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
This Office Action is a response to Applicant’s Election filed November 7, 2025.
Claims 6, 21 and 24 have been canceled. New claim 26 is acknowledged. Claims 1-5, 7-20, 22 and 25 have been amended.
Claims 1-5, 7-20, 22, 23, 25 and 26 are pending in the present application.
Election/Restrictions
Applicant’s election (without traverse) of Group I in the reply filed on November 7, 2025 is acknowledged. Applicant’s further species election of SEQ ID NOs: 706 and 707 as the siRNA pair (sense strand sequence and antisense strand sequence) in the reply filed on November 7, 2025 are also acknowledged.
Claims 17-20, 22, 23 and 25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 November 7, 2025.
The requirement is still deemed proper and is therefore made FINAL.
Accordingly, claims 1-5, 7-16 and 26 have been examined on the merits as detailed below:
Information Disclosure Statement
Applicant’s information disclosure statement (IDS) filed December 24, 2024 is acknowledged. The submission is in compliance with the provisions of 37 CFR §1.97. Accordingly, the Examiner has considered the information disclosure statement, and a signed copy is enclosed herewith.
Applicant’s IDS filed March 4, 2024 is acknowledged. The submission is in compliance with the provisions of 37 CFR §1.97. Accordingly, the Examiner has considered the information disclosure statement, and a signed copy is enclosed herewith.
Applicant’s IDS filed November 15, 2023 is acknowledged. The submission is in compliance with the provisions of 37 CFR §1.97. Accordingly, the Examiner has considered the information disclosure statement, and a signed copy is enclosed herewith.
August 30, 2023 (7 pages); (8 pages); (12 pages); and (26 pages) are acknowledged. The submissions are in compliance with the provisions of 37 CFR §1.97. Accordingly, the Examiner has considered the information disclosure statements, and signed copies are enclosed herewith.
Drawings
The Drawings filed April 14, 2023 are acknowledged and have been accepted by the Examiner.
Claim Rejections - 35 USC § 112
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.
Claims 1-5, 7-16 and 26 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 pre-AIA the applicant regards as the invention.
The claims are indefinite because the terms, “FN3” and “Gys1” are not clearly defined. Since abbreviations often have more than one meaning, it is suggested that inserting the full names of the fibronectin type III domain and glycogen storage 1, respectively would be appropriate.
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 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.
Claim Rejections - 35 USC § 103
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4.Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-5, 7-9 and 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021/226107 A1 (AVIDITY BIOSCIENCES INC.) (hereinafter, "AVIDITY") (submitted on the IDS filed November 15, 2023) in view of U.S. Patent Publication 2021/0108201 A1 (Aro Biotherapeutics Company) (hereinafter, "Aro") (submitted on the IDS filed August 30, 2023).
The claims are drawn to a method of treating a glycogen storage disease in a subject in need thereof, the method comprising administration of: a composition comprising one or more FN3 domains linked to an siRNA comprising a sense strand and an antisense strand, wherein the siRNA targets Gys1; and an enzyme replacement therapy (ERT) used to treat the glycogen storage disease.
Regarding claims 1, 2 and 5, AVIDITY teach a polynucleic acid molecule conjugate comprising: an antibody moiety conjugated to a polynucleic acid molecule that hybridizes to a target sequence of GYS1 mRNA; and wherein the polynucleic acid molecule conjugate mediates RNA interference against the GYS1. AVIDITY teach the RNA interference agent against the GYS1 is a siRNA comprising a sense strand and antisense strand. See Figure 6, the siRNA conjugate targets Gys1 (Figure 6). AVIDITY teach the siRNA of their invention is used in a method of treating a glycogen storage disease in a subject in need thereof, including Pompe disease (paragraphs [0004], [0387]). See also claim 35.
Regarding claims 3 and 7, AVIDITY teach in a separate embodiment, it is further disclosed enzyme replacement therapy (ERT) to treat the glycogen storage disease (the first therapeutic option developed for Pompe disease is the enzyme replacement therapy, the other one is RNAi therapy (paragraphs [0037]-[0038]). AVIDITY teach the ERT uses recombinant lysosomal enzymes to replace the reduced activity of GAA enzyme by internalizing the recombinant lysosomal enzymes into cells. See Figure 1, for example.
Regarding claims 4, 7 and 8, AVIDITY teach the antibody is an anti-transferrin receptor (anti-CD71) antibody.
Regarding claim 9, AVIDITY teach covalent conjugation at the sense strand or the antisense strand of the siRNA.
Regarding claim 11, AVIDITY teach the siRNA is conjugated at a cysteine residue. See claim 31, for example.
AVIDITY teach nucleic acid therapy is hindered by poor intracellular uptake, limited blood stability and non-specific immune stimulation. To address these issues, various modifications of the nucleic acid composition are explored, such as for example, novel linkers for better stabilizing and/or lower toxicity, optimization of binding moiety for increased target specificity and/or target delivery, and nucleic acid polymer modifications for increased stability and/or reduced off-target effect.
