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 .
Claims Status
Claims 2 and 5 (claim 5 is listed as amended but the claim has been deleted) are canceled.
Claims 1, 3-4, and 6-10 are amended.
Claims 1, 3-4 and claims 6-10 are pending.
Information Disclosure Statement
The information disclosure statement filed 02/19/2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. The Applicants have not provided a legible copy of the translated foreign patent KR 10-2009-0131991 A, It has been placed in the application file, but the information referred to therein has not been considered.
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
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.
Claims 6, 8, and 9 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.
With regards to claim 6 and 8 the claims recite “a microorganism comprising one or more among a polypeptide of claim 1”. It is unclear what one or more among a polypeptide of claim 1 is defined as. Under broadest reasonable interpretation, “one or more among a polypeptide of claim 1” may also include polypeptide fragments of SEQ ID NO:4.
With regards to claim 9, the claim recites “wherein the composition is food, feed additive, food preparation, detergent, fabric, or paper processing. It is unclear how a composition can be “food preparation” or “paper processing” as these terms refer to a process.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 6 and 8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 6 is directed to a method for degrading glucan comprising a microorganism comprising all possible one or more among a polypeptide of SEQ ID NO: 4 which has glucanase activity. Claim 8 is directed to a method for preparing feed products comprising a microorganism comprising all possible one or more among a polypeptide of SEQ ID NO: 4 having glucanse activity.
The specification, however, only provides a working example of a polypeptide of SEQ ID NO: 4 having glucanase activity. There is no disclosure of any particular structure to function/activity relationship in the disclosed species.
Regarding the level of skill and knowledge in the art of protein engineering, the reference of Jin et al. (World Journal of Microbiology and Biotechnology, Vol. 39:106; published 2023) describe b-glucanases which belong to the glycoside hydrolase family and catalyze the breakdown of b-glucan into cello-oligosaccharides and glucose and reviews the production, properties, and engineering of microbial glucanases (see pg. 1). Jin et al. further describes endo-b-1,3-1,4-glucanase that is an endo-acting glucanase that cleaves the b-1,4-linkages adjacent to b-1-3-glcyoside bonds in mixed glucans. Jin et al. reports that over the past decades, protein engineering strategies including rational (site-directed mutagenesis), irrational (error-prone PCR and directed evolution) engineering have been applied (see pg. 10). Even though a few research groups have claimed that they have succeeded in improving thermostability of some glucanases without compromising their activities, the delicate balance between structural flexibility (catalysis) and rigidity (stability) has been widely accepted (see pg. 10). Given the lack of additional representative species as encompassed by the claims, Applicants have failed to sufficiently describe the claimed invention, in such full, clear, concise, and exact terms that a skilled artisan would recognize Applicants were in possession of the claimed invention.
Allowable Subject Matter
Claims 1, 3-4, 7, and 10 are allowed.
Closest Prior Art
Li et al. (United States Patent Number: 6,103,511; published August 15, 2000) discloses the amino acid sequence of a b-1,3-1,4-glucanase (lichenase) of Orpinomyces PC-2, (SEQ ID NO: 2). Li et al. does not teach a polypeptide of SEQ ID NO: 4 of the current instant application. SEQ ID NO: 2 disclosed by Li et al. has 87.7% sequence identity with SEQ ID NO: 4 of the current instant application (see alignment below).
Query Match 86.7%; Score 1068; Length 245;
Best Local Similarity 91.6%;
Matches 185; Conservative 9; Mismatches 8; Indels 0; Gaps 0;
Qy 9 VADFNYHDSSQWEMSNWPNGEMFNCRWTPNNVKFENGKLKLTIDRDGSGYTCGEYRTKNY 68
| |||||:|:::||||||||||||||||||| ||||||||||||||||||||||||||||
Db 39 VMDFNYHESNRFEMSNWPNGEMFNCRWTPNNDKFENGKLKLTIDRDGSGYTCGEYRTKNY 98
Qy 69 FGYGYYEVRMKPIKNPGVVSSFFTYTGPSDGTKWDEIDIEFLGYDTTKVQFNYYTNGQGG 128
:||| ::| ||||||||||||||||||||||||||||||||||||||||||||||||||
Db 99 YGYGMFQVNMKPIKNPGVVSSFFTYTGPSDGTKWDEIDIEFLGYDTTKVQFNYYTNGQGH 158
Qy 129 HEHIHYLGFDASQDFHTYGFFWARNSITWYVDGTAVYTATDNIPDTPGKIMMNAWNGIGV 188
||||||||||||| ||||||||||||||||||||||||| ||||||||||||||||||||
Db 159 HEHIHYLGFDASQGFHTYGFFWARNSITWYVDGTAVYTAYDNIPDTPGKIMMNAWNGIGV 218
Qy 189 DDWLRPFNGRTNISAYYEYVKY 210
|||||||||||||||||::| |
Db 219 DDWLRPFNGRTNISAYYDWVSY 240
Conclusion
Claims 1, 3-4, 7 and 10 are allowed.
Claims 6, 8, and 9 are not allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE T LOUNTOS whose telephone number is (571)272-0502. The examiner can normally be reached Monday-Friday 8:00 am - 5:00 pm.
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 Mondesi can be reached at 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 published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/GEORGE THEMISTOCLIS LOUNTOS/ Examiner, Art Unit 1652
/ROBERT B MONDESI/ Supervisory Patent Examiner, Art Unit 1652
