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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/25/2026 was filed after the mailing date of the non-final rejection on 3/25/2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment
Applicant’s remarks and amendments filed 6/25/2026, in response to the non-final rejection mailed 3/25/2026, are acknowledged and have been fully considered.
Applicant’s amendment to the claims is acknowledged. This listing of the claims replaces all prior versions and listings of the claims.
Claims 1-6, 15-16 and 19-20 were pending and have been examined on the merits.
Claims 1-6 and 19-20 have been found allowable. The restriction requirement between Groups I-VII, as set forth in the Office action mailed on 8/11/2025, has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of 8/11/2025 is partially withdrawn.
Claims 7-9, directed to various polynucleotides encoding the variant according to claim 1 are no longer withdrawn from consideration because the claims requires all the limitations of allowable claim 1.
However, claims 10-14 and 18 remain withdrawn from consideration because although allowable subject matter has been indicated, these claims each recite as an alternative “the parent alpha/beta hydrolase”, which is a sequence that is 100% identical to that of SEQ ID NO: 1 and thus these claims have a broader scope that the amended subject matter of allowable claim 1. These claims are currently not entitled to rejoinder as they do not actually require all the limitations of an allowable claim (e.g. the variant according to claim 1 is only one alternative).
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Response to Arguments
Any previous rejection or objection not mentioned herein have been withdrawn based upon Applicant’s amendments to the claims.
Applicant’s arguments, in the remarks filed 8/11/2025, with respect to the rejections of claims 1-2, 4, 15-16, and 19-20 under 112(a) for lack of enablement have been fully considered and are persuasive in view of the amendments which limit the claimed variant to only those within 90% identity of SEQ ID NO: 1. Therefore, the rejection has been withdrawn.
However, upon further consideration, a new ground of rejection is made in view of the amendments to claims 15 and 16.
Claim Rejections - 35 USC § 112(a) – Scope of Enablement
(New rejection, necessitated by Applicant’s amendment)
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 15 and 16 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 enablement requirement. The claims contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
“The test of enablement is not whether any experimentation is necessary, but whether, if experimentation is necessary, it is undue.” In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 219 (CCPA 1976). Factors to be considered in determining whether undue experimentation is required are summarized in In re Wands (858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)). The factors include, but are not limited to: (A) The breadth of the claims; (B) The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (E) The level of predictability in the art; (F) The amount of direction provided by the inventor; (G) The existence of working examples; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. See MPEP § 2164.01(a). The factors considered to be most relevant to the instant invention are addressed in detail below.
A. The breadth of the claims:
Claim 15 recites a method for the prophylaxis or treatment of a disease in a subject, comprising administering the variant of claim 1 or the parent alpha/beta hydrolase.
Claim 16 recites a method for the prophylaxis or treatment of a mycotoxicosis in a subject, comprising administering the variant of claim 1 or the parent alpha/beta hydrolase.
Each of claims 15 and 16 recite the variant and the parent enzyme, which is clearly demonstrated in the specification to be a dimer, not a tetramer (see e.g. Table 3). Further, claim 15 is so broad as to encompass the prophylaxis or treatment of any disease. Claim 16 encompasses the prophylaxis or treatment of any mycotoxicosis, with no limitations regarding the causative fungus.
B. The nature of the invention:
The invention of claims 15 and 16 entails the administration of either the patent/variant having SEQ ID NO: 1 or one of the claimed variants of claim 1, for the prevention and treatment of mycotoxicosis, i.e. using the anti-fungal properties of this enzyme.
The invention described in the application, as best understood from the embodiments, comprises using the parental or variant enzyme to degrade the toxic product zearalenone (ZEN), a toxin made by certain Fusarium fungi ([0005] of the specification).
However, the broad nature of the claims is not commensurate with the enablement provided by the disclosure with regard to the use of this enzyme for the prevention of mycotoxicosis involving zearalenone toxin ([0012] of the specification).
C. The state of the prior art:
Fruhauf (US PGPub No. 20160345606, the US National Stage (371) entry corresponding to WO2015/027259, of record) discloses polypeptides for the hydrolytic cleavage of zearalenone and/or at least one zearalenone derivative, having a sequence identity of at least 70% at least one of the amino acid sequences recited therein, including the sequence of SEQ ID NO:1 (Abstract, Claim 1). Fruhauf also states that these polypeptides are hydrolases, and in particular α,β-hydrolases, same as recited in the instant claims ([0032]). The sequence of the parental enzyme, SEQ ID NO:1 in Fruhauf, is 81.2% identical to the sequence of the instantly claimed α,β-hydrolase derived from SEQ ID NO:1. Regarding applications of the enzymes, Fruhauf only teaches applying the enzyme for removing zearalenone ([0008]-[0009]; [0058]: “it is possible to ensure that the harmful effects of zearalenone and zearalenone derivatives on humans and animals will be largely eliminated”).
