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 .
Priority
This application is a 371 of PCT/JP2021/004999 filed 02/10/2021. Applicant’s claim for the
benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d) based on JP2020-088950 filed 05/21/2020. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of the Claims
Claims 15-17 are amended. Claims 18-29 are new.
Claims 15-29 are pending (claim set filed 11/07/20245) and are examined on the merits herein.
Withdrawal of Rejections
The response and amendment filed on 11/07/2025 are acknowledged. All of the amendment and arguments have been thoroughly reviewed and considered.
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.
The previous claims 15-17 rejection under 35 U.S.C. 112(b) has been withdrawn necessitated by amendment of claims 15-17.
Claim Objections
Claims 22-29 are objected to because of the following informalities:
Claim 22 recites: “amino positions 19-503” Applicant is suggested to replace recitation with: “amino acid positions 19-503”. Claims 23-29 have the same issue.
Appropriate correction is required.
New Rejections
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 28 and 29 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 28 and 29 recite the limitation for the protein to have a homology greater than or equal to about 60% of an amino acid sequence represented by SEQ ID NO: 2 or amino acid positions 19 to 503 of SEQ ID NO:2, to belong to glycoside hydrolase family 1 and to have glucocerebrosidase activity and thermostability. Claims 28 and 29 are interpreted as directed to the protein wherein 40% or less of the sequence vary from SEQ ID NO:2 and the protein belongs to glycoside hydrolase family 1 (GH1) and has glucocerebrosidase activity and thermostability.
Thus, claims 28 and 29 broadly encompasses a genus of the protein with 60% or more sequence homology to SEQ ID NO: 2. This would represent large pools of variant amino acid sequences encoding the respective proteins which are functional and thermostable. At the same time proteins can have 40% or less of sequence that can differ from SEQ ID NO: 2 that represents 201 amino acid residues from total of 503 amino acid residues. The Specification does not provide structure function correlation for the protein belonging to GH1 and does not describe domain and/or amino acid residues essential for the protein and domain and/or amino acid residue which can be modified without loss of the protein function or thermostability. The Specification provides Table 8 with a list of plant proteins with homology of higher than 60% to rice protein with SEQ ID NO:1, but not to SEQ ID NO:2 (paragraph 0081). The Specification mentions that the proteins in Table 8 have a conservative region necessary for GH1 and belonged to GH1 (paragraph 0082), however the Specification does not specify the sequence of the conserved region.
Cairns (Cairns et al. Plant Science, 2015, 241, 246-259) teaches that although GH1 proteins have similar structure, they can have distinct substrate specificities derived from the differences around the active site (p. 253, right column, last paragraph). Cairns provides example of the critical Trp392 in the active site of raucaffricine β-glucosidase mutation of which to Ala increases hydrolysis of one substrate, strictosidine, while decreases hydrolysis of raucaffricine thus confirming importance of this position in substrate specificity (p. 253, right column, last paragraph). Cairns mentions that: “ … there is no general rule for assigning the substrate specificity for a family GH1 β-glucosidase based on its sequence or even its structure.” (p. 254, right column, 2nd paragraph). Thus, the function of GH1 protein to have glucocerebrosidase activity, have the substrate specificity for glucosylceramide as a substrate and to be thermostable cannot be predicted based on 60% or more homology.
Therefore, one of ordinary skill in the art would not be able to identify which polypeptide sequences that have 60% homology to SEQ ID NO:2 encode for functional protein belonging to glycoside hydrolase family 1 and having glucocerebrosidase activity and thermostability. One of ordinary skill in the art would conclude based on the lack of describing the domains or amino acid residues of SEQ ID NO: 2 critical for the function and thermostability of the protein, that the Applicant was not in possession of the claimed genera and that the specification fails to satisfy the requirements of written description under 35 U.S.C. 112 (a). Therefore, claims 28 and 29 are rejected.
Maintained/Modified/New Rejections
The following rejections are maintained and/or modified and/or newly added taking into consideration amendment to claims filed on 11/07/2025.
