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 .
Status of Claims
Receipt of Arguments/Remarks filed on 4/13/2026 is acknowledged. Claims 1, 4, 9-10, 12, 14, 16, 19, 33, 40, 47, 58, 60, and 62-63 are pending. Claims 1, 4, 9-10, 12, 14, 19, 33, and 40 were amended. Claims 2-3, 5, 8, and 49 were canceled. Claims 58, 60, and 62-63 are withdrawn as being directed to a non-elected invention.
Withdrawn Objections/Rejections
The objection to the drawings is withdrawn.
The rejection of claims 8-10, 12, 14, 19, 33, 40, and 49 under 35 U.S.C. § 112(b) is withdrawn.
The rejection of claims 1-3, 12, 14, and 49 under 35 U.S.C. § 102 is withdrawn.
The rejection of claims 10 and 16 under 35 U.S.C. § 103 is withdrawn.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 2/3/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
New and modified objections and rejections necessitated by amendment
Claim Objections
Claims 19 and 33 are objected to because of the following informalities:
Claim 19, option ii) b) recites “wherein the modification substitution of the wild-type amino acid residue”. This should instead be “wherein the modification is a substitution of the wild-type amino acid residue”.
Claim 33, option i), recites “comprising a modification at modifications at positions”. The phrase “modification(s) at” should appear only once.
Claim 33 additionally recites options i) and iii), with no option ii). This should be amended to recite options i) and ii).
Appropriate correction is required.
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 1, 4, 9-10, 12, 14, 16, 19, 33, 40, and 47 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.
Regarding written description, 35 U.S.C. 112(a) and the first paragraph of pre-AlA 35 U.S.C. 112 require that the "specification shall contain a written description of the invention ...." This requirement is separate and distinct from the enablement requirement. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340, 94 USPQ2d 1161, 1167 (Fed. Cir. 2010). To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention (MPEP § 2163(I)).
MPEP 2163(II)(A)(3)(a)(i and ii) states that the written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus.
A "representative number of species" means that the species which are adequately described are representative of the entire genus. See AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., .759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014). Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus.
In the instant case, claim 1 is directed to an engineered lactate oxidoreductase comprising a sequence having at least 90% sequence identity to any one of SEQ ID NOs: 1-16, with substitutions at positions 20 and 185 and/or 129 and 164 relative to SEQ ID NO: 1. There is not sufficient written description support for a lactate oxidoreductase enzyme having 90% sequence identity to SEQ ID NOs: 1-16 and the claimed substitutions that retains the claimed function, i.e. lactate oxidoreductase activity and increased thermal stability as recited in claim 1.
There is not a disclosed structure-function relationship for the claimed sequences. 90% identity means that 10% of the amino acids can vary from the original sequence, yielding a large number of potential variant sequences for each of SEQ ID NOs: 1-16. SEQ ID NOs: 1-16 range in length from 352-506 amino acids, which means up to 35-50 residues may be substituted within the range of 90% identity. This encompasses a vast number of potential amino acid sequences, including substitutions of up to ~35-50 amino acids residues, as well as insertions or deletions. A skilled artisan would not be aware of which of these potential variants of SEQ ID NOs: 1-16 possess lactate oxidoreductase activity with enhanced thermal stability.
There are no disclosed examples of representative sequences with modifications other than substitutions at the positions specifically disclosed in the claims, or any disclosure of regions or residues where variation may or may not occur, to provide a sufficient structure-function relationship for a lactate oxidoreductase enzyme with 90% identity to SEQ ID NOs: 1-16, the claimed substitutions, and increased thermal stability, and thus it is not clear that applicant was in possession of the full scope of the claimed invention.
It is established in the art that substitutions of even a single amino acid residue can have large impacts on function, and the effect of these substitutions further depends on whether the substitution is conservative, and therefore expected to maintain the overall enzyme structure, or non-conservative (see Minagawa et al. pg. 78-79 “Results and discussion” and Table 1 demonstrating the varying effects on enzyme function for mutations at different residues in lactate oxidase; and Leitgeb et al. pg. 5 para. 46-47 for discussion on conservative mutations). Thus, substitutions of enzyme amino acid residues are considered unpredictable and a skilled artisan would not be aware of which 10% of amino acids could be substituted in the lactate oxidoreductases of the invention and maintain the claimed function.
Further, the examples in the specification are directed to an enzyme having a sequence according to SEQ ID NO: 1 with the claimed substitutions. There are no examples of enzymes with sequences 90% identical to SEQ ID NOs: 2-16 and with substitutions of Cys at any of residues 20, 185, 129, or 164, that have enhanced thermal stability. As SEQ ID NOs: 2-16 have significant variation in sequence identity compared to SEQ ID NO: 1 (for example, SEQ ID NO: 2 is 52.5% identical to SEQ ID NO: 1, see Fig. 33), it is not clear that applicant was in possession of lactate oxidoreductase enzymes with sequences having at least 90% identity to SEQ ID NOs: 2-16, with the substitutions as recited in claim 1, and having increased thermal stability.
