DETAILED ACTION
Status of Application
Claims 1-9, 12, 13, 15, 17-22 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 .
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Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.
The following amendments, additions, and cancelations as submitted on 05/26/2026 are acknowledged:
Claims 10-11, and 14, 16 are cancelled.
Claims 1, 2, 5, and 6 are amended.
Claims 12, 13, 15, 17-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/21/2025.
Claims 1-9 are being examined.
Claim Rejections - 35 USC § 112(b) or Second Paragraph (pre-AIA )
Claims 1-10 were previously 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. In view of the amendment of claims 1-2 and 5-6, these rejections are hereby withdrawn.
Claim Rejections - 35 USC § 112(a)
Claims 1-10 were 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 and lacking enablement.
Response to Arguments
Applicant’s arguments, with respect to the rejection(s) of claims 1-10 under 35 U.S.C. 112(a) have been fully considered and are not persuasive. Applicant argues that the written description and enablement requirements are satisfied because (1) the amended claims define a structurally limited genus, (2) the specification contains representative species and identifies structural characteristics that are common, and (3) the specification teaches how to make and use the claimed peptides through protocols and examples. However, the specification still fails to convey possession of the full scope of the genus and does not make enable one skilled in the art to make and use the full scope of the invention without undue experimentation. The claims do require specific copper binding motifs and are limited to having 4 or fewer amino acid substitutions, stereoisomeric variants, functional limitations relating to copper and redox potential. Nevertheless, the claims do not encompass a structurally diverse genus of peptides defined by all the possible substitutions stereoisomeric variants, functional limitations relating to copper and redox potential. Therefore, applicant’s arguments are not persuasive and the rejection of claim 1-9 is maintained. Applicant has canceled claim 10 rendering the rejection of claim 10 moot.
Claim Rejections - 35 USC § 103 (AIA )
Claims 1 and 10 were rejected under 35 U.S.C. 103 as being unpatentable over Hammouda (Molecules 27.17: 5476 published 08/26/2022), in view of Coulibaly (Inorganic Chemistry 60.13:9309-9319 published 06/10/2021).
Claims 2, 5-7 were rejected under 35 U.S.C. 103 as being unpatentable over Hammouda (Molecules 27.17: 5476 published 08/26/2022) and Coulibaly (Inorganic Chemistry 60.13:9309-9319 published 06/10/2021), as applied to claim 1 above, in further view of Tugyi (Proceedings of the National Academy of Sciences 102.2: 413-418 published 01/11/2005).
Claims 3-4, 8-9 were rejected under 35 U.S.C. 103 as being unpatentable over Hammouda (Molecules 27.17: 5476 published 08/26/2022) and Coulibaly (Inorganic Chemistry 60.13:9309-9319 published 06/10/2021), as applied to claim 1 above, in further view of Tunnemann (The FASEB journal 20.11 (2006): 1775-1784 published 09/01/2006).
Response to Arguments
Applicant’s arguments, with respect to the rejection(s) of claims 1-9 under 35 U.S.C. 102(3) have been fully considered and are not persuasive. The teachings of Coulibaly and Hammouda has been taught in previous office action 06/09/2026. The Applicant first argues that “the Examiner has not established how Coulibaly’s general thermodynamic discussion would motivate a person of ordinary skill in the art to engineer the specific compositions recited in the claim”. Arguing against references individually is discussed in MPEP § 2145(IV). Applicant’s reply fails to address the combined teaching of the applied references and instead only argues that one reference individually does not teach the claim limitations. One cannot show nonobviousness by attacking reference individually where the rejections are based on combinations of references. All of the limitations of the claim are disclosed in either Hammouda, which teaches the synthetic catalase peptide complex, or Coulibaly, which teaches catalase redox potential, and the combination of the references renders the claimed invention obvious.
Second, the Applicant argues that a skilled artisan would not have had a reasonable expectation of success in achieving the combination because there is no evidence that the peptides of Hammouda would exhibit a redox potential below 2.0V, or that a skilled artisan could have predicted that the peptides would. However, the rejection does not rely on Hammouda to inherently teach a redox potential of less than 2.0V. Hammouda teaches peptide complexes that are catalase mimics, and Coulibaly teaches that redox potential is a parameter affecting catalase efficiency and identifies the desired electrochemical range. Since redox potential is known for catalase efficiency a skilled artisan would have been motivated to optimize the peptides taught by Hammouda to achieve the claimed redox potential through routine experimentation. Therefore, applicant’s arguments are not persuasive and the rejection of claim 1-9 as obvious over Hammouda in view of Coulibaly is maintained. Applicant has canceled claim 10 rendering the rejection of claim 10 moot.
Conclusion
No claim is in condition for allowance
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SYNPHANE SHELTON whose telephone number is (571)272-6318. The examiner can normally be reached 8:30am-6pm.
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, Robert 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. /S.L.S./Examiner, Art Unit 1652
/ROBERT B MONDESI/ Supervisory Patent Examiner, Art Unit 1652
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