DETAILED ACTION
Status of the Application
Claims 1, 3, 5-13, 15 are pending.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s amendment of claims 1, 3, cancellation of claim 2, and amendments to the specification as submitted in a communication filed on 2/13/2026 is acknowledged.
Applicant elected without traverse Group I, claims 1-3, drawn in part to a composition that comprises an L-histidine methyltransferase, a halogen methyltransferase, and an L-hercynine sulfurylase, the protein of SEQ ID NO: 1, the protein of SEQ ID NO: 4 and the protein of SEQ ID NO: 5 in a communication filed on 10/26/2025.
Claims 5-13, 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/26/2025.
Claims 1, 3 are at issue and are being examined only to the extent they encompass the elected invention.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.
Specification
The previous objection to the title of the invention for not being descriptive is hereby withdrawn by virtue of Applicant’s amendment.
The previous objection to the specification due to the recitation of “smegmatismc” is hereby withdrawn by virtue of Applicant’s amendment.
Claim Objections
Claim 2 is objected to as being directed in part to a non-elected invention (SEQ ID NO: 2, 3, 6). Appropriate correction is required.
Claim Rejections - 35 USC § 112(b) or Second Paragraph (pre-AIA )
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.
Claim 3 is 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 pre-AIA the applicant regards as the invention. This rejection is necessitated by amendment.
Claim 3 is indefinite in the recitation of “the halogen methyltransferase has the amino acid sequence of SEQ ID NO: …4” for the following reasons. Amended claim 1, from which claim 3 depends, recites that the halogen methyltransferase is obtained from C. thermophilum or Mycobacterium smegmatis. The protein of SEQ ID NO: 3 has been disclosed in the specification as a halogen methyltransferase from C. thermophilum. The protein of SEQ ID NO: 4 according to the sequence listing and the specification is a halogen methyltransferase from Methylibium sp. Claim 1 is directed in part to a naturally occurring halogen methyltransferase from Mycobacterium smegmatis. Therefore, the scope of claim 3 is not encompassed by the scope of claim 1. Claim 1 does not fully encompass the scope of claim 3, thus rendering claim 3 as an improper dependent claim. For examination purposes, it will be assumed that claim 3 is an independent claim. Correction is required.
When amending the claims, applicant is advised to carefully review all examined claims and make the necessary changes to ensure proper antecedent basis and dependency.
Claim Rejections - 35 USC § 112(a) or First Paragraph (pre-AIA )
Claim 1 remains 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 remains rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a composition that comprises the L-histidine methyltransferase of SEQ ID NO: 1, the halogen methyltransferase of SEQ ID NO: 4, and the L-hercynine sulfurylase of SEQ ID NO: 5, does not reasonably provide enablement for a composition that comprises a L-histidine methyltransferase having any structure, a halogen methyltransferase having any structure, and a L-hercynine sulfurylase having any structure. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
These rejections have been discussed at length at the prior Office action. They are maintained for the reasons of record and those set forth below.
Applicant argues that claim 1 further defines the recited enzymes to be “obtained from” the recited microorganisms, which indicates that the enzymes of the invention are the naturally occurring enzymes found in said microorganisms. Applicant states that the scope of the claims is not broad and sufficient guidance is provided in the specification.
Applicant’s arguments have been fully considered but not deemed persuasive to overcome the instant rejections. The Examiner acknowledges the amendments made to claim 1. However, the Examiner disagrees with Applicant’s contentions that the term “obtained from” limits the enzymes to naturally occurring enzymes found in the recited microorganisms. As stated in MPEP 2111.01, during examination, the claims must be interpreted as broadly as their terms reasonably allow. A protein obtained from organism X can be a recombinant protein which is being produced by organism X. Organism X can be a recombinant organism that has been genetically modified to produce the recombinant protein. Such recombinant protein, which can have any structure, is a protein “obtained” from organism X. Therefore, contrary to Applicant’s assertions, the recitation of “obtained from” does not limit the recited enzymes solely to enzymes which are naturally found in the recited microorganisms. As such, the composition claimed can encompass any L-histidine methyltransferase, halogen methyltransferase and L-hercynine sulfurylase having any structure. The claim encompasses a large genus of proteins which are structurally unrelated.
