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 .
Applicant’s response to restriction requirement filed 6/4/26 is acknowledged. Applicant elected Group I (claims 48-60 and 62) and SEQ ID NO:4 (as the elected species), with traverse.
In traversal of restriction requirement, applicant argues that Tassone (US patent No. 11,807,889, cited previously) discloses broad mutation frameworks with extensive variability and does not disclose the specific combination of mutations claimed. According to applicant, instant invention demonstrates thermostable variants with significantly improved enzymatic activity compared to reference enzymes under standard degumming conditions. Therefore, these results as shown in Figures 3-4, confirm that instant specific combination of mutations are not arbitrary and hence, Tassone does not break the unity of invention. Applicant then requests rejoinder of Groups II and III with instantly elected invention.
These arguments were fully considered but were found unpersuasive. This is because firstly, applicant has not recited any enhanced degumming activities or thermostability properties in instant claim 1. Secondly, in his/her arguments, applicant refers to “a specific combination of mutations ….” recited in claim 1. However, claim 1, recites “at least one amino acid substitution at positions 120, 85, 88, ….” etc. One substitution is not “a specific combination”.
Thirdly, applicant in his/her arguments did not address why the specifically cited sequence of Tassone, which was mentioned by the examiner, does not teach or suggest the limitations of instant claim 1 and instead argues about “extensive variability” of sequences in said patent, which is hardly adequate to overcome the lack of unity of invention.
Therefore, the examiner maintains that restriction is maintained and there is no reason to rejoin Groups II-III with instantly elected invention. Further restriction is hereby made Final.
DETAILED ACTION
Claims 61, 63-66 are hereby withdrawn as drawn to non-elected subject matter. Claims 1-47 have been canceled.
Claims 48-60 and 62 and SEQ ID NO:4 (the elected species) are under examination on the merits.
In view of applicant’s species election claims 60 and 62 are also withdrawn.
SEQ ID NO:4 was found to be novel and non-obvious. Therefore, the examiner went on to search and examine an additional species, namely a mutated phospholipase C having at least 80% identity to SEQ ID NO:1 with at least one substitution at position 188.
Claims 48-59 are merely examined to the extent that they read on SEQ ID NO:4 and only the additional species mentioned above.
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.
Claim 58 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. In claim 58, line 2, the phrase “said substituted amino acid are selecting” is grammatically incorrect.
Claim 59 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. In claim 59, line 3, the term “de” does not make sense.
Claims 50 and 58 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. In claims 50 and 58, The term “A53D” is incorrect. This is because SEQ ID NO:1 in the sequence listing does not show any “A” at position 53.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 48-59 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Tassone (cited previously). Tassone teaches SEQ ID NO:299, wherein said sequence display 97.9% identity to instant SEQ ID NO:1 and has a substitution at position 188, prior to this invention, anticipating claim 1 (see attachment 1). Tassone also teaches a sequence (SEQ ID NO:337, see attachment 2) having at least 82.9% identity to instant SEQ ID NO:1 with A188P substitution and a V230I substitution, prior to this invention, anticipating claims 48-51 and 56 specifically. Said sequences of Tassone inherently have phospholipase C activity. Claims 52-55, 57-59 are rejected for depending from claim 48.
Allowable Subject Matter
SEQ ID NO:4 as mentioned above, is allowable. This is because SEQ ID NO:4 is free of prior art. Further, the prior art fails to suggest such specifically claimed product. Hence said sequence is also non-obvious.
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARYAM MONSHIPOURI whose telephone number is (571)272-0932. The examiner can normally be reached full-flex.
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, Melenie L Gordon can be reached at 571-272-8037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARYAM MONSHIPOURI/Primary Examiner, Art Unit 1651
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