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, 3-8, 10-11, 13, 15, 17, 19, and 21-27 have an effective filing date of 12MAR2020.
Status of Claims
Claims 1, 3-8, 10-11, 13, 15, 17, 19, and 21-27 are currently pending and presented for examination on the merits.
Claims 1, 4, 6-7, 11, 13, 17, 19, and 21-27 are amended.
Claims 2, 9, 12, 14, 16, 18, 20, and 28-49 are canceled.
Rejections Withdrawn
The rejection filed under 35 U.S.C. 101 is withdrawn in view of Applicant’s amendments to claims.
The rejections filed under 35 U.S.C. 112 (b) are withdrawn in view of Applicant’s amendments to claims.
New Rejections
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 1, 3-8, 10-11, 13, 15, 17, 19, and 21-27 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.
Claim 1 has been amended to recite a step of determining whether an inhibitor of FKBP1A is suitable for the treatment of triple-negative breast cancer based on comparing determined characteristics (newly added part (e)). The claim is indefinite, because one skilled in the art would be unable to determine whether a particular inhibitor of FKBP1A is suitable for the treatment of triple-negative breast cancer. For example claim 3 recites numerous characteristics, including (A) cellular differentiation status, (B) epithelial characteristics, (C) cellular immunogenicity, (D) apoptosis induction or apoptosis ability, (E) cellular stem cell character, and/or (F) cellular metastatic ability; however the recitation of these characteristics does not provide the skilled artisan with a means of determining whether a particular inhibitor of FKBP1A is suitable for the treatment of triple-negative breast cancer. In other words, the skilled artisan would be unable to readily envision which cellular differentiation characteristics indicate that a particular inhibitor of FKBP1A is suitable for the treatment of triple-negative breast cancer, nor would one skilled in the art be able to determine which epithelial characteristics indicate that a particular inhibitor of FKBP1A is suitable for the treatment of triple-negative breast cancer. Applicant is informed that this rejection may be overcome by amending claim 1 to specifically recite particular cancer cell characteristics that may be compared in order to determine whether a particular inhibitor of FKBP1A is suitable for the treatment of triple-negative breast cancer.
Conclusion
No claims are 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 DENNIS JOHN SULLIVAN whose telephone number is (571)272-0509. The examiner can normally be reached Mon - Fri: 7:30AM - 4:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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