DETAILED OFFICE ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s preliminary amendment to the claims, filed on January 12, 2024, is
acknowledged. This listing of the claims replaces all prior versions and listings of the
claims.
Claims 1-239 are cancelled.
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Claim 1 has been renumbered as claim 240. Claim 4 has been renumbered as claim 241. Claim 8 has been renumbered as claim 242. Claim 9 has been renumbered as claim 243. Claim 10 has been renumbered as claim 244. Claim 16 has been renumbered as claim 245. Claim 17 has been renumbered as claim 246. Claim 18 has been renumbered as claim 247. Claim 19 has been renumbered as claim 248. Claim 21 has been renumbered as claim 249. Claim 33 has been renumbered as claim 250. Claim 36 has been renumbered as claim 251. Claim 37 has been renumbered as claim 252. Claim 38 has been renumbered as claim 253. Claim 39 has been renumbered as claim 254. Claim 43 has been renumbered as claim 255. Claim 62 has been renumbered as claim 256. Claim 63 has been renumbered as claim 257. Claim 64 has been renumbered as claim 258. Claim 65 has been renumbered as claim 259. Claim 66 has been renumbered as claim 260.
For the purpose of compact prosecution, re-numbered claims 240-260 have been examined on the merits as if they were pending.
Applicant’s amendments to the specification, filed January 12, 2024, are acknowledged.
Priority
This application, filed on November 3, 2023, claims benefit under 35 U.S.C. 119(e) to provisional application no. 63/382,156 filed on November 3, 2022.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on February 6, 2024 and June 7, 2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDSs have been considered by the examiner and those references therein have been indicated as such.
Claim Rejections - 35 USC § 112(f)
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f), is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f), is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f), because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“(a) a first recombinant release factor, wherein the first recombinant release factor is configured to recognize UGA, UAA, UAG, or any combination thereof as a stop codon” in lines 2-3 of claim 1, and
“(b) a second recombinant release factor, wherein the second recombinant release factor is configured to recognize UGA, UAA, UAG, or any combination thereof as a stop codon” in lines 4-5 of claim 1.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 112(b)
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 240-260 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim limitations “(a) a first recombinant release factor, wherein the first recombinant release factor is configured to recognize UGA, UAA, UAG, or any combination thereof as a stop codon” and “(b) a second recombinant release factor, wherein the second recombinant release factor is configured to recognize UGA, UAA, UAG, or any combination thereof as a stop codon” in claim 240 (claims 241-260 dependent therefrom) invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The instant specification does not provide structures that perform the functions recited in the claim. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 245 (claim 246 dependent therefrom) is rejected as indefinite for reciting the approximations of “about 20 °C to about 33 °C.” The examiner has reviewed the specification for teachings that can be used for ascertaining the variance intended by the term "about" and while the specification provides a description of the term “about” at paragraph [0036], this description fails to clarify the intended meaning of the term “about” in the context of the claims It is suggested that applicant clarify the meaning of the term "about." See MPEP 2173.05(b).III.A regarding the term "about."
Claim 248 is rejected as indefinite because the meaning of the phrase “wherein the degron cassette comprises the small molecule-inducible degron cassette comprising an auxin or asunaprevir” is unclear. An ordinary artisan would immediately recognize a cassette to comprise a nucleic acid sequence and thus the cassette could not comprise an auxin or asunaprevir. The Offices suggests that the applicant clarify the recited phrase to recite “wherein the small molecule-inducible degron cassette comprises an auxin-inducible or asunaprevir-inducible degron cassette”, and for the purpose of compact prosecution the recited phrase is interpreted as such.
Claim 248 is rejected as indefinite because the claim depends upon canceled claim 40. The Offices suggests that the applicant cancel the claim with or without producing a new claim with the intended dependency. For the purpose of compact prosecution, the recited claim is interpreted as if the claim depends upon claim 240.
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.
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.
Claims 240-246 and 249-254 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al. (Protist, published 2013, Vol. 164, No. 3, p. 440-449; cited on the attached Form PTO-892; hereafter “Li”).
The claims are drawn to a composition comprising:
(a) a first recombinant release factor, wherein the first recombinant release factor is configured to recognize UGA, UAA, UAG, or any combination thereof as a stop codon; and
(b) a second recombinant release factor, wherein the second recombinant release factor is configured to recognize UGA, UAA, UAG, or any combination thereof as a stop codon, and wherein the second recombinant release factor comprises an element that allows selective modulation of function of the second recombinant release factor.
