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 .
1. Claims 4, 5, 7, 8, 10, 11, 13, 15-21, 23-25, 27, 29-31, 33-35, 38, 40-46, 48, 50-53, 55-78, and 80 have been cancelled. Claims 1, 3, 14, 22, and 32 have been amended. Claims 81 and 82 are new.
Claims 9, 12, 36, 37, 39, 47, and 49 have been withdrawn.
In view of applicant’s amendment, the requirement for species election between FAS2 and HCS is withdrawn and claim 79 is no longer considered withdrawn from examination.
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Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable.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.
Claims 1-3, 6, 14, 22, 26, 28, 32, 54, 79, 81, and 82 are under examination.
2. Al objections/rejections pertaining to claims 17 and 78 are moot because the claims were cancelled with the reply filed on 06/18/2026.
The objections to claim 22 is withdrawn in response to the amendment filed on 06/18/2026.
The rejection of claims 1-3, 6, 26, 28, and 54 under 35 U.S.C. 112(b) is withdrawn in response to the amendment to delete the recitation “fatty acid synthase (FAS2)” from claim 1.
The following rejections are withdrawn in response to the amendment introducing the limitation of a FAS2 comprising the claim recite that FAS2 comprises the G1250S mutation:
The rejections of claims 1, 14, 28, 32, and 54 under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Chen et al. (CN 110804561);
The rejection of claims 1-3, 14, 22, 26, 28, 32, 54, and 78 under 35 U.S.C. 103 as being unpatentable over Chen et al. as evidenced by Saccharomyces Genome Database, in view of both Petronikolou et al. (ACS Catal., 2018, 8: 6334-6344) and Barney et al. (Appl. Environ. Microbiol., 2013, 79: 396-399).
New grounds of rejection are set forth below.
Claim Objections
3. Claim 3 is objected to because of the recitation “the enzyme having AAT activity is at least 90% identical to”. Correction to “the amino acid sequence of the enzyme having AAT activity is at least 90% identical to” is required.
4. Claim 14 is objected to because of the recitation “the enzyme having FAS2 activity is at least 90% identical to”. Correction to “the amino acid sequence of the enzyme having FAS2 activity is at least 90% identical to” is required.
Maintained Rejections
Claim Rejections - 35 USC § 103
5. 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 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.
6. Claims 1, 14, 28, 32, and 54 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (CN 110804561), in view of Akada et al. (J. Biosci. Bioeng., 1999, 87: 43-48), as evidenced by Saccharomyces Genome Database.
Chen et al. teach a S. cerevisiae cell genetically modified to comprise a gene encoding strawberry AAT (SAAT, i.e., heterologous) and S. cerevisiae FAS2, both operably linked to promoters; the growth of the cell is not affected by the genetic modifications. The genetically engineered cell produces enhanced amounts of medium chain C6-C10 acyl ethyl esters such as ethyl caproate (or ethyl hexoanate), ethyl caprylate (or ethyl octanoate), and ethyl decanoate (or ethyl caprate) from C6-C10 acyl-CoA and ethanol; the medium chain C6-C10 acyl ethyl esters improve the flavor and quality of wine and liquor (claims 1, 14, 28, and 32) (see Abstract; p. 1, second paragraph; p. 2; p. 6-7). As evidenced by the attached Saccharomyces Genome Database, S. cerevisiae comprises endogenous FAS2 (claim 32) (see summary paragraph and reference 11).
Chen et al. also teach using the genetically engineered S. cerevisiae cell producing the C6-C10 acyl ethyl esters in fermenting and brewing (see p. 6; claim 8), i.e., Chen et al. teach a fermentation composition comprising ethanol and the genetically engineered S. cerevisiae cell (claim 54).
