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
2. The amendment filed 10/27/2025 is acknowledged and has been entered.
Claims 1, 4, 7 and 13 have been amended. Claims 2, 3, 5, 6 and 20 have been cancelled.
3. Claims 1, 4 and 7-19 are pending in the application. Claims 11-12 and 14-19 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/11/2025.
4. Claims 1, 4, 7-10 and 13 have been examined.
Grounds of Objection and Rejection Withdrawn
5. Unless specifically reiterated below, Applicant’s amendment and/or arguments have obviated or rendered moot the grounds of objection and rejection set forth in the previous Office action mailed 06/25/2025.
New Grounds of Rejection
Double Patenting
6. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
7. Claims 1, 4, 7-10 and 13 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,162,941 in view of Jewetta (US 20150238530, published on 08/27/2015) (of record). Although the conflicting claims are not identical, they are not patentably distinct from each other because for the following reasons:
Claims 1, 4, 7-10 and 13 are herein drawn to a method of i) treating cancer by activating NK cells; and/or ii) enhancing NK cell activation; comprising administering to a human a composition that binds CD16 and CD112R, wherein the composition comprises an anti-CD112R antibody comprising a heavy chain variable region (VH) having the amino acid sequence of SEQ ID NO: 712 and a light chain variable region (VL) having the amino acid sequence of SEQ ID NO: 718.
Claims 1-19 of U.S. Patent No. 12,162,941 are drawn to a method of treating a cancer in a subject in need thereof, the method comprising administering to the subject a therapeutically effective amount of an antibody or antigen binding portion thereof that binds to CD112R and comprises: a heavy chain variable region comprising the amino acid sequence of SEQ ID NO: 712 and a light chain variable region comprising the amino acid sequence of SEQ ID NO: 718.
U.S. Patent No. 12,162,941 teaches that the anti-CD112R antibodies could activate NK cells; see col. 6-lines 49-57.
The SEQ ID NOs: 712 and 718 of U.S. Patent No. 12,162,941 are 100% identical with the instant claimed SEQ ID NOs: 712 and 718; see below sequence alignment 1.
The claims of U.S. Patent No. 12,162,941 do not teach anti-CD16 antibody.
However, this deficiency is remedied by Jewetta.
Jewetta teaches a method for depleting cancer stem cells at a tumor site in an individual, the method comprising administering a composition of activated NK cells at a dose effective to deplete the cancer stem cells, wherein the NK cells are activated by anti-CD16 antibodies; see entire document, e.g., [0015], claims 1, 10 and 14.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of the references so as to treat cancer using anti-CD16 antibody and anti-CD112R antibody for activating NK cells. One would have been motivated to do so because U.S. Patent No. 12,162,941 teaches a method of treating a cancer in a subject comprises administering to the subject an anti-CD112R antibody, wherein the anti-CD112R antibodies could activate NK cells; Jewetta teaches a method for depleting cancer stem cells at a tumor site in an individual, the method comprising administering a composition of activated NK cells at a dose effective to deplete the cancer stem cells, wherein the NK cells are activated by anti-CD16 antibodies. Thus, one of ordinary skill in the art would have a reasonable expectation of success that by combining the teachings of the references so as to treat cancer using anti-CD16 antibody and anti-CD112R antibody for activating NK cells, because NK cells can be activated by anti-CD112R antibody and anti-CD16 antibody as taught by U.S. Patent No. 12,162,941 and Jewetta.
8. Claims 1, 4, 7-10 and 13 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 3, 18, 21-25 and 27-37 of copending Application No. 18/930273 in view of Jewetta (US 20150238530, published on 08/27/2015) (of record). Although the conflicting claims are not identical, they are not patentably distinct from each other for the following reasons:
Claims 1, 4, 7-10 and 13 are herein drawn to a method of i) treating cancer by activating NK cells; and/or ii) enhancing NK cell activation; comprising administering to a human a composition that binds CD16 and CD112R, wherein the composition comprises an anti-CD112R antibody comprising a heavy chain variable region (VH) having the amino acid sequence of SEQ ID NO: 712 and a light chain variable region (VL) having the amino acid sequence of SEQ ID NO: 718.
Claims 1, 3, 18, 21-25 and 27-37 of copending Application No. 18/930273 are drawn to a method of treating cancer in a subject comprising administering an anti-CD112R antibody to a subject having cancer, wherein the anti-CD112R antibody enhancing NK cell activation, wherein the anti-CD112R antibody comprises: a heavy chain variable region comprising the amino acid sequence of SEQ ID NO: 712 and a light chain variable region comprising the amino acid sequence of SEQ ID NO: 718.