Regarding claims 240-246 and 249-254, Li teaches a recombinant SUP45 ts strain of Saccharomyces cerevisiae comprising a temperature-sensitive Saccharomyces cerevisiae eRF1 release factor and a modified Dileptus and Euplotes octocarinatus-based eRF1 (p. 442, col 2, para 2 – p. 446, col 1, para 1; p. 447, col 2, para 5; Figures 2-3). Li teaches that in eukaryotes eRF1 recognizes the codons UAA, UGA, and UAG as stop codons (p. 441, col 1, para 3-4). Li teaches the transformed cell comprising a R128I variant of the modified eRF1 does not recognize UGA as a stop codon (p. 442, col 2, para 2 – p. 446, col 1, para 1; Table 2). Li teaches placing the cells in either a 30 °C permissive condition or a 37 °C non-permissive condition, and teaches the temperature-sensitive eRF1 is inactivated at the non-permissive temperature (p. 447, col 2, para 5). An ordinary artisan would immediately recognize temperatures below the permissive temperature of 30 °C, SUP45 ts strain of Saccharomyces cerevisiae, such as 25 °C, as also permissive.
For the reasons stated herein, claims 240-246 and 249-254 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li.
Claim Rejections - 35 USC § 103
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 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.
Claim 247 is rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Dohmen et al. (Methods in Enzymology, published 2005, Vol. 399, p. 799-822; cited on the attached Form PTO-892; hereafter “Dohmen”).
The relevant teachings of Li as applied to claims 240-246 and 249-254 are discussed above and incorporated herein.
Regarding claim 247, Li does not explicitly teach wherein the SUP45 ts strain comprises a heat-inducible degron cassette.
Dohmen teaches a method of generating Saccharomyces cerevisiae conditional mutants wherein a heat-activated degron (also, referred to as “temperature-activated degron and abbreviated as “td”) permits the stability of a protein of interest at a permissive temperature but not a non-permissive temperature (Title; Abstract; p. 807, para 3 – p. 811, para 1; Figures 2-3). The td method generates a “ts (td)” mutant of a gene of interest (Abstract).
In view of the combined teachings of Li and Dohmen, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the temperature-sensitive SUP45 ts Saccharomyces cerevisiae taught by Li is modified such that SUP45 is instead regulated by the heat-inducible degron taught by Dohmen, thereby arriving at the invention of claim 247.
An ordinary artisan would have been motivated to and would have had a reasonable expectation of success of modifying the temperature-sensitive SUP45 ts Saccharomyces cerevisiae taught by Li such that SUP45 is instead regulated by the heat-inducible degron taught by Dohmen because it is obvious to substitute one known temperature sensitive allele comprising the same gene of interest for another, and achieve a predictable result because they provide the same function of temperature regulation of a gene of interest.
Consequently, the invention of claim 247 would have been obvious to one of ordinary skill in the art before the effective filing date.
Claim 248 is rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Dohmen as applied to claims 240-247 and 249-254 above, and further in view of Utsugi et al. (Appl. Sci., published September 7, 2021, Vol. 11, No. 18; cited on the attached Form PTO-892; hereafter “Utsugi”).
The relevant teachings of Li and Dohmen as applied to claims 240-247 and249-254 are discussed above and incorporated herein.
Regarding claim 248, the combination of Li and Dohmen does not teach wherein the composition comprises a small molecule-inducible degron cassette comprising an auxin or asunaprevir.
Utsugi teaches strategies for conditionally controlling protein expression levels using small-molecule-inducible degrons (Abstract; p. 7, para 4 – p. 10, para 2; Figure 3). Utsugi teaches a small-molecule-assisted shutoff (SMASh) technique utilities a small-molecule, such as asunaprevir, to induce degradation of a protein of interest (p. 15, para 1; Figure 6; Table 2). Utsugi teaches an auxin-inducible degron system wherein application of auxin induces degradation of a protein of interest (p. 10, para 1; Table 2).
In view of the combined teachings of Li, Dohmen, and Utsugi, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to substitute the heat-inducible degron controlling the expression of sup45 in the recombinant Saccharomyces cerevisiae strain taught by the combination of Li and Dohmen for the auxin-inducible or asunaprevir-inducible degron cassette taught by Utsugi, thereby arriving at the invention of claim 248.
An ordinary artisan would have been motivated to and would have had a reasonable expectation of success of substituting the heat-inducible degron controlling the expression of sup45 in the recombinant Saccharomyces cerevisiae strain taught by the combination of Li and Dohmen for the auxin-inducible or asunaprevir-inducible degron cassette taught by Utsugi because it is obvious to substitute one known inducible degron to regulate a gene for another and expect predictable results because both have the same functionality.
Consequently, the invention of claim 248 would have been obvious to one of ordinary skill in the art before the effective filing date.
