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
This Office Action is a response to Applicant’s Amendment and Remarks filed January 16, 2026.
Claims 26, 28 and 29 have been amended.
Claims 1-29 are pending in the present application.
This application contains claims 1-25 drawn to an invention nonelected without traverse in the reply filed August 25, 2025. A complete reply to the final rejection must include cancellation of nonelected claims or other appropriate action (37 CFR 1.144). See MPEP § 821.01.
Accordingly, claims 26-29 have been examined on the merits as detailed below:
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Information Disclosure Statement
It is noted that Applicants have not filed an information disclosure statement under § 1.97(c). Applicant is reminded of 37 CFR § 1.56, which details Applicants duty to disclose all information known to be material to patentability.
Nucleotide Sequence Disclosures
In the previous Office Action mailed September 17, 2025, it was noted that this application failed to comply with the requirements of 37 C.F.R. §1.821-1.825. In view of Applicant’s Amendment to the Specification filed January 16, 2026, it is noted that the application is fully compliant with the sequence requirements of 37 C.F.R. §1.821-1.825.
Claim Rejections - 35 USC § 112
In the previous Office Action mailed September 17, 2025, claim 28 was 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 pre-AIA the applicant regards as the invention. This rejection is withdrawn in view of Applicant’s Amendment to the claim filed January 16, 2026.
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In the previous Office Action mailed September 17, 2025, claims 26-29 were 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. This rejection is withdrawn in view of Applicant’s Amendment to the claims filed January 16, 2026.
Claim Rejections - 35 USC § 101
In the previous Office Action mailed September 17, 2025, claims 28 and 29 were rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. This rejection is withdrawn in view of Applicant’s Amendment to the claims filed January 16, 2026.
Applicant's amendment to the claims filed January 16, 2026 necessitated the new ground(s) of rejection presented below:
Claim Rejections - 35 USC § 112
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.
Claims 26-29 are 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. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a new matter rejection.
Claim 26 has been amended and the Invention is now drawn to a synthetic nucleic acid encoding a peptide inhibitor having sequence identity to SEQ ID NO: 2, wherein the peptide inhibitor comprises a phosphorylated tyrosine, and wherein the peptide inhibitor is a polypeptide comprising fewer than 50 amino acids. In Applicant’s Response filed January 16, 2026, Applicants indicate that support for the amendment to claim 26 can be found in paragraph [0057]. Applicants also submit that this paragraph “clearly supports the inclusion of polypeptides with fewer than 50 amino acids”.
Paragraph [0057] discloses:
The terms “peptide,” “polypeptide,” and “protein” are used interchangeably herein, and refer to a polymeric form of amino acids of any length, which can include coded and non-coded amino acids, chemically or biochemically modified or derivatized amino acids, and polypeptides having modified peptide backbones.
A review of paragraph [0074] does not support the specific limitation, “wherein the peptide inhibitor is a polypeptide comprising fewer than 50 amino acids”. Therefore, this limitation is new matter.
If Applicants believe the Specification supports “wherein the peptide inhibitor is a polypeptide comprising fewer than 50 amino acids”, the Examiner urges Applicant to point to, with particularity, where support can be found for the claims as now filed. Otherwise, Applicant is required to cancel the new matter in reply to this Office Action.
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 Terra C. Gibbs whose telephone number is 571-272-0758. The Examiner can normally be reached from 8 am - 5 pm M-F.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's supervisor, Ram Shukla can be reached on 571-272-0735. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TERRA C GIBBS/Primary Examiner, Art Unit 1635