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 .
Claims 1-20 are pending and examined.
Claim Objections
In claim 1, lines 2 and 4 respectively, “an SGI1 polypeptide having at least 90% sequence identity to a SEQ ID NO: 17.” and “the substantially the same conditions” are grammatically incorrect.
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 1-20 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.
Claim 1, 4, 5, 7, 10, 14, 15, and 16 are rejected as being indefinite for reciting a percentage with no reference to a unit measure. For example, claims 1 and 4 recite 25% and 40% higher lipid productivity than a control. However, there is no unit measure for lipid quantity relative to another standardized unit such as percent lipid content per unit Total Organic Carbon, or percent lipid content per unit cell density or Absorbance (i.e. cell number or density) and thus the percent lipid productivity can vary greatly. Claims 5 and 7 recite reduced chlorophyll and reduced PSII antenna size respectively, but do not recite reduced chlorophyl content per unit volume per cellular density or absorbance; or reduced PSII antenna size with respect to cross sectional unit size. Claim 10 recites total protein but does not reference Total Organic Content as recited in claim 17. Claims 15 and 16 recite less chlorophyll than a control but provides no standard unit measure.
Claim 6 recites the limitation "The mutant photosynthetic organism according to claim 4” in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 4 recites “The mutant Chlorophyte algal organism”.
Claim 11 recites the limitation "The mutant algal microorganism according to claim 1” in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 1 recites “The mutant Chlorophyte algal organism”.
Claim 14 in line2 recites (14C) in parenthesis with respect to the methodology for measuring Pmax, which is indefinite because the parenthetical suggests that (14C) is only an example of a method for measuring the rate of photosynthesis.
Written Description
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claims are broadly drawn to a mutant Chlorophyte algal organism having an attenuated gene encoding an SGI1 polypeptide having at least 90% sequence identity to a polypeptide of SEQ ID NO: 17.
Applicants do not describe any mutant Chlorophyte organism or any number of mutant Chlorophyte organisms having an attenuated gene encoding an SGI1 polypeptide having at least 90% sequence identity to SEQ ID NO: 17, other than a mutant Chlorophyte organism having an attenuated SGI1 gene encoding a mutated SGI1 polypeptide having at least 90% sequence identity to a polypeptide of SEQ ID NO: 17.
Neither the specification or the claims recite any mutations outside of the gene encoding the instantly claimed SEQ ID NO: 17 that attenuate the total activity or the specific activity of the encoded SEQ ID NO: 17. Applicants only describe an SGI1 gene encoding a polypeptide of SEQ ID NO: 17 having a conserved receiver domain and a conserved Myb domain as set forth in figures 4 and 5 respectively.
One of skill in the art would not recognize that Applicant was in possession of the necessary common attributes or features of a genus that includes any number of mutant Chlorophyte organisms having any number of genome wide mutations anywhere in its genome outside of the SGI1 gene encoding a polypeptide having at least 90% sequence identity to SEQ ID NO: 17 whereby the expression of said SGI1 gene is attenuated.
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL KALLIS whose telephone number is (571)272-0798. The examiner can normally be reached Monday-Friday 8AM-5PM.
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/RUSSELL KALLIS/Primary Examiner, Art Unit 1663