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
1. Claims 1-6, 11-16 are amended. Claims 18, 21, 24 are withdrawn. Claims 7-10, 19, 20, 22, 23, 25, 26 are canceled. Claims 1-6, 11-17 are under consideration.
Claim Objections
2. (previous objection, withdrawn) Claim 11 was objected to because of informalities.
Applicant contends: the claim has been amended.
In view of applicant’s amendments, the objection is withdrawn.
3. (new objection). Claim 2 is objected to because of the following informalities: Claim 2 lacks punctuation.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
4. (previous rejection, withdrawn) Claims 1-5, 16, 17 were rejected under 35 U.S.C. 102(a)(2) as being anticipated by Woodson et al. (WO2017156511A1; previously cited).
Applicant contends: Woodson et al. fails to anticipate the amended claims; Woodson et al. contains no disclosure of ZIKV genome as claimed.
In view of applicant’s amendments, the rejection is withdrawn.
Claim Rejections - 35 USC § 103
5. (previous rejection, withdrawn) Claims 1, 16, 17 were rejected under 35 U.S.C. 103 as being unpatentable over Zeng et al. (WO0014245; previously cited).
Applicant contends: Zeng et al. fails to meet the standard of obviousness.
In view of applicant’s amendments and upon further consideration, the rejection is withdrawn.
6. (previous rejection, withdrawn) Claim 6 was rejected under 35 U.S.C. 103 as being unpatentable over Woodson et al. as applied to claims 1-5, 16, 17 above, and further in view of Jones et al. (U.S. Patent No. 10835596; previously cited).
Applicant contends: Jones et al. discloses only a non-replicating adenovirus vectored subunit vaccine.
In view of the withdrawal of the rejection over Woodson et al. on which the instant rejection depends, the instant rejection is also withdrawn.
7. (previous rejection, withdrawn) Claim 6 was rejected under 35 U.S.C. 103 as being unpatentable over Zeng et al. as applied to claims 1, 16, 17 above, and further in view of Jones et al. (U.S. Patent No. 10835596)(cited above).
Applicant contends: Jones et al. discloses only a non-replicating adenovirus vectored subunit vaccine.
In view of the withdrawal of the rejection over Zeng et al. on which the instant rejection depends, the instant rejection is also withdrawn.
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.
8. (previous rejection, maintained) Claims 1-6, 11, 12, 14, 16, 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11730801.
Applicant contends: deferral is requested until allowable subject matter is obtained.
See the rejection as recited in the previous Office Action.
The rejection is maintained for reasons of record.
Conclusion
9. Claims 13, 15 are objected to for depending on rejected claims.
10. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to M FRANCO G SALVOZA whose telephone number is (571)272-4468. The examiner can normally be reached M-F 8:00 to 5:00.
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, Thomas Visone can be reached at 571-270-0684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M FRANCO G SALVOZA/Primary Examiner, Art Unit 1672
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