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 .
Amendments Received
Amendments to the claims were received and entered on March 10, 2026.
Status of Claims
Claims 1-4, 7-8, 11-13, 16-18, 20-21, 23-24, 29, and 34-36 are currently pending.
Claims 1-4 and 7-8 are under consideration, as claims 11-13, 16-18, 20-21, 23-24, 29, and 34-36 are withdrawn.
Priority
The present application claims status as a 371 (National Stage) of PCT/US2021/032217 filed on 05/13/2021. Acknowledgment is made of applicant’s claim for benefit under 35 U.S.C. 119(e) of Provisional application No. 63/074,288, filed on 09/03/2020 and Provisional application No. 63/024,398, filed on 05/13/2020. The present application and all claims are being examined with an effective filing date of May 13, 2020. In future actions, the effective filing date may change due to amendments or further review of priority documents.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/10/2026 in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Withdrawn Rejections
In view of Applicant’s amendments, the rejection of claim 1-2 under 35 USC § 112(a) is hereby withdrawn.
In view of Applicant’s amendments, the rejection of claim 1-4 and 7-8 under 35 USC § 112(b) is hereby withdrawn.
In view of Applicant’s amendments, the rejection of claim 3-4 under 35 USC § 112(d) is hereby withdrawn.
In view of Applicant’s filing of a Terminal Disclaimer on 03/10/2026, the provisional double patenting rejections of claims 1-2 and 7-8 over copending application no. 17/910,952 are hereby withdrawn.
Claim Objections
Claim 3 is objected to because of the following informalities:
Claim 3 contains redundant recitation of substitutions at positions 199 and 299 following the phrase “further comprises”. It is noted that applicant amended claim 3 in response to the prior rejection under 35 U.S.C. 112(d). However, the prior 112(d) rejection was based on the interpretation of previously presented claim 1 as potentially being closed to additional substitutions beyond those expressly recited. Applicant’s amendment to claim 1 clarifying that the transglutaminase variant comprises at least the recited substitutions effectively addressed that concern by permitting additional substitutions.
Accordingly, the previous basis for the 112(d) rejection is no longer present. However, the current wording of claim 3 recites that the variant “further comprises” substitutions at positions 199 and 299, even though such substitutions may already be present in certain embodiments encompassed by claim 1. Applicant may wish to consider revising the claim language for clarity and consistency.
Appropriate correction is required.
Maintained Rejections
Claim Rejections - 35 USC § 103
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 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.
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.
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.
Claims 1-2 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kazunori, Yoshida, herein “Kazunori” (WO2019107288, US equivalent US20200370026 A1 relied upon, cited in the IDS).
It is noted that both instant SEQ ID NO: 1 and SEQ ID NO: 1 of Kazunori correlate to wild-type Streptomyces mobaraensis transglutaminase (para 0012).
