DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. The Amendment filed on March 17, 2026, has been received and entered.
Claim Disposition
3. Claims 2-3 have been canceled. Claims 1 and 4-30 are pending. Claims 1, 4-19 and 30 are under examination. Claims 20-29 are withdrawn from consideration as directed to a non-elected invention.
Claim objection
4. Claims 1, 4-10 and 30 are objected to for the following informalities:
For clarity and precision of claim language it is suggested that claim 1 is amended to recite “….a polynucleotide comprising a sequence encoding ‘protein X’, because a gene cannot encode another gene. The dependent claims hereto are also included.
For clarity and precision of claim language it is suggested that claim 7 is amended to quantify “increased”.
For clarity it is suggested that claim 8 is amended to delete “involved in”.
Appropriate correction is required.
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.
5. Claims 1, 4-19 and 30 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AlA), 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.
The claimed invention is directed to “a recombinant microbe or unicellular organism comprising a polynucleotide comprising a sequence encoding a mutated serB gene and one or more exogenous polynucleotide …..”, and the claimed invention is not adequately described because genes are devoid of any structural limitations. The claimed invention encompasses large variable genus of polynucleotides and exogenous polynucleotides which are not adequately described with respect to the genes, expression products, organism, dried product and modified pathways (see claims 1, 7 and 11, for example). Note that the invention recites multiple times a ‘modified’ biosynthetic pathway, however, no specific modification is provided for the biosynthetic pathway or what specific pathway (see claims 1 and 11-12 with a modified sulfur based pathway and no defined information about mechanism (see also claims 4-6, claim 7 with an increase that is not quantified (see also claim 9); and claim 14 with both (and other claims with similar language). Further, the recombinant microbe organism is unicellular with dried product (any product). The invention encompasses ‘configuration with close proximity to polypeptides involved in the production of precursors by forming scaffolds, channels or cages but no specific polypeptides are set forth or what their ‘involvement is’. Therefore the invention as claimed is not adequately described to demonstrate the resulting effect of the increases claimed.
The claimed invention is not commensurate in scope with the disclosure and no correlation is made between structure and function (see for example the polynucleotide and exogenous polynucleotides). A large variable genus of products, expression products and organism are encompassed in the claims as well as modifications that are not described. The specification fails to provide a representative number of species for the claimed genus to show that applicant was in possession of the claimed genus. A representative number of species means that the species, which are adequately described, are representative of the entire genus.
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, disclosure of drawings, or by disclosure of relevant identifying characteristics, for example, structure or other physical and/or chemical properties, by
functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991), states that "applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the ‘written description’ inquiry, whatever is now claimed" (See page 1117). The specification does not "clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed" (See Vas-Cath at page 1116). The skilled artisan cannot envision the detailed chemical structure of the encompassed genus, and therefore, conception is not achieved until reduction to practice has occurred, regardless of the complexity or simplicity of the method of isolation. Adequate written description requires more than a mere statement that it is part of the invention and reference to a potential method of isolating it. The compound itself is required. See Fiers v. Revel, 25 USPQ2d 1601 at 1606 (CAFC 1993).
Therefore, for all these reasons the specification lacks adequate written description, and one of skill in the art cannot reasonably conclude that the applicant had possession of the claimed invention at the time the instant application was filed.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
6. Claim(s) 7-10 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Nataur (WO 2023/146544 (of record in the application).
The crux of the claimed invention is a recombinant microbe or unicellular organism that has an increased production of O-phosphoserine, cysteate, taurine or a combination thereof.
