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 .
The amendments and remarks filed 5/22/26 are acknowledged. Claims 18, 19, and 42 have been amended. Claims 1-17, 20-41, 45-46, 48-50, 53-58 have been canceled. Claim 59 has been added. Claims 18, 19, 42-44, 47, 51-52, and 59 are pending.
Claims 47, 51, and 52 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 10/27/25.
Claims 18, 19, 42-44, and 59 are under examination.
Withdrawn Rejections
The rejection of claims 18, 19, 21-31, 35, and 42-44 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112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement, is withdrawn in light of Applicant’s amendment thereto. See paragraph 5, page 3 of the previous Office action.
The rejection of claims 24-30 and 42 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a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention., is withdrawn in light of Applicant’s cancelation of the claims. See paragraph 7, page 13 of the previous Office action.
The rejection of claims 18, 21, 22, 24, 26,27, 43 and 44 under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Chilkoti et al. (US Patent Application 20180037609 A1, published February 8, 2018), is withdrawn in light of Applicant’s amendment thereto. See paragraph 18, page 14 of the previous Office action.
Election/Restriction
Claims 18, 19, 42-44, and 59 are directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(b), claims 47 and 51-52, directed to the process of making or using the allowable product, previously withdrawn from consideration as a result of a restriction requirement, are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on 6/25/25 is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
New Rejections Necessitated by Applicant’s 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.
Claims 51-52 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 51 recites a method for identifying a biomolecule where a protein nanoparticle of claim 18 is added into a solution containing the biomolecule, wherein it specifically binds the molecule. This limitation is indefinite because the claim does not clearly set forth active steps for performing the method. The claim does not specifically set forth what is being identified, nor does the claim provide guidance on how one is to know the biomolecule has been identified. There is no nexus between adding the nanoparticle of claim 18 to a solution, and identifying the biomolecule. Therefore, the scope of the claim is ambiguous and one of skill in the art would not be apprised of the metes and bounds of the claim. Clarification and/or correction is required.
Claim 52 recites a method of purifying a biomolecule comprising using the protein nanoparticle of claim 18 that binds to the biomolecule to isolate the biomolecule from a medium or complex matrix. This limitation is unclear because the claim recites a use without any active, positive steps delimiting how this use is actually practiced. Clarification and/or correction is required.
Claim Status
Claims 18, 19, 42-44, 47, and 59 are allowed.
Claims 51-52 are rejected.
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 SANDRA CARTER whose telephone number is (571)272-2932. The examiner can normally be reached 8:00-5:00 pm.
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, Vanessa L. Ford can be reached at (571)272-0857. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SANDRA CARTER/Examiner, Art Unit 1674
/VANESSA L. FORD/Supervisory Patent Examiner, Art Unit 1674
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