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
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Claims 1, 15-30, and 32-34 have an effective filing date of 28 AUG 2019.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 09/07/2022 and 10/16/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Election/Restriction
In the response filed on 10/16/2025, Applicant elected:
Group I, claim 1, and 15-20
Species
SEQ ID NO: 26 as the target domain
SEQ ID NO: 26 as the target domain which binds a target domain
SEQ ID NO:26 as the targeting domain capable of directing cleavage or editing of a targeted domain
Status of Claims
Claims 1, 15-30, and 32-34 are currently pending and presented for examination on the merits.
Claims 1, 17-21, 23, 25, 27-30, 32, and 34 are amended.
Claims 2-14, and 31 are canceled.
Claims 21-30, and 32-34 are withdrawn from further consideration by Examiner under CFR 1.142(b) as being drawn to a non-elected invention.
Claim Objections
Claims 15-16 are objected to for reciting tables and figures. MPEP 2173.05(s) states:
“Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table ‘is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience.’ Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993) (citations omitted).”
In this case, the targeting domain sequences that the tables refer to could easily be incorporated into the claims to define the invention. Appropriate correction is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, and 15-20 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, and 15-20 of copending Application No. 18/023,548 ('548) (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DENNIS JOHN SULLIVAN whose telephone number is (571)272-0509. The examiner can normally be reached Mon - Fri: 7:30AM - 4:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Samira Jean-Louis can be reached at (571) 270-3503. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DENNIS J SULLIVAN/Examiner, Art Unit 1642
/NELSON B MOSELEY II/Primary Examiner, Art Unit 1642
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