Claim Rejections - 35 USC § 103
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 15, 18, 19, 22 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Dai (Dai et al. J. Biol. Chem., 2020, 295, 717-728 on record in IDS) in view of Cairns (Cairns et al. Plant Science, 2015, 241, 246-259) and UniProt A0A0B2QG59 (UniProt A0A0B2QG59_GLYSO, 2019 [retrieved on 02/15/2026]. Retrieved from the Internet: <rest.uniprot.org/unisave/A0A0B2QG59?format=txt&versions=17>) as evidenced by Kim (Kim et al. PNAS, 2010, 107, 22032-22037).
Regarding claim 15, Dai teaches Arabidopsis thaliana AtGCD3 protein which is a glucosylceramidase (Abstract). Dai discloses that AtGCD3 can hydrolyze glucosylceramide purified from Arabidopsis leaves (Abstract). Dai describes that endogenous plant gene encoding AtGCD3 was expressed in Escherichia coli and AtGCD3 was purified (p. 719, left column, 1st paragraph). When glucosylceramide is incubated with purified recombinant AtGCD3 it is hydrolyzed completely to ceramide confirming that AtGCD3 has glucosylceramidase activity (p. 719, left column, last paragraph and right column, Figure 2). Dai teaches 41% homology of AtGCD3 to human GBA2 GH116 family glucosylceramidase (p. 718, right column) and suggests that AtGCD3 belongs to GH116 family (p. 722, left column, 1st paragraph). However, Dai mentions differences between GBA2 and AtGCD3 (p. 722, left column, last paragraph). Dai describes that glucosylceramide is a major sphingolipid involved in the formation of lipid microdomains and that the regulation of glucosylceramide is a key to acclimation of plants to stress (Abstract). Dai provided indication to the presence of another glucosylceramidase in A. thaliana, since the inactivation of AtGCD3 did not change the amount of glucosylceramide and ceramide (p. 721, left column, last paragraph, right column, 1st paragraph and Figure 7). Thus, Dai teaches protein derived from a plant having glucocerebrosidase activity and generating ceramide from glucosylceramide.
Dai does not teach glucosylceramidase to belong to GH1 family of glycoside hydrolases and does not teach the plant to be a seed plant of the family Legminosae.
Cairns teaches that plants have different β-glucosidases with most of them falling into families GH1, GH3, GH5 and GH116. Cairns describes that GH1 is the largest family from which most plant β- glucosidases have been characterized (p. 247, left column, 2nd paragraph). Cairns discloses that Arabidopsis thaliana has 48 GH1 genes (p. 247, left column, 2nd paragraph). Cairns mentions that: “ … there is no general rule for assigning the substrate specificity for a family GH1 β-glucosidase based on its sequence or even its structure.” (p. 254, right column, 2nd paragraph).
UniProt A0A0B2QG59 teaches sequence of a protein of wild soybean (Glycine soja) that has beta-glucosidase activity and belongs to the glycosyl hydrolase family 1. Wild soybean (Glycine soja) is a seed plant of the family Legminosae as evidenced by Kim (p. 22032, left column).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that AtGCD3 glucosylceramidase identified by Dai can belong to GH1 glycoside hydrolase family. One would have been motivated to assume so because Dai discloses only 41% homology of AtGCD3 to human GBA2 of GH116 family and describes differences between these proteins and Cairns teaches that it is difficult to assign the substrate specificity for a family GH1 β-glucosidase based on its sequence or even its structure. However, if AtGCD3 does not belong to GH1 family, it would have been obvious to look for glucosylceramidase in Arabidopsis thaliana GH1 family. One would have been motivated to do that since GH1 is the largest family of plant β-glucosidases and 48 GH1 genes are present in A. thaliana as taught by Cairns, regulation of glucosylceramide is a key to acclimation of plants to stress as disclosed by Dai and Dai obtained indication to the presence of another glucosylceramidase in A. thaliana as described above. A skilled artisan would have reasonably expected success in the combination of prior art since Dai and Cairns teach plant β-glucosidases.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try using β-glucosidase of wild soybean taught by UniProt A0A0B2QG59 as glucocerebrosidase for generation of ceramide as taught by Dai. One would have been motivated to do that because UniProt A0A0B2QG59 teach the sequence of wild soybean β-glucosidase and describes it belonging to GH1 family similar and plant β-glucosidase of GH1 family with glucocerebrosidase activity was suggested based on Dai and Cairns teachings and hence the UniProt A0A0B2QG59 protein can be tested to catalyze the same reaction of hydrolysis of glucosylceramide to ceramide. A skilled artisan would have reasonably expected success in the combination of prior art since Dai, Cairns and UniProt A0A0B2QG59 teach plant β-glucosidases. Thus, Dai, Cairns and UniProt A0A0B2QG59 teachings as evidenced by Kim render claim 15 obvious.
