DETAILED ACTION
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 and remarks filed on 01/21/2026 are acknowledged.
Claims 53-67 are pending.
3. Applicant’s election without traverse of the invention of Group I and the Species of antibody VSTB56/INX901 comprising CDRs of SEQ ID NOS: 400-405 in the reply filed on 01/21/2026 is acknowledged.
Claims 56-64 and 66-67, directed to nonelected antibody VSTB103/INX904 comprising VH and VL of SEQ ID NOS: 206 and 208, respectively, are withdrawn from further consideration by the Examiner under 37 C.F.R. § 1.142(b).
Claims 53-55 and 65 are presently under consideration.
4. A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
5. Claim 53 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 11525000.
Specifically, instant claim 53 is identical in scope to claim 1 of US 11525000, regardless of a slight difference in claim language.
This is a statutory double patenting rejection.
6. 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
7. Claims 54-55 and 65 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 11525000.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are anticipated by the claims of US 11525000.
As addressed in section 5 above, instant claim 53 is identical in scope to claim 1 of US 11525000.
Instant claim 54 is anticipated by claims 1 and 12 of US 11525000, which recite the same limitations.
Instant claim 55 is anticipated by claims 1, 13 and 14 of US 11525000, which recite essentially the same limitations.
Instant claim 65 is anticipated by claims 1 and 17 of US 11525000, which recite essentially the same limitations.
8. Claims 53-55 and 65 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending applications listed below.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are anticipated by the claims of each of the copending applications, which recite the same anti-VISTA antibody was recited in instant claims, as identified by the constituent amino acid sequences (see SCORE) and/or by specific antibody designation VSTB56.
USSN PG Pub. No.
17920445 20230310634
18180264 20240141037
18271106 20250108119
18911957 20250263484
18911982 20250263485
19193032 20250346666
18770112 N/A
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
9. The following US Patents and/or copending applications share a coinventor and/or an assignee with the present application, and disclose the subject matter of the present claims, but do not contain patented or currently pending claims which would anticipate or make obvious the presently claimed invention:
US Patents No. 11649283, 11603402, 11603403, and 12139532.
USSN 18317498, published as US 20240018238.
10. Conclusion: no claim is allowed.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ILIA I OUSPENSKI whose telephone number is (571)272-2920. The examiner can normally be reached 9 AM - 5:30 PM.
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, Julie 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ILIA I OUSPENSKI/ Primary Examiner, Art Unit 1644
Prosecution Insights