DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-3, 6, 7, 9-22 are pending in the instant application.
New claims 17-22 have been withdrawn from consideration because the claims do not recite the specific microorganism of claim 1. Further new claims 17-22 would be 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 because it is unclear how transforming any microorganism with an amino acid sequence would result in the increased production of any L-amino acid.
Amending the claims to recite the specific microorganism of claim 1 and specific method steps that result in the increased production of any L-amino acid would be considered.
Claims 1-3, 6, 7, 9-16 are under consideration in this Office Action.
In view of the claim amendment and arguments filed 01/22/2023, the previous rejections of the claims under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, and 35 U.S.C. 103 have been withdrawn.
In view of the claim amendment and arguments filed 01/22/2023, the previous rejection of the claims under on ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-4 of US Patent No. 10995378 and claims 1-14 of Serial No. 17787263 have been withdrawn.
Title
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. The following title is suggested for the instant application:
A MODIFIED MICROORGANISM EXPRESSING A MEMBRANE PROTEIN DERIVED FROM SHEWANELLA ONEIDENSIS AND L-AMINO ACID PRODUCING METHOD USING SAME
Claim Rejections - 35 USC § 112(b) or 35 U.S.C. 112 (pre-AIA ) 2nd Paragraph
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 2, 3, 6, 13 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 pre-AIA the applicant regards as the invention.
Amended claim 2 recites the phrase “modified microorganism according to claim 1, wherein in the Genus Corynebacterium microorganism” which renders the claim vague and indefinite since the meaning of the phrase is not known. Dependent claim 3 is also rejected because they do not correct the defect.
Amending the claim to recite the phrase “wherein in the said modified microorganism” would aid in overcoming the rejection.
Amended claim 6 recites the phrase “wherein the Genus Corynebacterium microorganism”. which renders the claim vague and indefinite since the meaning of the phrase is not known.
Amending the claim to recite the phrase “wherein the said modified microorganism is Corynebacterium glutamicium” would aid in overcoming the rejection.
New claim 13 recites the phrase “derived from Genus Shewanella microorganism” which renders the claim vague and indefinite since the meaning of the phrase is not known.
Amending the claim to recite the phrase “derived from a microorganism from the genus Shewanella” would aid in overcoming the rejection.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-3, 6, 7, 9-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of Serial No. 17916528.
Applicant’s statement filed 01/22/2026 stating that applicant will address the rejection upon indication that the claims are allowable has been acknowledged. However, until a terminal disclaimer is filed the claims are rejected for the reasons stated below.
Although the conflicting claims are not identical, they are not patentably distinct from each other for the following reasons. The claims and/or specification of the copending application teach the claimed modified microorganism from Genus Corynebacterium microorganism expressing a membrane protein, and method for production of L-amino acid. Thus, the teachings anticipate the claimed invention.
Conclusion
No claim is allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Christian L Fronda whose telephone number is (571)272 0929. The examiner can normally be reached Monday-Thursday and alternate Fridays between 9:00AM-5:00PM.
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/CHRISTIAN L FRONDA/Primary Examiner, Art Unit 1652
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