Regarding claims 18 and 19, Dai teaches extraction of natural glucosylceramides from the plant (p. 723, right column, 2nd paragraph). Dai also describes testing the substrate specificity of AtGCD3 with commercially available glucosylceramides (p. 720, right column, 2nd paragraph) chemically synthesized by Avanti Polar Lipids (p. 723, right column, 1st paragraph). Thus, Dai, Cairns and UniProt A0A0B2QG59 teachings as evidenced by Kim render claims 18 and 19 obvious.
Regarding claims 22 and 26, the sequence taught by UniProt A0A0B2QG59 has 100% identity to instant SEQ ID NO:2, belongs to GH1 and will necessarily have glucocerebrosidase activity and thermostability.
MPEP 2112.01: “Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use β-glucosidase of wild soybean taught by UniProt A0A0B2QG59 as glucocerebrosidase for generation of ceramide as taught by Dai. One would have been motivated to do so with reasonably expected success because UniProt A0A0B2QG59 teaches β-glucosidase sequence of which is 100% identical to instant SEQ ID NO:2 and hence that protein would necessarily have the same properties as instant protein with SEQ ID NO:2, i.e. possess glucocerebrosidase activity and thermostability. Thus, Dai, Cairns and UniProt A0A0B2QG59 teachings as evidenced by Kim render claims 22 and 26 obvious.
Claims 24 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Dai (Dai et al. J. Biol. Chem., 2020, 295, 717-728 on record in IDS) in view of Cairns (Cairns et al. Plant Science, 2015, 241, 246-259) and UniProt A0A0B2QG59 (UniProt A0A0B2QG59_GLYSO, 2019 [retrieved on 02/15/2026]. Retrieved from the Internet: <rest.uniprot.org/unisave/A0A0B2QG59?format=txt&versions=17>) as evidenced by Kim (Kim et al. PNAS, 2010, 107, 22032-22037) as applied to claim 15 above and further in view of UniProt A0A0R4J610 (UniProt A0A0R4J610_SOYBN, 2019 [retrieved on 02/15/2026]. Retrieved from the Internet: <rest.uniprot.org/unisave/A0A0R4J610?format=txt&versions=34>).
The teachings of Dai, Cairns and UniProt A0A0B2QG59 have been set forth above.
Dai, Cairns and UniProt A0A0B2QG59 do not teach the protein consisting of SEQ ID NO:2 or amino acid positions 19-503 of SEQ ID NO:2 having one or several nucleotides substituted, deleted or added, belonging to GH1 and having glucocerebrosidase activity and thermostability and the protein with homology greater than or equal to about 60% to SEQ ID NO:2 or amino acid positions 19-503 of SEQ ID NO:2, belonging to GH1 and having glucocerebrosidase activity and thermostability.
