DETAILED ACTION
Notice of Pre-AIA or AIA 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 .
Claim Status
2. This Office Action is in response to the amendment filed 28 February 2026, wherein claims 1, 5, 9, 15, and 17 were amended and claims 3, 12, and 16 were canceled. Claims 1-2, 4-5, 9, 11, 15, and 17 are under consideration.
Objections Withdrawn
Specification
3. The objection to the abstract for containing legal language is withdrawn in view of Applicant’s amendments.
4. The objection to the specification for missing SEQ ID NOs is withdrawn in view of Applicant’s amendments.
Claim Objections
5. The objections to claims 9 and 15-17 for being improper multiple dependent claims are withdrawn in view of Applicant’s amendments. Claims 9 and 15-17 are further examined on the merits herein.
The objections to claims 3 and 12 for their inconsistent wording are withdrawn in view of the claims being canceled.
Rejections Withdrawn
Claim Rejections - 35 USC § 112
6. The rejections of claims 1-5 and 11-12 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite are withdrawn in view of Applicant’s amendments.
7. The rejection of claims 1-2, 4, and 11 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, for failing to comply with the written description requirement is withdrawn in view of Applicant’s amendments.
Claim Rejections - 35 USC § 102
8. The rejections of claims 1-4 and 11-12 under 35 U.S.C. 102 as being anticipated are withdrawn in view of Applicant’s amendments.
Claim Rejections - 35 USC § 103
9. The rejection of claim 5 under 35 U.S.C. 103 as being obvious is withdrawn in view of Applicant’s amendments.
Claim Interpretation
10. Claim 4 is interpreted as a product-by-process claim, where “An attenuated influenza virus strain prepared by the attenuation method according to claim 1” is a product-by-process limitation. Claim 4 requires an attenuated influenza virus strain, but does not require the method of claim 1. MPEP § 2113 makes clear that “Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps” and that “determination of patentability is based on the product itself.” Therefore, the broadest reasonable interpretation of the product in claim 4 is an attenuated influenza virus strain with one of the deletions of claim 1.
New Objections
Claim Objections
11. Claims 9, 15, and 17 are objected to under 37 CFR 1.75 as being a substantial duplicate of claims 1-2 and 5, respectively. Claim 4 is a product-by-process claim and thus requires the structure of claim 1. Claim 1 does not have additional method steps that would not be embodied by claim 9, and therefore claim 9 would read on any method that results in the product of claim 4. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
New Rejections
Claim Rejections - 35 USC § 112
12. 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.
13. Claims 5 and 17 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.
Claims 5 and 17 recite an attenuated virus with of claim 4, wherein the coding region comprises a nucleotide selected from SEQ ID NO: 1-6. However, this does not further limit claim 1 as the deletions (a)-(f) would result in the SEQ ID NOs, as claimed.
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 so long that no duplicates are made, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Formal Matters
14. Due to the elected group not currently being allowable, no rejoinder may be considered at this time.
Art-free Subject Matter
15. An attenuation method of an influenza virus with the deletions of claim 1 (a)-(f) is free of the prior art.
Conclusion
16. Claims 1-2, 4, and 11 are in an allowable state. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTINA E LY whose telephone number is (571)272-5169. The examiner can normally be reached Monday - Thursday, 8:00 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Allen can be reached at (571) 270-3497. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISTINA E. LY/Examiner, Art Unit 1671 /Michael Allen/Supervisory Patent Examiner, Art Unit 1671