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 .
This action is on claims 1 and 102-119 filed 10/18/23.
Rejections Necessitated by Amendment
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 102 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 102 is unclear as to the position of the C-terminal tyrosine (Y) because there is no reference to a specific position in a reference sequence. The claim is interpreted as any polypeptide having a Y and the Y does not have to be the terminus because it can have (comprise) additional sequences added to it.
Claim Rejections - 35 USC § 102
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)(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.
Claim(s) 102 is rejected under 35 U.S.C. 102a2 as being anticipated by Lutz et al. (US20210170017A1).
For claim 102, Lutz et al. teach an RSV F mRNA with SEQ ID# 8. Lutz et al. teach SEQ ID# 4957 that comprises the same SEQ #8. See comparison sheet.
For claim 102, the sequence lacks a cytoplasmic tail. The limitation lacks a cytoplasmic tail comprising SEQ ID# 25 is interpreted as lacking a cytoplasmic and the specific sequence it is lacking is not relevant because the sequence is not included in the claim.
Thus, Lutz et al. anticipate the claimed invention.
Applicant argues that the sequence does not have a C-terminal tyrosine.
Applicant’s argument has been fully considered and not found persuasive.
As explained above the relative position of the Y is unclear, the prior art meets the limitation as the sequence contains a Y and the sequence can have (comprise) a sub-portion that has a terminal Y with other sequence attached to it if the Y.
Allowable Subject Matter
Claims 103-106 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 1 and 107-119 are free of the prior art.
Conclusion
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 MYRON G HILL whose telephone number is (571)272-0901. The examiner can normally be reached Mon-Fri.
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MYRON G. HILL
Examiner
Art Unit 1671
/M.G.H/Examiner, Art Unit 1671
/Shanon A. Foley/Primary Examiner, Art Unit 1671
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