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 .
1. Formal Matters
A. In the response filed 10/1/26, Applicants elected SEQ ID NO:29. However, upon further review, all species have been examined.
B. Claims 20-32 are pending and are the subject of this Office Action.
2. Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors, embedded hyperlinks, or improperly referenced trademarks. Applicants’ cooperation is requested in correcting any errors of which Applicants may become aware.
3. Claim Objections
Claim 24 is objected to since there should be a comma 24 comma before first recitation of “wherein”.
4. Claim Rejections - 35 USC § 112(a) – written description
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 20-32 are rejected under 35 U.S.C. 112, first paragraph, as containing 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(s), at the time the application was filed, had possession of the claimed invention.
These are genus claims. Cas13d polypeptides which are “at least 80%...99% identical” to SEQ ID NO:28, 29 and 30 would have one or more amino acid substitutions, deletions, insertions and/or additions to said polypeptides. Similarly, encoding nucleic acid molecules which are “at least 80%...99% identical” to SEQ ID NO:13, 14 and 15 would encode for polypeptides with one or more amino acid substitutions, deletions, insertions and/or additions to the Cas13d polypeptide encoded for by SEQ ID NO:28, 29 and 30.
Other than Cas13d polypeptides of SEQ ID NO:28-30, the specification and claims do not indicate what distinguishing attributes are shared by the members of the genus. Thus, the scope of the claims includes numerous structural variants, and the genus is highly variant because a significant number of structural differences between/among genus members is permitted. Although these types of changes are routinely done in the art, the specification and claims do not provide any guidance as to what changes should be made. Structural features that could distinguish compounds in the genus from others in the nucleic acid or polypeptide class are missing from the disclosure. No common structural attributes identify the members of the genus (e.g. sequence alignments identifying critical residues).
Regarding mutating residues in enzymes, Ishida (Abstract) teaches –
Although site-directed mutagenesis is widely used for studying enzymatic activities and other important classes of protein function, interpreting mutation experiments is usually difficult mainly due to side effects induced by point mutations. Because steric and, in many cases, electrostatic effects may affect the local, fine geometries conserved in wild-type proteins that are usually believed to be thermodynamically stable, simply reducing a loss in catalytic activity into clear elements is difficult.
The general knowledge and level of skill in the art do not supplement the omitted description because specific, not general, guidance is what is needed. Since the disclosure fails to describe the common attributes or characteristics that identify members of the genus, and because the genus is highly variant, SEQ ID NO:13-15 and 28-30, alone, are insufficient to describe the genus. One of skill in the art would reasonably conclude that the disclosure fails to provide a representative number of species to describe the genus. Thus, Applicant was not in possession of the claimed genus at the time the invention was made.
Based on arguments and support (e.g. showing critical residues, sequence alignments), some breadth would be permissible (e.g. 95%). However, any evidence supporting lower percentages will be considered.
5. Conclusion
No claim is allowable.
Advisory information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S LANDSMAN whose telephone number is 571-272-0888. The examiner can normally be reached M-F 8 AM – 6 PM (eastern).
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, Joanne Hama, can be reached at 571-272-2911. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT S LANDSMAN/Primary Examiner, Art Unit 1647