UniProt A0A0R4J610 teaches sequence of a protein of soybean (Glycine max) that has beta-glucosidase activity and belongs to the glycosyl hydrolase family 1. Soybean (Glycine max) is a cultivated soybean seed plant of the family Legminosae as evidenced by Kim (p. 22032, left column). The sequence β-glucosidase taught by UniProt A0A0R4J610 has 99.8% identity to SEQ ID NO:2 and has substitution of one amino acid residue, i.e. Arg389Lys. The Specification defines modification of several nucleotides as equal or less than 10 (paragraph 0023) and requires the substitution, deletion, insertion or addition to be conservative “so as not to substantially alter the properties of the protein” (paragraph 0024). The Specification describes examples of conservative substitutions, such as the substitution of the polar residue with the residue of the same charge and discloses basic amino residues including arginine, histidine and lysine (paragraph 0024). Therefore, Arg389Lys is a conservative substitution not substantially altering the properties of the protein according to the Specification. The protein with sequence of UniProt A0A0R4J610 reads on limitation of claim 28 regarding homology as it has more than 60% homology to SEQ ID NO:2.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to expect that β-glucosidase of soybean taught by UniProt A0A0R4J610 and having 99.8% sequence identity to instant SEQ ID NO:2 has glucocerebrosidase activity and thermostability. One would have been motivated to expect that with reasonably expected success because since the protein of UniProt A0A0R4J610 has β-glucosidase activity and belongs to GH1 family of glycoside hydrolases and has one conservative substitution of positively charged one amino acid residue to another positively charged amino acid residue compared to SEQ ID NO:2 and to sequence of UniProt A0A0B2QG59 and hence is expected to retain the same functional activity.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use β-glucosidase of domesticated form of soybean plant taught by UniProt A0A0R4J610 as alternative to the β-glucosidase of UniProt A0A0B2QG59 as glucocerebrosidase capable of generation of ceramide based on teachings of Dai and Cairns. One would have been motivated to do that because proteins of UniProt A0A0B2QG59 and UniProt A0A0R4J610 teach similar plant species of soybean, have 99.8% sequence identity and are suggested to catalyze the same reaction of hydrolysis of glucosylceramide to ceramide. A skilled artisan would have reasonably expected success in the combination of prior art since Dai, Cairns, UniProt A0A0B2QG59 and UniProt A0A0R4J610 teach plant β-glucosidases. Thus, Dai, Cairns, UniProt A0A0B2QG59 and UniProt A0A0R4J610 teachings as evidenced by Kim render claims 24 and 28 obvious.
Claims 16, 17, 20, 21, 23 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Dai (Dai et al. J. Biol. Chem., 2020, 295, 717-728 on record in IDS) in view of Cairns (Cairns et al. Plant Science, 2015, 241, 246-259), UniProt A0A0B2QG59 (UniProt A0A0B2QG59_GLYSO, 2019 [retrieved on 02/15/2026]. Retrieved from the Internet: <rest.uniprot.org/unisave/A0A0B2QG59?format=txt&versions=17>) and Vervecken (US 20220125892 A1 filed 2019-02-01) as evidenced by Kim (Kim et al. PNAS, 2010, 107, 22032-22037).
Regarding claim 16, Dai teaches Arabidopsis thaliana AtGCD3 protein which is a glucosylceramidase (Abstract). Dai discloses that AtGCD3 can hydrolyze glucosylceramide purified from Arabidopsis leaves (Abstract). Dai describes that endogenous plant gene encoding AtGCD3 was expressed in Escherichia coli and AtGCD3 was purified (p. 719, left column, 1st paragraph). When glucosylceramide is incubated with purified recombinant AtGCD3 it is hydrolyzed completely to ceramide confirming that AtGCD3 has glucosylceramidase activity (p. 719, left column, last paragraph and right column, Figure 2). Dai teaches 41% homology of AtGCD3 to human GBA2 GH116 family glucosylceramidase (p. 718, right column) and suggests that AtGCD3 belongs to GH116 family (p. 722, left column, 1st paragraph). However, Dai mentions differences between GBA2 and AtGCD3 (p. 722, left column, last paragraph). Dai describes that glucosylceramide is a major sphingolipid involved in the formation of lipid microdomains and that the regulation of glucosylceramide is a key to acclimation of plants to stress (Abstract). Dai provided indication to the presence of another glucosylceramidase in A. thaliana, since the inactivation of AtGCD3 did not change the amount of glucosylceramide and ceramide (p. 721, left column, last paragraph, right column, 1st paragraph and Figure 7). Thus, Dai teaches protein derived from a plant having glucocerebrosidase activity and generating ceramide from glucosylceramide.
