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 .
Claims 57-58 and 60-76 and new claims 77-79 are under consideration in the instant Office Action.
Withdrawn Objections and Rejections
The objection to claim 58 is withdrawn in view of the newly amended claims.
The rejection of claims 69 and 74 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the newly amended claims.
The rejection of claims 57 and 62 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35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement indefinite is withdrawn in view of the newly amended claims and applicant’s arguments were found persuasive.
Modified and New Rejections
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 57-58, 60-73 and new claims 77-79 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 36-51 of copending Application No. 19/302,911. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘911 claim the same alpha synuclein antibodies with the same CDR sequences, SEQ ID NOs: 1-6, 20-25 and 33-35, which are the same sequences that are found in both the instant claims and the ‘911 copending application. ‘911 claims the same method of treating Parkinson’s disease as in the instant claims. Therefore, ‘911 anticipates the instant claims.
The courts have held that a "claim to a method of using a composition is not patentably distinct from an earlier claim to the identical composition in a patent disclosing the identical use," which extend to any and all such uses disclosed in the specification of the earlier patent. Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d at 1363 (Fed. Cir. 2008), and Geneva Pharmaceuticals, Inc. v. GlaxoSmithKline PLC, 349 F.3d at 1385-86 (Fed. Cir. 2003). Indeed, as both cases recognized,
[i]t would shock one’s sense of justice if an inventor could receive a patent upon a composition of matter, setting out at length in the specification the useful purposes of such composition, … and then prevent the public from making an beneficial use of such product by securing patents upon each of the uses to which it may be adapted.
Sun Pharmaceuticals Industries, Ltd. v. Eli Lilly and Co., 611 F.3d 1381 (Fed, Cir. 2010), citing Pfizer, 518 F.3d at 1363 n.8 (emphases added); and Geneva, 349 F.3d at 1386 (quoting In re Byck, 48 F.2d 665, 666 (CCPA 1931)).
Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970). The court in Vogel recognized ‘that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim,’ but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent which provides support for the patent claim. According to the court, one must first ‘determine how much of the patent disclosure pertains to the invention claimed in the patent’ because only ‘[t]his portion of the specification supports the patent claims and may be considered.’ The court pointed out that ‘this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103, since only the disclosure of the invention claimed in the patent may be examined.’’’ MPEP §804(II)(B)(1).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 57-58, 60-64 and new claims 78-79 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 27-36, 39-42, 44, 46-52, 54-55 of copending Application No. 18/773,301. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘301 claim the same alpha synuclein antibodies with the same CDR sequences, SEQ ID NOs: 1, 2, 34, 3-6, which are the same sequences that are found in both the instant claims and the ‘301 copending application. Therefore, ‘301 anticipates the instant claims.
The courts have held that a "claim to a method of using a composition is not patentably distinct from an earlier claim to the identical composition in a patent disclosing the identical use," which extend to any and all such uses disclosed in the specification of the earlier patent. Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d at 1363 (Fed. Cir. 2008), and Geneva Pharmaceuticals, Inc. v. GlaxoSmithKline PLC, 349 F.3d at 1385-86 (Fed. Cir. 2003). Indeed, as both cases recognized,
[i]t would shock one’s sense of justice if an inventor could receive a patent upon a composition of matter, setting out at length in the specification the useful purposes of such composition, … and then prevent the public from making an beneficial use of such product by securing patents upon each of the uses to which it may be adapted.
Sun Pharmaceuticals Industries, Ltd. v. Eli Lilly and Co., 611 F.3d 1381 (Fed, Cir. 2010), citing Pfizer, 518 F.3d at 1363 n.8 (emphases added); and Geneva, 349 F.3d at 1386 (quoting In re Byck, 48 F.2d 665, 666 (CCPA 1931)).
Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970). The court in Vogel recognized ‘that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim,’ but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent which provides support for the patent claim. According to the court, one must first ‘determine how much of the patent disclosure pertains to the invention claimed in the patent’ because only ‘[t]his portion of the specification supports the patent claims and may be considered.’ The court pointed out that ‘this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103, since only the disclosure of the invention claimed in the patent may be examined.’’’ MPEP §804(II)(B)(1).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 57-58, 60-76 and new claims 77-78 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 19/070,188. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘188 claim the same alpha synuclein antibodies with the same CDR sequences, SEQ ID NOs: 1, 2, 34, 3-6, which are the same sequences that are found in both the instant claims and the ‘188 copending application. ‘188 claims the same method of treating multiple system atrophy as in the instant claims. Therefore, ‘188 anticipates the instant claims.
