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 .
Remark
The response filed on 6/26/2026 have been acknowledged.
Status of the Claims
Claims 1-4, 10-12, 14-15, 17-24 are pending.
Claims 5-9, 13, 16 have been canceled.
Claims 1-3, 10-12, 14-15 and 23-24 read on the elected species (A) Paramyxoviridae, (C) the antigenome of RSV of SEQ ID NO: 7; and (D) Avulavirus of the family Paramyxoviridae are considered based on the election without traverse made by Applicants on. Jan 16, 2024.
Claims 4 and 17-22 that are not read on the elected species are withdrawn from consideration.
Claim Rejections - 35 USC § 112
The rejection of Claims 10 and 23-24 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph has been removed because the specification has been found to provide a support on page 19 for the NDV insertion support as the argument provided by Applicants.
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.
Claims 1-2, 10, 12, 14-15 and 23 rejected under 35 U.S.C. 103 as being unpatentable over US Patent No. 7,662,397B2 (397B2).
In the response, Applicants traverse the rejection and submit that the purpose or intended function of substitute the endogenous F protein with the F proteins derived from viruses belonging to the family Paramyxoviridae (measles virus and Newcastle disease virus are different , i.e. the claimed substitution is for inducing a different immunogenicity carried by the claimed RSV vector, whereas the current claimed recombinant RSV is for a more stable RSV vector.
Applicants’ Argument have been respectfully considered, however, it is not found persuasive.Regarding to this rejection, applicants’ attention is directed to the case law of In re Sussman, 141 F. 2d 267, 60 U.S.P.Q. 538 (CCPA 1944), which cites "since the steps are the same, the results must inherently be the same unless they are due to conditions not recited in the claims." In the instant case, Applicant(s) is (are) claiming an invention employing the same process steps but the product(s) is(are) alleged to be different. If the claimed products are structurally different, Applicant is required to recite the missing steps to form the alleged different product(s) in view of the above cited decision.
As the heterologous sequences inserted into the vector are same , the immunogenicity of the heterologous sequence expressed and presented by the claimed vector are same.
To this context, the rejection is maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
/BAO Q LI/ Primary Examiner, Art Unit 1671
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