Chen et al. do not teach the G1250S FAS2 mutant (claims 1 and 14). Akada et al. teach that the G1250S FAS2 mutant produces high levels of ethyl caproate (a flavor component of sake) compared to the wild type FAS2 (see p. 44, column 2, last paragraph; p. 47, column 2, first paragraph). One of skill in the art would have found obvious to modify Chen et al, by replacing the wild type FAS2 with the FAS2 G1250S mutant, to achieve the predictable result of obtaining increased amounts of the flavor component ethyl caproate. By doing so, one of skill in the art would have used a FAS2 at least 90% identical to SEQ ID NO: 6. The specification discloses that SEQ ID NO: 6 is the sequence of the S. cerevisiae G1250S FAS2 mutant comprising a serine at position 1250 of SEQ ID NO: 5, which is the sequence of the wild type FAS 2 from S. cerevisiae WLP001 (claims 1 and 14; see p. 25; p. 27).
New Rejections
Claim Rejections - 35 USC § 103
7. 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 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.
8. Claims 1-3, 6, 14, 22, 26, 28, 32, and 54 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. taken with Akada et al. (J. Biosci. Bioeng., 1999, 87: 43-48), as evidenced by Saccharomyces Genome Database, in further view of both Petronikolou et al. (ACS Catal., 2018, 8: 6334-6344) and Barney et al. (Appl. Environ. Microbiol., 2013, 79: 396-399).
The teachings of Chen et al. and Akada et al. are applied as above for claims 1, 14, 28, 32, and 54. Chen et al. and Akada et al. do not teach the AAT set forth by SEQ ID NO: 4 (claims 2, 3, and 6). However, using the AAT set forth by SEQ ID NO: 4 is suggested by the prior art. For example, Chen et al. teach that SAAT lacks strong specificity (see p. 1, second paragraph). Furthermore, Petronikolou et al. teach Ma-WS/DGAT (an AAT from M. aquaeolei), which is used for the in vivo production of ethyl esters from medium-chain acyl-CoA and ethanol substrates (see Abstract; p. 6334, column 2). As evidenced by the attached sequence alignment, the amino acid sequence of Ma-WS/DGAT is 99.5% identical to the claimed SEQ ID NO: 4 (a Ma-WS/DGAT mutant comprising the A144F and A360I mutations). Petronikolou et al. teach that introducing the A144F mutation into Ma-WS/DGAT enhances its affinity for the medium chain C6-CoA (see p. 6340, paragraph bridging columns 1 and 2). Based on these teachings, one of skill in the art would have reasonably expected that the high affinity of the A144F mutant for the C6 acyl-CoA substrate would mediate efficient and increased ethyl caproate production. One of skill in the art would have found obvious to modify Chen et al. by replacing SAAT with the A144F Ma-WS/DGAT mutant, with the reasonable expectation that doing so would result in enhanced ethyl caproate production. Furthermore, Barney et al. teach that introducing A360I mutation into Ma-WS/DGAT increases selectivity for shorter alcohol substrates (see p. 397, paragraph bridging columns 1 and 2; p. 398, column 2, first paragraph; paragraph bridging p.398 and 399). While Barney et al. do not specifically teach ethanol as the shorter alcohol substrate, Barney et al. teach that the modification improves binding of smaller substrates to the active site (p. 398, column 2, first paragraph). Based on these teachings, one of skill in the art would have reasonably expected that the modification would also improve the binding of ethanol. Further introducing the A360I mutation would have been obvious to one of skill in the art, with the reasonable expectation that doing so would increase selectivity for the ethanol substrate, and thus, would further improve the yield of medium chain ethyl esters. By doing so, one of skill in the art would have used the AAT set forth by the claimed SEQ ID NO: 4 (claims 2, 3, and 6).
With respect to claim 22, there is no evidence of record that specifically using the combination of pQCR10 and pPRB1 leads to unexpected results over the cited prior art. Using the recited combination of pQCR10 and pPRB1 is not significant if it do not provide a novel feature.