The courts have held that a "claim to a method of using a composition is not patentably distinct from an earlier claim to the identical composition in a patent disclosing the identical use," which extend to any and all such uses disclosed in the specification of the earlier patent. Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d at 1363 (Fed. Cir. 2008), and Geneva Pharmaceuticals, Inc. v. GlaxoSmithKline PLC, 349 F.3d at 1385-86 (Fed. Cir. 2003). Indeed, as both cases recognized,
[i]t would shock one’s sense of justice if an inventor could receive a patent upon a composition of matter, setting out at length in the specification the useful purposes of such composition, … and then prevent the public from making an beneficial use of such product by securing patents upon each of the uses to which it may be adapted.
Sun Pharmaceuticals Industries, Ltd. v. Eli Lilly and Co., 611 F.3d 1381 (Fed, Cir. 2010), citing Pfizer, 518 F.3d at 1363 n.8 (emphases added); and Geneva, 349 F.3d at 1386 (quoting In re Byck, 48 F.2d 665, 666 (CCPA 1931)).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 57-58, 60-76 and new claims 77-79 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 10,358,482. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘482 claim the same alpha synuclein antibodies with the same CDR sequences, SEQ ID NOs: 1-6, which are the same sequences that are found in both the instant claims and the ‘482 copending application. Therefore, ‘482 anticipates the instant claims.
The courts have held that a "claim to a method of using a composition is not patentably distinct from an earlier claim to the identical composition in a patent disclosing the identical use," which extend to any and all such uses disclosed in the specification of the earlier patent. Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d at 1363 (Fed. Cir. 2008), and Geneva Pharmaceuticals, Inc. v. GlaxoSmithKline PLC, 349 F.3d at 1385-86 (Fed. Cir. 2003). Indeed, as both cases recognized,
[i]t would shock one’s sense of justice if an inventor could receive a patent upon a composition of matter, setting out at length in the specification the useful purposes of such composition, … and then prevent the public from making an beneficial use of such product by securing patents upon each of the uses to which it may be adapted.
Sun Pharmaceuticals Industries, Ltd. v. Eli Lilly and Co., 611 F.3d 1381 (Fed, Cir. 2010), citing Pfizer, 518 F.3d at 1363 n.8 (emphases added); and Geneva, 349 F.3d at 1386 (quoting In re Byck, 48 F.2d 665, 666 (CCPA 1931)).
Claims 57-58, 60-76 and new claims 77-79 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 10,358,483. Although the claims at issue are not identical, they are not patentably distinct from each other because Although the claims at issue are not identical, they are not patentably distinct from each other because ‘483 claim the same alpha synuclein antibodies with the same CDR sequences, SEQ ID NOs: 1, 2, 33, 3-6, which are the same sequences that are found in both the instant claims and the ‘483 copending application. Therefore, ‘483 anticipates the instant claims.
The courts have held that a "claim to a method of using a composition is not patentably distinct from an earlier claim to the identical composition in a patent disclosing the identical use," which extend to any and all such uses disclosed in the specification of the earlier patent. Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d at 1363 (Fed. Cir. 2008), and Geneva Pharmaceuticals, Inc. v. GlaxoSmithKline PLC, 349 F.3d at 1385-86 (Fed. Cir. 2003). Indeed, as both cases recognized,
[i]t would shock one’s sense of justice if an inventor could receive a patent upon a composition of matter, setting out at length in the specification the useful purposes of such composition, … and then prevent the public from making an beneficial use of such product by securing patents upon each of the uses to which it may be adapted.
Sun Pharmaceuticals Industries, Ltd. v. Eli Lilly and Co., 611 F.3d 1381 (Fed, Cir. 2010), citing Pfizer, 518 F.3d at 1363 n.8 (emphases added); and Geneva, 349 F.3d at 1386 (quoting In re Byck, 48 F.2d 665, 666 (CCPA 1931)).
