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 .
RESPONSE TO APPLICANT’S AMENDMENT
1. Applicants amendment filed on 04/28/26 is acknowledged.
2. Claims 6-11 are pending.
Claims 6-11 read on a composition for diagnosing cancer comprising an agent for measuring the expression level of TIM-3 in CD11b+ cells are under consideration in the instant application.
3. 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.
4. Claims 6-11 stand rejected under 35 U.S.C. 102(a)(1)/(2) as being anticipated by US Patent Application 20240181048 for the same reasons set forth in the previous Office Action, mailed on 01/28/26.
Applicant’s arguments filed on 04/28/26 have been fully considered but have not been found convincing.
Applicant asserts that the amended claims now recited a diagnostic composition for diagnosing a brain tumor. US Patent Application’ 048 does not teach or suggest said features.
Contrary to Applicant’s assertion it is noted that the instant claims are drawn to a product, i.e. an agent to measure the expression level of TIM-3. A product is a product irrespective of its intendent use in the absence of evidence of structural and/or functional difference.
In re Thrope,227 USPQ 964,966 (Fed. Cir. 1985). See MPEP 2113.
Thus, it is the Examiner’s position that preamble of amended claim 6 only limits the claim to the extent that the prior art must be capable of performing the purpose or intended use.
As has been stated previously, US Patent Application ‘048 teaches a composition comprising anti-TIM-3 antibody that can be used for the immunoassays, in particularto measure the expression of TIM on CD11b+ cells ( see entire document, paragraphs 0044,, 0091, 0100, 0148, 0175).
The Examiner reiterated his position that the instant claims are drawn to a product. i.e anti-TIM-3 antibody not the method of diagnosing cancer or measuring the expression levels of TIM-3 in CD11b+ cells.
Claims 9-11 are included because a composition is a composition irrespective of its intended use in the absence of evidence of structural difference.
The reference teaching anticipates the claimed invention.
5. No claim is allowed.
6. THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). 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, however, event will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michail Belyavskyi whose telephone number is 571/272-0840. The examiner can normally be reached Monday through Friday from 9:00 AM to 5:30 PM. A message may be left on the examiner's voice mail service. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Gregory Emch can be reached on 571/ 272-8149
The fax number for the organization where this application or proceeding is assigned is 571/273-8300
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/MICHAIL A BELYAVSKYI/Primary Examiner, Art Unit 1644
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