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
Claims 12-14 submitted on 07/2/2026 are pending .
.Applicants’ election with traverse on 07/2/2026 of group II (claim 12) directed to the host comprising: an L-aspartate a-decarboxylase gene (panD) inserted into an avtA gene of the host, wherein the panD gene is derived from Bacillus licheniformis and has the nucleotide sequence set forth in SEQ ID NO:3; a strong promoter (PPL) and a strong ribosome binding site (BCD2) operably linked to the panD gene, wherein BCD2 has the nucleotide sequence set forth in SEQ ID NO:17 and regulates translation initiation of the panD gene; an ilvGM gene derived from Escherichia coli BL21; and increased copy numbers of panB, panC, and panE genes, wherein the host is derived from Escherichia coli K12 in their response of 06/8/2026 is acknowledged. Applicants argument to examine all the claims found to be persuasive, therefore claims 13-14 will be rejoined with claim 12 for the examination. Claims 12-14 are for examination..
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 08/26/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the IDS statement.
Claim objection
Claims 12, 13, 14 are objected in reciting “ host” because it lack clarity. For clarity it should be host cell.
Correction required.
Claim Rejections
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.
Claims 12, 13-14 [ depends on claim 12] 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 12 is indefinite in recitation of,.” panD gene derived from Bacillus licheniform ” because it is unclear exactly what type of panD gene is from Bacillus licheniform because derived panD gene can comprise fragment, mutant or recombinant form with unknown structure . It should be obtained from Bacillus licheniform.
Claim 12 is indefinite in recitation of,.” ilvGM gene derived from Escherichia coli BL21”, because it is unclear exactly what type of ilvGM gene is from Escherichia coli BL21, because derived ilvGM gene can comprise fragment, mutant or recombinant with unknown structure . It should be obtained from Escherichia coli BL21.
Claim 12 is indefinite in recitation of,.” host is derived from Escherichia coli K12”, because it is unclear exactly what type of host is from Escherichia coli BL21, because derived host cell can comprise mutant or recombinant cell with unknown structure . It should be obtained from Escherichia coli BL21
Double Patenting Rejection
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. See 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); and 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) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims of instant application are provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims of the US PAT application NO. 18/841587.
Claims 12-14 of instant application are directed to host comprising: an L-aspartate a-decarboxylase gene (panD) inserted into an avtA gene of the host, wherein the panD gene is derived from Bacillus licheniformis and has the nucleotide sequence set forth in SEQ ID NO:3;a strong promoter (PPL) and a strong ribosome binding site (BCD2) operably linked to the panD gene, wherein BCD2 has the nucleotide sequence set forth in SEQ ID NO: 17 and regulates translation initiation of the panD gene;an ilvGM gene derived from Escherichia coli BL21; and increased copy numbers of panB, panC, and panE genes, wherein the host is derived from Escherichia coli K12 and method of producing vitamin B5, comprising culturing the host of claim 12.
Claims 6-10 US PAT application NO. 18/841587 directed to host expressing L-aspartate a-decarboxylase gene panD derived from Bacillus licheniformis and comprising: (I) a strong promoter and/or a strong RBS; and/or (II) an ilvGM gene derived from E. coli BL21; and/or (III) a panB gene, a panC gene and/or a panE gene with increased copy number wherein said panD gene is derived from Bacillus licheniformis and method for the production of vitamin B5, wherein the host ( claim 10) .
An obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but an examined application claim not is patentably distinct from the reference claim(s) because the examined claim 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).
Although the conflicting claims are not identical, they are not patentably distinct from each other. Claims 12-14 herein and claims 6-10 are both directed to US PAT application NO. 18/841587 host comprising: an L-aspartate a-decarboxylase gene (panD) inserted into an avtA gene of the host, wherein the panD gene is derived from Bacillus licheniformis;a strong promoter (PPL) and a strong ribosome binding site (BCD2) operably linked to the panD gene, wherein BCD2 and regulates translation initiation of the panD gene;an ilvGM gene derived from Escherichia coli BL21; and increased copy numbers of panB, panC, and panE genes, wherein the host is derived from Escherichia coli K12 and method of producing vitamin B5,.
Terminal Disclaimers for the above patents would overcome the rejections
Conclusion
Claims 12-14 are rejected .
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMAD Y MEAH whose telephone number is (571)272-1261. The examiner can normally be reached on monday-friday (8-7).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Mondesi can be reached on 4089187584. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOHAMMAD Y MEAH/Examiner, Art Unit 1652
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