Aleschko et al. (WO 2020025580 to ERBER AKTIENGESELLSCHAFT, of record) discloses methods for increasing stability of an α /β-hydrolase, degrading zearalenone (ZEN) or treating or prophylaxing a disease (Abstract, [001]). Aleschko teaches a ‘hydropathy index’ also referred to as ‘hydropathy value’, of Kyte and Doolittle summarized therein in Table 1, which is used to predict hydrophobic or hydrophilic properties of the sidechain of an amino acid and methods of calculating temperature stability of enzymes ([0065]; [0083]-[0085]). Aleschko also teaches certain specific mutations and sequences, which are targeted to particular motifs and domains of an α/β-hydrolase, including the Vl-domain and a CAP-loop ([00164], Table 2).
Aleschko teaches performing practical assays to determine specific activity and thermal stability of α /β-hydrolases that degrade ZEN and ZEN derivatives ([00181]-[00191]; FIGs 3A, 3B). Similar to the instant application, Aleschko teaches that the enzymes are used for preventing a disease affecting hormone balance such as estrogen balance such as ZEN-caused mycotoxicosis ([00118]), however, there does not appear to be any description of diseases to be treated other than those caused by ZEN.
Ropejko et al. (“Zearalenone and Its Metabolites-General Overview, Occurrence, and Toxicity”. Toxins (Basel). 2021;13(1):35. Published 2021 Jan 6. doi:10.3390/toxins13010035) teaches that zearalenone is one of over 400 detected mycotoxins produced by fungi of the genus Fusarium, and it mainly has estrogenic effects on various organisms (Abstract).
Awuchi et al. (“Mycotoxins' Toxicological Mechanisms Involving Humans, Livestock and Their Associated Health Concerns: A Review”. Toxins (Basel). 2022;14(3):167) discusses the effects and variety of various known mycotoxins. Awuchi teaches that the most common mycotoxins of concern to humans and livestock include aflatoxins, citrinin, ochratoxins, fumonisins, patulin, zearalenone, nivalenol, deoxynivalenol, ergot alkaloids, and others (pg. 2, first paragraph). Table 2 of Awuchi summarizes the most common groups of mycotoxins, including zearalenone, but also multiple other distinct families of toxins. Multiple mycotoxins, including Aflatoxins B1, B2, G1, G2, and M1 are known carcinogens and can lead to cancer (Table 3).
Thus, the knowledge in the art provides evidence regarding the enormous diversity of possible mycotoxins and effects thereof, and the standard of knowledge for applications of alpha/beta hydrolases for degrading zearalenone (ZEN).
D. The relative skill of those in the art:
MPEP§ 2141.03 states “A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR International Co. v. Teleflex Inc., 127 S.Ct. 1727, 167 LEd2d 705, 82 USPQ2d 1385, 1397 (2007). “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. At 1396, 82 USPQ2d at 1396. The “hypothetical person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988).”
In the instant case, one having ordinary skill would likely have a high amount of education and multiple years of biochemistry and microbiology lab experience. Accordingly, the levels of education, training, and experience of the ordinary artisans are high. The level of skill in the art would be high. However, due to the lack of previous descriptions of the instantly claimed enzyme variants and the very broad nature of claims 15 and 16, one would turn to the instant specification for further guidance as to administration of the claimed enzyme.
E. The predictability or unpredictability of the art:
It is well established that “the scope of enablement varies inversely with the degree of unpredictability of the factors involved”. MPEP§ 2164.03 states that “[i]n cases involving unpredictable factors, such as most chemical reactions and physiological activity, more may be required. In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970) (contrasting mechanical and electrical elements with chemical reactions and physiological activity). See also In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993); In re Vaeck, 947 F.2d 488, 496, 20 USPQ2d 1438, 1445 (Fed. Cir. 1991). This is because in art areas having a high degree of uncertainty (i.e. the unpredictable arts) it is not reasonably predictable from the disclosure of one species, what other species will work”.
The instant invention regards the application of novel mutations in an alpha/beta hydrolase which has activity against ZEN. Thus, the application of this enzyme for only those fungal infections and effects due to ZEN would have been predictable.
