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 .
DETAILED ACTION
This application is a 371 of PCT/CN2021/143689.
The amendment filed on July 14, 2026 has been entered.
Status of Claims
Claims 1, 4-11, and 13-21 are pending.
Claims 1, 4-11, and 13-21 are under examination.
Response to Amendments/Arguments
Drawings
Applicant’s arguments, see pages 9-10 of the Remarks, filed July 14, 2026, with respect to the drawings have been fully considered and are persuasive. FIG. 7 has been replaced with new FIG. 7. Therefore, the objection of the drawings has been withdrawn.
Nucleotide and/or Amino Acid Sequence Disclosures
Applicant’s arguments, see page 10 of the Remarks, filed July 14, 2026, with respect to the drawings have been fully considered and are persuasive. The nucleotide and amino acid sequence on pages 12-15 have been amended to include sequence identifiers for the nucleotide and amino acid sequence. Therefore, the objection of the specification has been withdrawn.
Claim Rejections - 35 USC § 112(b)
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.
Withdrawn Rejection
Applicant’s arguments, see page 10 of the Remarks, filed July 14, 2026, with respect to claim 1 have been fully considered and are persuasive. Claim 1 has been amended to recite only one specific range. Therefore, the rejection of claim 1 and claims depending therefrom under 35 U.S.C. 112(b) been withdrawn.
New Rejections
Claim 6 and claim 18 depending therefrom 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 6 recites the limitation "(iii)…the nucleotide sequence" in line 5. There is insufficient antecedent basis for this limitation in the claim. It is unclear if the nucleotide sequence refers to the nucleotide sequence of (i) or (ii). Appropriate correction is required.
Claim 16 is 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 16 recites the limitation "helicase according to claim 1, wherein the amino acid substitution" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Claim 1 does not recite “an amino acid substitution” does not allow for amino acid substitutions. Appropriate correction is required.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 16 recites the limitation "helicase according to claim 1, wherein the amino acid substitution" in lines 1-2. Claim 1 is directed to a helicase having the amino acid sequence of SEQ ID NO:1, 2, or 3 and does not allow for amino acid substitutions. Therefore, claim 16 fails to further limit claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 112(a)
Applicant’s arguments, see pages 10-11 of the Remarks, filed July 14, 2026, with respect to claims 1-11 and 13-21 have been fully considered and are persuasive. Claim 1 has been amended to narrow the genus of helicases to a helicase having the amino acid sequence of SEQ ID NO:1, 2, or 3, which are fully described. Therefore, the rejection of claims 1-11 and 13-21 under 35 U.S.C. 112(a) been withdrawn.
Applicant’s arguments, see pages 10-11 of the Remarks, filed July 14, 2026, with respect to claims 1-11 and 13-21 have been fully considered and are persuasive. Claim 1 has been amended to narrow the scope of helicases to a helicase having the amino acid sequence of SEQ ID NO:1, 2, or 3, which are fully enabled. Therefore, the rejection of claims 1-11 and 13-21 under 35 U.S.C. 112(a) been withdrawn.
Claim Rejections - 35 USC § 101
Applicant’s arguments, see pages 12-13 of the Remarks, filed July 14, 2026, with respect to claims 1 and 3-4 have been fully considered and are persuasive. Claim 1 has been amended to recite a helicase having the amino acid sequence of SEQ ID NO:1, 2, or 3 and an N-terminal and/or C-terminal heterologous extensions, which no longer read on a product of nature. Therefore, the rejection of claims 1 and 3-4 under 35 U.S.C. 101 has been withdrawn.
Conclusion
Claims 1, 4-11, and 13-21 are pending.
Claims 6, 16, and 18 are rejected.
Claims 1, 4-5, 7-11, 13-15, 17, and 19-21 are allowed.
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 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 YONG D PAK whose telephone number is (571)272-0935. The examiner can normally be reached M-Th: 5:30 am - 3:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Mondesi can be reached on 408-918-7584. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YONG D PAK/Primary Examiner, Art Unit 1652
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