Regarding claim 1, Kazunori discloses Streptomyces mobaraensis derived transglutaminase (TGase) variants for improving heat resistance, reducing temperature stability, improving oxidation resistance, improving reactivity, or conversion into deamidase (Abstract), wherein the modified enzyme has “an amino acid sequence which comprises one or more specific amino acid substitution(s)…in the amino acid sequence of SEQ ID NO: 1” (para 0198). Kazunori discloses several specific substitutions and their respective beneficial effects, specifically teaching an amino-acid substitution at position 199, of SEQ ID NO: 1, with glycine (G) resulting in property changes of a reduction in temperature stability and an improvement in reactivity (Specification, para 0097; Figs. 1-5, 1-7, 2-2, and more specifically 5-3). Kazunori further teaches substitutions at position 299, of SEQ ID NO: 1, with valine (V), lysine (K), and alanine (A), resulting in property changes of a reduction in temperature stability and an improvement in reactivity (para 0104; Figs. 1-5, 1-7, 2-2, and 5-3). Additionally, Kazunori teaches that “combinations of two effective mutations result in additive or synergistic effects” (para 0010), indicating that combining beneficial mutations is expected to yield cumulative or synergistic improvement. With respect to the recited increase in enzymatic activity (“about 2-fold greater transglutaminase enzymatic activity…”), although Kazunori does not explicitly quantify the enzymatic activity of a transglutaminase variant containing both the S199 and S299 substitutions, Kazunori teaches that the S199G and S299V variants individually exhibit 113% and 129% activity relative to wild-type, respectively (Fig. 5-3). Thus, given Kazunori’s teaching regarding additive/synergistic effects of combining effective mutations, one of ordinary skill in the art would have had a reasonable expectation that the resulting variant would exhibit a further cumulative or synergistic increase in enzymatic activity, relative to wild-type and would have had reason to select and combine these specific substitutions from among the disclosed mutations. Additionally, it is noted that the instant specification defines “about” as plus or minus ten percent (10%) of a value (i.e., 200% enzymatic activity +/- 20% activity, which is 10% of 200). Pursuant to MPEP 2112.01, “When the structure recited in the reference is substantially identical to that of the claims, claimed properties or function are presumed to be inherent”. Kazunori teaches the specific substitutions S199G and S299V and further teaches combining effective mutations. Thus, the claimed structural variant would have been obvious over the teachings of Kazunori. Any property inherently possessed by the resulting variant, including the recited enzymatic activity, does not render the otherwise obvious variant patentable. With respect to the limitation wherein the variant comprises at least 95% sequence identity to SEQ ID NO: 1, it is noted that SEQ ID NO: 1 is 331 amino acids in length and a variation in sequence at 2 positions (e.g. 199 and 299) results in approximately 99.4% sequence identity, thereby satisfying the claimed minimum sequence identity.
Regarding claim 2, Kazunori teaches that when the TGase variant gene is expressed in a host, a pro-peptide (pro-sequence) is added to the 5′ end of the gene “for stabilizing the structure of the modified enzyme as an expression product.” (para 0115; see also SEQ ID NOs: 28–30, described as S. mobaraensis pro-sequences). It would have been obvious to one of ordinary skill in the art to apply the same pro-sequence to a variant containing the substitutions at positions 199 and 299, disclosed above, to stabilize the expressed product, because Kazunori explicitly teaches use of the pro-sequence to stabilize modified enzymes.
Regarding claim 7, it is noted that instant SEQ ID NOs: 2-27 represent variants of the instant invention, including SEQ ID NO: 2, which is a Tgase variant comprising a double mutation, designated “M2”, wherein the mutations consist of S199G and S299V (instant specification, para 112). As described above, Kazunori teaches Tgase S199G and S299V variants, each of which results in improved enzymatic reactivity. Also described above, Kazunori teaches that combination of effective mutations result in additive or synergistic effects, thereby motivating a person of ordinary skill in the art to combine the disclosed mutations within a single variant, for enhanced reactivity. Such a combination (i.e., a Tgase variant comprising both S199G and S299V), corresponds to instant SEQ ID NO: 2. Accordingly, Kazunori’s teachings render obvious a Tgase variant comprising the amino acid sequence of instant SEQ ID NO: 2.
Regarding claim 8, Kazunori teaches that when the TGase variant gene is expressed in a host, a pro-peptide (pro-sequence) is added to the 5′ end of the gene “for stabilizing the structure of the modified enzyme as an expression product.” (para 0115; see also SEQ ID NOs: 28–30, described as S. mobaraensis pro-sequences). Therefore, it would have been obvious to one of ordinary skill in the art to apply the same pro-sequence to a variant containing the substitutions S199G and S299V, or instant SEQ ID NO: 2, to stabilize the expressed product, because Kazunori explicitly teaches use of the pro-sequence to stabilize modified enzymes.