Dai does not teach glucosylceramidase to belong to GH1 family of glycoside hydrolases, does not teach the plant to be a seed plant of the family Legminosae and does not teach protein to be administered to a Gaucher disease patient.
Cairns teaches that plants have different β-glucosidases with most of them falling into families GH1, GH3, GH5 and GH116. Cairns describes that GH1 is the largest family from which most plant β- glucosidases have been characterized (p. 247, left column, 2nd paragraph). Cairns discloses that Arabidopsis thaliana has 48 GH1 genes (p. 247, left column, 2nd paragraph). Cairns mentions that: “ … there is no general rule for assigning the substrate specificity for a family GH1 β-glucosidase based on its sequence or even its structure.” (p. 254, right column, 2nd paragraph).
UniProt A0A0B2QG59 teaches sequence of a protein of wild soybean (Glycine soja) that has beta-glucosidase activity and belongs to the glycosyl hydrolase family 1. Wild soybean (Glycine soja) is a seed plant of the family Legminosae as evidenced by Kim (p. 22032, left column).
Vervecken teaches glucocerebrosidase preparations for therapeutic intervention of Gaucher’s disease (paragraph 0011). Vervecken discloses administering to the subject in need prophylactically or therapeutically effective amount of a glucocerebrosidase preparation or composition (paragraph 0014). Vervecken describes glucocerebrosidase (or glucosylceramidase or GCase) as an enzyme needed for hydrolysis of glucosylceramide (paragraph 0003). Vervecken mentions that Gaucher’s disease is caused by mutations in a gene encoding glucocerebrosidase resulting in accumulation of the enzyme’s substrate in lysosomes (paragraph 0003). The therapy of Gaucher’s disease is an enzyme replacement therapy in which recombinant GCase is supplementing the deficient enzyme and thus preventing substrate accumulation. Vervecken describes several approved for therapy GCases (paragraph 0006).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that AtGCD3 glucosylceramidase identified by Dai can belong to GH1 glycoside hydrolase family. One would have been motivated to assume so because Dai discloses only 41% homology of AtGCD3 to human GBA2 of GH116 family and describes differences between these proteins and Cairns teaches that it is difficult to assign the substrate specificity for a family GH1 β-glucosidase based on its sequence or even its structure. However, if AtGCD3 does not belong to GH1 family, it would have been obvious to look for glucosylceramidase in Arabidopsis thaliana GH1 family. One would have been motivated to do that since GH1 is the largest family of plant β-glucosidases and 48 GH1 genes are present in A. thaliana as taught by Cairns, regulation of glucosylceramide is a key to acclimation of plants to stress as disclosed by Dai and Dai obtained indication to the presence of another glucosylceramidase in A. thaliana as described above. A skilled artisan would have reasonably expected success in the combination of prior art since Dai and Cairns teach plant β-glucosidases.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try using β-glucosidase of wild soybean taught by UniProt A0A0B2QG59 as glucocerebrosidase for generation of ceramide as taught by Dai. One would have been motivated to do that because UniProt A0A0B2QG59 teach the sequence of wild soybean β-glucosidase and describes it belonging to GH1 family similar and plant β-glucosidase of GH1 family with glucocerebrosidase activity was suggested based on Dai and Cairns teachings and hence the UniProt A0A0B2QG59 protein can be tested to catalyze the same reaction of hydrolysis of glucosylceramide to ceramide. A skilled artisan would have reasonably expected success in the combination of prior art since Dai, Cairns and UniProt A0A0B2QG59 teach plant β-glucosidases.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine teaching of Dai, Cairns, UniProt A0A0B2QG59 and Vervecken and administer glucocerebrosidase of UniProt A0A0B2QG59 for prevention or treatment of Gaucher’s disease as described by Vervecken. One would have been motivated to do that since Vervecken teach that Gaucher’s disease develops due to deficiency of glucocerebrosidase and accumulation of its substrate, glucosylceramide, and UniProt A0A0B2QG59 provides plant enzyme capable of hydrolysis of glucosylceramide to ceramide. A skilled artisan would have reasonably expected success in that because UniProt A0A0B2QG59, Dai and Vervecken teach glucosylceramidases, UniProt A0A0B2QG59 and Dai provide enzymes and Vervecken teach method of enzyme replacement therapy with analogous enzymes, and Cairns guides to the search of additional analogous enzymes in plant GH1 family.
