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 .
Election/Restrictions
Applicant's election with traverse of Group II and species in the reply filed on August 3, 2026 is acknowledged. The traversal is on the ground(s) that all of the claims would not impose a serious burden on the examiner because international searching authority searched all of the claims together. This is not found persuasive because additional searches have to be performed for sequences and additional databases for each protein which is structurally and functional different.
The requirement is still deemed proper and is therefore made FINAL.
Amendment filed August 3, 2026 is entered.
Claims 1-4, 6-10 are pending. Claim 5 is canceled. Claims 7-10 are withdrawn. Claims 1-4, 6 are withdrawn in part to species. Claims 1-4, 6 are examined.
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.
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 1-4, 6 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.
Claims 1-4, 6 encompass the terms “composed” in claim 1 part (2) (elected group II) which is confusing and ambiguous because the metes and bounds of the term is not clear. It is not clear whether the term encompasses comprising, consisting essentially of, consisting or variant which comprises fragments of the amino acid sequence
Claims 1-4, 6 encompass the terms “mutation” in claim 1 part (2) (elected group II) which is confusing and ambiguous because it is not clear whether the mutation is referring to SEQ ID NO:2 or in the 80% identity of 2A. It is not clear whether 80% identity encompass a single mutation or all 80% are mutations, variants, deletions, or additions.
Claim 1 recite “amino acid sequence 2A of SEQ ID NO:2” which is confusing and ambiguous because it is not clear whether the amino acid sequence 2A comprises the SEQ ID NO:2 sequence or the amino acid sequence 2A is somehow related to SEQ ID NO:2. Furthermore, the 80% identity to the amino acid sequence 2A is not clear whether the 80% identity is referring to SEQ ID NO: or some addition, variation or subtraction sequence of 2A sequence. Claims 2-4, 6 encompass the terms of claim 1.
Claim 1 recite mutation 2a which is confusing and ambiguous because it is not clear whether the mutation 2a is related to the previously recited “mutation” in 2A and 2B. Claims 2-4, 6 encompass the terms of claim 1.
Claim 1 recite “2C contains mutation 2a” which is confusing and ambiguous because it is not clear whether the 2a is “contained” in 2A or 2B or both or neither. Claims 2-4, 6 encompass the terms of claim 1.
Claim 1 recite amino acid positions “L60, M138, and A152” in the amino acid sequence 2A which is confusing and ambiguous because it is not clear whether the positions are related to SEQ ID NO:2 or another sequence positions thus is a relative term of a relative position. Claims 2-4, 6 encompass the terms of claim 1.
Claim 1 recite the term “2ay corresponds” which is confusing and ambiguous because it is not clear whether 2ay is a variant, deletion, additions or mutations of 2ax in 2B. Claims 2-4, 6 encompass the terms of claim 1.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-4, 6 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Zwiebel (US 2005/0153368).
Zwiebel disclose the odorant receptor of Anopheles Gambiae comprising SEQ ID NO:93 which is identical to claimed SEQ ID NO:2 (paragraph 10). Zwiebel disclose substitutions of the proteins to create variants (paragraph 20). Claims encompass variants because terms recited above in 35 USC 112b rejection, renders the product limitation uncertain. The claims encompass variants because the 2C “is composed” of variants. The claims encompass variants because the L60, M138 and A152 can be located any location in the variant protein. The claims encompass variants because mutations can be located anywhere and “80% identity” can be any part of variant 2A. Claims encompass variants because “corresponds” to does not provide specific structure of 2B, 2A or 2C.
Claim(s) 1-4, 6 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Sumitomo Chemicals (JP 2014-054218).
Sumitomo discloses SEQ ID NO: 3,4 7 amino acid sequences of olfactory receptor (claims 13). SEQ ID NO:3 is to an amino acid sequence including substitutions at L60, M138, A152 and 80% similarity with amino acid sequence claimed SEQ ID NO:2. SEQ ID NO:4 is an amino acid sequence with substitutions at L60 and 80% similarity with amino acid sequence claimed SEQ ID NO:2. SEQ ID NO: 7 has an amino acid sequence with substitutions at M138 and A152 and 80% similarity with amino acid sequence claimed SEQ ID NO:2.
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 1-4, 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/007,274 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1-14 of ‘274 reference application anticipates the pending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL D PAK whose telephone number is (571)272-0879. The examiner can normally be reached on flexible time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Vanessa Ford can be reached on 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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/MICHAEL D PAK/Primary Examiner, Art Unit 1674
Prosecution Insights