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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 23, 2026 has been entered.
Amendment, reply and declaration filed April 23, 2026 have been received and entered into the case. Claims 1 - 2, 5 - 6 are canceled; claims 7 - 10 are added; claims 3 - 4 and 7 - 10 are pending; claims 4 and 9 - 10 are withdrawn as being drawn to non-elected subject matter; claims 3 and 7 - 8 have been considered on the merits. All arguments have been fully considered.
Claim Objections
Claim 8 is objected to because of the following informalities:
Claim 8 fails to end with a period. Appropriate correction is required.
Claim Rejections - 35 USC § 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.
Claims 1 and 7 – 8 are rejected under 35 U.S.C. 102a1 as being anticipated by Watanabe et al. (US 9175282) as evidenced by the sequence search Result 3.
Regarding claim 3, Watanabe teaches methods of producing epimerization products of glucose, mannose, talose and galactose by allowing an enzyme preparation catalyze the reaction (col.5), wherein the enzyme is SEQ ID NO:10 (col.6) which is a protein consisting of "an" amino acid sequence of SEQ ID NO:1 and 3 (see SEQ SEARCH Result 3 for both claimed sequences to US PATENT 9175282).
Regarding claims 7 and 8, the optimal pH is disclosed as 7.8, which is less than pH 8 and between pH 6.0 - 8.0.
Regarding the specific sequences of the enzyme, since the claims recite "an" amino acid sequence, and the specification does not define the lower size limit (or minimum number amino acids required) of the protein, the claims encompass any sequence of two or more amino acids.
Therefore, the reference anticipates the claimed subject matter.
Response to Arguments
Regarding the anticipatory rejection, applicant argues that the reference relied upon is dated April 2, 2025 which is post filing date of the instant application and that the earlier version (18) does not identify the function of the sequence, therefore it cannot anticipate the claimed method of use.
However, in light of the newly cited art above, this argument fails to persuade.
Regarding obviousness, applicant argues that there is no motivation to combine the cited references, no reasonable expectation for success and the claimed sequences exhibit unexpected results as evidenced by applicant's declaration filed 04.23.2026. Specifically, that the prior art does not teach applying N-acylglucosamine 2 epimerase to glucose, mannose, talose or galactose due to high substrate specificity; and that there would be no expectation for success given specificity of enzyme substrates. Applicant argues the claimed method exhibits unexpected results in that when maintaining the process at less than pH 8.0 or pH 6.0 - 8.0, fructose byproducts are significantly suppressed with robust production of mannose (declaration para. 9, 10) while the process forms fructose more than twice that of mannose at pH 9 (declaration para.10, 12). Moreover, applicant argues that the claimed pH boundary for achieving superior results is unexpected.
However, these arguments are not persuasive in light of the newly cite prior art above and since Watanabe teaches the method carried out under the claimed pH.
Regarding the specific sequences of the enzyme, since the claims recite "an" amino acid sequence, and the specification does not define the lower size limit (or minimum number amino acids required) of the protein, the claims encompass any sequence of two or more amino acids. In this regard, the arguments and affidavit not commensurate in scope with the claimed invention. Applicant may avoid this interpretation by replacing "an" with "the" amino acid sequence.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUTH A DAVIS whose telephone number is (571)272-0915. The examiner can normally be reached Monday - Friday (8am - 4pm).
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, Fereydoun Sajjadi can be reached at 571-272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RUTH A DAVIS/Primary Examiner, Art Unit 1699
Prosecution Insights