The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is in response to Applicants’ amendments/remarks received June 29, 2026.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.
Claims 2-3 are canceled. Claims 1, 4-10, 11 are pending and under consideration.
Priority: This application is a CON of PCT/JP2022/014183, filed March 24, 2022, which claims benefit to foreign application JP 2021-056115, filed March 29, 2021. A copy of the foreign priority document has been received in the instant application on October 23, 2023 and is not in the English language.
Objections and Rejections
Claim 1 is objected to because of the following informalities: in the claim 1, the term “genius” recited before “Bacillus” should be amended to “genus”. Appropriate correction is required.
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.
Claims 1, 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Boch et al. (1996 Journal of Bacteriology 178(17): 5121-5129; IDS 08.21.23, previously cited) in view of Li et al. (2015 Sci Rep 5:9383, 7 pages). Boch et al. disclose the Bacillus subtilis (B. subtilis) genes, gbsA and gbsB, whose gene products serve to convert choline into the osmoprotectant glycine betaine (at least p. 5121, 5127). Boch et al. disclose gbsA encodes a glycine betaine aldehyde dehydrogenase and gbsB encodes an alcohol dehydrogenase (at least p. 5124). Boch et al. disclose a B. subtilis strain comprising deletion of the gbsAB genes (at least p. 5121-5122, 5126-5127). Boch et al. disclose the B. subtilis strain comprising deletion of the gbsAB genes is a derivative of B. subtilis JH642 (at least p. 5122). Boch et al. do not explicitly teach that the B. subtilis strain produces a surfactin cyclic lipopeptide.
Li et al. disclose B. subtilis is an attractive option for the heterologous production of natural products (at least p. 1-2). Li et al. disclose directed heterologous expression of natural products in B. subtilis (at least p. 1-2). Li et al. disclose design and integration of a vector comprising the srf gene cluster into a B. subtilis JH642 strain having a disrupted native srf locus, and where Li et al. disclose that surfactin production is clearly detected at wild-type levels (at least p. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the vector comprising the srf gene cluster of Li et al. into the B. subtilis strain comprising deletion of the gbsAB genes of Boch et al. to thereby arrive at the claimed cyclic lipopeptide-producing microbial strain comprising deletion of the gbsAB genes, wherein the microbial strain is a Bacillus, and wherein the microbial strain produces a surfactin (instant claims 1, 4-7). The motivation to do so is given by the prior art, which disclose B. subtilis strains are attractive options for heterologous production of natural products and can be engineered to produce surfactin. One of ordinary skill would have a reasonable expectation of success because recombinant DNA technology for engineering microbial strains, including B. subtilis strains, to produce cyclic lipopeptide, was available and known.
Reply: In view of Applicants’ amendments/remarks, the previous 102(a)(1) rejection as being anticipated by Boch et al. has been withdrawn. However, the claims are rejected under a new 103 rejection over Boch et al. in view of newly cited Li et al. for the reasons noted above.
Applicants assert that the B. subtilis JH642 strain in Boch et al. does not produce surfactin.
Applicants’ remarks are not persuasive. As noted in the 103 rejection above, Li et al. disclose that B. subtilis is an attractive option for the heterologous production of natural products (at least p. 1-2). Li et al. disclose design and integration of a vector comprising the srf gene cluster into a B. subtilis JH642 strain having a disrupted native srf locus, and where Li et al. disclose that surfactin production is clearly detected at wild-type levels (at least p. 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the vector comprising the srf gene cluster of Li et al. into the B. subtilis strain comprising deletion of the gbsAB genes of Boch et al. to thereby arrive at the claimed cyclic lipopeptide-producing microbial strain comprising deletion of the gbsAB genes, wherein the microbial strain is a Bacillus, and wherein the microbial strain produces a surfactin because B. subtilis strains are attractive options for heterologous production of natural products and can be engineered to produce surfactin.
Claims 1, 4-7, 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Boch et al. (1996 Journal of Bacteriology 178(17): 5121-5129; IDS 08.21.23, previously cited) in view of Li et al. (2015 Sci Rep 5:9383, 7 pages), Yoneda et al. (US 20040043451; IDS 08.21.23, previously cited) and Zhang et al. (2020 Microb Cell Fact 19:223, 13 pages; previously cited). The teachings of Boch et al. in view of Li et al. over at least instant claims 1, 4-7 are noted above.
Boch et al. disclose growth of the B. subtilis strain comprising deletion of the gbsAB genes in culture medium that does not contain glycine betaine aldehyde and choline (at least p. 5127). As noted above, Boch et al. in view of Li et al. reasonably disclose a B. subtilis strain comprising deletion of the gbsAB genes and wherein the microbial strain produces a surfactin. Boch et al. and Li et al. do not disclose culturing the B. subtilis strain in a medium comprising bean flour.
Yoneda et al. disclose a process for producing surfactin comprising culturing a Bacillus microorganism in a culture medium comprising bean flour, where the bean is selected from soybean (at least p. 8 claims 1-2). Yoneda et al. disclose the Bacillus microorganism is a B. subtilis, including mutant B. subtilis (at least p. 8 claims 7-8). Yoneda et al. disclose soybean in the culture medium is a nitrogen source and its addition in the culturing of surfactin-producing microorganism produces surfactin in a high concentration in the culture broth (at least paragraph 0043). Yoneda et al. disclose that in the culture medium having added soybean flour, insoluble matters originated therein are present, so that the culture medium can be free of high osmotic pressure as compared with a culture medium having added thereto a soluble ingredient in the same concentration (at least paragraph 0066). Yoneda et al. disclose that the insoluble matters are gradually solubilized and consumed during culturing, so that production by fermentation can be implemented in a culture medium containing a nutrient source in a high concentration and Surfactin can be produced in a high yield (at least paragraph 0066).