As previously indicated, the specification provides no clue as to the structural elements required in any L-histidine methyltransferase, halogen methyltransferase or L-hercynine sulfurylase, nor does it teach which structural elements of the proteins of SEQ ID NO: 1, 4 or 5, are required in any histidine methyltransferase, halogen methyltransferase or L-hercynine sulfurylase, respectively. No disclosure of a structure/function correlation has been provided which would allow one of skill in the art to recognize which variants of the polypeptides of SEQ ID NO: 1, 4, or 5 have histidine methyltransferase activity, halogen methyltransferase activity or L-hercynine sulfurylase activity.
While methods of generating or isolating variants of a polypeptide and enzymatic assays were known in the art at the time of the invention, it was not routine in the art to screen by a trial and error process for an essentially infinite number of proteins to find a protein with L-histidine methyltransferase activity, halogen methyltransferase activity or L-hercynine sulfurylase activity. In the absence of (i) a rational and predictable scheme for selecting those proteins most likely to have the desired functional features, and/or (ii) a correlation between structure and L-histidine methyltransferase activity, halogen methyltransferase activity or L-hercynine sulfurylase activity, one of skill in the art would have to test an essentially infinite number of proteins to determine which ones have the desired functional characteristics. Therefore, contrary to Applicant’s assertions, the genus of enzymes required by the claim is not adequately described or fully enabled by the teachings of the specification and/or the prior art.
Claim Rejections - 35 USC § 103 (AIA )
Claim 1 remains rejected under 35 U.S.C. 103 as being unpatentable over Burn et al. (Angewandte Chemie 129:12682-12685, 2017; cited in the IDS) in view of Seebeck et al. (WO 2020/053196, published 3/19/2020, filed 9/10/2019, priority date 9/10/2018).
Claim 3 remains rejected under 35 U.S.C. 103 as being unpatentable over Burn et al. (Angewandte Chemie 129:12682-12685, 2017; cited in the IDS) in view of Seebeck et al. (WO 2020/053196, published 3/19/2020, filed 9/10/2019, priority date 9/10/2018) and Szabo et al. (GenBank accession No. EWS55296 2/20/2014) as evidenced by Naeem et al. (GenBank accession No. VTP06061 12/10/2019), and Leisinger et al. (J. Am. Chem. Soc. 141:6906-6914, 2019; cited in the IDS).
These rejections have been discussed at length in the prior Office action. They are maintained for the reasons of record and those set forth below.
Applicant argues that the composition as currently claimed is an in vitro enzyme composition. Applicant states that the biosynthetic pathway of Burn et al. occurs in vivo. Applicant states that that merely indicating that His MT and HerS are involved in mediating L-ergothioneine synthesis in anaerobic bacteria does not equate to the completion of L-ergothioneine synthesis requiring only two enzymes. Applicant states that all enzymatic reactions in vivo are multi-enzyme cascade catalysis processes dependent on the specific intracellular microenvironment, cofactors and transport systems. According to Applicant, the natural activity and reaction continuity of an in vivo biosynthetic pathway cannot usually be replicated in vitro directly. Applicant states that knowing which enzymes are involved in a reaction is not equivalent to being able to directly assemble a catalytic system with expected function in vitro. Applicant states that while the biosynthetic pathway of penicillin has been fully elucidated and the key enzymes in the pathway can be isolated, industrial-scale penicillin production in vitro remains unachievable, citing bottlenecks such as inactivation of the enzymes needed due to the lack of the proper environment for them. Applicant also states that in vitro synthesis entails extremely high costs. Applicant submits that transferring an in vivo synthesis pathway with a complete intracellular catalytic system to an in vitro production system is time-consuming, labor intensive and costly, with an extremely low success rate. It is Applicant’s opinion that the teachings of Burn et al. would not motivate one of skill in the art to produce L-ergothioneine in vitro using only the two enzymes with a reasonable expectation of success. With regard to Seebeck et al., Applicant argues that it is uncertain if adding the additional HaMT from Seebeck et al. would disrupt the function of the original enzymatic reaction system when implementing the original in vivo synthesis pathway in vitro. Applicant states that simply combining enzymes which are disclosed separately in the art in a single system will not necessarily achieve the desired result. Applicant states that enzymes from different organisms exhibit different enzymatic activity and stability and that there is no motivation to use the enzymes obtained from the particular microorganisms recited in claim 1. Applicant states that unexpected results were found with the particular combination of enzymes recited in claim 1 in that a high L-ergothioneine production yield was obtained as evidenced by Examples 7-9.
