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 .
DETAILED ACTION
1. Claims 1, 4-8, 15-19, 21-26, 28-30 are under consideration. Claims 2-3, 9-14, 20, 27, 31 are canceled.
Specification
2. (previous objection, withdrawn) The disclosure was objected to because of informalities.
Applicant contends: a sequence listing is provided.
In view of applicant’s amendments, the objection is withdrawn.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
3. (previous rejection, maintained) Claims 1, 4-8, 15-19, 21-26, 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Ly et al. (US20170292119)(cited in applicant's IDS submitted 8/4/2025) in view of Tang et al. (US20180133306; previously cited)
See claims 1, 4-8, 15-19, 21-26, 28-30 as submitted 12/12/2025.
Applicant contends: Tang et al. lists hundreds of specific avian immunogens as well as an additional list of over 30 different pathogenic sources of avian antigens; the Action provides no explanation why a skilled person would choose sigma B and sigma C over the myriad avian immunogen possibilities, especially wherein Tang et al. is focused only on influenza antigens; the broad disclosure would not have directed one of ordinary skill to select sigma B and sigma C, and the motivation has not been provided.
Applicant’s arguments are considered but found unpersuasive.
See the rejection as recited in the previous Office Action.
Response to Arguments
First, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
It is noted the instant claims recite “comprising” and are thus interpreted in an open ended fashion that does not exclude other components (See MPEP 2111).
Further, it is noted that Tang et al. teaches use of “any” avian antigen or immunogen derived from an avian pathogen [0132]. Thus the selection of sigma B and sigma C as indicated is considered as obvious as a selection of any other antigen or immunogen, or combination thereof, as recited (See also MPEP 2143: Examples of Basic Requirements of a Prima Facie Case of Obviousness: I. EXEMPLARY RATIONALES: Examples of rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; … (E) "Obvious to try" choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success).
Further, as to the teachings of Tang et al. and alleged focus on influenza antigens, it is noted that Tang et al. already teaches reovirus antigens such as sigma B and sigma C proteins [0132]. Absent evidence to the contrary by applicant, such antigens are considered to elicit immune response (See MPEP 2121: I. PRIOR ART IS PRESUMED TO BE OPERABLE/ENABLING: When the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable. Once such a reference is found, the burden is on applicant to rebut the presumption of operability. In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980). See also MPEP 716.07. See also In re Antor Media Corp., 689 F.3d 1282, 103 USPQ2d 1555 (Fed. Cir. 2012); … See MPEP 716.01(c): The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965).
The rejection is maintained for reasons of record.
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.
4. (previous rejection, maintained) Claims 1, 4-8, 15-19, 21-26, 28-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 9-60 of U.S. Patent No. 10533159 in view of Tang et al. (cited above).
See claims 1, 4-8, 15-19, 21-26, 28-30 as submitted 12/12/2025.
Applicant contends: upon indication of allowable subject matter and in the event this rejection is maintained, a response will be provided.
See the rejection as recited in the previous Office Action.
The rejection is maintained for reasons of record.
5. (previous rejection, maintained) Claims 1, 4-8, 15-19, 21-26, 28-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5, 6, 8-44 of U.S. Patent No. 11993789 in view of Tang et al. (cited above).
See claims 1, 4-8, 15-19, 21-26, 28-30 as submitted 12/12/2025.
Applicant contends: upon indication of allowable subject matter and in the event this rejection is maintained, a response will be provided.
See the rejection as recited in the previous Office Action.
The rejection is maintained for reasons of record.
Conclusion
6. No claims are allowed.
7. 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 M FRANCO G SALVOZA whose telephone number is (571)272-4468. The examiner can normally be reached M-F 8:00 to 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Visone can be reached at 571-270-0684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M FRANCO G SALVOZA/Primary Examiner, Art Unit 1672