The biological arts are often unpredictable, often requiring each embodiment or species of an enzyme or cellular composition to be individually assessed for the desired activity. There would have been very little predictability in performing the full breath of claims 15 and 16, as there is no support for using the instantly described enzyme against any and all diseases, to include both all treatments and prophylaxis. Even if limited to only diseases caused by mycotoxins, this would encompass many compounds and toxins, not just ZEN.
F. The amount of direction or guidance presented:
The instant application teaches only the use of the described enzymes for degrading ZEN, and thus there is only direction or guidance for treating diseases involving the mycotoxin ZEN. All other discussions of treatments or prophylaxis are merely prophetical and there is no evidence that the enzyme can be used for any disease or disorder other than those involving accumulation of ZEN.
H. The presence or absence of working examples:
There are no practical working examples of administering the claimed enzyme for the prophylaxis or treatment of any disease. The working examples of pgs. 45-50 only pertain to determining characteristics and in vitro activity of the enzyme derivatives. There are no examples involving any in vivo application. Thus, the use of the alpha/beta hydrolase variants (or the parent thereof having SEQ ID NO:1) is only hypothetical. Because there are no working examples with any disease including any mycotoxicosis, there is no evidence that the instant invention can be used to treat the full breadth of disorders in claim 15 and/or claim 16.
When weighing all of the factors described above, it is herein determined that the results of the method as claimed would be highly unpredictable to one skilled in the art at the time of the invention and it would require undue experimentation to determine and enable the use of any and all of the claimed enzyme variants for the prevention and/or treatment of the full scope of the disorders required of claims 15 and 16. For practicing the full scope of claim 16 each of the variants would have to be tested in vivo against all mycotoxin diseases, including at least all of the mycotoxins described in the cited art Awuchi et al.. Claim 15 appears to be impossible to enable, as the scope is near limitless, encompassing all infectious diseases, multiple cancers, and diseases against for which there are no effective treatments (i.e. Amyotrophic lateral sclerosis (ALS), Huntington’s Disease, Creutzfeldt–Jakob Disease and many others).
Thus, it is concluded that claims 15 and 16 are drawn to subject matter which is not described in the specification in such a way to enable any person skilled in the art to make and use the entire scope of the claimed invention without undue experimentation.
Allowable Subject Matter
Claims 1-6 and 19-20 are allowable.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
As discussed above, Applicant’s arguments have been found persuasive, in view of the amendments to the claims, in regard to the previous rejections of claim 1.
The following is a statement of reasons for the indication of allowable subject matter: The prior art does not expressly teach nor reasonably suggest a variant of a parent alpha/beta hydrolase having one or more of the claimed substitutions, wherein the variant is a polypeptide having at least 90% but less than 100% sequence identity to the polypeptide of SEQ ID NO: 1, and said variant is capable of tetramerization.
Fruhauf (US PGPub No. 20160345606, of record), the closest art to the instant invention, teaches α,β-hydrolases that perform the hydrolytic cleavage of zearalenone and/or at least one zearalenone derivative having a sequence identity of at least 70% to SEQ ID NO:1 (Abstract, Claim 1). The sequence of the parental enzyme, SEQ ID NO:1 in Fruhauf, is ~81% identical to the sequence of the instantly claimed α,β-hydrolase derived from SEQ ID NO:1. It is evident from sequence alignments that positions 4-312 of the instantly claimed sequence corresponds to positions 19-327 of the prior art sequence. Various combinations of possible mutations are disclosed in Table 5 of Fruhauf, however, there are no teachings regarding obtaining a variant having more or more of the specific substitutions required of the instant invention, wherein the variant enzyme forms a tetramer and maintains α/β hydrolase activity as instantly recited. Because of the high amount of unpredictability in the art regarding effects of mutations at specific positions, there would not have been adequate motivation nor a reasonable expectation of success in generating these specific variants of the wild-type enzyme from Aeromicrobium endophyticum (which corresponds to the sequence of SEQ ID NO: 1).
Claims 10-14 and 18 remain withdrawn because, although allowable subject matter has been indicated, these claims are so broad as to include “the patent alpha/beta hydrolase”, which is a sequence that is 100% identical to that of SEQ ID NO: 1 and thus not encompassed by the subject matter of the allowable claim 1. Because the claims do not actually require all of the limitations of the allowable claims, they remain withdrawn. Applicant is requested to amend the claims to recite only the allowable variant of claim 1, or to cancel the withdrawn claims.
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 ANDREW TERRY MOEHLMAN whose telephone number is (571)270-0990. The examiner can normally be reached M-F 9am-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anand Desai can be reached at 571-272-0947. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.T.M./Examiner, Art Unit 1655
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
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