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. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/24/2025 has been entered.
2. Claims 1, 7-9, 24-26, 28, 30 are amended. Claims 4, 6, 10-15, 18-20, 23, 27, 29, 31-33, 39, 41, 43, 46, 49-55, 57-62, 67, 69-72, 74-85 are canceled. Claims 63-66, 68, 73 are withdrawn. Claims 1-3, 5, 7-9, 16, 17, 21, 22, 24-26, 28, 30, 34-38, 40, 42, 44, 45, 47, 48, 56 are under consideration.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
3. (new, necessitated by amendment) Claims 7, 8, 25, 26, 28, 30, 34, 35, 36, 37, 38, 40, 42, 44, 45, 47, 48, 56 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
See claims 7, 8, 25, 26, 28, 30, 34, 35, 36, 37, 38, 40, 42, 44, 45, 47, 48, 56 as submitted 10/24/2025.
As to claim 7, the species as elected 6/24/2024 is “adenovirus”. However, claim 1 upon which the claim depends recites wherein the helper virus function is provided by a hybrid Ad-AAV virus. Thus, claim 7 is not considered to be further limiting of claim 1 reciting “hybrid Ad-AAV virus”.
Similarly, as to claim 8, the claim recites wherein “said helper virus function comprises one or more viruses, vectors, or plasmids that provide said helper virus function.” However, claim 1 upon which the claim depends already recites wherein the helper virus function is provided by a hybrid Ad-AAV virus. Thus, claim 8 is not considered to be further limiting of claim 1 reciting “hybrid Ad-AAV virus”.
As to claim 25, the claim recites “at least one virus, vector or plasmid comprising helper virus”. Claim 1 on which the claim depends already recites hybrid Ad-AAV virus. By reciting “virus” after “hybrid Ad-AAV virus” in claim 1, as well as “vector or plasmid”, the claim is further broadening rather than limiting.
As to claim 28, the claim recites “vector”. Claims 1, 25 already recite or read upon hybrid Ad-AAV virus, thus the recitation to vector is not considered to be further limiting.
Similarly, as to claim 30, the claim recites “plasmid”. Claims 1, 25 already recite or read upon hybrid virus, thus the recitation to plasmid is not considered to be further limiting.
As to claim 36, the claim recites “said virus, vector or plasmid”. Claims 1, 25 already recite or read upon hybrid Ad-AAV virus, thus the recitation is not considered to be further limiting.
Further, claims 26, 34, 35, 37, 38, 40, 42, 44, 45, 47, 48, 56 depend on these claims and are herein included.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
4. (previous rejection, withdrawn) Claims 1-3, 5-9, 16, 17, 21, 22, 24, 25, 34-38, 40, 45, 47, 48, 56 were rejected under 35 U.S.C. 103 as being unpatentable over Bennett et al. (US20140087444)(cited in applicant’s IDS submitted 10/30/2020)(previously cited).
Applicant contends: claims 1, 24 have been amended,
In view of applicant’s amendments, the rejection is withdrawn.
5. (previous rejection, withdrawn) Claims 15, 26, 28, 30 were rejected under 35 U.S.C. 103 as being unpatentable over Bennett et al. as applied to claims 1-3, 5-9, 16, 17, 21, 22, 24, 25, 34-38, 40, 45, 47, 48, 56 above, and further in view of Wilson et al. (US20030040101)(cited in applicant’s IDS submitted 10/30/2020).
Applicant contends: Wilson et al. fails to cure the deficiency; Wilson et al. teaches helper virus prior to infection with hybrid virus; the specification teaches high yield.
In view of the withdrawal of the rejection over Bennett et al. on which the instant rejection depends, the instant rejection is also withdrawn.
6. (previous rejection, withdrawn) Claim 42 was rejected under 35 U.S.C. 103 as being unpatentable over Bennett et al. as applied to claims 1-3, 5-9, 16, 17, 21, 22, 24, 25, 34-38, 40, 45, 47, 48, 56 above, and further in view of Lu et al. (WO2017096039; previously cited).
Applicant contends: Lu et al. fails to cure the deficiency.
In view of the withdrawal of the rejection over Bennett et al. on which the instant rejection depends, the instant rejection is also withdrawn.
7. (previous rejection, withdrawn) Claim 44 was rejected under 35 U.S.C. 103 as being unpatentable over Bennett et al. as applied to claims 1-3, 5-9, 16,17, 21,22, 24,25, 34-38, 40, 45, 47, 48, 56 above, and further in view of Wadsworth et al. (WO09941399; previously cited).
Applicant contends: Wadsworth et al. fails to cure the deficiency.
In view of the withdrawal of the rejection over Bennett et al. on which the instant rejection depends, the instant rejection is also withdrawn.
Conclusion
8. Claims 1-3, 5, 9, 16-17, 21, 22, 24 are allowed.
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, Janet Andres can be reached at 571-272-0867. 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