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
1. Original claims 1-20 filed 11/5/24 are present and under consideration in this Office Action.
2. Priority
Applicant’s claim for domestic priority under 35 U.S.C. 119(e), filed 4/3/17 is acknowledged.
3. IDS filed 11/5/24 is acknowledged. A signed copy of the IDS is provided with this Office Action.
4. Drawings
The drawings filed on 11/5/24 are acknowledged.
5. Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
6. 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. A nonstatutory double patenting rejection is appropriate where the claims at issue 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); 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) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this 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 §§ 706.02(l)(1) - 706.02(l)(3) 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).
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).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11339384 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reason(s).
Instant claim 1, for example, is drawn to: A method for producing a medium-chain fatty acid derivative, the method comprising culturing a recombinant host cell comprising an engineered thioesterase variant in the presence of a carbon source under conditions suitable for the production of the medium-chain fatty acid derivative, wherein the engineered thioesterase variant has an amino acid sequence that has at least 90% sequence identity to SEQ ID NO:1 when the sequences are optimally aligned for maximum correspondence and compared over a comparison window, and has at least one substitution mutation at an amino acid position corresponding to position 3, 4, 6, 14, 15, 17, 22, 23, 37, 44, 45, 50, 54, 56, 64, 67, 91, 93, 110, 111, 114, 129, 132, 137, 158, 162, 165, 176, 178, 179, 185, 186, 196, 197, 198, 203, 210, 213, 217, 225, 227, 236, 240, 244, 245, 248, 254, 256, 258, 266, 278, 282, 292, 293, 294, 297, 298, 299, 300, 301, 302, 316, 321, 322, 325, or 328; and wherein the engineered thioesterase variant has improved activity for production of medium-chain fatty acid derivatives as compared to an enzyme having SEQ ID NO: 1.
Instant claim 20 is drawn to: A composition comprising medium-chain fatty acid derivatives produced by the method of claim 1, wherein: the composition has a ratio of C8 fatty acid derivatives to C10 fatty acid derivatives (C8/C10) of at least 3.6; or the composition has a ratio of C8 fatty acid derivatives to C10 fatty acid derivatives (C8/C10) of 7.7.
Claim 1 of U.S. Patent No. 11339384 B2, for example, is drawn to: A method for producing a medium-chain fatty acid derivative at commercial titers, the method comprising: culturing a recombinant host cell that comprises an engineered thioesterase variant in the presence of a carbon source under conditions suitable for the production of the medium-chain fatty acid derivative, wherein the engineered thioesterase variant has an amino acid sequence that has at least 90% sequence identity to SEQ ID NO:1 and at least one substitution mutation at an amino acid position selected from the group consisting of: 3, 4, 6, 14, 15, 17, 22, 37, 44, 45, 50, 54, 56, 64, 67, 73, 76, 91, 99, 102, 110, 111, 114, 129, 132, 137, 158, 162, 165, 176, 178, 185, 186, 196, 197, 198, 203, 213, 217, 225, 227, 236, 244, 254, 256, 258, 278, 282, 292, 297, 298, 299, 300, 301, 302, 316, 321, and 322, wherein the recombinant host cell comprises one or more heterologous genes that encode a biochemical pathway that converts a first fatty acid derivative to a second fatty acid derivative, and wherein the second fatty acid derivative has a higher minimum inhibitory concentration (MIC) than the first fatty acid derivative, and wherein the presence of the second fatty acid derivative increases the MIC of the first fatty acid derivative.
Given the fact pattern of the instant case as well as the patent, the claims 1-8 of the patent anticipates claims 1-19 for employing the identical thioesterase variants and producing the same results or make obvious the composition claim 20, which is a byproduct of the method of the patented claims which employ culturing a recombinant host cell transformed with engineered thioesterase variant(s), and which upon culturing will obviously produce the composition of claim 20 having a ratio of C8 fatty acid derivatives to C10 fatty acid derivatives (C8/C10) of at least 3.6; or the composition has a ratio of C8 fatty acid derivatives to C10 fatty acid derivatives (C8/C10) of 7.7.
7. No claim is allowed.
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to TEKCHAND SAIDHA whose telephone number is (571)272-0940. The examiner can normally be reached on M-F 8.00-5.30. 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, Robert B 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. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TEKCHAND SAIDHA/
Primary Examiner, Art Unit 1652
Recombinant Enzymes, Hoteling
Telephone: (571) 272-0940
Fax: (571) 273-0940
Prosecution Insights