For these reasons, the disclosure does not reasonably convey to a person having ordinary skill in the art that the inventors had possession of the entire scope of the claimed invention (lactate oxidoreductases with 90% identity to any of SEQ ID NO: 1-16, the claimed substitutions, and increased thermal stability) at the time of filing.
Claims 4, 9-10, 12, 14, 16, 19, 33, 40, and 47 are included in this rejection because they depend on a rejected claim and do not clarify the issue.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16 and 19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 16 recites the phrase “which includes a reduced oxidase activity, increased dehydrogenase activity, or an increased Km as compared to the wild-type lactate oxidoreductase.” The use of the term “includes” makes it unclear whether these limitations are required or optional, and thus the scope of the claim is unclear. For the purposes of examination, the term “includes” as used in claims 16 is interpreted to mean that the recited limitation is one of multiple potential options, and therefore is not required.
Claim 19 recites “The engineered lactate oxidoreductase of claim 8”. However, claim 8 has been canceled. Therefore, the scope of claim 19 is unclear. Claim 19 should be amended to depend on a pending claim.
Allowable Subject Matter
Claims 1, 4, 9-10, 12, 14, 16, 19, 33, 40, and 47 are free of the prior art. The prior art does not teach an engineered lactate oxidoreductase having at least 90% sequence identity to any of SEQ ID NOs: 1-16 and also having a substitution of Cys at a positions corresponding to positions 20 and 185 and/or 129 and 164 of SEQ ID NO: 1, as required by claim 1. The closest prior art is Leitgeb et al., US 2013/0071868 A1; Minagawa et al., Cellular and molecular life sciences; 64(1):77-81; and Hiraka et al., Biosensors and Bioelectronics; 103:163-70.
Leitgeb teaches engineered lactate oxidoreductases with amino acid substitutions at position Tyr191, Gly36, Ala95, Thr103, Glu160, Val198, Asn212, Ala/Gly232 and Phe277 corresponding to SEQ ID NO: 1. Leitgeb does not teach or suggest a substitution to Cys at positions 20, 185, 129, or 164 as required by claim 1. There is nothing in the teachings of Leitgeb to provide motivation for a skilled artisan to make any of these substitutions in SEQ ID NO: 1, or corresponding residues in SEQ ID NOs: 2-16.
Minagawa teaches engineered lactate oxidases with modifications at a position corresponding to positions 185 and 164 of the amino acid sequence set forth in SEQ ID NO: 1 (Minagawa pg. 78 Table 1). Minagawa teaches the substitutions D164V and V185M (Minagawa Table 1). Minagawa does not teach substitutions at positions 20 or 129, or Cys substitutions at positions 164 or 185, and there is nothing in the teachings of Minagawa to provide motivation for a skilled artisan to make these substitutions in SEQ ID NO: 1, or corresponding residues in SEQ ID NOs: 2-16.
Hiraka teaches an engineered lactate oxidase from Aerococcus viridans, with a sequence according to instant SEQ ID NO: 1, wherein the lactate oxidase has a substitution at position 96, Ala96Leu (Hiraka “Abstract”). Hiraka does not teach or suggest substitutions at positions 20, 185, 129, or 164 of SEQ ID NO: 1, or provide motivation for a skilled artisan to make these substitutions in SEQ ID NO: 1 or corresponding residues in SEQ ID NOs: 2-16.
The prior art does not teach lactate oxidoreductases having at least 90% identity to any of SEQ ID NOs: 1-16 and a substitution of Cys at the positions corresponding to positions 20, 185, 129, or 164 of SEQ ID NO: 1. However, as set forth above, claims 1, 4, 9-10, 12, 14, 16, 19, 33, 40, and 47 are rejected under 35 U.S.C. § 112(a), and claims 16 and 19 are rejected under 35 U.S.C. § 112(b).
Response to Arguments
Applicant's arguments filed 4/13/2026 regarding the rejection under 35 U.S.C. § 112(a) have been fully considered but they are not persuasive.
Applicant argues that as amended, claim 1 specifies that at least one of two pairs of mutations must be present, the specification provides the sequences of SEQ ID NOs: 1-16, and the minimum sequence identity percentage establishes a sufficiently precise definition and structural formula that would allow the ordinary artisan to readily identify engineered lactate oxidoreductase mutants that fall within the scope of the claims from those mutants that do not. Applicant argues that the specification describes methods by which one of ordinary skill in the art can readily determine if a given protein has increased thermal stability compared to a protein having the appropriate one of SEQ ID NOs: 1-16 (Examples 4 or 6).
In response to this argument, it is noted that while a skilled artisan could readily identify all proteins having at least 90% identity to SEQ ID NOs: 1-16 using available bioinformatic tools, the information provided in the specification is not sufficient to determine which of these proteins would have increased thermal stability. The knowledge of the sequence does not allow a skilled artisan to determine which variants of SEQ ID NOs: 1-16 have increased thermal stability.
