DETAILED ACTION
Pending Claims
Claims 20-39 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 .
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.
Election/Restrictions
Applicant’s election of Group I (claims 20-27) in the reply filed on March 18, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 28-30 (Group II), 31-34 (Group III), and 35-39 (Group IV) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 18, 2026.
Claim Interpretation
The claimed invention features the following limitation: “wherein the SpyCatcher peptide is covalently attached to the carrier through reaction of an amino group with the group” (of the carrier). This has been interpreted to embrace both direct and indirect attachment, so long as the attachment involves a reaction between an amino group and the group (of the carrier).
Claim Rejections - 35 USC § 102
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.
(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.
Claims 20, 21, 23, and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (WO 2020/041202 A1).
Claims 20, 21, 23, and 24 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Wang et al. (WO 2020/041202 A1 or US 2021/0310910 A1).
Note: all citations are directed to the equivalent US publication.
Regarding claims 20, 21, 23, and 24, Wang et al. disclose: (20) a carrier modified by a SpyCatcher peptide (Figure 5F: see “Spy Catcher Grid”; paragraph 0021; see also paragraph 0094), wherein the carrier, when not modified by the SpyCatcher peptide, comprises a group capable of reacting with an amino group (NH2) (Figure 5D: see “GO Grid”; paragraph 0021; see also paragraph 0094), wherein the SpyCatcher peptide is covalently attached to the carrier through reaction of an amino group with the group (Figures 5D & 5F: see “DBCO-PEG4-Amine”; paragraph 0021; see also paragraph 0094), and the SpyCatcher peptide linked to the carrier is capable of forming an isopeptide bond with a SpyTag peptide (Figure 5F: see “Protein with Spy Tag”; paragraph 0021; see also paragraph 0094);
(21) wherein, the group is selected from the group consisting of an epoxy group, an aldehyde group, an imide, a cyanate, an imidocarbonate, and a hydrazide group (Figure 5D: see “GO Grid”; paragraph 0021; see also paragraph 0094);
(23) wherein the carrier is an epoxy carrier or an amino carrier (Figure 5D: see “GO Grid”; paragraph 0021; see also paragraph 0094); and (24) wherein the SpyCatcher peptide is covalently attached to the carrier through reaction of an amino group with an epoxy group (Figures 5D & 5F: see “GO Grid” and “DBCO-PEG4-Amine”; paragraph 0021; see also paragraph 0094).
Claim Rejections - 35 USC § 103
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.
Claims 22, 26, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (WO 2020/041202 A1 or US 2021/0310910 A1).
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (WO 2020/041202 A1 or US 2021/0310910 A1) in view of Schmidt-Dannert et al. (US 2020/0157153 A1).
Regarding claim 22, the teachings of Wang et al. are as set forth above and incorporated herein. They fail to explicitly disclose: (22) wherein the SpyCatcher peptide comprises an amino acid sequence as set forth in SEQ ID NO: 21, 22 or 23. Rather, they contemplate an embodiment where their SpyCatcher sequence corresponds to a SEQ ID NO: 2 (see paragraph 0059; page 13), as well as a variant thereof (see paragraphs 0121 & 0059). These variants include truncated versions of this sequence (see paragraph 0059). In light of this, a truncation of SEQ ID NO: 2 in Wang et al. (removal of 1-48) would have obviously satisfied the instantly claimed SEQ ID NO: 21:
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the instantly claimed SpyCatcher peptide in in Wang et al. because: (a) Wang et al. contemplate an embodiment where their SpyCatcher sequence corresponds to a SEQ ID NO: 2, as well as a variant thereof; (b) the variants of Wang et al. include truncated versions of this sequence; and (c) a truncation of SEQ ID NO: 2 in Wang et al. (removal of 1-48) would have obviously satisfied the instantly claimed SEQ ID NO: 21.
Regarding claim 26, the teachings of Wang et al. are as set forth above and incorporated herein. Wang et al. disclose: (26) wherein the carrier is linked to a fusion protein comprising a SpyTag peptide and a target protein, wherein the SpyCatcher peptide forms an isopeptide bond with the SpyTag peptide (see Figure 5F; paragraph 0021). They fail to explicitly disclose: (26) wherein the SpyTag peptide comprises the amino acid sequence of any one selected from the group consisting of SEQ ID NOs: 2,11-15 and 28.
Rather, they contemplate an embodiment where their SpyTag sequence corresponds to a SEQ ID NO: 1 (see paragraph 0059; page 13), as well as a variant thereof (see paragraphs 0121 & 0059). These variants include truncated versions of this sequence (see paragraph 0059). In light of this, a truncation of SEQ ID NO: 1 in Wang et al. (removal of 15) would have obviously satisfied the instantly claimed SEQ ID NO: 11:
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the instantly claimed SpyTag peptide in Wang et al. because: (a) Wang et al. contemplate an embodiment where their SpyTag sequence corresponds to a SEQ ID NO: 1, as well as a variant thereof; (b) the variants of Wang et al. include truncated versions of this sequence; and (c) a truncation of SEQ ID NO: 1 in Wang et al. (removal of 15) would have obviously satisfied the instantly claimed SEQ ID NO: 11.
Regarding claim 27, the teachings of Wang et al. are as set forth above and incorporated herein. Wang et al. fail to explicitly disclose: (27) wherein the target protein is an enzyme selected from the group consisting of glutaryl-7-amidocephalosporanic acid acylase, glucose isomerase, nitrile hydratase, penicillin amidase, aspartase, fumarase, amino-acylase, lactase, aspartate-p-decarboxylase and cephalosporin amidase. Rather, they disclose that any “protein of interest” is fused to the SpyTag peptide (see paragraph 0021). This would have obviously embraced the instantly claimed enzymes. Furthermore, the teachings of Schmidt-Dannert et al. demonstrate that enzymes are recognized in the art as suitable proteins to be fused to SpyTag peptides (see paragraph 0048). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to fuse the instantly claimed enzyme to the SpyTag peptide of Wang et al. because: (a) Wang et al. disclose that any “protein of interest” is fused to the SpyTag peptide; and (b) this would have obviously embraced the instantly claimed enzymes. Furthermore: (c) the teachings of Schmidt-Dannert et al. demonstrate that enzymes are recognized in the art as suitable proteins to be fused to SpyTag peptides; and (d) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (WO 2020/041202 A1 or US 2021/0310910 A1) in view of Wei et al. (US 2019/0194417 A1).
Regarding claim 25, the teachings of Wang et al. are as set forth above and incorporated herein. Wang et al. fail to explicitly disclose that their (25) carrier has a particle size of about 100-1000 mm. Rather, they disclose a size of 5-300 mm (see paragraph 0040). In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the carrier of Wang et al. at the instantly claimed size (about 100-1000 mm) because: (a) Wang et al. disclose a size of 5-300 mm; and (b) it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Wang et al. disclose the presence of epoxide groups on their carrier (see paragraphs 0021 & 0094). They fail to explicitly disclose: (25) an epoxy resin. However, the teachings of Wei et al. also disclose a GO material having epoxide groups on the surface (see Abstract). They demonstrate that epoxy resins are recognized in the art as suitable materials for introducing these epoxy groups to the GO material (see paragraphs 0022 & 0032-0033). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include an epoxy resin in the carrier of Wang et al. because: (a) Wang et al. disclose the presence of epoxide groups on their carrier; (b) the teachings of Wei et al. also disclose a GO material having epoxide groups on the surface and demonstrate that epoxy resins are recognized in the art as suitable materials for introducing these epoxy groups to the GO material; and (c) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
April 2, 2026