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 .
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Status of Claims
The 2/17/26 response cancels claims 1-21 and adds new claims 22-40. Claims 22-40 are under examination on their merits.
Objections and Rejections Withdrawn
The objection to the specification is withdrawn in light of the replacement amendment to the specification.
The objection to the claims is withdrawn in light of applicant’s submission of a detailed statement of the status of, and support for, new claims 22-40.
The rejection under 35 U.S.C. 251 based on an improper declaration is withdrawn in light of the replacement reissue declaration identifying this application as a broadening reissue. Furthermore, the rejection under 35 U.S.C. 251 pertaining to the presence of claims numbered 1-21 in this continuing reissue is withdrawn in light of the amendments canceling claims 1-21 in favor of new claims 22-40.
The rejections under 35 U.S.C. 112(b) are withdrawn in light of the claim amendments.
The rejection under 35 U.S.C. 102 over Bowie et al. (WO 2015/153929) is withdrawn in light of the claim amendments incorporating the limitations of canceled claim 3 into independent claim 22 (which is based on previously examined claim 1).
The rejections for nonstatutory double patenting over each of US Patent 10,196,653; US Patent 10,822,623; US Patent 11,104,919; and copending application 18/052,136 taken in view of Bowie et al. are withdrawn in light of the claim amendments incorporating the limitations of canceled claim 3 into independent claim 22.
Multiple Reissue Applications
This reissue application is a continuation of reissue application 17/822,623. 37 CFR 1.177(a) requires that all multiple reissue applications resulting from a single patent must include as the first sentence of their respective specifications a cross reference to the other reissue application(s). Accordingly, the first sentence of each reissue specification must provide notice stating that more than one reissue application has been filed, and it must identify each of the reissue applications and their relationship within the family of reissue applications, and to the original patent. An example of the suggested language to be inserted is as follows:
Notice: More than one reissue application has been filed for the reissue of Patent No. 99,999,999. The reissue applications are application number 99/999,994 (the present application); and application number 99/999,995, which is a continuation reissue of Patent No. 99,999,999.
See MPEP 1451. In addition to amending the specification of this application, applicant should file a certificate of correction in underlying US Patent 10,760,103 to inform the public of the presence of both this application and the ’623 application.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 22-40 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 7, and 10-21 of copending reissue application 17/822,623. A notice of allowance was mailed in the ’623 application on 1/28/26; this rejection will convert to a nonprovisional rejection when that application issues. This rejection addresses the embodiment of claim 1 in which: (a) the substrate is glyceraldehyde-3-phosphate; (b) the product is 3-phosphoglycerate; (c) the oxidizing/reducing cofactor at lines 7-8 is NAD+; and (d) the oxidizing/reducing cofactor at lines 10-11 is NADPH.
The ’623 application claims a recombinant, artificial, or engineered metabolic pathway comprising a plurality of enzymatic steps, wherein the pathway produces unbalanced cofactor levels. (Claim 1 at pages 2-3 of 7/10/25 notice of allowability.) The ’623 application’s pathway comprises a first cofactor-dependent enzyme that converts glyceraldehyde-3-phosphate (G3P) and NADP+ to 3-phosphoglycerate (3PG) and NADPH but does so with unbalanced production and utilization of its cofactor. The ’623 application’s pathway also comprises a second cofactor-dependent enzyme to convert G3P, NADP+, and free phosphate (Pi) to 1,3-bisphosphoglycerate (1,3-BPG), then converts 1,3-BPG and ADP to 3PG and ATP. The ’623 application’s pathway alternates between or simultaneously uses the two pathways for the production of 3PG depending on the availability of Pi. The ’623 application’s system therefore anticipates the examined claims’ system.
Examined claims 26-39 correspond to claims 7 and 10-21 of the ’623 application, respectively.
Regarding claim 40, the ’623 application claims a recombinant polypeptide sharing at least 95% sequence identity to SEQ ID NO:6 and having the same three mutations. The range “at least 95% sequence identity” anticipates claim 40’s “at least 90% sequence identity” because it lies completely within it. See MPEP 2144.05(I).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant requests that the rejection for nonstatutory double patenting over the ’623 application be “held in abeyance until the new claims submitted [on 2/17/26] are entered and analyzed in view of the cited references.” (Reply at 10-11.) This request is denied. See 37 C.F.R. 1.111(b), which allows that some objections may be held in abeyance but includes no provision for holding substantive rejections in abeyance.
Maintenance Fees
Applicant is reminded of the requirement to pay all applicable maintenance fees on the original patent. See MPEP 1415.01.
Duty to Disclose
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 10,760,103 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Conclusion
New claims 22-40 are rejected.
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 LORA E BARNHART DRISCOLL, whose telephone number is (571)272-1928. The examiner can normally be reached M-F 7:00-4:00 p.m. ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Engle, can be reached at 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Lora E Barnhart Driscoll/Patent Reexamination Specialist, Art Unit 3991
Conferees:
/KSO/
Patent Reexamination Specialist, Art Unit 3991
/Patricia L Engle/SPRS, Art Unit 3991