Claim 255 is rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Dohmen as applied to claims 240-247 and 249-254 above, and further in view of Uniprot Accession Number A0A6C1DMM3 (Uniprot, Entry Version 5, published September 29, 2021; cited on the attached Form PTO-892; hereafter “A0A6C1DMM3”).
The relevant teachings of Li in view of Dohmen as applied to claims 240-247 and 249-254 are discussed above and incorporated herein.
Regarding claim 255, Li does not explicitly teach wherein a release factor comprises an amino acid sequence selected from the group consisting of SEQ ID NOs: 40-64.
A0A6C1DMM3 teaches a eukaryotic release factor eRF1 identical to SEQ ID NO: 40 (p. 1-2; see sequence alignment below).
PNG
media_image1.png
550
579
media_image1.png
Greyscale
In view of the teachings of Li and A0A6C1DMM3, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to substitute the modified Dileptus and Euplotes octocarinatus-based eRF1 in the SUP45 ts strain of Saccharomyces cerevisiae taught by Li for the eRF1 taught by A0A6C1DMM3, thereby arriving at the invention of claim 255.
Since Li taught eukaryotes eRF1 recognizes the codons UAA, UGA, and UAG as stop codons, an ordinary artisan would have been motivated to and would have had a reasonable expectation of success of substituting substitute the modified Dileptus and Euplotes octocarinatus-based eRF1 in the SUP45 ts strain of Saccharomyces cerevisiae taught by Li for the eRF1 taught by A0A6C1DMM3 because it is obvious to substitute one release factor recognizing at least the codons UAA and UAG as stop codons for another and expect predictable results because both have the same functionality.
Consequently, the invention of claim 255 would have been obvious to one of ordinary skill in the art before the effective filing date.
Claim 256-257 and 260 are rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Wiltschi (Fungal Genetics and Biology, published 2016, Vol. 89, p. 137-156; cited on the IDS filed June 7, 2024; hereafter “Wiltschi”).
The relevant teachings of Li as applied to claims 240-246 and 249-254 are discussed above and incorporated herein.
Regarding claims 256-257 and 260, Li does not explicitly teach wherein the SUP45 ts strain comprises one or more tRNA molecules that recognize UAG, UAA, or UGA and one or more aminoacyl-tRNA synthetases (aaRSs) for charging the one or more tRNA molecules with a non-canonical amino acid (ncAA).
Wiltschi teaches the expression of an orthogonal aminoacyl-tRNA synthases (aaRSs) and tRNA pairs wherein the aaRSs aminoacylate tRNAs with non-canonical amino acids (ncAAs) in yeast in order to incorporate the ncAA into peptides in a site-specific manner (Title; Abstract; p. 138, col 1, para 2 – p. 148, col 1, para 2). Wiltschi teaches mutating the anticodon of a tRNA in order to alter the codon in which the tRNA recognizes so that it decodes one of the three stop codons and allows the incorporation of an ncAA at the position (p. 145, col 1, para 1 – p. 145, col 2, para 5). The ncAAs can comprise reactive groups such as alkene, alkyne, or azide moieties (p. 137, col 1, para 1 – p. 137, col 2, para 1; p. 151, col 1, para 2; Table 1). Wiltschi teaches biorthogonal conjugation of para-azido-L-phenylalanine as well as ncAAs with alkyne azide moieties with by copper(I)-catalyzed azide-alkyne cycloaddition (also termed “click-chemistry”) (p. 148, col 2, para 1; p.151, col 1, para 2; Tables 1 and). Wiltschi also teaches para-azido-L-phenylalanine is a photo-crosslinker amino acid used in protein interaction studies in yeast (Table 1; p. 149, col 1, para 4).
In view of the combined teachings of Li and Wiltschi, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the Saccharomyces cerevisiae strain taught by Li to comprise an aaRS that aminoacylates a tRNA with the ncAA para-azido-L-phenylalanine or an ncAA comprising a reactive groups such as an alkene, an alkyne, and azide taught by Wiltschi and to modify the tRNA such that it recognizes UGA, thereby arriving at the invention of claims 256-257 and 260.
An ordinary artisan would have been motivated to and would have had a reasonable expectation of success modifying the Saccharomyces cerevisiae strain taught by the combination of Li to comprises an aaRS that aminoacylates a tRNA with the ncAA para-azido-L-phenylalanine or an ncAA comprising a reactive groups such as an alkene, an alkyne, and azide taught by Wiltschi and to modify the tRNA such that it recognizes UGA in order to incorporate a ncAA into a peptide because Wiltschi taught incorporating ncAAs into proteins of interest in order to bioconjugate proteins or to allow the addition of fluorophores. An ordinary artisan would have been motivated to and had a reasonable expectation of success modifying the anticodon of the tRNA carrying the ncAA to recognize the codon UGA because Wiltschi taught mutating the anticodon of a tRNA in order to alter the codon in which the tRNA recognizes so that it decodes one of the three stop codons an allows the incorporation of an ncAA at the position.
