feature and a common use that flows from the substantial structural feature. The members of the improper Markush grouping do not share a substantial feature and/or a common use that flows from the substantial structural feature for the following reasons: The compounds claimed do not share a common core structure. For example, SEQ ID NOs: 1, 2, 4, 6, 7, 9, 10, 11 and 12 are tetrapeptide sequences, and do not share a common amino acid residues; SEQ ID NO: 3 is a 9mer residue peptide sequence; the peptides PVF, PVY, VPI, VPL, LVE and LPT are tripeptides; SEQ ID NO: 5 is a 6mer residue peptide sequence; SEQ ID NO: 8 is a 7mer residue peptide sequence; the peptides LF, IF and FL are dipeptide sequences. The sequences have different amino acid contents and do not share a common core amino acid residues.
In response to this rejection, Applicant should either amend the claim(s) to recite only individual species or grouping of species that share a substantial structural feature as well as a common use that flows from the substantial structural feature, or present a sufficient showing that the species recited in the alternative of the claims(s) share a substantial structural feature as well as a common use that flows from the substantial structural feature. This is a rejection on the merits and may be appealed to the Board of Patent Appeals and Interferences in accordance with 35 U.S.C. § 134 and 37 CFR 41.31 (a)(1) (emphasis provided).
CONCLUSION
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JULIE HA whose telephone number is (571)272-5982. The examiner can normally be reached Monday-Thursday 5:00 am- 6:30 pm EST.
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, LIANKO GARYU can be reached at 571-270-7367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JULIE HA/Primary Examiner, Art Unit 1654
5/19/2026
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