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 .
Response to Election/Restriction filed on August 17, 2026, is acknowledged.
Claims 1-20 are pending in this application.
Restriction
Applicant's election with traverse of Group 2 (claims 9-10) and the election of species of SEQ ID NO: 1 (GDAVREWFEKAWQRVREFF) in the reply filed on August 17, 2026 is acknowledged. The traversal is on the ground(s) that a search into prior art with regard to the invention of the different Groups is so related that separate significant search efforts should not be necessary. Accordingly, there is no serious burden on the Examiner to collectively examine the different claim Groups of the subject application. This is not found persuasive because instant application is a 371 of a PCT application. Therefore, there is no burden involved. Thus, Applicant’s argument is moot. Additionally, the lack of unity of invention was established in the previous office action.
The requirement is still deemed proper and is therefore made FINAL. Claims 1-8 and 11-20 are withdrawn from consideration, pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim(s). SEQ ID NO: 1 appears to be free of prior art. Claims 9-10 are examined on the merits in this office action.
Please note: The elected invention claims 9-10 do not recite instant SEQ ID NO: 1. Therefore, any peptide sequence encompassed by a peptide defined in claim 1 meets the limitation of claims 9-10.
Objections
The drawings are objected to because some of the figures/drawings have dark shadings, making the figures/drawings hard to see (see for example, Figures 1, 5). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
6. The specification is objected to for the following: The specification indicates "incorporation by reference" of certain documents (please see for example, paragraphs [0048] and [0255]). The MPEP states the following: "An application as filed must be complete in itself in order to comply with 35 U.S.C. 112. Material nevertheless may be incorporated by reference. An application for a patent when filed may incorporate “essential material” by reference to (1) a U.S. patent, >or< (2) a U.S. patent application publication, **>which patent or patent application publication does not itself incorporate such essential material by reference…”Essential material” is defined in >37CFR1.57(c)< as that which is necessary to (1) **>provide a written description of the claimed 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 set forth the best mode contemplated by the inventor of carrying out the invention as required by the first paragraph of 35 U.S.C. 112, (2) describe the claimed invention in terms that particularly point out and distinctly claim the invention as required by the second paragraph of 35 U.S.C. 112…” (see MPEP 608.01(p)).
Please note, the specification has not been checked to the extent necessary to determine the presence of all possible error. Applicant's cooperation is required in correcting any errors of which applicant may become aware in the specification. MPEP § 608.01.
Rejections
U.S.C. 112(b)
7. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
8. Claims 9-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
9. Claims 9-10 depend from claim 1. Claim 1 recites:
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. The metes and bounds of the claim are unclear. The active method steps of making the peptide product are not clearly defined/recited in the claim. Claim 1 appears to be reciting a method of “designing a peptide”. Is the method of making a peptide product recited in claim 1 does not involve any standard method of making a peptide (i.e., synthesis or recombinant)? It is unclear how the method recited in claim 1 is different from making peptides via synthetic method or recombinant method. Because the process of making a peptide product of instant claim 1 is indefinite, instant claims 9-10, drawn to a peptide product made by the process of claim 1 are also unclear.
U.S.C. 102
10. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
11. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
12. Claim(s) 9-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dasseux et al (US 2004/0181034).
13. Dasseux et al teach a peptide sequence DWFKAFYDKVAEKFKEAF (see SEQ ID NO: 243), meeting the limitation of instant claims 9-10. The peptide of Dasseux et al meets the following:
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. In regards to the recitation of claim 10, “wherein the peptide induces positive Gaussian curvature in a mammalian cell contacted with the peptide product…”, the MPEP § 2112 states: “Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the Examiner presents evidence or reasoning tending to show inherency, the burden shifts to the Applicant to show an unobvious difference ‘[t]he PTO can require an Applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)).” Because Dasseux et al teach the active peptide product, x et al anticipates instant claims 9-10.
14. Claim(s) 9-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dasseux et al (US Patent No. 7189689).
15. Dasseux et al teach a peptide sequence DWFKAFYDKVAEKFKEAF (see SEQ ID NO: 243), meeting the limitation of instant claims 9-10. The peptide of Dasseux et al meets the following:
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. In regards to the recitation of claim 10, “wherein the peptide induces positive Gaussian curvature in a mammalian cell contacted with the peptide product…”, the MPEP § 2112 states: “Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the Examiner presents evidence or reasoning tending to show inherency, the burden shifts to the Applicant to show an unobvious difference ‘[t]he PTO can require an Applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)).” Because Dasseux et al teach the active peptide product, x et al anticipates instant claims 9-10.
16. Claim(s) 9-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dasseux et al (US Patent No. 6900177).
17. Dasseux et al teach a peptide sequence DWFKAFYDKVAEKFKEAF (see SEQ ID NO: 243), meeting the limitation of instant claims 9-10. The peptide of Dasseux et al meets the following:
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. In regards to the recitation of claim 10, “wherein the peptide induces positive Gaussian curvature in a mammalian cell contacted with the peptide product…”, the MPEP § 2112 states: “Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the Examiner presents evidence or reasoning tending to show inherency, the burden shifts to the Applicant to show an unobvious difference ‘[t]he PTO can require an Applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)).” Because Dasseux et al teach the active peptide product, x et al anticipates instant claims 9-10.
CLOSEST ART FOR SEQ ID NO: 1
The closest art to instant SEQ ID NO: 1 is Calvert et al (US Patent No. 7618797). Calvert et al teach a 132 residue protein sequence that has 49.1% sequence identity to instant SEQ ID NO: 1 (see SEQ ID NO: 107, residues 44-56:
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).
CONCLUSION
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIE HA whose telephone number is (571)272-5982. The examiner can normally be reached Monday-Thursday 5:00 am- 6:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, LIANKO GARYU can be reached at 571-270-7367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JULIE HA/Primary Examiner, Art Unit 1654
8/26/2026
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