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 .
Election/Restrictions
Applicant’s election without traverse of Group V, claims 8-12 (drawn to a method for identifying a tissue-specific mitochondrial matrix protein); and Species A1: a recombinant expression vector comprising a sequence; B1: a transgenic cell line for producing a transgenic animal; C1: mouse; D2: APEX2; and E2: desthiobiotin phenol in the reply filed on 07/20/2026 is acknowledged.
Claims 8-12 are being examined.
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 8-12 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 8 is unclear reciting “expressing a proximity labeling enzyme in the mitochondrial matrix of the tissue in the transgenic animal [...]”, because the mitochondrial matrix, the tissue, and the transgenic animal have not been positively claimed and therefore it is unclear whether the limitations following the recitation are part of the claimed invention. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim 8 recites the limitation "the mitochondrial matrix of the tissue in the transgenic animal" in L4. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 8-12 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Rhee et al. (KR 20180091345 A, Methods for identification of proteins using phenolic compounds for protein labeling, the rejection referring to the Google Patents translated version).
Regarding claim 8, Rhee teaches:
8. A method comprising the following steps:
expressing a proximity labeling enzyme (e.g., APEX2 throughout the reference) in a mitochondrial matrix of a tissue in an animal (see P10/¶ 2 for example);
labeling a mitochondrial matrix protein with a phenol probe through a chemical reaction caused by a proximity labeling enzyme expressed in the mitochondrial matrix in the tissue of the transgenic animal (see Abstract, P5/¶ 7, P13/Example 2. Protein labeling & Claim 1 for example); and
identifying the labeled protein as a tissue-specific mitochondrial matrix protein (see P15/Experimental Example 1. Mass spectrometry, P16/Experimental Example 2. Identification of labeled proteins, and P17/Experimental Example 6. Specific to DBP Cell organelle Protein is labeled Membrane orientation Structure identification).
Regarding claims 9-12, Rhee teaches:
9. The method of claim 8, wherein the proximity labeling enzyme is APEX2 (see P13/Example 2. Protein labeling, Table 2 for example).
10. The method of claim 8, wherein in step (b), the tissue is isolated, and then subsequently treated with desthiobiotin phenol (see Abstract, P2/Description, P4/5+ for example).
11. The method of claim 8, wherein in step (c), the labeled protein is isolated and identified using streptavidin beads (see for example, P10/¶ 5, P16/Experimental Example 3., and Experimental Example 4. Fluorescence Microscopy Analysis).
12. The method of claim 8, wherein the protein labeled in step (c) is identified by mass spectrometry (e.g., mass analysis, mass spectrometry; see for example, P10/¶ 5, P12/¶ 4, P15/Experimental Example 1. Mass spectrometry, P17/Experimental Example 5. DBP labeled specific Cell organelle Protein detection, and Experimental Example 6. Specific to DBP Cell organelle Protein is labeled Membrane orientation Structure identification).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEAN KWAK whose telephone number is (571)270-7072. The examiner can normally be reached M-TH, 4:30 am - 2:30 pm EST.
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/DEAN KWAK/Primary Examiner, Art Unit 1798
DEAN KWAK
Primary Examiner
Art Unit 1798
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