The SEQ ID NOs: 712 and 718 of copending Application No. 18/930273 are 100% identical with the instant claimed SEQ ID NOs: 712 and 718; see below sequence alignment 2.
The claims of copending Application No. 18/930273 do not teach anti-CD16 antibody.
However, this deficiency is remedied by Jewetta.
Jewetta teaches a method for depleting cancer stem cells at a tumor site in an individual, the method comprising administering a composition of activated NK cells at a dose effective to deplete the cancer stem cells, wherein the NK cells are activated by anti-CD16 antibodies; see entire document, e.g., [0015], claims 1, 10 and 14.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of the references so as to treat cancer using anti-CD16 antibody and anti-CD112R antibody for activating NK cells. One would have been motivated to do so because claims of copending Application No. 18/930273 teach a method of treating a cancer in a subject comprises administering to the subject an anti-CD112R antibody, wherein the anti-CD112R antibody enhancing NK cell activation; Jewetta teaches a method for depleting cancer stem cells at a tumor site in an individual, the method comprising administering a composition of activated NK cells at a dose effective to deplete the cancer stem cells, wherein the NK cells are activated by anti-CD16 antibodies. Thus, one of ordinary skill in the art would have a reasonable expectation of success that by combining the teachings of the references so as to treat cancer using anti-CD16 antibody and anti-CD112R antibody for activating NK cells, because NK cells can be activated by anti-CD112R antibody and anti-CD16 antibody as taught by copending Application No. 18/930273 and Jewetta.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Conclusion
9. No claim is allowed.
10. Applicant's amendment necessitated the new ground(s) of objection/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 extension fee 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 date of this final action.
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/YAN XIAO/Primary Examiner, Art Unit 1642
Sequence alignment 1
US-17-531-380-712
Filing date in PALM: 2021-11-19
Sequence 712, US/17531380
Publication No. US20220162317A1
GENERAL INFORMATION
APPLICANT: SURFACE ONCOLOGY, INC.
APPLICANT: ADIMAB LLC
TITLE OF INVENTION: ANTI-CD112R COMPOSITIONS AND METHODS
FILE REFERENCE: 01219-0001-00PCT
CURRENT APPLICATION NUMBER: US/17/531,380
CURRENT FILING DATE: 2021-11-19
PRIOR APPLICATION NUMBER: US 17/261,463
PRIOR FILING DATE: 2021-01-19
PRIOR APPLICATION NUMBER: US 62/701,065
PRIOR FILING DATE: 2018-07-20
PRIOR APPLICATION NUMBER: US 62/844,958
PRIOR FILING DATE: 2019-05-08
NUMBER OF SEQ ID NOS: 4018
SEQ ID NO 712
LENGTH: 123
TYPE: PRT
ORGANISM: Artificial Sequence
FEATURE:
OTHER INFORMATION: Synthetic: 35 - VH Protein
Query Match 100.0%; Score 643; Length 123;
Best Local Similarity 100.0%;
Matches 123; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 QVQLVQSGAEVKKPGSSVKVSCKASGGTFSSAAISWVRQAPGQGLEWMGNIIPIVGIANY 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 QVQLVQSGAEVKKPGSSVKVSCKASGGTFSSAAISWVRQAPGQGLEWMGNIIPIVGIANY 60
Qy 61 AQKFQGRVTITADESTSTAYMELSSLRSEDTAVYYCARDTGRGYTRHFWFDPWGQGTLVT 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 AQKFQGRVTITADESTSTAYMELSSLRSEDTAVYYCARDTGRGYTRHFWFDPWGQGTLVT 120
Qy 121 VSS 123
|||
Db 121 VSS 123
US-17-531-380-718
Filing date in PALM: 2021-11-19
Sequence 718, US/17531380
Publication No. US20220162317A1
GENERAL INFORMATION
APPLICANT: SURFACE ONCOLOGY, INC.
