DETAILED ACTION
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 allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). 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, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 04 May 2026 has been entered.
Claim Status
Claims 1, 5, 11-12, 15-17 and 19 are currently pending.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 04 May 2026 have been considered by the examiner.
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.
Claims 11-12 are 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 1 is limited to a fusion protein comprising an amino acid sequence selected from the group consisting of SEQ ID NO:2, 7 and 8. With regard to claim 11, the fusion proteins recited in claim 1 have very specific EC50 values as determined by measuring cAMP response of cells (see Table 4 – portion of which is provided below).
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As can be seen in the Table, the EC50 of the 3 fusion proteins ranges from 2.93 pmol/L to 217.09 pmol/L. Claim 11 provides ranges of EC50 which encompass up to about 400 pmol/L, therefore, claim 11 does not limit the subject matter of the claim from which it depends as it is broader than claim 1.
With regard to claim 12, the fusion proteins recited in claim 1 have very specific EC50 measured via ICW pFGFR in CHO cells (see Table 2 – portion of which is provided below).
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As can be seen in the Table, the EC50 of the 3 fusion proteins ranges from 25.39 nmol/L to 30.57 nmol/L. Claim 12 provides ranges of EC50 from about 350 nmol/L or lower to about 50 nmol/L or lower. The actual EC50 values of the 3 fusion proteins do not even cover the lowest range of 50 nmol/L or lower.
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Claim 12 also includes ranges for the EC50 for phosphorylation of MAPK ERK1/2. The actual EC50 for the fusion proteins of claim 1 range from 5.96 to 6.94 nmol/L which does not support the claimed EC50 ranges of claim 12 which recited 100 nmol/L or lower down to about 10 nmol/L. Therefore, claim 12 does not limit the subject matter of the claim from which it depends as it is broader than claim 1.
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.
Allowable Subject Matter
Claims 1, 5, 15-17 and 19 are allowed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Christine J Saoud whose telephone number is (571)272-0891. The examiner can normally be reached M-F, 8am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Julie Z Wu can be reached at 571-272-5205. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Christine J Saoud/Primary Examiner, Art Unit 1645
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