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 .
Detailed Action
Claims 1-12,14,16,20,22,24,26,28 and 30 are pending for examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10//10/2023 in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the IDS statements.
Claim Rejections
35 USC 112(b) Rejection
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.
Claims 1-12,14,16,20,22,24,26,28 and 30 ( depend on claim 1) is 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 pre-AIA the applicant regards as the invention.
Claim 1 is rejected for reciting “at least 80% identical to Pm4CL1 (SEQ ID NO: 1)”. It is unclear whether 80% identical to Pm4CL1 is the activity Pm4CL1 enzyme or sequence identical to Pm4CL1. For clarity it should recite at least 80% sequence identical to the amino acid sequence of SEQ ID NO: 1. Correction is required.
Double Patenting Rejection
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. See 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); and 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) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-12,14,16,20,22,24,26,28 and 30 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 13-15 of U.S. Patent.11739354. An obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but an examined application claim not is patentably distinct from the reference claim(s) because the examined 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). Although the conflicting claims are not identical, they are not patentably distinct from each other.
The instant application is CON of US PAT 11739354. Although the claims 1-12,14,16,20,22,24,26,28 at issue are not identical to claims 13-15 of U.S. Patent.11739354, they are not patentably distinct from each other because they are claiming common subject matter, as follows: Claims 1-12,14,16,20,22,24,26,28 of the instant application and claims 13- 15 of US PAT 11739354 are both directed to a process for producing a product from a common substrates coenzyme A using similar type of enzyme SEQ ID NO: 1 ( Pm4CL1). It would have been obvious to one of ordinary skill in the art to select this specific embodiment that practiced for the claims 13-15 of that patent to use for the method of instant claims 1-12,14,16,20,22,24,26,28. Therefore claims of instant application are obvious over claims 13-15 US PAT 11739354.
Claims 1-12,14,16,20,22,24,26,28 and 30 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 12-17 of U.S. Patent.11746364. An obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but an examined application claim not is patentably distinct from the reference claim(s) because the examined 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). Although the conflicting claims are not identical, they are not patentably distinct from each other.
Although the claims 1-12,14,16,20,22,24,26,28 at issue are not identical to Claims 12-17 of US PAT 11746364 , they are not patentably distinct from each other because they are claiming common subject matter, as follows: Claims 1-12,14,16,20,22,24,26,28 of the instant application and Claims 12-17 of US PAT 11746364 are both directed to a process for producing a product from a common substrates coenzyme A using similar type of enzyme SEQ ID NO: 1 ( Pm4CL1). It would have been obvious to one of ordinary skill in the art to select this specific embodiment that practiced for the claims 12-17 of that patent to use for the method of instant claims 1-12,14,16,20,22,24,26,28. Therefore claims 1-12,14,16,20,22,24,26,28 of instant application are obvious over Claims 12-17 of US PAT 11746364 .
Applicants need to submit the TD.
Conclusion
Claims 1-12,14,16,20,22,24,26,28 and 30 are rejected. No claim is allowed.
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Mohammad Meah whose telephone number is 571-272-
1261. The examiner can normally be reached on 8:30-5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
supervisor, Robert Mondesi can be reached on 4089187584. The fax phone number
for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOHAMMAD Y MEAH/Examiner, Art Unit 1652
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