Consequently, the invention of claims 256-257 and 260 would have been obvious to one of ordinary skill in the art before the effective filing date.
Claim 258 is rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Wiltschi as applied to claims 240-246, 249-254, 256-257, and 260 above, and further in view of Islam et al. (ACS CHEM. Biol., published 2021, Vol. 16, No. 2, p. 344-359; cited on the attached Form PTO-892; hereafter “Islam”).
The relevant teachings of the combination of Li and Wiltschi as applied to claims 240-246, 249-254, 256-257, and 260 above are discussed above and incorporated herein.
Regarding claim 64, the combination of Li and Wiltschi does not explicitly teach wherein the azide-containing ncAA comprises (S)-2- amino-6-((2-azidoethoxy)carbonylamino)hexanoic acid (hereafter “LysN3”).
Islam teaches the incorporation of an azide-containing ncAA called LysN3 into antibodies via the expression of aaRS/tRNA pairs in order to which can be used to complete copper-catalyzed azide−alkyne cycloaddition or strain-promoted azide−alkyne cycloaddition to link the antibody to biotin via click-chemistry (Abstract; p. 350, col 1, para 1 – p. 350, col 2, para 2; Figure 5).
In view of the combined teachings of Li, Wiltschi, and Islam, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to substitute the azide-containing ncAA taught by Li and Wiltschi for the azide-containing lysN3 taught by Islam, thereby arriving at the invention of claim 258.
An ordinary artisan would have been motivated to and would have had a reasonable expectation of success of substituting the azide-containing ncAA taught by Li and Wiltschi for the azide-containing lysN3 taught by Islam because it is obvious to substitute one known azide-containing ncAA capable of catalyzed azide−alkyne cycloaddition for another, and achieve a predictable result because they because they have equivalent functionalities with regard to azide−alkyne cycloaddition.
Consequently, the invention of claim 258 would have been obvious to one of ordinary skill in the art before the effective filing date.
Claim 259 is rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Wiltschi as applied to claims 240-246, 249-254, 256-257 and 260 above, and further in view of Stieglitz et al. (ACS Synthetic Biology, published 13, 2022, Vol. 11, No. 5, p. 1824-1834; cited on the attached Form PTO-892; hereafter “Stieglitz”).
The relevant teachings of the combination of Li and Wiltschi as applied to claims 240-246, 249-254, 256-257 and 260 above are discussed above and incorporated herein.
Regarding claim 65, the combination of Li and Wiltschi does not explicitly teach wherein the azide-containing ncAA comprises (S)-2- amino-6-((2-azidoethoxy)carbonylamino)hexanoic acid (hereafter “LysN3”).
Stieglitz teaches the incorporation of (2S)-2-amino-6-{[(prop-2-yn-1 yloxy)carbonyl]amino}hexanoic acid (also termed “LysAlk”) into yeast proteins using via the expression of aminoacyl-tRNAsynthetase/tRNA pairs (Abstract; Figures 1-2).
In view of the combined teachings of Li, Wiltschi, and Stieglitz, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to substitute the alkyne-containing ncAA taught by Li and Wiltschi for the alkyne-containing LysALK taught by Stieglitz, thereby arriving at the invention of claim 259.
An ordinary artisan would have been motivated to and would have had a reasonable expectation of success the alkyne-containing ncAA taught by Li and Wiltschi for the alkyne-containing LysALK taught by Stieglitz because it is obvious to substitute one known alkyne-containing ncAA capable of catalyzed azide−alkyne cycloaddition for another, and achieve a predictable result because they because they have equivalent functionalities with regard to azide−alkyne cycloaddition.
Consequently, the invention of claim 259 would have been obvious to one of ordinary skill in the art before the effective filing date.
Conclusion
No claims are currently allowed for the reasons as stated above. Applicants must
respond to the objections/rejections in this Office action to be fully responsive in
prosecution.
The instant Office Action is non-final.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT E. MULDER whose telephone number is (571)272-2372. The examiner can normally be reached Monday - Friday 7:30 AM - 3:30 PM.
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, Manjunath Rao can be reached on (571) 272-0939. 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.
/SCOTT E. MULDER/Examiner, Art Unit 1656
/David Steadman/Primary Examiner, Art Unit 1656