DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1, 3, 5, 7, 9, 19-22, 24-28, 33-41. Claims 5, 7, 9, 27, 28, 33-41 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention.
Claims 1, 3, 19-22, 24-26, and SEQ ID NO: 4 and SEQ ID NO: 20, where SEQ ID NO: 20 corresponds to SEQ ID NO: 4 with substitution at position 103 are under consideration in this Office Action.
In view of the claim amendment and arguments filed 01/21/2026, the previous rejections of the claims under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, and 35 U.S.C. 103 have been withdrawn.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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1, 3, 19-22, 24-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of Serial No. Application 18822990. Although the conflicting claims are not identical, they are not patentably distinct from each other for the following reasons. The arguments filed 01/21/2026 have been considered but are not persuasive since the copending application teach engineered pantothenate kinases comprising at least one substitution or substitution set in the polypeptide sequences.
The claims and/or specification of the copending application teach the claimed engineered pantothenate kinase comprising a polypeptide sequence having at least 90%, 91%, 92%, 93%, 94%, 95%, 96%, 97%, 98%, 99%, or more sequence identity to SEQ ID NO: 4, SEQ ID NO: 44, SEQ ID NO: 320, and/or SEQ ID NO: 526, or a functional fragment thereof, wherein said engineered pantothenate kinase comprises at least one substitution or substitution set in said polypeptide sequence. Thus, the teachings anticipate the claimed invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3, 19-22, 24-26 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-19 of US Patent No. 10889806, claims 1-15 of US Patent No. 12110513. Although the conflicting claims are not identical, they are not patentably distinct from each other for the following reasons. The arguments filed 01/21/2026 have been considered but are not persuasive since the patents teach engineered pantothenate kinases comprising at least one substitution or substitution set in the polypeptide sequences.
The claims and/or specification of the patent teach the claimed engineered pantothenate kinase comprising a polypeptide sequence having at least 90%, 91%, 92%, 93%, 94%, 95%, 96%, 97%, 98%, 99%, or more sequence identity to SEQ ID NO: 4, SEQ ID NO: 44, SEQ ID NO: 320, and/or SEQ ID NO: 526, or a functional fragment thereof, wherein said engineered pantothenate kinase comprises at least one substitution or substitution set in said polypeptide sequence. Thus, the teachings anticipate the claimed invention.
Conclusion
No claim is 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Christian L Fronda whose telephone number is (571)272 0929. The examiner can normally be reached Monday-Thursday and alternate Fridays between 9:00AM-5:00PM.
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/CHRISTIAN L FRONDA/Primary Examiner, Art Unit 1652
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