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 .
Withdrawn Rejections
The rejection of claims 18 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn in view of applicant’s amendments to the claims.
The rejection of claim 17 under 35 U.S.C. 102(a)(1) as being anticipated by Lindemann et al. (EP2583974-A1; published April 24, 2013) has been withdrawn in view of applicant’s amendments to the claim to recite “consisting of”.
The rejection of claim 17 under 35 U.S.C. 102(a)(1) as being anticipated by Stewart et al. (WO9951268-A1; published October 14, 1999) has been withdrawn in view of applicant’s amendments to the claim to recite “consisting of”.
The rejection of claim 18 under 35 U.S.C. 103 as being unpatentable over Stewart et al. (WO9951268-A1; published October 14, 1999) has been withdrawn in view of applicant’s amendments to the claims.
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.
Claim 19 is 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.
Claim 19 is directed a tetrameric peptide consisting of four monomeric sequences defined by any one of SEQ ID NOs:1-36. It is not clear if the tetramer comprises four copies of the same monomeric sequence or if the tetramer comprises four different monomers selected from any one of SEQ ID NOs: 1-36. Further, it is not clear how the monomers are arranged to form the tetramer (four monomers in tandem or a 3-D structure comprising the four monomers). Accordingly, one of ordinary skill in the art will not know the metes and bounds of the claim.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim 17 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lajoie et al. (WO2016/138525; published 9/1/2016).
The instant claims are directed to an immunogenic peptide consisting of 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, or 20 contiguous amino acids of a sequence as defined by any of SEQ ID Nos: 1-36.
Lajoie et al. discloses SEQ ID NO: 101 which consists of 16 contiguous amino acids of instant SEQ ID NO: 4 (see the alignment below).
Qy 1 MGVSGSKGQKLFVSVL 16
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Db 1 MGVSGSKGQKLFVSVL 16
Claim 17 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Marasco et al. (U.S. Patent No. 6004940; published 12/21/1999).
The instant claims are directed to an immunogenic peptide consisting of 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, or 20 contiguous amino acids of a sequence as defined by any of SEQ ID Nos: 1-36.
Marasco et al. discloses SEQ ID NO: 34 which consists of 8 contiguous amino acids of instant SEQ ID NO: 4 (see the alignment below).
Qy 2 GVSGSKGQ 9
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Db 1 GVSGSKGQ 8
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 18 is rejected under 35 U.S.C. 103 as being unpatentable over Lajoie et al. (WO2016/138525; published 9/1/2016) as applied to claim 17 above.
Claim 18 is directed to the isolated peptide of claim 17, wherein said peptide is covalently attached or physically associated with a dish, bead, well, support, macromolecule or carrier.
The teachings of Lajoie et al. are outline above and incorporated herein. As outlined above, Lajoie et al. teaches the claimed peptide. Accordingly, attaching or associating the peptide with a surface does not render the claimed peptide patentable over Lajoie et al. The structure of the attached or associated peptide is the same as the claimed peptide.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Marasco et al. (U.S. Patent No. 6004940; published 12/21/1999) as applied to claim 17 above.
Claim 18 is directed to the isolated peptide of claim 17, wherein said peptide is covalently attached or physically associated with a dish, bead, well, support, macromolecule or carrier.
The teachings of Marasco et al. are outline above and incorporated herein. As outlined above, Marasco et al. teaches the claimed peptide. Accordingly, attaching or associating the peptide with a surface does not render the claimed peptide patentable over Marasco et al. The structure of the attached or associated peptide is the same as the claimed peptide.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new 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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicole Kinsey White whose telephone number is (571)272-9943. The examiner can normally be reached M to Th 6:30 am to 6:00 pm.
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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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/NICOLE KINSEY WHITE/Primary Examiner, Art Unit 1672