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. Claims 1, 20, 22-25 are amended. Claims 4-16, 26-28 are withdrawn. Claims 1-3, 17, 19-25 are under consideration.
2. Due to the new rejection below, this Action is a Non-Final Action.
Claim Objections
3. (previous objection, withdrawn) Claims 1, 20, 22-25 were objected to because of the following informalities.
Applicant contends: corrections have been made.
In view of applicant’s amendments, the objection is withdrawn.
Claim Rejections - 35 USC § 112
4. (previous rejection, withdrawn) Claims 1-3, 17, 19-25 were rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly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.
Applicant contends: the claims have been amended; the table on page 14 of the previous response has been resubmitted.
In view of applicant’s amendments, the rejection is withdrawn.
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.
5. (new rejection) Claims 24, 25 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.
See claims 24, 25 as submitted 1/28/2026.
As to claim 24, it is not clear what the metes and bounds of “or parts thereof” is. Claim 25 depends on this claim.
6. As the instant claims with respect to the elected species (SEQ ID NO: 1) are free of the prior art of record, the species restriction is withdrawn and the search is herein extended to other previously withdrawn species within elected Group I (SEQ ID NOs: 2-4; or parts thereof; see MPEP 803.02).
Claim Objections
7. (new objection) Claim 21 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 2. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
8. (new objection) Claims 26-28 are objected to because of the following informalities: As to claims 26-28, the claims should recite a comma after reciting dependency to be consistent with the other claims. For example, the claim should recite “… claim 2, further expressing ...”.
Appropriate correction is required.
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.
9. (new, necessitated by amendment) Claims 20, 22, 23, 26-28 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.
See claims 20, 22, 23, 26-28 as submitted 1/28/2026.
As to claim 20, it is not clear what the metes and bounds of “or parts thereof” is. Claims 22, 23, depend on this claim.
As to claims 26-28, the claims depend on claim 2, dependent on claim 1. Claim 1 recites cDNA and start codon with respect to SEQ ID NO: 1. It is not clear how SEQ ID NO: 2 (claim 26), SEQ ID NO: 4 (claim 27), or SEQ ID NO: 3 (claim 28) relate to SEQ ID NO: 1, or if or how the start codon at positions 6412-6414 of SEQ ID NO: 1 relate to or are incorporated in SEQ ID NOs: 2, 4, 3 as recited in claims 26-28. It is noted that the specification at page 44 teaches different virus strains rgMutHu-Apoptin, rgMutHu-B18, rgMutHu-Nivolumab.
Further, as to claims 26-28, the claims recite "obtainable from". It is not clear what such
a term intends or what the metes and bounds of such language are.
Further as to claim 28, the claim recites “a homolog of the human IFN-B18R β receptor”. However, the specification teaches wherein B18R from vaccinia virus is a homolog of the human IFN-β receptor (p. 33). It is not clear what the claim refers to or if this is the same or not as the language is not consistent.
Conclusion
10. Claims 1-3, 17, 19 are allowed. SEQ ID NOs: 1-4 are free of the prior art of record.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to M FRANCO G SALVOZA whose telephone number is (571)272-4468. The examiner can normally be reached M-F 8:00 to 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Visone can be reached at 571-270-0684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M FRANCO G SALVOZA/Primary Examiner, Art Unit 1672
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