Claims 57-58, 60-76 and new claims 77-79 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 10,358,484. Although the claims at issue are not identical, they are not patentably distinct from each other because Although the claims at issue are not identical, they are not patentably distinct from each other because ‘484 claim the same alpha synuclein antibodies with the same CDR sequences, SEQ ID NOs: 1, 2, 35, 3-6, which are the same sequences that are found in both the instant claims and the ‘484 copending application. Therefore, ‘484 anticipates the instant claims.
The courts have held that a "claim to a method of using a composition is not patentably distinct from an earlier claim to the identical composition in a patent disclosing the identical use," which extend to any and all such uses disclosed in the specification of the earlier patent. Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d at 1363 (Fed. Cir. 2008), and Geneva Pharmaceuticals, Inc. v. GlaxoSmithKline PLC, 349 F.3d at 1385-86 (Fed. Cir. 2003). Indeed, as both cases recognized,
[i]t would shock one’s sense of justice if an inventor could receive a patent upon a composition of matter, setting out at length in the specification the useful purposes of such composition, … and then prevent the public from making an beneficial use of such product by securing patents upon each of the uses to which it may be adapted.
Sun Pharmaceuticals Industries, Ltd. v. Eli Lilly and Co., 611 F.3d 1381 (Fed, Cir. 2010), citing Pfizer, 518 F.3d at 1363 n.8 (emphases added); and Geneva, 349 F.3d at 1386 (quoting In re Byck, 48 F.2d 665, 666 (CCPA 1931)).
Claims 57-58, 60-76 and new claims 77-79 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 10,364,285. Although the claims at issue are not identical, they are not patentably distinct from each other because Although the claims at issue are not identical, they are not patentably distinct from each other because ‘285 claim the same alpha synuclein antibodies with the same CDR sequences, SEQ ID NOs: 1, 2, 34, 3-6, which are the same sequences that are found in both the instant claims and the ‘285 copending application. Therefore, ‘285 anticipates the instant claims.
The courts have held that a "claim to a method of using a composition is not patentably distinct from an earlier claim to the identical composition in a patent disclosing the identical use," which extend to any and all such uses disclosed in the specification of the earlier patent. Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d at 1363 (Fed. Cir. 2008), and Geneva Pharmaceuticals, Inc. v. GlaxoSmithKline PLC, 349 F.3d at 1385-86 (Fed. Cir. 2003). Indeed, as both cases recognized,
[i]t would shock one’s sense of justice if an inventor could receive a patent upon a composition of matter, setting out at length in the specification the useful purposes of such composition, … and then prevent the public from making an beneficial use of such product by securing patents upon each of the uses to which it may be adapted.
Sun Pharmaceuticals Industries, Ltd. v. Eli Lilly and Co., 611 F.3d 1381 (Fed, Cir. 2010), citing Pfizer, 518 F.3d at 1363 n.8 (emphases added); and Geneva, 349 F.3d at 1386 (quoting In re Byck, 48 F.2d 665, 666 (CCPA 1931)).
Claims 57-58, 60-76 and new claims 77-79 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 10,364,286. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘286 claim the same alpha synuclein antibodies with the same CDR sequences, SEQ ID NOs: 1-2, 33-35, 3-6, which are the same sequences that are found in both the instant claims and the ‘286 copending application. ‘286 claims the same method of treating Alzheimer’s disease as in the instant claims. Therefore, ‘286 anticipates the instant claims.
Claims 57-58, 60-76 and new claims 77-79 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 10,640,554. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘554 claim the same alpha synuclein antibodies with the same CDR sequences, SEQ ID NOs: 1-2, 35, 3-6, which are the same sequences that are found in both the instant claims and the ‘554 copending application. ‘486 claims the same method of treating Parkinson’s disease as in the instant claims. Therefore, ‘554 anticipates the instant claims.
Claims 57-58, 60-76 and new claims 77-79 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 10,647,763. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘763 claim the same alpha synuclein antibodies with the same CDR sequences, SEQ ID NOs: 1-2, 33, 3-6, which are the same sequences that are found in both the instant claims and the ‘763 copending application. ‘486 claims the same method of treating Parkinson’s disease as in the instant claims. Therefore, ‘763 anticipates the instant claims.
Claims 57-58, 60-76 and new claims 77-79 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 10,647,764. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘764 claim the same alpha synuclein antibodies with the same CDR sequences, SEQ ID NOs: 1-2, 34, 3-6, which are the same sequences that are found in both the instant claims and the ‘764 copending application. ‘486 claims the same method of treating Parkinson’s disease as in the instant claims. Therefore, ‘764 anticipates the instant claims.
