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 .
Response to Amendment
Claims 4, 7-9, 12, 15, 17-19, 25-28 and 31-32 have been cancelled. Claim 1 has been amended as requested in the amendment filed on 12 June 2026. Following the amendment, claims 1-3, 5-6, 10-11, 13-14, 16, 20-24, and 29-30 are pending in the instant application.
Claims 3, 10-11, 13-14, 16, 20-24, 29-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim.
Claims 1-2 and 5-6 are under examination in the instant office action.
Claim Objections
Claim 1 is objected to because of the following informalities: there is no conjunction between SEQ ID NO: 8 and SEQ ID NO: 9. The absence of an “or” conjugation lends itself to an interpretation that the fusion protein must have all three sequences. Appropriate correction is required.
Claim Rejections - 35 USC § 102 (New, Necessitated by Amendment)
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
As currently amended, Claims 1-2 and 5-6 are rejected under 35 U.S.C. 102(a)(1), or alternatively under 102(a)(2), as being anticipated by WO/2004/067717 A2, published 12 August 2004, which designates the US and has been effectively filed on 24 January 2003 (hereafter the ‘717 publication).
It should be noted that “an amino acid sequence” broadly reads upon any two consecutive amino acids within the sequence claimed. Applicant may remedy this by reciting “the amino acid sequence”.
Regarding Claim 1, the ‘717 publication teaches fusion proteins comprising arrestin and ubiquitin molecules. The alignment below demonstrates that there is at least 80% identity of “an amino acid” within SEQ ID NO: 7 and the fusion protein depicted in Figures 8-10 of the reference:
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media_image1.png
338
875
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Greyscale
There is no alignment between the disclosed fusion protein of the reference and SEQ ID NO: 8 and SEQ ID NO: 9 of the claims.
Regarding Claim 2, the ‘717 publication has been fused to the SUMO protein via a peptide linker. See reference pg. 64, Claim 2.
Regarding Claim 5, the ‘717 publication teaches fusion proteins comprising arrestin and ubiquitin molecules (Abstract). Specifically, the ‘717 publication teaches a fusion protein that has 84.45% identity to SEQ ID NO: 1 of the instant claims and 84.25% identity to SEQ ID NO: 2 of the claims (see alignments below). Thus, the prior art teaches a fusion protein “having at least 80% identity to” either SEQ ID NO: 1 or SEQ ID NO:2 of the instant claims.
Alignment of SEQ ID NO: 1 of the claims with the fusion protein depicted in Figures 8-10 of the reference:
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1085
848
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Greyscale
Alignment with SEQ ID NO: 2 of the claims and the fusion protein of Figures 8-10 of the reference:
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1112
870
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Regarding Claim 6, the ‘717 publication teaches the fusion proteins are attached to a detectable moiety including yellow fluorescent protein (see pg. 20, lines 16 through pg. 21, line 1).
Therefore, the invention of the claims fails to distinguish over the fusion protein disclosed in the prior art, and Claims 1-2 and 5-6 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 STACEY NEE MACFARLANE whose telephone number is (571)270-3057. The examiner can normally be reached M-F 7:30-5 (EST) & Sat. A.M..
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/S.N.M/ Examiner, Art Unit 1675
/KIMBERLY BALLARD/Primary Examiner, Art Unit 1675
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