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
This Non-Final Office Action is responsive to the communication received 02/09/2026.
Election/Restrictions
Applicant’s election without traverse in the Reply filed on 02/09/2026 of Group I, claims 2-3 and 6 is acknowledged.
Applicant has elected in the Reply filed on 02/09/2026 the following species:
A. the PI3Kα inhibitor is LY294002 (claim 6)
Because applicant did not distinctly and specifically point out the supposed errors in the species election requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
The Restriction/Election Requirements are thus deemed proper and are made FINAL.
Claims 4-5 are pending.
Claims 4-5 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the Reply filed on 02/09/2026.
Claims 2-3 and 6 are under examination in this Office Action.
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.
Claims 2-3 and 6 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-8 of U.S. Patent Number 11572402.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the present claim 2 is drawn to a method for promoting diversification of amino acid sequences of variable regions of an antibody generated by an avian B cell population, wherein the method comprises: contacting a population of avian B cells with a PI3Kα inhibitor to diversify amino acid sequences of variable regions of an antibody generated by said avian B cell population; and sequencing amino acid sequences of variable regions of the antibodies generated by said avian B cell population after said contact with said PI3Kα inhibitor to confirm diversification of amino acid sequences of variable regions of said antibodies generated by said avian B cell population after contact with said PI3Kα inhibitor and claim 1 in U.S. Patent Number 11572402 is drawn to a method for promoting diversification of amino acid sequences of variable regions of an antibody generated by an avian B cell population, wherein the method comprises contacting a population of avian B cells with a PI3Kα-specific inhibitor to diversify amino acid sequences of variable regions of an antibody generated by said avian B cell population.
Therefore, the present claims are obvious in view of the claims of U.S. Patent Number 11572402.
Closest Prior Art
The following is the closest prior art:
Leighton et al. (2015) Frontiers in Immunology volume 6 article 126 pages 1 to 8 cited in the 1/3/2023 IDS (hereinafter referred to as "Leighton") represents the closest prior art. Leighton teaches a method of generating an immune response in a chicken B cell line with a diverse repertoire of human immunoglobulin variable genes (see entire document especially Abstract, Figure 1, Figure 4 and pages 2 to 3). Leighton does not explicitly teach a method for promoting diversification of amino acid sequences of variable regions of an antibody generated by an avian B cell population, wherein the method comprises: contacting a population of avian B cells with a PI3Kα inhibitor to diversify amino acid sequences of variable regions of an antibody generated by said avian B cell population; and sequencing amino acid sequences of variable regions of the antibodies generated by said avian B cell population after said contact with said PI3Kα inhibitor to confirm diversification of amino acid sequences of variable regions of said antibodies generated by said avian B cell population after contact with said PI3Kα inhibitor.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Christian Boesen whose telephone number is 571-270-1321. The Examiner can normally be reached on Monday-Friday 9:00 AM to 5:00 PM.
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/CHRISTIAN C BOESEN/Primary Examiner, Art Unit 1684