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 .
Claims 1-20 are still at issue and are present for examination.
Election/Restrictions
Applicant's election without traverse of the invention of Group 1, claims 1-12, 14-18, to a MMLR reverse transcriptase composition comprising a peptide extension, in the paper of 11/24/2025, is acknowledged. Applicant's election without traverse of the invention of Species Group 1 species , SEQ ID NO:732, Species Group 2 species , Q68R and Q79R, Species Group 3 species, enhanced thermostability, in the paper of 11/24/2025, is acknowledged.
Claims 6-8, 10, 13 and 19-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609 A(1) states, "the list may not be incorporated into the specification but must be submitted in a separate paper."
Applicants filing of information disclosure statements on 5/21/2025 (2X) and 5/22/2025 are acknowledged and have been considered.
Specification
The disclosure is objected to because of the following informalities:
Applicants specification refers to amino acid positions that do not match the reference sequence. For example “Q68R” and “Q79R” are each refenced relative to the amino acid sequence of SEQ ID NO:674, however, position 68 of SEQ ID NO:674 is a serine residue not a glutamine residue. Similarly position 79 of SEQ ID NO:674 is a isoleucine residue not a glutamine residue.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 9, 12, 15 and 18 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 9 is indefinite in the recitation “a glutamine to arginine substitution at position 68 (Q68R)” in that the claim is drawn a Moloney murine leukemia virus (MMLV) reverse transcriptase (RTase) mutant comprising the amino acid sequence of SEQ ID NO: 674, however, position 68 is a serine (S) residue not a glutamine (Q) residue.
Claim 9 is indefinite in the recitation “a glutamine to arginine substitution at position 79 (Q79R)” in that the claim is drawn a Moloney murine leukemia virus (MMLV) reverse transcriptase (RTase) mutant comprising the amino acid sequence of SEQ ID NO: 674, however, position 79 is a isoleucine (I) residue not a glutamine (Q) residue.
Claims 12, 15 and 18 are indefinite in the recitation “enhanced DNA synthesis, increased fidelity, or enhanced thermostability” as it is indefinite as to each of the enhanced or increased properties are relative to.
Appropriate correction and/or comment is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5, 11, 12, 14-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hogrefe et al. (US 2008/0227661).
Hogrefe et al. (US 2008/0227661) disclose an isolated Moloney murine leukemia virus (MMLV) reverse transcriptase (RTase) mutant comprising a C-terminal peptide extension which comprises the amino acid sequence “RDRNKNNDRRKAKENE” which is identical to instant SEQ ID NO:732 (see claims 12 and 17 and supporting text). It is noted that the isolated Moloney murine leukemia virus (MMLV) reverse transcriptase (RTase) mutant comprising a C-terminal peptide extension which comprises the amino acid sequence “RDRNKNNDRRKAKENE” is an unnatural peptide tag. Hogrefe et al. further teach the above Moloney murine leukemia virus (MMLV) reverse transcriptase (RTase) mutant comprising a C-terminal peptide extension which comprises the amino acid sequence “RDRNKNNDRRKAKENE”, wherein said mutant lacks RNase H activity (see claim 19 and supporting text). Hogrefe et al. further teach the above Moloney murine leukemia virus (MMLV) reverse transcriptase (RTase) mutant comprising a C-terminal peptide extension which comprises the amino acid sequence “RDRNKNNDRRKAKENE”, wherein said mutant possesses enhanced DNA synthesis activity (increased processivity) (see claim 18 and supporting text). Hogrefe et al. further teach the above Moloney murine leukemia virus (MMLV) reverse transcriptase (RTase) mutants as a part of a composition and a kit (see claims 16-34 and supporting text).
Thus, claim(s) 1-5, 11, 12, 14-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hogrefe et al.
Remarks
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD G HUTSON whose telephone number is (571)272-0930. The examiner can normally be reached 6-3 EST Mon-Fri.
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rgh
1/22/2026
/RICHARD G HUTSON/Primary Examiner, Art Unit 1652