APPLICANT: ADIMAB LLC
TITLE OF INVENTION: ANTI-CD112R COMPOSITIONS AND METHODS
FILE REFERENCE: 01219-0001-00PCT
CURRENT APPLICATION NUMBER: US/17/531,380
CURRENT FILING DATE: 2021-11-19
PRIOR APPLICATION NUMBER: US 17/261,463
PRIOR FILING DATE: 2021-01-19
PRIOR APPLICATION NUMBER: US 62/701,065
PRIOR FILING DATE: 2018-07-20
PRIOR APPLICATION NUMBER: US 62/844,958
PRIOR FILING DATE: 2019-05-08
NUMBER OF SEQ ID NOS: 4018
SEQ ID NO 718
LENGTH: 106
TYPE: PRT
ORGANISM: Artificial Sequence
FEATURE:
OTHER INFORMATION: Synthetic: 35 - VL Protein
Query Match 100.0%; Score 541; Length 106;
Best Local Similarity 100.0%;
Matches 106; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 DIQMTQSPSSLSASVGDRVTITCRASQSISSYLNWYQQKPGKAPKLLIYAASSLQSGVPS 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 DIQMTQSPSSLSASVGDRVTITCRASQSISSYLNWYQQKPGKAPKLLIYAASSLQSGVPS 60
Qy 61 RFSGSGSGTDFTLTISSLQPEDFATYYCQQSDILYTFGGGTKVEIK 106
||||||||||||||||||||||||||||||||||||||||||||||
Db 61 RFSGSGSGTDFTLTISSLQPEDFATYYCQQSDILYTFGGGTKVEIK 106
Sequence alignment 2
US-18-930-273-712
Filing date in PALM: 2024-10-29
Sequence 712, US/18930273
Publication No. US20250051449A1
GENERAL INFORMATION
APPLICANT: SURFACE ONCOLOGY, INC. (en)
TITLE OF INVENTION: ANTI-CD112R COMPOSITIONS AND METHODS (en)
FILE REFERENCE: LU67075
CURRENT APPLICATION NUMBER: US/18/930,273
CURRENT FILING DATE: 2024-10-29
NUMBER OF SEQ ID NOS: 4018
SEQ ID NO 712
LENGTH: 123
TYPE: PRT
FEATURE:
NAME/KEY: REGION
LOCATION: 1..123
QUALIFIERS: note = Synthetic: 35 - VH Protein
FEATURE:
NAME/KEY: source
LOCATION: 1..123
QUALIFIERS: mol_type = protein
organism = synthetic construct
Query Match 100.0%; Score 643; Length 123;
Best Local Similarity 100.0%;
Matches 123; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 QVQLVQSGAEVKKPGSSVKVSCKASGGTFSSAAISWVRQAPGQGLEWMGNIIPIVGIANY 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 QVQLVQSGAEVKKPGSSVKVSCKASGGTFSSAAISWVRQAPGQGLEWMGNIIPIVGIANY 60
Qy 61 AQKFQGRVTITADESTSTAYMELSSLRSEDTAVYYCARDTGRGYTRHFWFDPWGQGTLVT 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 AQKFQGRVTITADESTSTAYMELSSLRSEDTAVYYCARDTGRGYTRHFWFDPWGQGTLVT 120
Qy 121 VSS 123
|||
Db 121 VSS 123
US-18-930-273-718
Filing date in PALM: 2024-10-29
Sequence 718, US/18930273
Publication No. US20250051449A1
GENERAL INFORMATION
APPLICANT: SURFACE ONCOLOGY, INC. (en)
TITLE OF INVENTION: ANTI-CD112R COMPOSITIONS AND METHODS (en)
FILE REFERENCE: LU67075
CURRENT APPLICATION NUMBER: US/18/930,273
CURRENT FILING DATE: 2024-10-29
NUMBER OF SEQ ID NOS: 4018
SEQ ID NO 718
LENGTH: 106
TYPE: PRT
FEATURE:
NAME/KEY: REGION
LOCATION: 1..106
QUALIFIERS: note = Synthetic: 35 - VL Protein
FEATURE:
NAME/KEY: source
LOCATION: 1..106
QUALIFIERS: mol_type = protein
organism = synthetic construct
Query Match 100.0%; Score 541; Length 106;
Best Local Similarity 100.0%;
Matches 106; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 DIQMTQSPSSLSASVGDRVTITCRASQSISSYLNWYQQKPGKAPKLLIYAASSLQSGVPS 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 DIQMTQSPSSLSASVGDRVTITCRASQSISSYLNWYQQKPGKAPKLLIYAASSLQSGVPS 60
Qy 61 RFSGSGSGTDFTLTISSLQPEDFATYYCQQSDILYTFGGGTKVEIK 106
||||||||||||||||||||||||||||||||||||||||||||||
Db 61 RFSGSGSGTDFTLTISSLQPEDFATYYCQQSDILYTFGGGTKVEIK 106
Prosecution Insights