An invention would have been obvious to a person of ordinary skill in the art if some teaching in the prior art would have led that person to arrive at the claimed invention. Before the effective filing date of the claimed invention, the teachings of Kazunori, that S199G and S299V substitutions in S. mobaraensis transglutaminase each independently improve enzyme reactivity, and that combinations of effective mutations result in additive/synergistic effects, would have motivated a person of ordinary skill in the art to incorporate both substitutions within a single Tgase variant. Said practitioner would also be motivated to include a 5’ pro-sequence, for stabilizing the structure of the modified enzyme, as taught by Kazunori. Given that Kazunori explicitly discloses pro-sequences for use in S. mobaraensis Tgase S199G and S299V variants that successfully improve enzyme reactivity, and teaches combining substitutions within a single variant, said practitioner would have a reasonable expectation of success that the incorporation of the disclosed S199G and S299V substitutions within a single Tgase variant would successfully result in a variant with improved enzyme activity. Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention.
Thus, claims 1-2 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kazunori.
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Kazunori, as applied to claim 1 above, and further in view of Buettner et al. (Increased thermostability of microbial transglutaminase by combination of several hot spots evolved by random and saturation mutagenesis, Amino Acids (2012) 42, pg. 987–996, cited in a previous office action).
The teachings of Kazunori, as they apply to claim 1, have already been discussed above. Briefly, Kazunori discloses S. mobaraensis transglutaminase variants, including S199G and S299V, each of which individually exhibit reduced thermal stability and increased enzyme activity. Kazunori teaches that combinations of beneficial mutations may be combined to obtain improved properties.
Regarding claim 3, Buettner et al. teaches improved thermostability of Streptomyces mobaraensis transglutaminase by saturation mutagenesis and DNA-shuffling. Specifically, mutations of position 2 led to higher thermostability (Abstract). Buettner et al. further teaches that substitution of serine 2 with tyrosine or proline markedly increases thermostability and specific activity of S. mobaraensis TGase, reporting up to a two-fold increase in half-life at 60 °C (pg. 992 and Table 3).
Regarding claim 4, as discussed above (see claim 2 rejection), Kazunori discloses pro-sequences and explicitly teaches addition of a pro-sequence to the 5′ end of S. mobaraensis TGase constructs to stabilize the expressed enzyme.
An invention would have been obvious to a person of ordinary skill in the art if some teaching in the prior art would have led that person to combine prior art reference teachings to arrive at the claimed invention. Before the effective filing date of the claimed invention, the teachings of Kazunori, that S199G and S299V substitutions in S. mobaraensis transglutaminase each independently improve enzyme reactivity, and that combinations of effective mutations result in additive/synergistic effects, would have motivated a person of ordinary skill in the art to incorporate both substitutions within a single Tgase variant. Because Kazunori further teaches that these substitutions are associated with reduced temperature stability, said practitioner would be motivated to include a position 2 substitution, including the S2Y or S2P mutation disclosed by Buettner et al., which demonstrates enhanced thermostability and specific activity - to counteract that reduction and compensate for the reduction in thermal stability associated with the S199G and S299V substitutions. Given that Kazunori explicitly teaches combining effective substitutions to achieve additive/synergistic effects and that Buettner et al. identifies substitutions at position 2 that increase thermostability, said practitioner would have a reasonable expectation of success that combining the S2 substitution of Buettner et al. with the S199G and S299V substitutions taught by Kazunori would yield a Tgase variant according to the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention.
Thus, claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Kazunori, further in view of Buettner et al.
Response to Arguments for Rejections
In the response filed on 03/10/2026, Applicant argues that Kazunori discloses a large number of possible amino acid substitutions and fails to teach or suggest specifically combining the S199G and S299V substitutions recited by the claims. Applicant further argues that the cited references do not provide a reasonable expectation that such a combination would exhibit the claimed enzymatic activity. The argument is not persuasive. Kazunori does not merely disclose S199G and S299V as members of an undifferentiated list of possible substitutions. Rather, Kazunori specifically teaches that substitution S199G results in improved reactivity and that substitution S299V likewise results in improved reactivity. Kazunori further teaches that combinations of effective mutations may result in additive or synergistic effects. Accordingly, a person of ordinary skill in the art seeking to improve transglutaminase reactivity would have been motivated to combine the specifically disclosed beneficial substitutions S199G and S299V within a single transglutaminase variant with a reasonable expectation of obtaining a variant exhibiting improved reactivity.
