Ex Parte BORNSCHEUER et al - Page 3




              Appeal No. 2005-1745                                                                                     
              Application No. 09/161,680                                                                               


                     24. A method for generating a new catalytic activity in an enzyme, wherein the                    
                     new catalytic activity is within the same International Union of Biochemistry                     
                     class as the enzyme’s original catalytic activity, comprising the steps of:                       
                     a) introducing a DNA sequence coding for the enzyme into the                                      
                            Escherichia coli strain XL1-Red, or into a functional derivative thereof                   
                            which is also an E.coli strain carrying the genetic markers relA1,                         
                            mutS, mutT, and mutD5, and having an increased mutation rate,                              
                     b) incubating the transformer Escherichia coli strain XL1-Red or its                              
                            functional derivative to generate mutations in the DNA sequence,                           
                     c) transferring the mutated DNA sequence from the transformed                                     
                            Escherichia coli strain SX1-Red or its functional derivative to a                          
                            microorganism which has no enzyme activity which would impede                              
                            selection,                                                                                 
                     d) incubating this microorganism to detect the new catalytic activity in at                       
                     least one selection medium which ocmprises at least one enzyme                                    
                     substrate to recognize the newly generated catalytic activity, with or                            
                     without other indicator substances, and                                                           
                     e) selecting the microorganisms which show the newly generated catalytic                          
                     activity, said microorganisms in steps c), d) and e) being a member                               
                     selected from the group consisting of bacteria, fungi and yeasts, wherein                         
                     the enzyme is selected from the group consisting of lipases, amidases,                            
                     nitrilases, ether hydrolases, peroxidases, glycosidases, phytases, and                            
                     esterases selected from the group consisting of Pseudomonas                                       
                     fluorescens esterase, pig liver esterase and Thermoanaerobium brockii                             
                     esterase.                                                                                         
                     The examiner does not rely on any references in rejecting the claims under the                    
              first and second paragraphs of 35 U.S.C. § 112.                                                          
                     The claims stand rejected as follows:                                                             
              I.  Claims 20 and 26 stand rejected under 35 U.S.C. § 112, second paragraph, as being                    
              indefinite for failing to particularly point out and distinctly claim the subject matter                 
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