DETAILED ACTION
Status of the Application
Claims 1-5, 7-8 are pending.
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 amendment of claims 1-5, cancellation of claim 6 and addition of claims 7-8 as submitted in a communication filed on 1/20/2026 is acknowledged.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.
Claim Objections
Claim 1 is objected to due to the recitation of “..producing ergothioneine or an oxidized form or an alkylated form of the ergothioneine or a mixture thereof”. To enhance clarity and to be consistent with commonly used claim language, the claims should be amended to recite “..producing ergothioneine, an oxidized form of ergothioneine, an alkylated form of ergothioneine, or a mixture thereof”. Appropriate correction is required.
Claims 3 and 4 are objected to due to the recitation of “wherein the microorganism is a member of…or a member of the…genus”. To enhance clarity and to be consistent with commonly used claim language, the claims should be amended to recite “wherein the microorganism is a member of the Enterobacteriaceae family, a member of the Streptomyces genus or a member of the Corynebacterium genus”. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b) or Second Paragraph (pre-AIA )
Claims 1-5 remain rejected and new claims 7-8 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 pre-AIA the applicant regards as the invention. New grounds of rejection are necessitated by amendment.
Claim 1 (claims 2-3 dependent thereon) is indefinite in the recitation of “culturing in a medium a microorganism …to obtain a culture supernatant or bacterial cells” for the following reasons. The term “microorganism” encompasses unicellular prokaryotic and eukaryotic cells. The term “bacterial” is limited to a particular type of prokaryotic cells. Therefore, it is unclear as to how one could culture a microorganism and only obtain bacterial cells. For examination purposes, it will be assumed that the claim reads “culturing in a medium a microorganism to obtain a culture”. Correction is required.
Claims 1 and 4 (claims 2-3, 5, 7-8 dependent thereon) are indefinite in the recitation of “egt1”, “egt2”, “egtA”, “egtB”, “egtC”, “egtD”, and “egtE”, for the following reasons. The terms as written, appear to be generic and not limited to a specific organism. While the gene nomenclature used may be appropriate for S. pombe genes or M. smegmatis genes, the use of this nomenclature for genes encoding proteins of identical function in other organisms may not be accurate. As known in the art, genes encoding proteins of identical function in two different organisms may use different designations. For example, the ARO4 gene of Candida albicans encodes a DAHP synthase whereas the E. coli counterpart is the aroF gene. See the abstract of Sousa et al. (Microbiology 148(Pt5):1291-1303, 2002). As such, the use of gene/protein terminology which is applicable to some organisms and not to others as used herein is confusing since one cannot determine if by using this nomenclature, the claims are limiting the organism from which these genes derive to those that use the same nomenclature. If Applicant wishes to use the recited terminology in the claims, it is suggested that the claims be amended to clearly indicate the organism associated with the specific gene designation. For examination purposes, these terms will be interpreted as genes encoding proteins associated with the biosynthesis of ergothioneine. Correction is required.
Claims 1 and 4 are indefinite in the recitation of “..strain modified to increase adenosine kinase (Adk) activity, wherein the Adk activity is increased by overexpressing a gene encoding Adk relative to a strain that does not overexpress the gene encoding Adk” and “wherein the microorganism has an increased adenosine kinase (Adk) activity, ….wherein the Adk activity is increased by overexpressing a gene encoding Adk, relative to a strain that does not overexpress the gene encoding Adk” for the following reasons. The term “a strain that does not overexpress the gene encoding Adk” encompasses a genus of strains that can be of any genus/species. The claims require a basis for comparison which is variable, thus making a determination as to which microorganisms are encompassed by the claims impossible. For example a microorganism can be encompassed by the claim if the comparison is made with an E. coli that does not overexpress the gene encoding Adk and excluded by the claim if the comparison is made with a C. glutamicum that does not overexpress the gene encoding Adk. For examination purposes, no patentable weight will be given to the terms. Correction is required.
Claims 2 and 5 are indefinite in the recitation of “wherein the Adk activity is increased by enhancing the expression of the gene encoding Adk” for the following reasons. Claims 1 and 4, from which claims 2 and 5 depend, respectively, require increasing the expression of a gene encoding Adk. Increasing Adk activity by enhancing the expression of the gene encoding Adk encompasses more than increasing the expression of the desired gene, such as the addition of chemicals that would act as expression inducers. Therefore, the scope of claims 2 and 5 is broader than the scope of claims 1 and 4 and cannot further limit claims 1 and 4. In addition, the term “enhancing” is a relative term and the claims fail to recite the reference required to determine if enhancement is present (i.e., enhanced compared to what?). Correction is required.