Thus, Dai, Cairns, UniProt A0A0B2QG59 and Vervecken teachings as evidenced by Kim render claim 16 obvious.
Regarding claims 17, 20 and 21, Vervecken teaches that the dosage and regimen depends on severity of the disease and the dosage for human patients can vary depending on the dosage form and route of administration (paragraphs 0170, 0172) and mentions the dose of 60 U/kg of variant GCase for adult human subject (paragraph 0375). Vervecken discloses different treatment regimen including administration every 2 weeks, every 3 weeks or every month (paragraph 0173) that reads on claims 20 and 21 limitations. Vervecken performed in vivo efficacy studies on mouse models and toxicity studies in monkeys to determine treatment dosage (Examples 10, 16, 17).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to follow Vervecken teaching and administer glucocerebrosidase identified based on Dai, Cairns, UniProt A0A0B2QG59 teachings at the doses and frequency as taught by Vervecken. One would have been motivated to do so with reasonably expected success because Vervecken provides examples of efficacy of treatment with glucocerebrosidase in mouse models and determination of toxicity in monkeys. Thus, Dai, Cairns, UniProt A0A0B2QG59 and Vervecken teachings as evidenced by Kim render claims 17, 20 and 21 obvious.
Regarding claims 23 and 27, the sequence taught by UniProt A0A0B2QG59 has 100% identity to instant SEQ ID NO:2, belongs to GH1 and will necessarily have glucocerebrosidase activity and thermostability.
MPEP 2112.01: “Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use β-glucosidase of wild soybean taught by UniProt A0A0B2QG59 as plant glucocerebrosidase for prevention or treatment of Gaucher’s disease based on Dai, Cairns and Vervecken teachings. One would have been motivated to do so that with reasonably expected success because UniProt A0A0B2QG59 teaches the wild soybean β-glucosidase protein sequence of which is 100% identical to instant SEQ ID NO:2 and hence that protein would necessarily have the same properties as instant protein with SEQ ID NO:2, i.e. possess glucocerebrosidase activity and thermostability. Thus, Dai, Cairns, UniProt A0A0B2QG59 and Vervecken teachings as evidenced by Kim render claims 23 and 27 obvious.
Claims 25 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Dai (Dai et al. J. Biol. Chem., 2020, 295, 717-728 on record in IDS) in view of Cairns (Cairns et al. Plant Science, 2015, 241, 246-259) and UniProt A0A0B2QG59 (UniProt A0A0B2QG59_GLYSO, 2019 [retrieved on 02/15/2026]. Retrieved from the Internet: <rest.uniprot.org/unisave/A0A0B2QG59?format=txt&versions=17>) and Vervecken (US 20220125892 A1 filed 2019-02-01) as evidenced by Kim (Kim et al. PNAS, 2010, 107, 22032-22037) as applied to claim 16 above and further in view of UniProt A0A0R4J610 (UniProt A0A0R4J610_SOYBN, 2019 [retrieved on 02/15/2026]. Retrieved from the Internet: <rest.uniprot.org/unisave/A0A0R4J610?format=txt&versions=34>).