With respect to claim 26, the applicant elected the species of a cell expressing endogenous EEB1, EHT1, and MGL2. Since the cited prior art does not teach deletion of these genes, one of skill in the art would have reasonably concluded that the genetically engineered S. cerevisiae cell expresses EEB1, EHT1, and MGL2. While the cited prior art does not teach deleting endogenous AATs other than EEB1, EHT1, and MGL2, it is noted that there is no evidence of record indicating that doing so leads to unexpected results. As per MPEP § 716.02, [a]ny differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Using the combination of pQCR10/pPRB1 or deleting endogenous ATTs (other than EEB1, EHT1) is not significant if it does not provide a novel feature.
Thus, the claimed invention was prima facie obvious at the time of its effective filing date.
9. Claims 1, 14, 28, 32, 54, 79, 81, and 82 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. taken with Akada et al. (J. Biosci. Bioeng., 1999, 87: 43-48), as evidenced by Saccharomyces Genome Database, in further view of both Stout et al. (Plant J., 2012, 71: 353-365) and Gajewski et al. (Nature Commun., 2017, 1: 1-8).
The teachings of Chen et al. and Akada et al. are applied as above for claims 1, 14, 28, 32, and 54. Chen et al. and Akada et al. do not teach using a gene encoding HCS (claim 79). However, using HCS is suggested by the prior art. For example, Chen et al. teach that SAAT synthesizes ethyl hexanoate by using hexanoyl-CoA as substrate (see p. 6). Gajewski et al. teach that S. cerevisiae cells expressing G1250S FAS2 exhibit increased hexanoyl acid production (see Abstract; p. 3, column 1, last paragraph). Stout et al. teach that HCS uses hexanoic acid to synthesize hexanoyl-CoA (see Abstract; Fig. 1). Based on these teachings, one of skill in the art would have reasonably concluded that: (1) the S. cerevisiae cells of Chen et al. and Akada et al. (which comprise G1250S FAS2) synthesize increased amounts of hexanoyl acid; (2) expressing HCS in these cells would convert the hexanoyl acid to hexanoyl-CoA to provide increased amounts of substrate for SAAT; and (3) increased amounts of substrate would lead to increased production of ethyl hexanoate. One of skill in the art would have found obvious to modify Chen et al. and Akada et al. by further expressing the HCS taught by Stout et al., to achieve the predictable result of increasing production of ethyl hexanoate. As evidenced by the attached Sequence Alignment, the HCS taught by Stout et al. is set forth by SEQ ID NO: 7 (claim 81).
With respect to claim 82, there is no evidence of record that specifically using the recited combination of promoters leads to unexpected results over the cited prior art. Using the recited combinations of promoters is not significant if it does not provide a novel feature.
Thus, the claimed invention was prima facie obvious at the time of its effective filing date.
Response to Arguments
10. The argument that none of Chen, Petronikolou, and Barney teach the G1250S FAS2 mutant.
This is not found persuasive because Chen, Petronikolou, and Barney were not cited for teaching the G1250S FAS2 mutant. This mutant is taught by Akada.
It is also noted that Akada was only cited for teaching the G1250S FAS2 mutant, and thus, Akada does not have to teach co-expressing AAT and FAS2.
The argument that none of the reference teaches a yeast strain expressing heterologous AAT and the G1250S FAS2 mutant is not found persuasive because none of the references has to teach every claim limitation.
The argument of unexpected synergistic effect is not found persuasive because the data in the specification does not show unexpected synergistic effect over the cited prior art.
Specifically, the data in the specification compares AAT alone and G1250S FAS2 alone to the combination of AAT and G1250S FAS2. The comparative data shows that the combination of AAT and G1250S FAS2 is synergistic.
However, the primary reference (Chen) already teaches the combination of AAT and FAS2. The data in the specification does not show that using the combination of AAT and G1250S FAS2 results in synergistic effect over Chen.
Akada teaches that G1250S FAS2 produces high levels of ethyl caproate (hexanoate) compared to the wild type FAS2. Using G1250S FAS2 in Chen to enhance the yield of ethyl caproate would have been obvious. The data does not show that using G1250S FAS2 results in more than was expected from modifying Chen by replacing FAS2 with G1250S FAS2.
Conclusion
11. 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.
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/ILEANA POPA/Primary Examiner, Art Unit 1633
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