Claim 7 is indefinite in the recitation of “..wherein the oxidized form of the ergothioneine is at least one selected from…..a mixed disulfide form…” for the following reasons. While a compound can have several oxidized forms, a compound cannot have two or more oxidized forms simultaneously. Therefore, it is unclear as to how the oxidized form of the ergothioneine can be at least one (one or more) oxidized form. In addition, it is unclear as to what a mixed disulfide form is. For examination purposes, it will be assumed that the claim recites “..wherein the oxidized form of the ergothioneine is one selected from ergothioneine sulfenic acid, ergothioneine sulfinic acid, ergothioneine sulfonic acid, a disulfide conjugate form, and hercynine”. Correction is required.
When amending the claims, applicant is advised to carefully review all examined claims and make the necessary changes to ensure proper antecedent basis and dependency.
Claim Rejections - 35 USC § 112(a) or First Paragraph (pre-AIA )
Claims 1-5 remain rejected and new claims 7-8 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. This rejection as it relates to claims 7-8 is necessitated by amendment.
Claims 1-5 remain rejected and new claims 7-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for an E. coli cell transformed with the Schizosaccharomyces pombe egt1 gene, the Schizosaccharomyces pombe egt2 gene, and a polynucleotide that encodes the protein of SEQ ID NO: 1, and a method to produce ergothioneine by culturing said E. coli cell, does not reasonably provide enablement for any microorganism that endogenously have an ergothioneine biosynthetic pathway or has been transformed with any gene associated with the synthesis of ergothioneine, wherein said microorganism has been transformed with any gene encoding an adenosine kinase. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/o use the invention commensurate in scope with these claims. This rejection as it relates to claims 7-8 is necessitated by amendment.
These rejections have been discussed at length in the prior Office action. They are maintained for the reasons of record and those set forth below.
Applicant argues that the present specification discloses both the general principle and a practical implementation roadmap. Applicant states that the specification discloses that the increase in Adk activity can be achieved by regulating gene expression and general modifications such as homologous recombination, mutation and genome editing. Applicant states that the specification discloses an Adk assay, quantification of gene expression, cultivation and recovery procedures. Applicant states that the EGT biosynthetic genes are known in the art and can be selected by a person of ordinary skill in the art. Applicant submits that the working examples provided are representative and provide experimental verification of the disclosed technical concept. Applicant states that the experiment provided would allow one of skill in the art using routine methods disclosed in the specification to implement the invention and confirm the expected effect without undue experimentation. Applicant states that the present application conveys to one of skill in the art that Applicant has possession of the claimed invention, and that the specification provides sufficient guidance to make and use the claimed invention without undue experimentation.
Applicant’s arguments have been fully considered but not deemed persuasive to overcome the rejections or avoid the rejection of new claims 7-8. The Examiner acknowledges the teachings of the specification. However, the Examiner disagrees with Applicant’s contention that the claimed invention is adequately described and fully enabled.
The claims as currently presented and interpreted require (i) a genus of microorganisms that endogenously have an ergothioneine biosynthetic pathway or have been transformed with a genus of genes encoding proteins having any structure and function which are associated with the synthesis of ergothioneine, wherein said microorganisms have been modified to express a genus of adenosine kinases having any structure, and (ii) a method to produce ergothioneine by culturing said genus of microorganisms. See Claim Rejections - 35 USC § 112(b) or Second Paragraph (pre-AIA ) for claim interpretation.
There is no limitation with regard to the members of the genus of microorganisms that endogenously produce ergothioneine, the genus of genes that can be introduced to any microorganism such that the microorganism can produce ergothioneine, and the genus of adenosine kinases that can be expressed by the recited microorganisms. While it is agreed that the specification discloses an E. coli cell transformed with the Schizosaccharomyces pombe egt1 gene, the Schizosaccharomyces pombe egt2 gene, and a polynucleotide that encodes the protein of SEQ ID NO: 1, and a method to produce ergothioneine by culturing said E. coli cell, the specification is silent with regard to those microorganisms that naturally produce ergothioneine, the structure of any gene that can be introduced into any microorganism such that said microorganism can produce ergothioneine, and the structure of any gene that encodes an adenosine kinase.