Claims 57-58, 60-76 and new claims 77-79 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 10,800,836. Although the claims at issue are not identical, they are not patentably distinct from each other because Although the claims at issue are not identical, they are not patentably distinct from each other because ‘836 claim the same alpha synuclein antibodies with the same CDR sequences, SEQ ID NOs: 20-25, which are the same sequences that are found in both the instant claims and the ‘836 copending application. Therefore, ‘836 anticipates the instant claims.
The courts have held that a "claim to a method of using a composition is not patentably distinct from an earlier claim to the identical composition in a patent disclosing the identical use," which extend to any and all such uses disclosed in the specification of the earlier patent. Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d at 1363 (Fed. Cir. 2008), and Geneva Pharmaceuticals, Inc. v. GlaxoSmithKline PLC, 349 F.3d at 1385-86 (Fed. Cir. 2003). Indeed, as both cases recognized,
[i]t would shock one’s sense of justice if an inventor could receive a patent upon a composition of matter, setting out at length in the specification the useful purposes of such composition, … and then prevent the public from making an beneficial use of such product by securing patents upon each of the uses to which it may be adapted.
Sun Pharmaceuticals Industries, Ltd. v. Eli Lilly and Co., 611 F.3d 1381 (Fed, Cir. 2010), citing Pfizer, 518 F.3d at 1363 n.8 (emphases added); and Geneva, 349 F.3d at 1386 (quoting In re Byck, 48 F.2d 665, 666 (CCPA 1931)).
Claims 57-58, 60-76 and new claims 77-79 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,889,635. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘635 claim the same alpha synuclein antibodies with the same CDR sequences, SEQ ID NOs: 1-2, 33-35, 3-6, and 20-25 which are the same sequences that are found in both the instant claims and the ‘635 copending application. ‘635 claims the same method of treating Parkinson’s disease as in the instant claims. Therefore, ‘635 anticipates the instant claims.
Claims 57-58, 60-67 and new claims 78-79 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,421,024. Although the claims at issue are not identical, they are not patentably distinct from each other because Although the claims at issue are not identical, they are not patentably distinct from each other because ‘024 claim the same alpha synuclein antibodies with the same CDR sequences, SEQ ID NOs: 1-2, 33-34, 3-6, and 20-25 which are the same sequences that are found in both the instant claims and the ‘024 copending application.
Claims 57-58, 60-76 and new claims 77-79 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,524,995. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘995 claim the same alpha synuclein antibodies with the same CDR sequences, SEQ ID NOs: 1-2, 33-35, 3-6, and 20-25 which are the same sequences that are found in both the instant claims and the ‘995 copending application. ‘995 claims the same method of diagnosing synucleinopathy which includes Parkinson’s disease as in the instant claims. Therefore, ‘635 anticipates the instant claims.
The courts have held that a "claim to a method of using a composition is not patentably distinct from an earlier claim to the identical composition in a patent disclosing the identical use," which extend to any and all such uses disclosed in the specification of the earlier patent. Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d at 1363 (Fed. Cir. 2008), and Geneva Pharmaceuticals, Inc. v. GlaxoSmithKline PLC, 349 F.3d at 1385-86 (Fed. Cir. 2003). Indeed, as both cases recognized,
[i]t would shock one’s sense of justice if an inventor could receive a patent upon a composition of matter, setting out at length in the specification the useful purposes of such composition, … and then prevent the public from making an beneficial use of such product by securing patents upon each of the uses to which it may be adapted.
Sun Pharmaceuticals Industries, Ltd. v. Eli Lilly and Co., 611 F.3d 1381 (Fed, Cir. 2010), citing Pfizer, 518 F.3d at 1363 n.8 (emphases added); and Geneva, 349 F.3d at 1386 (quoting In re Byck, 48 F.2d 665, 666 (CCPA 1931)).
Claims 57-58, 60-76 and new claims 77-79 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 11,542,323. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘323 claim the same alpha synuclein antibodies with the same CDR sequences, SEQ ID NOs: 1, 2, 34, 3-6, which are the same sequences that are found in both the instant claims and the ‘188 copending application. ‘323 claims the same method of treating multiple system atrophy as in the instant claims. Therefore, ‘323 anticipates the instant claims.
