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 .
Applicant's response to the previous Office action, dated July 16, 2026, has been received. By way of this submission, Applicant has amended claims 33, 42, and 46, cancelled claims 34, 43-45, and 47.
Claims 33, 35-42, and 46 are pending in the application. Claims 35-36, 42, and 46 remain withdrawn from consideration, pursuant to the Restriction Requirement mailed January 9, 2026.
Claims 33 and 37-41 are therefore under examination before the Office.
The rejections of record can be found in the previous Office action, dated April 22, 2026.
Response to Arguments
Applicant argues that the cited references to Bandman and Porgador do not teach every aspect of the claims as amended; specifically, Bandman and Porgador do not teach that the chimeric peptide does not comprise the complete human Rab12 protein sequence.
Applicant's arguments in view of the amendments to the claims have addressed this issue, and the rejection under 35 U.S.C. 102 to Bandman and the rejection under 35 U.S.C. 103 to Bandman in view of Porgador are hereby withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 33 and 37-41 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a new grounds of rejection, necessitated by Applicant’s amendments to the claims. This is a new matter rejection.
Applicant's amendment, filed July 16, 2026, contains new matter in claim 33 because the specification as-filed does not provide sufficient written description for the recitation of a chimeric peptide that "does not comprise the complete human Rab12 protein sequence".
Applicant's specification recites a polypeptide comprising five or more amino acids of an amino acid sequence having at least 70% identity to the amino acid sequence as set forth in SEQ ID NO: 1; and five or more amino acids of an amino acid sequence having at least 70% identity to amino acid sequence SEQ ID NO: 1; wherein amino acid SEQ ID NO: 1 and SEQ ID NO: 2 refer to Interface II and Interface I, respectively, and are derived from human Rab12 protein. There is nothing in the specification that explicitly disclaims the use of any longer peptide. Example 12 of the specification does not describe that the polypeptide in question may not be the complete human Rab12 protein.
As such, the claims now recite a limitation which was not clearly disclosed in the specification as-filed and now change the scope of the instant disclosure as-filed. Such a limitation recited in the present claims, which did not appear in the specification, as-filed, introduces a new concept and violates the description requirement of the first paragraph of 35 U.S.C. 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.
Claim 37 is 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. This is a new grounds of rejection, necessitated by Applicant’s amendments to the claims.
Claim 37 recites that the Interface 2-derived sequence may be ERFNDITSAYYRSAK (SEQ ID NO: 5). This is broader than the sequence that is claimed in parent claim 33, wherein the Interface 2-derived sequence has at least 95% identity to ERFNSITSAYYR (SEQ ID NO: 1). A sequence with at least 95% identity to SEQ ID NO: 1 cannot be derived from SEQ ID NO: 5.
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.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/PETER JOHANSEN/Examiner, Art Unit 1644
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