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 .
Election/Restrictions
Applicant’s election of Group VI (claims 31 and new claims 33-37) in the reply filed on 1/30/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1, 8-12, 15-16, 19-22, 24, 26, and 29-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Applicant is reminded to amend the withdrawn claims as needed to facilitate rejoinder.
Claim Rejections - 35 USC § 112
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 36-37 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. The mutations are more than allowed by claim 31 and thus the claims include sequences not part of claim 31. 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.
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.
Claim(s) 31 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Ojala et al. (WO2016154344).
Ojala et al.teach SEQ ID# 16 that has the same base sequence and has the changes as listed in the claim “[0005] Aspects of the present disclosure include an rAAV virion containing: a) a variant AAV capsid protein, wherein the variant AAV capsid protein includes an amino acid sequence having at least 95% amino acid sequence identity to the sequence set forth in SEQ ID NO: 16, wherein the amino acids at positions 264, 448, 459, 470, 495, 533, 547, 555, 557, 561, 563, 593, 596, 661, 662, 664, 718 and 723 are A, A, N, S, S, D, E, A, E, L, N, A, A, A, T, T, N and S, respectively; Q, S, N, A, S, E, Q, T, D, M, S, Q, T, A, V, S, S and S, respectively; or A, A, T, S, T, D, Q, A, D, I, N, A, T, T, V, S, S and T, respectively” (para 5, SEQ ID# 16).
Thus, Ojala et al. anticipate the claim.
Claim(s) 31 and 33 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Kim et al. (11364308).
Kim et al. teach SEQ ID # 59 that is 98% identical to SEQ ID# 53 and has the positions are required by claim 31. See comparison sheet. The prior art sequence has changes at positions 266, 664, and 717 that are not limited by claim 31. Positions 448, 459, 551, 596, 593, 718, and 719 have residues that are in the scope of claim 31 limitations.
Thus, Kim et al. anticipate the claimed invention.
Allowable Subject Matter
Claims 34-35 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MYRON G HILL whose telephone number is (571)272-0901. The examiner can normally be reached Mon-Fri.
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MYRON G. HILL
Examiner
Art Unit 1671
/M.G.H/Examiner, Art Unit 1671
/Shanon A. Foley/Primary Examiner, Art Unit 1671
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