DETAILED ACTION
Status of Application
The amendments and response filed 08 June 2026 are acknowledged and have been considered in their entireties. Claims 1-10 and 12 remain pending; Claim 10 remans withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Thus, claims 1-9 and 12 remain subject to examination on the merits.
Withdrawal of Previous Objections
The rejection of claims 1-9 and 12 for minor grammatical errors is withdrawn in view of the amendments to insert “A” at the start of claim 1 and “The” at the start of claims 2-9 and 12.
The objection to claims 5, 6 and 8 for lack of italicization of the species names is withdrawn in view of the amendments to the claims.
Maintained Rejection
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 8 is rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The claim is drawn to a S. cerevisiae yeast strain which has been deposited at CNCM – Institute Pasteur with registration number CNCM I-5574 or CNCM I-5575. The instant specification in Example 4 indicates that CNCM I-5574 is yeast strain “GN2363” and that CNCM I-5575 is yeast strain “GN2364”, both which are made in “experiment 2”, which is taken to mean Example 2.
In order for the claim and strains to be enabled, either the deposited strains must conform the conditions of the Budapest Treaty or the strain must be described in the specification in such a way that one skilled in the art can readily make the strain(s).
In the first instance, regarding deposits under the Budapest Treaty, while the strains have clearly been indicated as having been deposited, the specification does not indicate that this strain has been deposited under the Budapest Treaty and therefore, without guarantee of the availability of the strains, the strains are not enabled.
Deposits under the terms of the Budapest Treaty are, in themselves, insufficient to satisfy 37 GFR 1.805-1.807 unless they are disclosed on the record to be freely available to the public should a U.S. patent issue on the instant application.
Application of 37 CFR 1.801-1.807 to any deposit, including a deposit made under the Budapest Treaty, requires that an enabling disclosure based upon such a deposit be provided by submission of a declaration or averment, either by the assignee or the attorney of record over his or her signature and registration number, that gives the following assurances:
1) that the biological material was accepted by the depository, which includes the date of deposit, name of the depository, and the specific address of the depository;
2) that ALL restrictions on the availability to the public of the deposited material
will be removed upon granting of a US Patent, AND,
3) that the viability of the deposits will be maintained, for the duration of the patent term or for a period of thirty years in accordance with 37 CFR 1.806, See also, MPEP 2403-2409, wherein the latter section requires an amendment to the specification that introduces specific information concerning any deposit of biological materials.
Such an amendments do not constitute new matter.
With regard to the alternative to the deposit under the Budapest Treaty, specifically a repeatable procedure to make the deposited strains as described in the specification, here it is asserted that the specification is unclear to this aspect. This is because, in Example 2, there are multiple strains which are produced but none of them are indicated as being “GN2363” (e.g. deposited strain CNCM I-5574) or “GN2364” (e.g. deposited CNCM I-5575). For example, while the starting strain is clear BY4742, this strain then has the DUG2 gene deleted by insertion of LoxP-URA3-LoxP cassette. The resultant strain is not designated as anything (for all intents and purposes, this will be referred by the examiner as strain A). Then to this strain, an expression cassette is inserted which expresses GSH1 and GHS2. This will be referred to as strain B by the examiner. Then, to this strain B, the ECM38 gene is eliminated but this strain is not designated. Furthermore, it is unclear if the ECM38 gene is eliminated in strain A or strain B, as this is not indicated either because all the specification says about this is: “The ECM38 gene was eliminated (in the strain already deleted for DUG2), by substitution with the LEU2 gene marker of Kluyveromyces lactis (homologue of the LEU2 gene of Saccharomyces cerevisiae), following the same steps as described for DUG2”. This strain will be referred to as strain C, even though it is ambiguous to the exact content of the strain. To ambiguous strain C, then URA3 and LEU2 marker genes are eliminated. This will be referred to as strain D (again ambiguous to its exact content). The final paragraph of Example 2 states:
A strain was thus obtained which, as well as having the DUG2 and ECM38 genes (responsible for glutathione degradation) deleted, also contains additional copies of the genes GSH1 and GSH2 that increase glutathione biosynthesis and production.