The reference teaches a recombinant microbe or unicellular organism (see paragraph [00035]- “in one embodiment, the invention consists of unicellular organisms that have a taurine biosynthetic pathway containing the exogenous polynucleotides, CDO and SAD, and a modified serine based pathway to have increased expression of pgk, serA197, serC, serB, cysE and cysK, and a modified sulfur-based pathway to have increased expression of cysPUWA, cysDNC, cycQ, cysH, cysI,L, and knock outs of tauD, ssuD, and ssuE to inhibit taurine degradation and re-uptake of taurine into the cell”), wherein the recombinant microbe or unicellular organism has increased production of O-phosphoserine, cysteate, taurine, or a combination thereof (see paragraph [00047]-“ the present invention provides methods for the production of taurine (2-aminoethanesulfonic acid) in unicellular organism….. The invention also provides methods of using unicellular organisms including bacteria, microalgae, fungi, yeasts, and algae with increased levels of endogenous taurine” (see paragraph [000155]-“ the unicellular organism may be treated with other “active agents” either prior to or during the growth to further increase production of taurine”). The reference further teaches that the recombinant microbe or unicellular organism has reduced import of O-phosphoserine, cysteate, taurine, or a combination thereof, or wearing the recombinant microbe or unicellular organism has increased export of
(see paragraph [00032]- “The invention encompasses the use of polynucleotides for taurine biosynthic enzymes in combination with polynucleotides for some serine biosynthesis and sulfur (sulfate or thiol sulfate) uptake, reduction and assimilation and/or the use of polynucleotides for peptides that degrade or transport taurine to increase in cells or export taurine into the media “, (see paragraph [00040]-“ the invention consists of unicellular organisms that have a taurine biosynthetic pathway containing exogenous polynucleotides, UVAI447F and PAPS-AS, taurine exporters, gadC, yhiM, and AAperm”). In addition the reference further teaches wherein the recombinant microbe or unicellular organism has increased expression of emA (ydeD, alaE(ygaW), yfiK, cefA, cefB, rhtB, rhtC, gabP, tauP, gadC, yhiM, AAperm, or a combination thereof (see paragraph [00054]-“ this invention presents methods for the modification of unicellular organisms by including one or more exogenous polynucleotides from the group consisting of the following genes: gadC, yhiM and AAperm, for peptides that transport taurine out of the cell”). It is also disclosed that recombinant microbe or unicellular organism is contacted with exogenous PLP, pyridoxine or a pyridoxine salt (see paragraph [000260]-“ inoculate production media with 1/50 volume of seed culture. The production media contains ammonium sulfate (5 g/L), dibasic potassium phosphate (6 g/L), monobasic sodium phosphate (3g/L), magnesium sulfate (0.5 g/L), glucose (6g/L), typtone (0.1g/L), yeast extract (0.05g/L), and PLP (2.4 mg/L), with or without antibiotic(s), pH 7.0. Grow taurine-producing bacteria in production media in beveled flasks for 20-30 hours in a rotary shaker at 250 rpm and 30 degrees C”). Therefore, the limitations of the claims are met by the reference.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
7. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
8. Claim(s) 1, 4-19 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wacker (WO 2023/232233, of record in the application) in view of Nataur (WO 2023/146544, record in the application), Dumon-Seignovert (US 20230357808 (Metabolic Explorer), of record in the application), Khona Pharms LLC (hereinafter Khona) (US 20200165641, of record in the application) and China (US 20220380745, of record in the application).
The crux of the claimed invention is a recombinant microbe or unicellular organism comprising a modified biosynthetic pathway.
Wacker teaches a recombinant microbe or unicellular organism, comprising a polynucleotide comprising a sequence and a mutated serB gene (English translation page 44, lines 2-5, “This result showed that the kanamycin resistance gene could be successfully integrated at the gene locus of the serB gene and thus the serB gene and thus the serB gene had been inactivated”), and one or more exogenous polynucleotides comprising a sequence encoding a threonine synthase (TS) polypeptide or cysteate synthase (CS) polypeptide (English translation claim 2, “cultivating microorganism strain of the Enterobacteriaceae family expressing the CS enzyme heterologously and in an enzymatically active form”), wherein the mutated serB gene has reduced expression, is configured to have a reduced amount of a serB gene product, or encodes a serB gene product with reduced enzymatic activity (see English translation claim 6, “characterized in that the OPS inserted in the reaction is prepared with a strain of microorganisms with suppressed activity of Ophospho-L-serine phosphatase (serB enzyme) belonging to the enzyme class EC 3.1.3.3 will be produced”), and wherein the recombinant microbe or unicellular organism has a modified biosynthetic pathway (English translation claim 2-“cultivation of a strain of microorganisms of the Enterobacteriaceae family expressing the CS enzyme heterologously and in an enzymatically active form”), see page 23, line 6 “a microorganism strain with suppressed serB activity is preferably characterized by serine auxotroph, for example the strain cannot produce the amino acid L-serine itself for growth. The auxotrophy can be reversed by adding serine or glycine to the culture medium (growing medium), either as a pure substance or as a component a complex media component such as yeast extract, peptone or tryptone as well as a mixture of pure substance and complex media component”). Wacker teaches the recombinant microbe or unicellular organism but does not explicitly teach the microbe further comprising one or more exogenous polynucleotides comprising a sequence encoding a SAD polypeptide, a CAD polypeptide, a GAD polypeptide, or a polypeptide corresponding to a decarboxylase portion of the cysteine synthetase/PLP decarboxylase (partCS/PLP-DC). However, Nataur teaches the production of taurine from phosphoserine and microorganisms comprising exogenous polynucleotides comprising SAD (see paragraph [0008]- “ O-phosphoserine and sulfite are converted into cysteate by threonine synthase (TS)(25). Cysteate is then converted into taurine by either SAD or GAD” (see