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 with traverse of the invention of Group I, claims 29-30, in the reply filed on 04/23/2026 is acknowledged. The traversal is on the ground(s) that the art used to demonstrate a lack of unity of invention was not published sufficiently early to qualify as prior art for the instant application. This argument is found persuasive with respect to claims 32-42, which recite methods of using the elected enzyme composition. This argument is not found persuasive with respect to claims 31 and 43-47 because these claims recite separate compositions than the enzyme of claim 29 (a nucleic acid in claim 31; a composite material in claims 43-45 and 47) and a method of making the composite material that does not involve the enzyme of claim 29 (claim 46). The Examiner notes that the PCT rules provide for the examination of the first claimed product, the first claimed method of making, and the first claimed method of using in a single application if they share unity of invention. The PCT rules do not provide for the examination of multiple compositions or methods in the same application. As such, claims 31 and 43-47 cannot have unity with claim 29.
The requirement is still deemed proper and is therefore made FINAL.
Claim Status
The response of 04/23/2026 has been entered. Claims 29-47 are pending in this US patent application. Claims 31 and 43-47 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 04/23/2026.
Claims 29-30 and 32-42 are currently under examination and were examined on their merits.
Information Disclosure Statement
The information disclosure statements filed in this application on 03/12/2024 and 04/23/2024 have been received and considered.
Claim Objections
Claim 32 is objected to because of the following informalities:
Claim 32 recites a “glyosidic” bond and “cooper,” which should read “glycosidic” and “copper,” respectively.
Appropriate correction is required.
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 34-35 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.
Regarding claims 34-35, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Therefore, claims 34-35 are indefinite and are rejected under 35 U.S.C. 112(b).
In the interest of compact prosecution, the Examiner has interpreted claims 34-35 with respect to the prior art without the phrase “preferably α-chitin.”
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 29-30 and 32-42 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.
Claim 29 recites a polypeptide having particular activity—lytic polysaccharide monooxygenase activity—that comprises the sequence of SEQ ID NO.: 1 “or a functionally equivalent variant thereof, wherein the functionally equivalent variant has at least 65% sequence identity to the sequence of SEQ ID NO.: 1 throughout the whole length of SEQ ID NO.: 1.” The genus of proteins with at least 65% sequence identity to SEQ ID NO.: 1, a 221-residue polypeptide, is extremely large. Applicant’s disclosure provides no guidance regarding the structure of the enzyme or which portions of the enzyme are necessary for producing the recited function of lytic polysaccharide monooxygenase activity. As such, Applicant has not demonstrated possession of the entire genus of proteins with at least 65% sequence identity to SEQ ID NO.: 1 that also possess LPMO activity, and claim 29 and all claims that incorporate its limitations are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
Allowable Subject Matter
The closest prior art to the claimed invention is found in the teachings of Sabbadin (Sabbadin et al., Nature Communications 9: 756 (2018)), which teaches the generation of a novel lytic polysaccharide monooxygenase through ancestral sequence reconstruction (see entire document, including page 1, abstract) but does not teach or suggest doing so with the bacterial LPMOs employed to obtain the instantly recited polypeptide of SEQ ID NO.: 1 instead of the insect LPMOs of Sabbadin. Therefore, instant claim 29 and all claims that fully incorporate all of its limitations are free of the prior art.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin M. Bowers, whose telephone number is (571)272-2897. The examiner can normally be reached Monday-Friday, 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sharmila Landau, can be reached at (571)272-0614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Erin M. Bowers/Primary Examiner, Art Unit 1653 06/10/2026
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