The teachings of Dai, Cairns, UniProt A0A0B2QG59 and Vervecken have been set forth above.
Dai, Cairns, UniProt A0A0B2QG59 and Vervecken do not teach the protein consisting of SEQ ID NO:2 or amino acid positions 19-503 of SEQ ID NO:2 having one or several nucleotides substituted, deleted or added, belonging to GH1 and having glucocerebrosidase activity and thermostability and the protein with homology greater than or equal to about 60% to SEQ ID NO:2 or amino acid positions 19-503 of SEQ ID NO:2, belonging to GH1 and having glucocerebrosidase activity and thermostability.
UniProt A0A0R4J610 teaches sequence of a protein of soybean (Glycine max) that has beta-glucosidase activity and belongs to the glycosyl hydrolase family 1. Soybean (Glycine max) is a cultivated soybean seed plant of the family Legminosae as evidenced by Kim (p. 22032, left column). The sequence β-glucosidase taught by UniProt A0A0R4J610 has 99.8% identity to SEQ ID NO:2 and has substitution of one amino acid residue, i.e. Arg389Lys. The Specification defines modification of several nucleotides as equal or less than 10 (paragraph 0023) and requires the substitution, deletion, insertion or addition to be conservative “so as not to substantially alter the properties of the protein” (paragraph 0024). The Specification describes examples of conservative substitutions, such as the substitution of the polar residue with the residue of the same charge and discloses basic amino residues including arginine, histidine and lysine (paragraph 0024). Therefore, Arg389Lys is a conservative substitution not substantially altering the properties of the protein according to the Specification. The protein with sequence of UniProt A0A0R4J610 reads on limitation of claim 29 regarding homology as it has more than 60% homology to SEQ ID NO:2.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to expect that β-glucosidase of soybean taught by UniProt A0A0R4J610 and having 99.8% sequence identity to instant SEQ ID NO:2 has glucocerebrosidase activity and thermostability. One would have been motivated to expect that with reasonably expected success because since the protein of UniProt A0A0R4J610 has β-glucosidase activity and belongs to GH1 family of glycoside hydrolases and has one conservative substitution of positively charged one amino acid residue to another positively charged amino acid residue compared to SEQ ID NO:2 and to sequence of UniProt A0A0B2QG59 and hence is expected to retain the same functional activity.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use β-glucosidase of domesticated form of soybean plant taught by UniProt A0A0R4J610 as alternative to the β-glucosidase of UniProt A0A0B2QG59 as glucocerebrosidase for prevention or treatment of Gaucher’s disease. One would have been motivated to do that because proteins of UniProt A0A0B2QG59 and UniProt A0A0R4J610 teach similar plant species of soybean, have 99.8% sequence identity and are suggested to catalyze the same reaction of hydrolysis of glucosylceramide to ceramide. A skilled artisan would have reasonably expected success in the combination of prior art since Dai, Cairns, UniProt A0A0B2QG59, UniProt A0A0R4J610 and Vervecken teach β-glucosidases, UniProt A0A0B2QG59 and UniProt A0A0R4J610 provide sequences for glucocerebrosidase and Vervecken teaches enzyme therapy with analogous enzymes. Thus, Dai, Cairns, UniProt A0A0B2QG59, Vervecken and UniProt A0A0R4J610 teachings as evidenced by Kim render claims 25 and 29 obvious.
Response to Arguments
Applicant's arguments filed 11/07/2025 have been fully considered but they are not persuasive.
Applicant argues that Dai, Cairns and Vervecken do not teach “a plant being a seed plant of the family Legminosae” and fail to render the amended claims unpatentable. These arguments are not persuasive because current rejection is modified necessitated by amendment and is based on combination of prior art including UniProt A0A0B2QG59 teaching protein of glycoside hydrolase family 1 derived from a seed plant of the family Legminosae as described above.
Conclusion
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.
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/L.G.K./Examiner, Art Unit 1653
/SHARMILA G LANDAU/Supervisory Patent Examiner, Art Unit 1653