paragraph [00048]-“This invention presents methods for the modification of unicellular organisms by including one or more exogenous polynucleotides for peptides from one or more taurine biosynthetic pathway consistent of the groups: Group I: CDO and SAD, GAD or part CS/PLP-DC”). It would be obvious to one of ordinary skill in the art to apply the exogenous polynucleotides taught by Nataur to the microbe taught by Wacker in order to produce taurine from phosphoserine. Additionally, Wacker does not explicitly teach wherein the modified biosynthetic pathway comprises a modified sulfur based pathway that inhibits cysteate degradation or inhibits taurine degradation. Nataur teaches a recombinant microorganism for the production of taurine comprising a modified sulfur based pathway that inhibits taurine degradation, the production of taurine from phosphoserine (see paragraph [0008]-“O-phosphoserine and sulfite are converted into cysteate by threonine synthase (TS)(25). Cysteate is then converted into taurine by either SAD or GAD (see paragraph [00035]-“In one embodiment, the invention consists of unicellular organisms that have a taurine biosynthetic pathway containing the exogenous polynucleotides, CDO and SAD and a modified serine based pathway to have increased expression of pgk, serA197, serC, serB, cysE, and cysK, and a modified sulfur based pathway to have increased expression of cysPUWA, cysDNC, cysQ, cysH and cysIJ and knockouts of tauD, ssuD, and ssuE to inhibit taurine degradation”). It would have been obvious to one of ordinary skill in the art to apply the modified pathway inhibiting taurine degradation taught by Nataur to the microbe taught by Wacher in order to increase taurine production in a microbe by decreasing the degradation of taurine. The claimed invention is also directed to a method of increasing taurine production that is disclosed by the combined teaching of the references, however, the above references do not explicitly disclose deletion or silencing mutations in sdaC, cycA, ssT or combinations thereof, for example. This embodiment is known in the art and disclosed by Dumon-Seignovert teaches microorganisms comprising cycA deletion to reduce the uptake of amino acids (see paragraph [0068]-“ Preferably, the microorganism comprises an attenuation of the inner membrane protein CycA which mediates the uptake of D-serine, D-alanine, and glycine and/or the DadX alanine racemase. Said genes are notably endogenous in E. coli. Preferably, expression of CycA and/or DadX is attenuated, more preferably completely attenuated. Preferably, the CycA and/or DadX is attenuated, preferably due to a partial or complete deletion of the genes coding for said proteins, more preferably a complete deletion of the genes”). It would have been obvious to one of ordinary skill in the art to apply the CycA deletion taught by the tertiary reference to the microbe taught by the secondary reference in order to decrease the re-uptake of amino acids by the recombinant cell and thus increase the levels of secreted amino acids by the recombinant cell. The invention as claimed also encompasses molecular scaffolds, albeit the limitation is recited in the alternative. Although the above reference primary, secondary and tertiary references do not teach said scaffold (see claim 4), they meet other embodiments as discussed, and the fourth reference teaches the scaffolds. Khona, the fourth reference teaches molecular scaffolds comprising biosynthetic pathways to increase flux through the biosynthetic pathway (see paragraph [0052]-“ binding of enzymes to the scaffold ensures fixed spatial orientation, increases binding specificity for each ID-scaffold interaction, and better tethers each enzyme to the scaffolds, all of which can improve pathway flux by enabling substrate channeling through each enzymatic step in the scaffolded biosynthetic pathways”, (see paragraph[0162]-“ the scaffold binding sites for each enzyme in the hexanoyl-CoA pathway are positioned (in order of catalysis) approximately to ATP citrate lyase and acetyl-CoA acetyltransferase at the N-terminus of the primary scaffold. Scaffold binding sites for each enzyme in the upper cannabinoid pathway are positioned proximally to (immediately downstream of) the binding sites for the hexanoyl-CoA pathway enzymes. The scaffold binding sites for each enzymes in the mevalonate (or MEP) pathway are positioned (in order of catalysis) proximally to ATP citrate lyase and acetyl-CoA acetyltransferase at the C-terminus of the primary scaffold”). It would be obvious to one of ordinary skill in the art to apply the taurine biosynthetic pathway taught by the secondary reference to the molecular scaffolds taught by the fourth reference in order to increase the activity of the pathway as taught by the fourth reference in order to enhance the production of taurine by the recombinant microbe.
Additionally, the primary reference above do not teach wherein the recombinant microbe or unicellular organism has increased expression of one or more genes in the PLP-biosynthetic pathway to increase production of O-phosphoserine, cysteate or taurine. China teaches a recombinant microorganism comprising increased expression of one or more genes in the PLP-biosynthetic pathway (see paragraph[0043]- “the genes pdxY, pdxK, and pdxH are involved in PLP production using the precursors, for example, pyridoxine, pyridoxal and pyridoxamine” (see paragraph [0082]- “pdxK could assist to supply intracellular PLP in strain BL21, with the intracellular concentration increase……The intracellular PLP level in strap BL21 harboring the pdxY gene…… Since Nataur teaches culturing recombinant microorganisms in the presence of supplemental PLP(see paragraph [00026] inoculate production media with 1/50 volume of seed culture. The production medium contains ammonium sulfate….. and PLP….” Grow taurine producing bacteria in production media in beveled flask for 20 to 30 hours in a row Terry Shaker at 250 RPM and 30°C “), it would be obvious to one of ordinary skill in the art to apply the recombinant PLP-biosynthetic pathway taught by China to the microbe taught by Nataur in order to produce a cell capable of synthesizing PLP and reducing the need to culture the selling the presence of supplemental PLP.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed invention as a whole because the combined teaching of the references renders the claims as obvious. The references are considered to be analogous art, thus motivation to combine exists.
