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
Election/Restrictions
Applicant's election with traverse of Group I and SEQ ID NO: 3 in the reply filed on 5/18/2026 is acknowledged. The traversal is on the ground(s) that Tang does not teach a NorA peptide inhibitor, because the polypeptide of Tang is not a peptide as defined in the present application. This is not found persuasive because the specification at para [0040] defines a peptide as “[a] polymer of amino acids with a length which is usually of up to 50 amino acids”. The word “usually” implies that a peptide is “not always” up to 50 amino acids. Therefore, Tang anticipates the instantly claimed NorA peptide inhibitor.
The requirement is still deemed proper and is therefore made FINAL.
Claims 8-9, 11, 14-16, 23, 26, 30, 32-33, 38, 40, 48-49, 65 and 69 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/18/2026.
Status of the Claims
Claims 1-3, 7-9, 11, 14-16, 23, 26, 30, 32-33, 38-40, 48-49, 65 and 69 are pending in this application.
Claims 8-9, 11, 14-16, 23, 26, 30, 32-33, 38, 40, 48-49, 65 and 69 are withdrawn from consideration as being drawn to a non-elected invention.
Claims 1-3, 7 and 39 are presently under consideration as being drawn to the elected species/invention.
Claim Rejections - 35 USC § 102
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.
Claims 1, 7 and 39 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tang et al. (WO 01/88088).
With respect to claims 1 and 7, Tang et al. teach an isolated polypeptide comprising an amino acid sequence selected from the group consisting of SEQ ID NO: 8052-16102.
SEQ ID NO: 9303 comprises instantly claimed SEQ ID NOs: 1 and 27 at residues 70-82.
It is noted that the MPEP 2112.01 states that “'Products of identical chemical composition cannot have mutually exclusive properties.’ A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the instant case, Tang et al. teach a polypeptide comprising SEQ ID NO: 1 as instantly claimed. Thus, tang et al is anticipatory.
Furthermore, since the Office does not have the facilities for examining and comparing applicants’ peptide with the peptide of the prior art, the burden is on the applicant to show a novel or unobvious difference between the claimed product and the product of the prior art (i.e., that the peptide of the prior art does not possess the same material structural and functional characteristics of the claimed peptide). See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald et al., 205 USPQ 594.
With respect to claim 39, Tang et al. teach a pharmaceutical composition comprising the polypeptide (claim 27).
Allowable Subject Matter
Claims 2-3 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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/SERGIO COFFA Ph.D./
Primary Examiner
Art Unit 1658
/SERGIO COFFA/Primary Examiner, Art Unit 1658
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