DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election without traverse of Group VII, claims 19-25 in the reply filed on 7/14/26 is acknowledged.
Claims 1-18 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/14/26.
Priority
Application claims priority to 62/422,689 provisional application with an effective filing date of 11/16/16. Claims of the instant application are supported by the provisional application and thus have a priority date of 11/16/16.
Claim Objections
Claims 19 and 24 are objected to because of the following informalities: The claims recite the abbreviations MTS and FLP respectively without first defining them in long form. Appropriate correction is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 19-25 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 19-25 of prior U.S. Patent No. US11650201B2. Claims 19-25 are identical between instant application and claims 19-25 of US11650201B2.
This is a statutory double patenting rejection.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art is Lim (US20180208636A1). Lim claims priority to 2/24/15 and therefore is valid prior art.
Lim teaches chimeric binding activated transcription factors (abstract). Lim teaches the chimeric protein can comprise transmembrane domains ([0176]). Lim teaches that the chimeric transcription factor can comprise mitochondrial regulators but does not teach or suggest a MTS ([0296]). Lim teaches the chimeric protein comprise a fluorescent marker ([0476]). Lim fails to teach or suggest the specific layout of the protein required by the claim wherein the first nucleic acid encodes a recombinase linked to the site specific sequence for the transcription factor and a second nucleic acid comprising a stop codon flanked by site specific recombination sequences.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TREVOR L KANE whose telephone number is (571)272-0265. The examiner can normally be reached M-F 7:00 am-4:00pm.
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/TREVOR KANE/ Examiner, Art Unit 1657
/ROBERT J YAMASAKI/ Primary Examiner, Art Unit 1657
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