Moreover, the Supreme Court pointed out in KSR, “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 127 S. Ct. at 1741. The Court thus reasoned that the analysis under 35 U.S.C. 103 "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the “inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 1741. The Court further advised that “[a] person of ordinary skill is…a person of ordinary creativity, not an automation.” Id. at 1742. Therefore, the claimed invention was obvious to make and use at the time the invention was made and was prima facie obvious.
Response to Arguments
9. Applicant’s comments have been considered in full. Withdrawn objections/rejections will not be discussed herein as applicant’s comments are moot. Note that the rejections of record remain but have been altered to reflect amendments made to the claims. Applicant supplied a declaration under 37 CFR 1.130(a) to address the rejections of art specifically the reference WO2023/146544 that applicant states is their own work, despite having a co-inventor. The declaration did not specifically point out what the co-inventor did not invent, thus not persuasive. Applicant also has a similar application which is provided below with an executed oath with the same co-inventor, thus simply stating that the invention is solely that of Frank Turano is not sufficient.
19/317818
The present invention describes methods for the fermentative production of taurine-containing products from unicellular organisms. More particularly, the invention relates to genetic modifications of the taurine and/or substrate biosynthetic pathways in unicellular organisms that include bacteria, algae, microalgae, diatoms, yeast, or fungi. The invention also relates to fermentation and processing methods for the production of various taurine-containing products. The invention also relates to the use of the cells, fermentation broth or extracts that contain taurine to produce products for use in food, feed, beverages, dietary and health supplements, cosmetics, personal care, pharmaceuticals, or agricultural production.
18/834802
The present invention describes methods for the fermentative production of taurine-containing products from unicellular organisms. More particularly, the invention relates to genetic modifications of the taurine and/or substrate biosynthetic pathways in unicellular organisms that include bacteria, algae, microalgae, diatoms, yeast, or fungi. The invention also relates to fermentation and processing methods for the production of various taurine-containing products. The invention also relates to the use of the cells, fermentation broth or extracts that contain taurine to produce products for use in food, feed, beverages, dietary and health supplements, cosmetics, personal care, pharmaceuticals, or agricultural production.
Thus the art rejections remain since the WO2023/146544 reference remains meritorious.
Regrading the written description rejection, applicant traverses the rejection by stating that applicant submits that the specification provides detailed disclosure of the claimed genetic configuration including specific serB mutations or knockouts. The claimed invention in claim 1 is not limited to the disclosure in the specification, hence the reason for the rejection, it is overly broad and not commensurate in scope with the specification; and does not demonstrate possession of the entire genus encompassed.
"The 'written description' requirement.., serves both to satisfy the inventor's obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the patentee was in possession of the invention that is claimed ....The descriptive text needed to meet these requirements varies with the nature and scope of the invention at issue, and with the scientific and technologic knowledge already in existence." Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005). The purpose of the written description requirement "is to ensure that the scope of the right to exclude ... does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification." Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345-46 (Fed. Cir. 2000). The goal of the written description requirement is "to clearly convey the information that an applicant has invented the subject matter which is claimed." In re Barker, 559 F.2d 588, 592 n.4 (CCPA 1977) "A disclosure in an application, to be complete, must contain such description and details as to enable any person skilled in the art or science to which the invention pertains to make and use the invention as of its filing date." In re Glass, 492 F.2d 1228, 1232 (CCPA 1974).
Additionally, Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir.1991), states that "applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the 'written description' inquiry, whatever is now claimed" (See page 1117). The specification does not "clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed" (See Vas-Cath at page 1116). The skilled artisan cannot envision the detailed chemical structure of the encompassed genus of polypeptides, and therefore, conception is not achieved until reduction to practice has occurred, regardless of the complexity or simplicity of the method of isolation. Adequate written description requires more than a mere statement that it is part of the invention and reference to a potential method of isolating it. The compound itself is required. See Fiers v. Revel, 25 USPQ2d 1601 at 1606 (CAFC 1993).
Conclusion
10. No claims are presently allowable.
11. Applicant’s amendment necessitated the new/modified ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
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/HOPE A ROBINSON/Primary Examiner, Art Unit 1652