The claims are directed to a protein having 90% identity to SEQ ID NOs: 1-16, and having substitutions of Cys at positions 20 and 185 and/or 129 and 164 relative to SEQ ID NO: 1. SEQ ID NOs: 1-16 range in length from 352-506 amino acids, which means up to 35-50 residues may be substituted within the range of 90% identity. A substitution of all four claimed residues in proteins according to SEQ ID NOs: 1-16 results in sequences with between 98.8% and 99.2% identity to the original sequences. Therefore, if a sequence has 90% identity to SEQ ID NOs: 1-16 and the claimed mutations, an additional 32-46 amino acid residues aside from the claimed substitutions could be substituted to any other amino acid, or there could be insertions or deletions of residues at any part of the sequence (see instant specification para. 112 "Percentage of sequence identity"). This is a vast number of potential sequences.
Examples 4 and 6 of the instant specification are directed to results indicating that specific oxidoreductases, i.e., a lactate oxidoreductase with a sequence according to SEQ ID NO: 1 and substitutions V20C/N185C/A96L/N212K (98.9% identity to SEQ ID NO: 1) have increased thermal stability. While it is true that the thermal stability of various oxidoreductases can be determined experimentally, the specification exemplifies only a small number of lactate oxidoreductases, specifically variants of the lactate oxidoreductase with a sequence that is 98.9% identical to SEQ ID NO: 1, having increased thermal stability. There is nothing to indicate that a sequence which is 90% identical to SEQ ID NO: 1, i.e. having an additional ~33 residues which differ from wildtype, for example, would maintain the exemplified thermal stability. There is nothing to indicate which specific residues can/cannot vary from the original sequences and still maintain increased thermal stability. Further, there are no examples of variants with 90% sequence identity to any of SEQ ID NOs: 2-16 and the claimed substitutions that have increased thermal stability. For these reasons, it is not clear that applicant was in possession of the full scope of proteins with sequences that are 90% identical to any of SEQ ID NOs: 1-16 with the claimed substitutions and having increased thermal stability.
Applicant argues that the claims do describe a correlation between structure and function (i.e., have a certain percentage identity with one of SEQ ID NOs: 1-16, along with at least one of the pairs of mutations) which is correlated to a specific functional effect (improved thermal stability), and that the application explains that the disulfide bridges created by each of these pairs of mutations makes the protein more thermally stable.
In response to this argument, the functional effect of improved thermal stability is associated with the specific substitutions as recited in the claims, i.e. substitutions of Cys at positions 20 and 185 and/or 129 and 164 relative to SEQ ID NO: 1. The disulfide bridges as referred to in paragraph 162 of the instant specification are formed by a reaction of the cysteine residues at each of the substituted positions. There is nothing to indicate, outside of these specifically claimed mutations, which additional mutations or substitutions, if any, could be made to any of SEQ ID NOs: 1-16 and achieve increased stability. As SEQ ID NO: 1 for example has 374 amino acids, anywhere from 1-33 additional amino acids could be substituted with any other amino acid, within the scope of 90% identity. The specific functional effect is correlated to the claimed Cys substitutions and the disulfide bridge formed as a result of these substitutions. The specification does not have examples of proteins with a sequence according to SEQ ID NO: 1 that have any mutations other than those specifically claimed residues, and does not have examples of proteins according to any of SEQ ID NOs: 2-16 with mutations at the claimed residues or any other residues, which have increased thermal stability. Thus, while the claims do describe a structure/function correlation, the correlation is specifically related to the claimed substitutions to cysteine at the claimed positions. There is not a disclosed structure/function relationship for proteins with sequences that are 90% identical to SEQ ID NOs: 1-16 and have increased thermal stability, and there is not a disclosed structure/function relationship for proteins with sequences according to SEQ ID NOs: 2-16 having the claimed Cys substitutions and increased thermal stability.
Applicant argues that the specification describes (in at least Examples 2, 4, and 6) a number of species which possess the necessary structure and functional effect, and the large number of potential proteins that possess at least 90% sequence identity to SEQ ID NO: 1 does not require a similarly high number of species to be tested or described, in order to be a "representative number" of species.
In response to this argument, the examples of 2, 4, and 6 are directed to a protein having a sequence according to SEQ ID NO: 1, with substitutions V20C/N185C/A96L, or V20C/N185C/A96L/N212K. As discussed above, there are countless sequences with 90% identity to SEQ ID NOs: 1-16, and the structure/function relationship as described is specifically related to the claimed substitutions. It is therefore considered that the examples directed to a protein with a sequence according to SEQ ID NO: 1 and four specific substitutions (98.9% identity) are not representative of the entire genus of proteins having 90% identity to any of SEQ ID NOs: 1-16 and increased thermal stability, especially given the variability in sequence identity between each of SEQ ID NOs: 1-16 (see Fig. 33).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMILY F EIX whose telephone number is (571)270-0808. The examiner can normally be reached M-F 8am-5pm ET.
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, Sharmila Landau can be reached at (571)272-0614. 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.
/EMILY F EIX/Examiner, Art Unit 1653
/SHARMILA G LANDAU/Supervisory Patent Examiner, Art Unit 1653
Prosecution Insights