Applicant’s arguments have been fully considered but not deemed persuasive to overcome the instant rejections. The Examiner acknowledges the amendments made to claim 1 and the teachings of the specification, including those of Examples 7-9. However, the Examiner disagrees with Applicant’s contention that the claimed composition is not obvious over the prior art.
With regard to the arguments that (i) the biosynthetic pathway of Burn et al. occurs in vivo, (ii) merely indicating that His MT and HerS are involved in mediating L-ergothioneine synthesis in anaerobic bacteria does not equate to the completion of L-ergothioneine synthesis requiring only two enzymes, and (iii) all enzymatic reactions in vivo are multi-enzyme cascade catalysis processes dependent on the specific intracellular microenvironment, cofactors and transport systems, it is noted that while it is agreed that Burn et al. teach that C. limicola has a novel ergothioneine biosynthetic pathway that involves two enzymes, EanA and EanB, Burn et al. also found in vitro that TMH is converted to ergothioneine by the C. limicola EanB protein recombinantly made (page 12683, right column, first full paragraph). As previously indicated, the sulfotransferase EanB from C. limicola of Burn et al. comprises SEQ ID NO: 5 as evidenced by Leisinger et al.. See alignment previously provided. Moreover, Burn et al. specifically teach that the conversion of L-histidine to L-hercynine (N-α-trimethylhistidine, TMH) can be catalyzed by the SAM-dependent methyltransferase EgtD from M. smegmatis (L-histidine methyltransferase) or the C. limicola EanA methyltransferase from C. limicola (L-histidine methyltransferase), wherein said conversion requires the cosubstrate SAM (S-adenosyl-L-methionine). As previously indicated, the methyltransferase EgtD from M. smegmatis of Burn et al. comprises SEQ ID NO: 1, as evidenced by Naeem et al. See alignment previously provided. Burn et al. teach that the EgtD enzyme from M. smegmatis has been fully characterized citing reference 2c (page 12682, left column, last 7 lines), which is that of Seebeck (Journal of the American Chemical Society 132:6632-6633, 2010; hereinafter Seebeck 1). This characterization by Seebeck 1 was made in vitro, wherein EgtD was able to catalyze the conversion of histidine to L-hercynine (TMH) in the presence of SAM (page 6632, left column, last 3 lines, right column, first 6 lines). In addition, as previously stated, Seebeck et al. teach the in vitro regeneration of SAM in a process where M. smegmatis EgtD catalyzes the conversion of histidine to L-hercynine (TMH) by adding the halide methyltransferase (HMT) as shown in Figure 2A (page 76, lines 1-15). Therefore, it is abundantly clear that the teachings of Burn et al. are not limited to an in vivo biosynthetic pathway, when Burn et al. teach (i) the use of one of the two enzymes of the biosynthetic pathway from a different organism, wherein said enzyme (EgtD from M. smegmatis) has been previously functionally characterized in vitro, and (ii) carrying out one of the reactions of the biosynthetic pathway (catalyzed by the EanB from C. limicola) in vitro.
