DETAILED ACTION
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 .
Applicants’ amendment to the claims filed on 1/24/2025 is acknowledged. This listing of claims replaces all prior listings of claims in the application.
Claims 16-26 are pending and examined on the merits.
Claims 1-15 are cancelled.
Priority
Acknowledgement is made of this national stage entry of PCT/EP2022/070973 filed on 7/26/2022, which claims domestic priority to U.S. non-provisional application 18/998,398, filed on 7/26/2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1/24/2025 is acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Examiner.
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 16-21, 23-26 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 16 (claims 17-21, 23-26 dependent thereof) recites “having a sequence…” Said recitation is indefinite as it could also mean a subsequence of SEQ ID NO: 2. As such, the scope of the claim is unclear. It is suggested that Applicant amend the claim to recite “having the sequence…”
Claim 17 (claim 23 dependent thereof) recites the limitation " the triple mutant" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 17 (claim 23 dependent thereof), the phrase " The Arthrobacter globiformis esterase mutant according to claim 16, having one or two further mutations chosen from the group…" renders the claim indefinite because it is unclear as to which phrase is encompassed by the claimed invention. It is unclear if the claim encompasses the claimed mutations in claim 16, of which claim 17 dependents or different esterase mutants. It is suggested that Applicant amend the claim to ‘The Arthrobacter globiformis esterase mutant according to claim 16, further comprising
Regarding claim 21, the phrases “the Arthobacter… esterase mutant..” and “wherein said mutant has the nucleotide sequence…” are indefinite as it is unclear if Application is claiming the polypeptide or polynucleotide sequence. A polypeptide cannot have a nucleotide sequence. It is suggested that Applicant amend the claim to recite “wherein said mutant is encoded by the nucleotide sequence of seq id no...”Appropriate correction is suggested.
Regarding claim 22, the term ‘including’ is indefinite as it is unclear what Applicant means by the recitation “An expression vector including…” It is suggested that Applicant amend the term “including” to “comprising.” Appropriate correction is suggested.
Claims 24-26 are rejected as being indefinite because they merely recite a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). Examiner suggests amending claim 24, for example, to recite “The Arthrobacter globiformis esterase mutant according to claim 16, wherein said mutant is capable of selective preparation of (1R,3R)-chrysanthemic acid or a salt thereof.” Similar amendments are suggested for the remaining set of claims 25-26. Appropriate correction is required.
Regarding claim 26, the term " preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. The metes and bounds of the claims are not clear. See MPEP § 2173.05(c)(I).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 24-25 are rejected under 35 U.S.C. 101 because the claimed invention lacks patentable utility because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claimed subject matter does not fall within one of the four one of the four statutory categories of processes, machines, manufactures and compositions of matter because the claimed invention is directed to ‘Use of an Arthrobacter globiformis esterase mutant...’
Claims are not eligible subject matter under 35 USC 101. It is suggested that Applicant make it clear whether claims are drawn to a composition or a method in order to overcome this rejection.
Conclusion
Status of Claims
Claims 16-26 are pending.
Claims 1-15 are cancelled.
Claims 16-26 are rejected.
No claims are in condition for allowance.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICA NICOLE JONES-FOSTER whose telephone number is (571)270-0360. The examiner can normally be reached mf 7:30a - 4:30p.
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, Manjunath Rao can be reached at 571-272-0939. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERICA NICOLE JONES-FOSTER/Examiner, Art Unit 1656
/MANJUNATH N RAO/Supervisory Patent Examiner, Art Unit 1656
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