DETAILED CORRESPONDENCE
Application Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Applicant’s amendment to the claims filed on 04/13/2026 in response to the Non-Final Rejection mailed on 01/15/2026 is acknowledged. This listing of claims replaces all prior listings of claims in the application.
3. Claims 16-17 are cancelled.
4. Claims 10-15 and 18-20 are pending.
5. Claims 19-20 stand withdrawn pursuant to 37 CFR 1.142(b).
6. Applicant’s remarks and supplemental remarks filed on 04/13/2026 and 04/20/2026, respectively, in response to the Non-Final Rejection mailed on 01/15/2026 have been fully considered and are deemed persuasive to overcome at least one of the rejections and/or objections as previously applied.
The text of those sections of Title 35 U.S. Code not included in the instant action can be found in the prior Office Action.
Nucleotide and/or Amino Acid Sequence Disclosures
7. The objection to the disclosure under 37 CFR 1.832 is withdrawn in view of the filing of the substitute sequence listing and the amendment to the specification filed on 04/14/2026 and 04/20/2026.
Specification
8. The objection to the disclosure for embedded hyperlinks is withdrawn in view of applicants’ amendment to the specification to remove said hyperlinks.
Claim Rejections - 35 USC § 112(b)
9. The rejection of claim 18 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for lack of antecedent basis is withdrawn in view of applicants’ amendment to the claim 10 to recite “a composition”.
Double Patenting
10. The provisional non-statutory double patenting rejection of claims 16-17 over claims 1-4 and 6-13 of copending Application No. 18/017,884 is withdrawn in view of the cancellation of claims 16-17.
11. The provisional non-statutory double patenting rejection of claims 10-15 and 18-20 over claims 1-4 and 6-13 of copending Application No. 18/017,884 is maintained for the reasons of record set forth in the Non-Final rejection mailed on 01/15/2026 and for the reasons set forth below. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-4 and 6-13 recite a method for treating an inflammatory disease in a subject in need thereof, comprising administering to the subject a Zkscan8 protein, a Zkscan8 gene, a vector comprising the Zkscan8 gene, a cell comprising the vector, or a culture of the cell as an active ingredient. The dependent claims further claim wherein the inflammatory disease is tendinitis (musculoskeletal disease), the cell is a mesenchymal stem cell, and an umbilical cord-derived mesenchymal stem cell.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
RESPONSE TO REMARKS: Beginning on p. 8 of applicants’ remarks, applicants in summary contend that the copending application addresses anti-inflammatory diseases whereas the present claims are directed to regenerative treatment of a tendon/ligament injury and rupture.
This argument is found to be not persuasive because it is noted that the features upon which applicant relies (i.e., regenerative treatment) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Furthermore, the terms tendon injury and ligament injury are significantly broad so as to encompass an inflammatory condition or response to said injury. As such, an inflammatory condition such as tendonitis can reasonably be interpreted as a tendon injury. Given these interpretations, the rejection is maintained.
Conclusion
16. Status of the claims:
Claims 10-15 and 18-20 are pending.
Claims 19-20 stand withdrawn pursuant to 37 CFR 1.142(b).
Claims 10-15 and 18 are rejected.
No claims are in condition for an allowance.
THIS ACTION IS MADE FINAL. 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 PAUL J HOLLAND whose telephone number is (571)270-3537. The examiner can normally be reached Monday to Friday from 8AM to 5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Manjunath Rao can be reached at 571-272-0939. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL J HOLLAND/Primary Examiner, Art Unit 1656
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