But again, this strain is never designated as any particular strain and it is unclear if means “GN2363” (e.g. deposited strain CNCM I-5574) or “GN2364” (e.g. deposited CNCM I-5575) or has a completely different strain name not indicated anywhere. It is further unclear if said thus obtained strain has the marker genes URA3 and LEU2 deleted as well. As such, the deposited strains cannot reliably be known and made by repeatable method(s) by a skilled artisan because of the lack of details in the instant specification. Thus, the claim/strains are not enabled.
Applicant’s Response and Examiner’s Rebuttal:
Applicant’s traverse the rejection of record (and suggest at first that it was made under the written description requirement rather than enablement), and state the deposit of the two strains was made under the Budapest treaty, and submit the deposit certificate and recite the exact depository (including address) and the date. This is acknowledged and the Examiner agrees with this, however, not all aspects have been satisfied. Specifically, the statements regarding 37 CFR 1.801-1.807. In this regard, Applicant’s subsequently, on p. 5 state the following:
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Clearly, here Applicant’s are saying the statement could be made, at some point in time, but it is not being made here. If Applicant’s wish to make such a statement, which would overcome the rejection of record, then they need to clearly state on the record that the entire statement within quotes, is being submitted to satisfy the requirements of 37 C.F.R. 1.801-1.807.
With regard to Applicant’s assertions that the specification provides a repeatable process. It is not clear in the specification which examples result in which strain being made; which results in a repeatable process that one skilled in the art can reproduce. The specification is entirely unclear which strains were made and result in which deposited strain. Again, this information needs to be available to those skilled artisans wanting to reproduce the work but it is not clear what steps and Examples result in what strains.
Thus, the rejection of record is maintained.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kazuo et al. (JP 2012-213376, cited on IDS 03/24/2023) in view of Wang et al. (Int. J. of Food Micro., 2007 – cited on IDS 03/24/2023).
Kazou teach producing a recombinant yeast for the purpose of producing high levels of gamma-glutamyl compounds like glutathione (GSH) while also having decreased amount of intracellular glutathione degrading enzyme activity – See p. 2, 3rd paragraph to last paragraph, wherein p. 1 is the cover page; p. 4, 2nd paragraph). Wherein the enzymes having glutathione degrading enzyme activity are DUG1, DUG2, DUG3 and ECM38 (See p. 3, 2nd paragraph), the later of which is a vacuolar localized glutathione degrading enzyme (See p. 8, paragraphs 4-5). It is specifically stated: ““Enzyme activity decreases” means that the target enzyme activity is reduced as compared to a non-modified strain such as a wild strain or a parent strain, and includes a case where the activity is completely lost. The glutathione degrading enzyme activity is preferably 50% or less, more preferably 20% or less, still more preferably 10% or less, and particularly preferably 5% or less, as compared to the unmodified strain. Moreover, it is preferable that the glutathione degrading enzyme activity is substantially lost.” – See p. 5, starting at “(1-2)”. This is achieved by mutation or genetic recombination – See p. 5, paragraph nine to p. 6, 4th full paragraph).
Specific modified S. cerevisiae strains are taught including AG1 which is a high glutathione producing strain which produces increased levels of the gamma-glutamylcysteine synthetase (GSH1) producing strain having the endogenous promoter of GSH1 replaced with with a constitutive promoter (ADH1) to further enhance said glutathione production (See Example 1, part 1). In Example 1, part 4, it is taught to this AGI strain, each of DUG2 (AGI-d strain), ECM38 (AGI-e strain) are individually disrupted/deleted and a combination of DUG2 and ECM38 are deleted (Strain AGI-ed); and a strain having both ECM28 and DUG2 genes disrupted/deleted is also produced (strain e). The conclusion from Example 1 is that by reducing activity of the DUG complex (made up of DUG1, DUG2 and DUG3) in combination with a high GSH1 expressing strain, that this increases the GSH concentrations and also reduces any growth delay (See p. 16, paragraph above Example 2). In addition, by having high expression of YCF1 (a glutathione vacuolar transporter as well as destroying/deleting ECM38 in the AGI strain (e.g. highly overexpressing GSH1), this further increases GSH concentrations (See Example 2 and 3). Methods of culturing and separating said GSH are taught at each step (e.g. assessing said GSH concentrations).
Kazou et al., however, do not teach further inactivating the PEP4 gene in said S. cerevisiae modified strains.
