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 .
Election/Restrictions
Applicants’ election of Group I (claims 1-2) without traverse in the reply filed on 7/20/2026 is acknowledged. Non-elected claims 3-15 have been withdrawn from consideration and elected claims 1-2 are examined in the application.
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.
Claims 1-2 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.
In the claims, “and/or” renders the claims indefinite because it does not make clear whether “and” is intended or “or” or both. For the purpose of this office action the above recitation will be assumed to be equivalent of either “and” OR “or”; i.e. the “/” is equivalent of or.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation step e) lines 1-4 and where a limitation is listed followed by “preferably” in line 5 and line 11 of step e) with a narrower range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Clarification and /or correction is required.
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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over IDS reference to Kragh et al. (WO 2010133644, also published as US 2012190075A 1),
hereinafter Kragh.
Regarding claims1-2. Kragh teaches a Pseudomonas saccharophila amylase (PS4) variant or an amylase active fragment thereof (Page 3, lines 16-35) having an improved
ant staling effect as compared to amylase sequence ID No:1 and are usable as non-maltogenic exoamylases (EC 3.2.1 60) [see page 3, lines 28-34] wherein the variant comprises a sequence having at least 70% sequence identity (as recited in claim 1) or at least 71% sequence identity (as recited in claim 2) to the amino acid sequence of SEQ ID NO: 1 (see page 5, lines 4-18 that describes “at least 78% sequence identity to the amino acid sequence of SEQ ID NO: 1”, which satisfies “at least 70%” of claim 1 and “at least 71%” of claim 2), SEQ IDNO:18, SEQ ID NO:19, SEQ ID NO:20, SEQ IDNO:21, SEQ ID NO:23, or SEQ ID N0:22, and wherein the PS4 variant comprises an amino acid substitution at one or more of the following positions 31. 58, 172, 230. 362, 118, 209, 249, 301, 369,377,404,407, and 421 (see page 5, lines 5-7 which disclose substitutions at least at position “362”).
Also refer to Kragh Page 10, lines 17-32, page 15, lines 17-20, page 16, line 25 to page 17, line 12, where claimed subject matter is taught.
Claim 2 further requires the sequence identity to the amino acid sequence of SEQ ID NO: 1 range form 71-99% and additional limitations that are limited by and/or, which is interpreted as “or” , i.e., the additional limitations become optional and are treated as such. And the limitation of PS4 with SEQ ID No 1 has been addressed. Thus, enzymes are known as taught above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JYOTI CHAWLA whose telephone number is (571)272-8212. The examiner can normally be reached M-F 9:30- 5:30.
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, Nikki Dees can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JYOTI CHAWLA/Primary Examiner, Art Unit 1791