With regard to the arguments that (i) the natural activity and reaction continuity of an in vivo biosynthetic pathway cannot usually be replicated in vitro directly, (ii) knowing which enzymes are involved in a reaction is not equivalent to being able to directly assemble a catalytic system with expected function in vitro, (iii) the biosynthetic pathway of penicillin has been fully elucidated but the industrial-scale penicillin production in vitro remains unachievable, (iv) the teachings of Burn et al. would not motivate one of skill in the art to produce L-ergothioneine in vitro using only the two enzymes with a reasonable expectation of success, and (v) it is uncertain if adding the additional HaMT from Seebeck et al. would disrupt the function of the original enzymatic reaction system when implementing the original in vivo synthesis pathway in vitro, it is noted that the instant biosynthetic pathway is one that comprises only two steps catalyzed by two enzymes, wherein each of the steps has been shown to be successfully carried out using the recited enzymes in vitro. It is reiterated herein, and stated in the prior Office action, that Seebeck et al. teach the regeneration of SAM in a process where M. smegmatis EgtD catalyzes in vitro the conversion of histidine to L-hercynine (TMH) by adding the halide methyltransferase (HMT) as shown in Figure 2A (page 76, lines 1-15). This is the first step of the biosynthetic pathway which Seebeck et al. demonstrated in vitro where two enzymes, namely an L-histidine methyltransferase and a halogen methyltransferase were used simultaneously. In addition, it is reiterated herein that Burn et al. teach the in vitro conversion of TMH to ergothioneine in a reaction catalyzed by the C. limicola EanB protein, which is the second step of the biosynthetic pathway. Moreover, while Applicant argues that the biosynthetic pathway of penicillin has been fully elucidated but the industrial-scale penicillin production in vitro remains unachievable, it is noted that Seebeck 1 discloses the in vitro reconstitution of the mycobacterial ergothioneine biosynthetic pathway (entire document). Therefore, while it is agreed that there is no absolute certainty that combining the three enzymes recited in vitro would result in the production of ergothioneine, there is a reasonable expectation of success in observing the production of ergothioneine from L-histidine in vitro using the claimed composition in view of the fact that both Seebeck et al. and Burn et al. have clearly shown each of the steps catalyzed by these enzymes being successfully carried out in vitro. Applicant is reminded that in the obviousness analysis, all that is required is a reasonable expectation of success, not absolute certainty. As such, contrary to Applicant’s assertions, the teachings of Burn et al. and Seebeck et al. would motivate one of skill in the art to produce the claimed composition to obtain L-ergothioneine in vitro with a reasonable expectation of success.
With regard to the argument stating that unexpected results were found with the particular combination of enzymes recited in claim 1 in that a high L-ergothioneine production yield was obtained as evidenced by Examples 7-9, it is reiterated herein that claim 1 does not limit each of the recited enzymes to one in particular. The claim still encompasses L-histidine methyltransferases having any structure, halogen methyltransferases having any structure, and L-hercynine sulfurylases having any structure because the recited organisms can be recombinant organisms that can produce any L-histidine methyltransferase, any halogen methyltransferase, or any L-hercynine sulfurylase. As such, any L-histidine methyltransferase, any halogen methyltransferase, and any L-hercynine sulfurylase can be “obtained from” the recited organisms. In addition, it is noted that while it is agreed that the prior art does not specifically teach the yield disclosed in the specification, one of skill in the art did not need to know the yields disclosed to be motivated to combine the cited references and arrive to the claimed composition in view of the successful in vitro results found by Burn et al. and Seebeck et al. previously discussed.
Thus, for the reasons of record and those set forth above, the claimed invention is deemed obvious over the prior art of record.
Conclusion
No claim is in condition for allowance.
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 extension fee 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 date of this final action.
Applicant is advised that any Internet email communication by the Examiner has to be authorized by Applicant in written form. See MPEP § 502.03 (II). Without a written authorization by Applicant in place, the USPTO will not respond via Internet email to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. Sample written authorization language can be found in MPEP § 502.03 (II). An Authorization for Internet Communications in a Patent Application or Request to Withdraw Authorization for Internet Communications form (SB/439) can be found at https://www.uspto.gov/patent/forms/ forms-patent-applications-filed-or-after-september-16-2012, which can be electronically filed.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to DELIA M RAMIREZ, Ph.D., whose telephone number is (571) 272-0938. The examiner can normally be reached on Monday-Friday from 8:30 AM to 5:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert B. Mondesi, can be reached at (408) 918-7584. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
/DELIA M RAMIREZ/Primary Examiner, Art Unit 1652
DR
May 13, 2026
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