Wang et al. teach methods of increasing glutathione concentrations in yeast. Specifically, homologous recombination that disrupts/deletes the PEP4 gene (encoding proteinase A) by insertion and expression of exogenous DNA encoding the copper resistance gene CUP1 and the gamma-glutamylcysteine synthetase GSH1 gene in its place in brewers yeast, which are S. cerevisiae strains, resulted in an increase of glutathione (GSH) production by 35% (See Abstract; Figure 6; Sections 3.4, 4).
Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to further modify the S. cerevisiae strains of Kazou et al. having one or more glutathione degrading enzymes of DUG1, DUG2, DUG3 and/or DUG4 inactivated/deleted in a high GSH producing strain and to further modify this strain with the modifications of Wang et al., which also increase the concentration of GSH by overexpressing exogenous CUP1, GSH1 and also deleting PEP4 (proteinase A) because both are interested in increasing the GSH levels in S. cerevisiae. One skilled in the art of producing GSH such as Kazou et al. would be motivated to further increase GSH levels because the specifically state for multiple industries, it is important to produce large quantities for low cost (See p. 2, 3rd paragraph). One skilled are would have a reasonable expectation of success in incorporating the overexpression of CUP1 and GSH1 by homologous recombination into the PEP4 gene (thereby inactivating it) because both Kazou et al. and Wang et al. use S. cerevisiae strains and Wang et al. teach the exact plasmids, primers and method steps necessary to be successful.
Applicant’s Response and Examiner’s Rebuttal:
Applicant’s traverse the rejection of record on pp. 6-11 that the combination of references of Kazou et al. in view of Wang et al. does not render obvious the instant claims.
In the first instance, Applicant’s state Kazou does not describe the invention because they only describe a yeast strain with improved glutathione production which overexpresses GSH1 and disruption of Dug2 but are silent with regard to inactivation or disruption of Pep4.
The Examiner acknowledges this, this is why this reference was used as the primary reference and this reference.
Turning to Wang, Applicant’s state Wang does not correct Kazou’s deficiency of teaching disruption of Pep4 because they teach disruption of Pep4 for a completely different purpose to Applicant’s reason of disrupting Pep4, (e.g. Wang teaches replacing Pep4 with GHS1 in order to eliminate proteinase A and increase GSH content of beer) – Remarks, p. 7. Applicant’s subsequently state Wang’s rationale for why GSH production is increased is completely different from what Applicant’s have found and also, they are silent with regard to any correlation between PEP4 gene and degradation of glutathione. It is asserted that essentially, Applicant’s have found the PEP4 gives rise to biomass of better quality and its deletion is a more efficient purification process (See Remarks, p. 9). Thus, Applicant’s have determined a previously unknown degradation pathway mediated by proteinase A (PEP4) which eliminates γ-Glu-Cys and resulting in more pure glutathione. Given neither Kazou or Wang teach this this newly discovered degradation pathway, then the claims are over non-obvious.
The Examiner has considered these arguments but find them unconvincing. The first reason is the reasons for combining need not be the same as Applicant’s. As exaplainted in MPEP 2144(IV):
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991) (discussed below).
Here, the advantage is increasing the desired glutathione production, which desired and achieved by Kazou and Wang but in different ways. Thus, given the both wish to increase glutathione production, it would be obvious to combine the two references to achieve even greater glutathione levels.
This thus leads to an expectation of some advantage, e.g. increased glutathione production, which would be a strong rationale for combining the two, because as already noted, both references which to achieve increased glutathione levels – See MPEP 2144(II):
The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006) ("Indeed, we have repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.").
It is thus immaterial that Applicant’s have figured out a different enzymatic pathway which results in increased purity by inhibiting a PEP4-mediated degradative pathway and that neither reference recognizes this same pathway because ultimately the combination of overexpressing GSH1 and disruption DUG2, as taught by Kazou for increased glutathione production, in combination with overexpression of GSH1 by inserting it into, and thereby disrupting, PEP4 (proteinase A) as taught by Wang, also which results in increased glutathione, will unwittingly but inherently achieve the same result. As noted, the rationale need not be the same as Applicant’s as long as it achieves the same result.
The rejection of record is therefore maintained.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. 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 SUZANNE M NOAKES whose telephone number is (571)272-2924. The examiner can normally be reached M-F (7-4).
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/SUZANNE M NOAKES/Primary Examiner, Art Unit 1656 21 July 2026
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