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
Applicant's election with traverse of Group 1 (claims 1 and 2) and Species 1 election of the sucrose synthase comprising the difference in amino acid residues compared to SEQ ID NO:11; the amino acid at position 447 is P (proline) in the reply filed on April 9, 2026 is acknowledged.
Claims 3-11 are withdrawn from further consideration pursuant to 37 CFR
1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The traversal is on the ground(s) of:
Argument 1: The applicant argues that search and examination of the entire application can be made without a serious burden. This argument is not persuasive since search and examination of the Groups and Species requires different search strategies, searching different areas of classification, different key words, separate consideration of prior art references, and separate rejections.
Argument 2: The applicant states that Group I and Groups V to IX have unity of invention, and further states that process claims include all limitations of the product.
However, this argument is not persuasive since Groups I and V to IX do not share a special technical feature.
Argument 3: The applicant argues that references, ‘D1’ and ‘D2’ , do not disclose the technical solution to claim 1.
Argument 4: The applicant argues that Group I-IV and X overlap in scope as the nucleic acid, expression vector and transformant are for conventional biosynthesis of the sucrose synthase of Group 1, and therefore demonstrates unity of invention. Further stating that Group I-X form a single inventive concept and therefore should be examined as a single inventive concept.
The applicant’s argument was considered regarding unity of invention in view of the claims. The broadest reasonable interpretation of Claim 1 is a sucrose synthase amino acid sequence in which amino acid residue(s), as referenced in the claim, is present at the identified position(s), compared to protein SEQ ID NO: 11.The technical feature between groups I through X is the feature of a sucrose synthase. The prior art teaches an amino acid sequence of sucrose synthase with an amino acid at positions 395 and 654, that is arginine ( R ), compared to Seq ID NO:11. Relative to the broadest reasonable interpretation of Claim 1 in the instant application, the prior art demonstrates the same amino acid (arginine; R) at the same position(s), 395 and/or 654, as observed in SEQ ID NO. 11 of a sucrose synthase molecule. Therefore, the special technical feature is not a special technical feature over the prior art, as identified in Dombrowski, N. et al., Expansive microbial metabolic versatility and biodiversity in dynamic Guaymas Basin hydrothermal sediments. Nature Communications. 11-27- 2018. (9), pp1-13 and in view of Barnum, T.P. et al., Genome-resolved metagenomics identifies genetic mobility, metabolic interactions, and unexpected diversity in perchlorate-reducing communities. The ISME Journal. 06-2018, (12:6), pp1568-1581.
The arguments as presented are not found persuasive because the requirement(s) for restriction, as stated above, is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 2 recites the sucrose synthase of claim 1 with amino acid sequence of the sucrose synthase having differences in amino acid residues (identified in claims 1 and 2) compared to SEQ ID NO:11. Claim 2 does not recite anything more than claim 1 and therefore does not further limit the scope of the claim. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Willing E.M., et al., Genome expansion of Arabis alpina linked with retrotransposition and reduced symmetric DNA methylation. Nature Plants. 2015 Feb 2;1:14023.
Regarding claims 1 and 2, Wiling, EM. et al., discloses a sucrose synthase with an amino acid at position 447 that is P (proline), as compared to SEQ ID NO: 11, (Uniprot Reference: A0A087H2F0 · A0A087H2F0_ARAAL); the referenced sucrose synthase with 447P, is the same sucrose synthase and inherently has the same enzymatic activity, as claimed .
Conclusion
No claims are deemed allowable.
Correspondence Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ENUSHA KARUNASENA whose telephone number is (571)272-3972. The examiner can normally be reached Monday-Friday 7:30am-5pm.
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/ENUSHA KARUNASENA/Examiner, Art Unit 1653
/SHARMILA G LANDAU/Supervisory Patent Examiner, Art Unit 1653
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