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
The amendment filed August 18, 2026, is acknowledged and have been entered. Claims 1 and 23 have been amended. Claims 31-32 have been cancelled.
Claims 1, 4 and 16-30 are pending. Claims 16-17, 19-22, 24-25 and 27-30 are withdrawn from further consideration by the examiner, under 37 CFR 1.142(b), as being drawn to a non-elected invention or non-elected species of election.
Claims 1, 4, 18, 23 and 26 are under examination.
Grounds of Rejection Withdrawn
Unless specifically reiterated below, Applicant's amendment has obviated or rendered moot the grounds of rejection set forth in the previous Office action.
Grounds of Rejection Maintained
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 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.
Claims 1, 4, 18, 23 and 26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent 12,269,881.
Although the claims at issue are not identical, they are not patentably distinct from each other. The claims recite a protein that binds TCR (recruits T cells) that comprises SEQ ID NO:159 and SEQ ID NO:160 that are 100% identical to the instant SEQ ID Nos: 42 and 43 and pharmaceutical compositions thereof further comprising a carrier (see claim 1(a)(2) and (b)(2) and alignments).
US-18-538-242-159
Filing date in PALM: 2023-12-13
Sequence 159, US/18538242
Patent No. 12269881
GENERAL INFORMATION
APPLICANT: Immatics Biotechnologies GmbH (en)
TITLE OF INVENTION: ANTIGEN BINDING PROTEINS SPECIFICALLY BINDING MAGE-A (en)
FILE REFERENCE: 3000058-015004; P193US04
CURRENT APPLICATION NUMBER: US/18/538,242
CURRENT FILING DATE: 2023-12-13
NUMBER OF SEQ ID NOS: 182
SEQ ID NO 159
LENGTH: 106
TYPE: PRT
FEATURE:
NAME/KEY: REGION
LOCATION: 1..106
QUALIFIERS: note = BMA(36) VL
FEATURE:
NAME/KEY: source
LOCATION: 1..106
QUALIFIERS: mol_type = protein
organism = synthetic construct
Query Match 100.0%; Score 559; Length 106;
Best Local Similarity 100.0%;
Matches 106; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 QIQMTQSPSSLSASVGDRVTITCSATSSVSYMHWYQQKPGKAPKRWIYDTSKLASGVPSR 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 QIQMTQSPSSLSASVGDRVTITCSATSSVSYMHWYQQKPGKAPKRWIYDTSKLASGVPSR 60
Qy 61 FSGSGSGTDYTLTISSLQPEDAATYYCQQWSSNPLTFGGGTKVEIK 106
||||||||||||||||||||||||||||||||||||||||||||||
Db 61 FSGSGSGTDYTLTISSLQPEDAATYYCQQWSSNPLTFGGGTKVEIK 106
US-18-538-242-160
Filing date in PALM: 2023-12-13
Sequence 160, US/18538242
Patent No. 12269881
GENERAL INFORMATION
APPLICANT: Immatics Biotechnologies GmbH (en)
TITLE OF INVENTION: ANTIGEN BINDING PROTEINS SPECIFICALLY BINDING MAGE-A (en)
FILE REFERENCE: 3000058-015004; P193US04
CURRENT APPLICATION NUMBER: US/18/538,242
CURRENT FILING DATE: 2023-12-13
NUMBER OF SEQ ID NOS: 182
SEQ ID NO 160
LENGTH: 120
TYPE: PRT
FEATURE:
NAME/KEY: REGION
LOCATION: 1..120
QUALIFIERS: note = BMA(36)- VH
FEATURE:
NAME/KEY: source
LOCATION: 1..120
QUALIFIERS: mol_type = protein
organism = synthetic construct
Query Match 100.0%; Score 638; Length 120;
Best Local Similarity 100.0%;
Matches 120; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 EVQLVQSGAEVKKPGASVKVSCKASGYKFTSYVMHWVRQAPGQGLEWMGYINPYNDVTKY 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 EVQLVQSGAEVKKPGASVKVSCKASGYKFTSYVMHWVRQAPGQGLEWMGYINPYNDVTKY 60
Qy 61 AEKFQGRVTLTSDTSTSTAYMELSSLRSEDTAVHYCARGSYYDYEGFVYWGQGTLVTVSS120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 AEKFQGRVTLTSDTSTSTAYMELSSLRSEDTAVHYCARGSYYDYEGFVYWGQGTLVTVSS120
Therefore, all of the instant claims are anticipated by the patented claims.
In the response filed August 18, 2026, Applicant has not specifically traversed this rejection which is still applicable to the instant claims. Accordingly, the rejection will be maintained until appropriately resolved.
Conclusion
No claims are allowed.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brad Duffy whose telephone number is (571) 272-9935. The examiner works a flexible schedule.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Julie Wu can be reached on (571) 272-5205. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Respectfully,
Brad Duffy
571-272-9935
/Brad Duffy/
Primary Examiner, Art Unit 1643
September 3, 2026
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