The Examiner agrees that the specification discloses the use of a heterologous promoter operably linked to a polynucleotide that encodes a heterologous adenosine kinase to increase adenosine kinase activity, as well as a few genes encoding adenosine kinases and proteins associated with the biosynthesis of ergothioneine. However, as previously indicated, not all microorganisms endogenously produce ergothioneine, as evidenced by page 2 and Table 1 disclosed by Sato et al. (Applied Microbiology and Biotechnology 109:93, pages 1-14, 2025), and neither the specification nor the prior art provide the structural features required in any nucleic acid encoding an adenosine kinase or in any nucleic acid encoding any protein associated with the synthesis of ergothioneine. No correlation between structure and function has been presented that would allow one of skill in the art to recognize which genes are associated with the biosynthesis of ergothioneine, and which genes encode an adenosine kinase. As indicated in the prior Office action, even if the specification would have disclosed the structural features required in any gene that is associated with the synthesis of ergothioneine and any gene that encodes an adenosine kinase, it is noted that the art teaches several examples of how even highly structurally homologous polypeptides can have different enzymatic activities. See the teachings of Witkowski et al., Tang et al. and Seffernick et al. previously discussed. Therefore, in view of the fact that minor structural differences may result in changes affecting function, and no additional information correlating structure with the desired functional characteristics has been provided, one could have not reasonably concluded that the disclosure of two genes encoding enzymes associated with the biosynthesis of ergothioneine and one gene encoding an adenosine kinase as exemplary species is representative of the structure of all the genes encoding the enzymes required by the claimed microorganisms.
The examiner acknowledges the disclosure of adenosine kinase assays, as well as methods of generating or isolating variants of a polynucleotide/polypeptide. However, it was not routine in the art to screen by a trial and error process for an essentially infinite number of genes to find those that can be used in the microorganism required by the claims. In the absence of (a) a rational and predictable scheme for selecting those polynucleotides most like to encode the desired proteins, (b) a rational and predictable scheme for selecting those microorganisms that naturally produce ergothioneine, (c) and/or a correlation between structure and the desired activity, one of skill in the art would have to test any number of genes, enzymes and microorganism to determine which ones have the desired functional characteristics and effects. This is not deemed routine experimentation. Therefore, contrary to Applicant’s assertions, the entire scope of the claims is not adequately described or enabled.
Claim Rejections - 35 USC § 102 (AIA )
Claims 4 and 6 were rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cholo et al. (BioMed Research International, vol. 215, article ID608682, pages 1-12, 2015; cited in the IDS) as evidenced by Park et al. (FEBS Letters 583:2231-2236, 2009; cited in the IDS) and Richard-Greenblatt et al. (Journal of Biological Chemistry 290(38):23064-23076, 2015). In view of the amendment of claim 4, which now requires the microorganism to be a member of the Enterobacteriaceae family, a member of the Streptomyces genus, or a member of the Corynebacterium genus, and the microorganism of Cholo et al. is a Mycobacterium tuberculosis cell, this rejection is hereby withdrawn.
Art of Interest
Kanai et al. (Appl. Microbiol. Biotechnol. 101:1351-1357, 2017) discloses a method to accumulate S-adenosylmethionine (SAM) in yeast wherein the ado1 gene in S. cerevisiae was deleted (page 1354, right column ADO1 (adenosine kinase)). SAM is a precursor of ergothioneine as evidenced by Figure 1 of Tanaka et al. (Scientific Reports 9:1895, pages 1-10, published 2/13/2019).
Conclusion
No claim is in condition for allowance.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Applicant is advised that any Internet email communication by the Examiner has to be authorized by Applicant in written form. See MPEP § 502.03 (II). Without a written authorization by Applicant in place, the USPTO will not respond via Internet email to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. Sample written authorization language can be found in MPEP § 502.03 (II). An Authorization for Internet Communications in a Patent Application or Request to Withdraw Authorization for Internet Communications form (SB/439) can be found at https://www.uspto.gov/patent/forms/ forms-patent-applications-filed-or-after-september-16-2012, which can be electronically filed.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to DELIA M RAMIREZ, Ph.D., whose telephone number is (571) 272-0938. The examiner can normally be reached on Monday-Friday from 8:30 AM to 5:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert B. Mondesi, can be reached at (408) 918-7584. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
/DELIA M RAMIREZ/Primary Examiner, Art Unit 1652
DR
April 8, 2026
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