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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/7/26 has been entered.
Response to Applicant’s Arguments and Amendments
In the response submitted by the Applicant the following 35 U.S.C § 112(a) rejections are withdrawn:
Claim 1-3, and 5-14 were rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for treating or alleviate the obesity and the metabolic diseases listed in claim 3, does not reasonably provide enablement for prevention of obesity or metabolic diseases nor does it provide enablement for alleviation or treatment of metabolic diseases that do not result from high fat and glucose intake such as gout or hypokalemia.
The Applicant has amended the claims to diseases that are enabled by the Specification. All arguments drawn to these rejections are now considered moot.
Allowable with Closest Prior Art
Claims 1-3, 5, 6, 8-14 are allowable. The closest prior art is Brodie et al. (WO2018/083700, previously cited). However they do not teach muscle cells with the claimed markers. In particular PAX7 is not typically found in mesenchymal stem cells but specific for muscle satellite cells (see Seale et al., abstract and Sincennes, pg. 2, left column 1st full paragraph).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 7 limits “wherein the improvement of muscle volume and strength” from claim 2. However claim 2 does not have a category for “muscle volume and strength” but instead “muscle mass and strength”. The difference between muscle mass and muscle volume appears to broaden the scope of claim 2 rather than narrow it. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Request for Interview
The Examiner believes an interview would be useful in progressing this case since allowable subject matter is present in this invention. The Applicant is encourage to contact Thane Underdahl at (303) 297-4299 to discuss the claim amendments to place this case in condition for allowance prior to replying to this Office Action.
In response to this office action the applicant should specifically point out the support for any amendments made to the disclosure, including the claims (MPEP 714.02 and 2163.06).
CONTACT INFORMATION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THANE E UNDERDAHL whose telephone number is (303) 297-4299. The examiner can normally be reached Monday through Thursday, M-F 8-5 MST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at (571) 272-3311.The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THANE UNDERDAHL/Primary Examiner, Art Unit 1699
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