DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 21 February 2025 has been entered.
Status of Application
The response, TD, JRA TD and petition filed 19 September 2025 are all acknowledged and have been considered in their entireties. Claims 23-38 are pending.
The petition and the JRA TD over US Patent 12173260 both have not been granted for the reasons of record (See Petition Decision 02/06/2026 and Terminal Disclaimer Review Decision 02/11/2026).
Terminal Disclaimer
The eTerminal disclaimer filed on 18 September 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent 12071643 has been reviewed and is accepted. The terminal disclaimer has been recorded.
The Non-statutory rejection directed to this US patent is therefore withdrawn.
Maintained Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 23-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12173260. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims to the ‘260 patent anticipate the instant claims.
The instant claims in their broadest are drawn to: A variant of a parent alpha-amylase, wherein said variant comprises (i) a modification at one or more positions corresponding to positions H1*, G7A, N280S, and E391A of the amino acid sequence set forth in SEQ ID NO: 1, (ii) said variant has at least 85% but less than 100% sequence identity with the amino acid sequence set forth in SEQ ID NOs: 1, 2,3,4,5,6, 7, or 8, and (iii) said variant has alpha-amylase activity and (iv) has improved wash performance as compared with the parent amino acid sequence of SEQ ID NO: 2.
The claims to the ‘260 patent in their broadest are drawn to: A cleaning composition comprising:
a) a variant of parent alpha-amylase SEQ ID NO: 1, wherein the variant
(i) has at least 90%, but less than 100% sequence identity with the amino acid sequence set forth in SEQ ID NO: 1,
(ii) comprises modifications comprising
H1*+G109A+N280S+E391A;
H1*+G7K+G109A+N280S+E391A;
H1*+G7E+G109A+N280S+E391A;
H1*+G7N+G109A+N280S+E391A;
H1*+G7Q+G109A+N280S+E391A;
H1*+G7L+G109A+N280S+E391A;
H1*+G7D+G109A+N280S+E391A;
H1*+G109A+N280S+E391V;
H1*+G109S+N280S+E391A;
H1*+G7A+G109A+N280S+E391A; or
H1*+G7A+G109A+N280S+E391A of the amino acid sequence set forth in SEQ ID NO: 1, and
(iii) has alpha-amylase activity; and
b) from about 0.01 to about 99.9 wt % of a cleaning adjunct comprising a surfactant, a builder, a bleach, a bleach catalyst, a colorant, a bleach booster, a chelating agent, a dye transfer agent, a deposition aid, a dispersant, an additional enzyme, an enzyme stabilizer, a catalytic material, a bleach activator, hydrogen peroxide, a source of hydrogen peroxide, an optical brightener, a photoactivator, a fluorescer, a fabric hueing agent, a fabric conditioner, a preformed peracid, a polymeric dispersing agent, a clay soil removal agent, a clay soil anti-redeposition agent, a filler salt, a hydrotrope, a brightener, a suds suppressor, a structure elasticizing agent, a fabric softener, a hydrolyzable surfactants, a preservative, an anti-oxidant, an anti-shrinkage agent, a germicide, a fungicide, an anti-tarnish agent, an anti-corrosion agent, an alkalinity source, a solubilizing agent, a carrier, a processing aid, a pigment, a dye, a perfume, a pH control agent, an encapsulate, a polymer, or a combination thereof.
Dependent claim 2 recites the parent alpha-amylase further comprises a modification at one or more positions corresponding to positions 140, 181, 182, 183, 184, 195, 206, 243, 260, 304, and 476 of the amino acid sequence as set forth in SEQ ID NO: 1.
It is noted, instant SEQ ID NO: 1 and SEQ ID NO: 1 of the ‘260 patent have 100% sequence identity to one another – See Supplemental Content, .rai file, under Duplicates for Result #1.
Thus, while the claims to the ‘260 patent recite an additional specific substitution of G109A, this still anticipates the instant claims because the claim is open and comprising and additional substitutions are allowed and all of the other required substitutions (H1*, G7A, N280S, and E391A) in the instant claims are disclosed in the claims to the ‘260 patent claims.
Applicant’s Response and Examiner’s Response
The Rejection of record is maintained in light of the decision not to grant the petition and the defects of the JRA TD, as noted above.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUZANNE M NOAKES whose telephone number is (571)272-2924. The examiner can normally be reached on M-F (7-4).
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/SUZANNE M NOAKES/Primary Examiner, Art Unit 1656 19 February 2026