Zhang et al. disclose moderate genome reduction can enhance production of surfactin in a Bacillus microorganism (at least p. 1). Zhang et al. disclose genome reduction including deletion of some energy-consuming biosynthesis pathways may be beneficial to enhance production of secondary metabolites, such as surfactin (at least p. 4, 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the references and arrive at the claimed method for producing surfactin comprising culturing a Bacillus microorganism comprising deletion of the gbsAB genes in culture medium containing soybean flour (instant claims 8-10, 11). The motivation to do so is given by the prior art. Yoneda et al. disclose a method for producing surfactin comprising culturing a Bacillus microorganism including a Bacillus mutant in a culture medium comprising soybean flour. Boch et al. in view of Li et al. disclose a B. subtilis strain comprising deletion of the gbsAB genes and wherein the microbial strain produces a surfactin. Zhang et al. disclose genome reduction of energy-consuming biosynthesis pathways in Bacillus enhances production of surfactin. Therefore, one of ordinary skill would have reasonable motivation to incorporate the Bacillus microorganism comprising deletion of gbsAB and produces surfactin of Boch et al. in view of Li t al. for the Bacillus microorganism in the method for producing surfactin comprising culturing a Bacillus microorganism in culture medium containing soybean flour of Yoneda et al. One of ordinary skill would have a reasonable expectation of success because the prior art discloses Bacillus microorganisms cultured in soybean flour can produce surfactin in high yield and having reduced genes successfully produce surfactin in culture.
Regarding instant claim 11, since Zhang et al. disclose moderate genome reduction can enhance production of surfactin in a Bacillus microorganism (at least p. 1) and Yoneda et al. disclose that culture in medium containing soybean flour produces surfactin in a high yield, it would be obvious that a Bacillus strain comprising deletion of the gbsAB genes and producing surfactin as disclosed in Boch et al. in view of Li et al. has increased production of the surfactin.
Reply: Applicants’ amendments/remarks have been considered but they are not persuasive. The claims remain unpatentable under a new 103 rejection over Boch et al. in view of newly cited Li et al., and previously cited Yoneda et al. and Zhang et al., for the reasons noted above.
Applicants assert that Boch et al. is directed to investigating the role of gbsAB genes in the “ability to grow in hyperosmotic media” and the “utilization of choline as a precursor for glycine betaine synthesis.” Applicants assert that Boch et al. neither disclose nor suggest the relationship between the disruption of the gbsA and/or gbsB genes and cyclic lipopeptide production, nor the ability of its microbial strains to produce cyclic lipopeptides.
Applicants’ remarks are not persuasive. Boch et al. is cited with at least Li et al. and Yoneda et al., which disclose that Bacillus strains can be engineered to produce surfactin (Li et al.) and that mutant Bacillus strains can be cultured in medium containing soybean flour to produce surfactin in high yield (Yoneda et al.). While Boch et al. disclose that Bacillus strains having defective gbsA and/or gbsB genes are not able to deal effectively with high osmotic stress (p. 5121), it is disclosed in Yoneda et al. that culture medium having added soybean flour is free of high osmotic pressure and can be implemented for culturing to produce surfactin in a high yield (at least paragraph 0066). Therefore, the teachings of the prior art in combination, reasonably disclose arriving at a method for culturing engineered Bacillus strains comprising deletion of the gbsAB genes and producing surfactin in a culture medium comprising soybean flour.
Applicants assert that as shown in Table 1 of the specification, it is demonstrated that in a Bacillus bacterium, surfactin production increases significantly when the gbsA gene, the gbsB gene, or both are disrupted. Applicants assert that the results indicate that the genetic modifications resulted in an increase in the amount of surfactin produced by an average of nearly 20%.
Applicants’ remarks are not persuasive. In this instance, the prior art has already recognized that Bacillus strains, including mutant strains, can be cultured in medium containing soybean flour to produce surfactin in high yield (Yoneda et al.). Yoneda et al. disclose a B. subtilis cultured in a medium containing soybean flour produces surfactin yields of at least 5 g/L (at least p. 7). It is further recognized that B. subtilis having deleted genes has enhanced production of surfactin in a Bacillus microorganism (Zhang et al.). Since Zhang et al. disclose moderate genome reduction can enhance production of surfactin in a Bacillus microorganism (at least p. 1) and Yoneda et al. disclose that culture in medium containing soybean flour produces surfactin in a high yield, it would be obvious and unexpected that a Bacillus strain comprising deletion of the gbsAB genes and producing surfactin as disclosed in Boch et al. in view of Li et al. has increased production of surfactin.
Therefore, Applicants’ remarks that surfactin production increased significantly when the gbsA gene, the gbsB gene, or both are disrupted and that an increase in the amount of surfactin produced by an average of nearly 20% is remarkable are not found persuasive.
Further, MPEP 716.01(c) notes that objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes evidence of unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor.
The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor.
MPEP 716.02(b) notes that Applicant has the burden to establish that the results are unexpected and significant. Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See also MPEP 716.02(e) noting that the claimed subject matter has to be compared with the closest prior art to be effective to rebut a prima facie case of obviousness.
In this instance, Applicants have not provided a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. The closest prior art being the B. subtilis cultured in a medium containing soybean flour producing high yields of surfactin in Yoneda et al.
For at least these reasons, the claims are unpatentable under 35 U.S.C. 103.
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.
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/Marsha Tsay/Primary Examiner, Art Unit 1656
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