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 Amendment
1. Claims 17-19, 23, 30, 31, 33, 35 and 43 have been amended and claims 20, 25, 28, 29, 37, 40, 41, 53, 79 and 80 canceled as requested in the amendment filed on July 23, 2026. Following the amendment, claims 17-19, 23, 30, 31, 33, 35, 42, 43 and 52 are pending in the instant application.
2. Claims 17-19, 23, 30, 31, 33, 35, 42, 43 and 52 are under examination in the instant office action.
3. Any objection or rejection of record, which is not expressly repeated in this action has been overcome by Applicant’s response and withdrawn.
4. Applicant’s arguments filed on July 23, 2026 have been fully considered but found to be not persuasive for reasons set forth below. New grounds of rejection necessitated by Applicant’s amendment are set forth below as well.
Specification
5. The substitute specification filed July 23, 2026 has not been entered because it does not conform to 37 CFR 1.125(b) and (c) because: the submitted copy does not have any markings to specifically point out the amended text.
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.
6. Claims 17-19, 23, 30, 31, 33, 35, 42, 43 and 52, as amended, 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.
7. Claim 17, as currently presented, is indefinite because it recites the critical element of the claimed polypeptide in terms which are vague and ambiguous. Specifically, the claimed polypeptide comprises a portion of TrkB-FL selected from SEQ ID NO: 22, 23, 26 and 28. It is not obvious what is identified by reference to the SEQ ID NOS, the portion or the TrkB-FL itself. Also, as explained earlier, “SEQ ID NO:” is a sequence identifier and not a product; therefore, neither a portion of TrkB-FL nor the TrkB-FL cannot be selected from sequence identifiers. Amendment to the claim to recite “TrkB-FL protein comprising or consisting of the amino acid sequence of SEQ ID NO:” or “a portion of TrkB-FL wherein the portion comprises the amino acid sequence of SEQ ID NO:” is suggested.
8. Claim 35, as amended, lacks meaningful antecedent basis for limitation “polypeptide” in the claim 17. Briefly, if the polypeptide of claim 17 is further limited to the amino acid sequence of SEQ ID NO:18 as in claim 35, then what part of that polypeptide is further identified as an additional linker and the amino acid sequence of SEQ ID NO: 21?
9. Claims 18, 19, 23, 30, 31, 33, 42, 43 and 52 are indefinite for being dependent from indefinite claim(s).
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
10. Claims -19, 23, 30, 31, 33, 35, 42, 43 and 52 stand rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement for reasons of record in section 19 of Paper mailed on March 23, 2026. Briefly, the claims, as amended encompass a genus of polypeptides defined as comprising a portion of TrkB-FL selected from SEQ ID NO: 22, 23, 26 and 28. As explained earlier, see section 7 above, independent claim 17 does not allow for definitive interpretation whether the limitation “portion” relates to TrkB-FL or the molecular embodiments identified by reference to SEQ ID NOS. Thus, by broadest reasonable interpretation, the claims encompass a genus of polypeptides of vague and ambiguous structure, that is not described and cannot be envisioned.
Applicant is advised that amendment to the claims did not overcome the rejection.
For reasons of record fully explained earlier and reasons above, the rejection is maintained.
Conclusion
11. No claim is allowed.
12. 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 OLGA N CHERNYSHEV whose telephone number is (571)272-0870. The examiner can normally be reached 9AM to 5:30PM, Monday to Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Stucker can be reached at (571)272-0911. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OLGA N CHERNYSHEV/ Primary Examiner, Art Unit 1675
August 3, 2026
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