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 .
Priority
This application claims benefit of priority to People’s Republic of China Application No. CN202011631254.5 filed on 12/30/2020. This application is also a 371 of PCT/CN2021/142438 filed on 12/29/2021. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Amendments and Claim Status
In the reply filed 03/16/2026, Applicant amended claim 11. Claims 6-9 and 14 were previously canceled by Applicant and claims 1-5, 10, 12-13 and 15-21 remain withdrawn as they are not encompassed by Applicant’s election.
Claims 1-5, 10-13 and 15-21 are pending.
Claims 1-5, 10, 12-13 and 15-21 are withdrawn.
Claim 11 is currently under examination.
Maintained Rejections (with modification as necessitated by amendment)
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Perez et al. (EMBO Journal, 03/01/2011) in view of Pechmann et al. (PLOS Computational Biology, 06/26/2014).
Regarding claim 11, Perez et al. disclose BetP, an Na+-coupled betaine-specific transporter of the beta-choline-carnitine (BCC) transporter family (See entire document, Abstract). The BetP gene disclosed by Perez et al. shares 99.8% sequence identity to instant SEQ ID NO. 4. A sequence alignment is provided below, wherein Qy represents instant SEQ ID NO. 4 and Db represents the BetP gene disclosed by Perez et al.
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Perez et al. further disclose utilizing the N-terminal StrepII-tag on BetP (Figure 1). Additionally, there a few key amino-acid residues that determine substrate specificity in secondary transporters and BetP alters substrate specificity even by only a single-point mutation (Page 1224, Right Column, Paragraph 2).
Perez et al. do not disclose the exact sequence represented by instant SEQ ID NO. 4. The BetP gene disclosed by Perez et al. differs from instant SEQ ID NO. 4 by one amino acid. The BetP gene disclosed by Perez et al. has an Asparagine at amino acid position 520 while instant SEQ ID NO. 4 has a Lysine at amino acid position 520.
However, Pechmann et al. disclose evolution is driven by mutations which lead to new protein functions but can come at a cost to protein stability (See entire document, Abstract). Pechmann et al. further disclose biophysical and genetic analyses indicate that conservative substitutions between more similar amino acids often have very little effect on a protein, whereas a non-conservative mutation is more likely to affect protein stability and function (Page 1, Right Column, Paragraph 2). Lysine is a conservative amino acid substitution for Asparagine (Table 1, Page 11).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made a conservative amino acid substitution, including an Asparagine to Lysine substitution, at any position, including the 520 amino acid position, within the BetP gene of Perez et al. motivated by the desire to determine if substrate specificity would be effected without comprising the stability of the protein because Pechmann et al. disclose conservative amino acid substitutions often have very little effect on protein stability.
Regarding the newly added limitation to claim 11, as the protein has been made obvious as discussed above, the protein would necessarily have this function. The limitation “the protein has a function of increasing L-glutamic acid production in Corynebacterium glutamicum compared to the wild-type protein” is strictly a functional limitation. Thus, the protein made obvious by combined Perez/Pechmann, having the same structure, being the sequence, would necessarily also have the required function.
35 USC § 103 - Response to Arguments
Applicant's arguments filed 03/16/2026 have been fully considered but they are not persuasive.
Applicant argued on Pages 10-11 that Perez is drawn to substrate specificity and ion-coupling mechanisms and Pechmann is drawn to protein stability and evolution, not the metabolic engineering of bacteria for L-glutamic acid production as is the instant invention, therefore, one would not have arrived at the claimed invention by combining the two.
The Examiner respectfully disagrees. The instant invention is simply a modified protein comprising a tag linked to the N-terminus of SEQ ID NO: 4. It is acknowledged that there are functional limitations present within the claim, being, increasing the production of L-glutamic acid production in Corynebacterium glutamicum. However, this is an intended use of the protein and the protein must only be capable of said function. As the protein as-claimed is obvious over the prior art as discussed above, the modified protein would necessarily be capable of said functional limitations. Additionally, the prior art is not required to be drawn to the bacterial production of L-glutamic acid to read on the instant invention. The prior art must only anticipate or make obvious the instantly claimed protein and it remains the Examiner’s position that the combination of Perez and Pechmann make obvious the instantly claimed protein.
Applicant further argued the specific site for mutation would not be obvious to one of ordinary skill in the art based upon the cited references, the asparagine (N) to lysine (K) modification is not a routine choice and the specific site is in a key functional domain of the protein.
It is the Examiner’s position, as stated on Page 7 on the Non-Final mailed 12/16/2025, that it would have been obvious to have made a conservative amino acid substitution at any position, including the 520th amino acid position, within the BetP gene of Perez motivated by the desire to determine if substrate specificity would be effected without comprising the stability of the protein. Regarding the N to K modification, Pechmann specifically disclose N to K modifications are a conservative amino acid substitution, therefore, if one were to make a change to a functional domain, one would seek to make a conservative amino acid substitution as to not disrupt the function of the protein.
Applicant additionally argued there are unexpected and significant results from this specific N to K mutation and points to Example 6.
It is the Examiner’s position that unexpected results are not seen. Table 3 of Example 6 shows the production of L-glutamic acid in multiple different strains. According to Table 3, the wild type strain produced 101.0 g/L L-glutamic acid while the instantly claimed strain, YPG-001, produced 106.5 g/L L-glutamic acid. Interestingly, YPG-002, the strain with a double copy of the wild type gene, produced 106.9 g/L L-glutamic acid and YPG-003, the strain overexpressing the mutated gene, produced 106.2 g/L L-glutamic acid. If the N to K mutation were responsible for the increase in L-glutamic acid production, one would think the strain with an overexpression of the gene with the mutation would produce even more L-glutamic acid than the claimed strain which only has one copy of the gene with the mutation. Additionally, Example 6 states triplicates are made for each strain, however, Table 3 only shows one data point for each strain. It is unclear whether the given data point for each strain is the mean value, the median or just one of the values from the triplicate. Also, the standard deviation is not given. Thus, there is no evidence there is even a greater amount of L-glutamic acid produced in the claimed strain because the amount produced could be within the standard deviation as the difference in L-glutamic acid production between the wild type and the claimed strain is only 5.5 g/L. Therefore, there are no unexpected results seen.
Conclusion
Claim 11 is rejected.
No claims are 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 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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/A.T.W./Examiner, Art Unit 1653
/SHARMILA G LANDAU/Supervisory Patent Examiner, Art Unit 1653
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