Applicant argues that the Examiner has improperly selected the claimed substitutions using hindsight reconstruction. The argument is not persuasive. It must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant’s disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Moreover, the rejection is not based on hindsight selection from an unlimited universe of mutations. Rather, the rejection relies upon Kazunori’s express identification of S199G and S299V as substitutions producing the same desirable property, namely improved reactivity, together with Kazunori’s express teaching that effective mutations may be combined. The motivation to combine therefore arises from the teachings of the reference itself and not from Applicant’s disclosure.
Applicant further argues that Buettner demonstrates that combinations of mutations do not necessarily produce additive effects and cites examples in which multiple mutations exhibit activity values that are not greater than certain single mutations. The argument is not persuasive. Buettner does not teach away from combining the beneficial mutations disclosed by Kazunori. The cited Buettner examples involve mutation combinations different from those relied upon by the Examiner and do not include the specific S199G and S299V substitutions taught by Kazunori. Accordingly, the cited examples do not establish that combinations comprising S199G and S299V would have been expected to behave similarly. Furthermore, Applicant’s argument is directed primarily to enzymatic activity, whereas the Examiner relies upon Buettner for its teaching that substitutions at position 2 improve thermal stability. Kazunori expressly teaches that the S199G and S299V substitutions are associated with reduced temperature stability while providing improved reactivity. Buettner teaches that substitutions at position 2, including S2Y and S2P, improve thermostability and specific activity in S. mobaraensis transglutaminase. Thus, a person of ordinary skill in the art would have been motivated to incorporate a position 2 substitution into the Kazunori variant to compensate for the known reduction in thermal stability associated with the S199G and S299V substitutions. Accordingly, the examples cited by Applicant do not undermine the Examiner’s rationale for combining the teachings of Kazunori and Buettner.
Applicant additionally argues that the cited references fail to teach or suggest a transglutaminase variant having at least about two-fold greater enzymatic activity than the enzyme of SEQ ID NO:1. The argument is not persuasive. The rejection is based upon the obviousness of the claimed structural variant comprising the recited substitutions. Kazunori teaches the specific substitutions S199G and S299V and teaches combining effective mutations within a single variant. Once the claimed variant would have been obvious, any property inherently possessed by that variant does not render the otherwise obvious structure patentable. As set forth in MPEP 2112.01, when the structure recited in the prior art is substantially identical to that of the claimed invention, claimed properties or functions are presumed to be inherent. Accordingly, the recited enzymatic activity limitation fails to impart patentable distinction to the claimed variant.
Applicant does not separately address the recited limitation requiring at least 95% sequence identity with SEQ ID NO:1. Nevertheless, the limitation fails to distinguish over the cited art. SEQ ID NO:1 is 331 amino acids in length. A variant differing from SEQ ID NO:1 by only the recited substitutions at positions 199 and 299 would retain approximately 99.4% sequence identity to SEQ ID NO:1. Accordingly, the recited minimum sequence identity limitation is inherently satisfied by the variants rendered obvious by the teachings of Kazunori.
For the foregoing reasons, Applicant’s arguments have been considered but are not persuasive, and the rejection is maintained.
Conclusion
No claim is in condition for allowance.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NAGHMEH NINA MOAZZAMI whose telephone number is (703)756-4770. The examiner can normally be reached Monday-Friday, 9:00-5:00.
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/NAGHMEH NINA MOAZZAMI/Examiner, Art Unit 1652
/ROBERT B MONDESI/Supervisory Patent Examiner, Art Unit 1652
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