Claims 57-58, 60-76 and new claims 77-79 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 12,077,578. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘578 claim the same alpha synuclein antibodies with the same CDR sequences, SEQ ID NOs: 1, 2, 34, 3-6, which are the same sequences that are found in both the instant claims and the ‘578 copending application. ‘578 claims the same method of treating multiple system atrophy as in the instant claims. Therefore, ‘578 anticipates the instant claims.
Claims 57-58, 60-76 and new claims 77-79 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-34 of U.S. Patent No. 12,351,624. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘624 claim the same alpha synuclein antibodies with the same CDR sequences, SEQ ID NOs: 1, 2, 34, 3-6, which are the same sequences that are found in both the instant claims and the ‘624 copending application. ‘624 claims the same method of treating multiple system atrophy as in the instant claims. Therefore, ‘624 anticipates the instant claims.
Claims 57-58, 60-76 and new claims 77-79 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-33 of U.S. Patent No. 12,358,974. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘974 claim the same alpha synuclein antibodies with the same CDR sequences, SEQ ID NOs: 1, 2, 34, 3-6, which are the same sequences that are found in both the instant claims and the ‘974 copending application. ‘974 claims the same method of treating multiple system atrophy as in the instant claims. Therefore, ‘974 anticipates the instant claims.
Claims 57-58, 60-76 and new claims 77-79 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-36 of U.S. Patent No. 12,358,975. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘975 claim the same alpha synuclein antibodies with the same CDR sequences, SEQ ID NOs: 1, 2, 34, 3-6, which are the same sequences that are found in both the instant claims and the ‘975 copending application. ‘975 claims the same method of treating multiple system atrophy as in the instant claims. Therefore, ‘975 anticipates the instant claims.
Claims 57-58, 60-73 and new claims 77-79 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,421,303 (previous Application No. 17/109,028). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘303 claim the same alpha synuclein antibodies with the same CDR sequences, SEQ ID NOs: 1-6, 20-25 and 33-35, which are the same sequences that are found in both the instant claims and the ‘303 patent. ‘303 claims the same method of treating Parkinson’s disease as in the instant claims. Therefore, ‘303 anticipates the instant claims.
The courts have held that a "claim to a method of using a composition is not patentably distinct from an earlier claim to the identical composition in a patent disclosing the identical use," which extend to any and all such uses disclosed in the specification of the earlier patent. Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d at 1363 (Fed. Cir. 2008), and Geneva Pharmaceuticals, Inc. v. GlaxoSmithKline PLC, 349 F.3d at 1385-86 (Fed. Cir. 2003). Indeed, as both cases recognized,
[i]t would shock one’s sense of justice if an inventor could receive a patent upon a composition of matter, setting out at length in the specification the useful purposes of such composition, … and then prevent the public from making an beneficial use of such product by securing patents upon each of the uses to which it may be adapted.
Sun Pharmaceuticals Industries, Ltd. v. Eli Lilly and Co., 611 F.3d 1381 (Fed, Cir. 2010), citing Pfizer, 518 F.3d at 1363 n.8 (emphases added); and Geneva, 349 F.3d at 1386 (quoting In re Byck, 48 F.2d 665, 666 (CCPA 1931)).
Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970). The court in Vogel recognized ‘that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim,’ but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent which provides support for the patent claim. According to the court, one must first ‘determine how much of the patent disclosure pertains to the invention claimed in the patent’ because only ‘[t]his portion of the specification supports the patent claims and may be considered.’ The court pointed out that ‘this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103, since only the disclosure of the invention claimed in the patent may be examined.’’’ MPEP §804(II)(B)(1).
Response to Arguments
Applicant's arguments filed 11/17/2025 have been fully considered but they are not persuasive because while applicant traverses the rejections they fail to set forth their reasoning. Applicant further requests that the double patenting rejections of the instant claims over of the US applications and patents be held in abeyance until there is allowable subject matter, at which time they will consider responding with terminal disclaimers is not appropriate. Since applicant has not provided any objections or arguments for the double patenting rejections of record, the above double patenting rejections are maintained.
Conclusion
No claims are allowed.
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.
Advisory Information
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/AURORA M FONTAINHAS/Primary Examiner, Art Unit 1675