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 .
Election/Restrictions
Applicant’s election without traverse of Group II in the reply filed on 9/23/2025 is acknowledged.
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.
Claims 3 and 23 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. It’s unclear what limitations following the recitation “optionally wherein” are optional and which limitations are not, that is, if “optionally wherein” qualifies only the immediate recitation following the phrase or if it qualifies all limitations following the phrase. In one interpretation, the recitation may limit only the first recitation, in another interpretation, it may limit all subsequent limitations in the claim. Compounding the ambiguity is the appearance of a second “optionally” further down in the claim, and the recitation “(e.g. amino acid residues 510-560 of GPC3),” which is unclear why the recitation is in parentheses and unclear if the recitations following “e.g.” are merely exemplary or are part of the claimed invention.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 3 and 23 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by US 20150147330 to Ho. Ho teaches an antibody or antigen binding fragment thereof comprising a heavy chain immunoglobulin variable domain (VH) and a light chain immunoglobulin variable domain (VL) (paragraphs 99-103), wherein: (I) (a) the VH comprises an amino acid sequence selected from the group consisting of: SEQ ID NO: 8 (claim 6), which correspond to present ID NO: 2, SEQ ID NO: 3; and (b) the VL comprises an amino acid sequence selected from the group consisting of SEQ ID NO: 14, (claim 6) which corresponds to present SEQ ID NO: 11 (abstract; paragraphs 90-107, 166; Table 1D; claim 6). The antibody or antigen binding fragment is formulated into a pharmaceutically acceptable carrier (paragraphs 146-147).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL W DICKINSON whose telephone number is (571)270-3499. The examiner can normally be reached on M-F 9 AM to 7:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached on 571-272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL W DICKINSON/Primary Examiner, Art Unit 1618
12/27/2025