Also, AVIDITY teach the antibody-siRNA conjugate has enhanced intracellular uptake and the conjugate delivers the siRNA to the site of interest, such as diseased muscle tissue. For example, see:
“In some embodiments, described herein include polynucleic acid molecules and polynucleic acid molecule conjugates for the treatment of the genetic disorder affecting muscle tissues, especially Pompe disease. In some instances, the polynucleic acid molecule conjugates described herein enhance intracellular uptake, stability, and/or efficacy of the polynucleic acid molecule.”
AVIDITY does not teach a siRNA conjugate comprising FN3 domains.
Aro teaches a method of treating a disease in a subject in need thereof, the method comprising the administration of: a composition comprising one or more FN3 domains conjugated/linked to an siRNA (paragraphs [0022], [0109]-[0110], [0129]). Aro teach the FN3-siRNA conjugate has enhanced intracellular uptake and the conjugate delivers the siRNA to the site of interest, such as diseased muscle tissue. For example, see:
“The target gene is found to be knock downed in the muscles and such knockdown is enhanced by conjugating the siRNA or ASO to the CD71 FN3 binding domain.”
Regarding claim 11, Aro teach the siRNA is conjugated/linked to the FN3 domain at a cysteine residue.
Regarding claims 12 and 13, Aro teach the FN3 domain can also contain cysteine substitutions. Aro further teach FN3 domain comprises at least one cysteine substitution at a position selected from the group consisting of residues 6, 8, 10, 11, 14, 15, 16, 20, 30, 34, 38, 40, 41, 45, 47, 48, 53, 54, 59, 60, 62, 64, 70, 88, 89, 90, 91, and 93 of the FN3 domain:LPAPKNLVVSEVTEDSLRLSWTAPDAAFDSFLIQYQESEKVGEAINLTVPGSERSYDLTGLKPGTEYTVSIYGVKGGHRSNPLSAEFTT. See Aro @SEQ ID NO: 624.
Regarding claims 14-16, Aro teach FN3 domains comprising the amino acid sequences of the present claims and invention. See Aro Table 3, for example.
Cell-specific and functional delivery of siRNA is key in disease treatment. Before the effective filing date of the claimed invention, a method for treating Pompe disease in a subject in need thereof, comprising: providing a GYS1-targeted siRNA conjugate, wherein the siRNA conjugate reduces a quantity of the mRNA transcript of GYS1 was well-known and routinely used in the art as taught and suggested by AVIDITY.
A person of ordinary skill in the art would have been motivated to have the method of AVIDITY further comprise ERT to treat Pompe disease for the purpose of combination therapy of additive or beneficial effects.
FN3 domains (also known as Centyrins) are similar to antibodies and are “antibody-like” in that they bind cellular targets with high selectivity and affinity and deliver siRNAs to targeted cells and tissues. See the evidence of Klein et al. (Molecular Therapy Vol. 29 No 6 June 2021, pages 2053-2066). A person of ordinary skill in the art would have been motivated to substitute the antibody-siRNA conjugate of AVIDITY with the FN3-siRNA conjugate of Aro since they are functional equivalents of each other, and it is obvious to substitute one functional equivalent for another, particularly when they are to be used for the same purpose. See MPEP 2144.06. Applicant is reminded that Aro teach the FN3-siRNA conjugate has enhanced intracellular uptake and the conjugate delivers the siRNA to the site of interest, such as diseased muscle tissue.
Furthermore, KSR forecloses that the simple substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. See Board Decision Ex parte Smith, --USPQ2d--, slip op. at 20, (Bd. Pat. App. & Interf. June 25, 2007) (citing KSR, 82 USPQ2d). Also, see M.P.E.P. §2144.07 which states, "The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).” When substituting equivalents known in the prior art for the same purpose, an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). M.P.E.P. §2144.06.
A person of ordinary skill in the art would have expected reasonable success to devise the methods as claimed since AVIDITY teach a successful method of treating a glycogen storage disease in a subject in need thereof, including Pompe disease comprising administration of ERT and a siRNA conjugate targeted to Gys1. Further, Aro teach a successful method of treating a disease in a subject in need thereof comprising administration of an FN3 Domain-siRNA Conjugate.
Therefore, the subject matter of claims 1-5, 7-9 and 11-16 are obvious over AVIDITY in view of Aro.
Markush Rejection
Claims 10 and 26 are rejected on the judicially-created basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). The improper Markush grouping includes species of the claimed invention that do not share both a substantial structural feature and a common use that flows from the substantial structural feature. The members of the improper Markush grouping do not share a substantial feature and/or a common use that flows from the substantial structural feature for the following reasons: The claims are directed to a multitude of siRNA molecule sequences with no common searchable core. The dozens of nucleotide sequences have no common structure other than being nucleic acid sequences. The specific activity of each siRNA molecule is dependent upon the specific sequence of nucleotides.
Furthermore, the Markush groupings of the SEQ ID NOs listed in claims 10 and 26 are improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: Each of the SEQ ID NOs is different and targets a different region on the GYS1 mRNA. Each sequence has its own structure based on its sequence, so while they share a common use, the alternatives do not share a common structure.
In response to this rejection, Applicant should either amend the claim(s) to recite only individual species or grouping of species that share a substantial structural feature as well as a common use that flows from the substantial structural feature, or present a sufficient showing that the species recited in the alternative of the claims(s) in fact share a substantial structural feature as well as a common use that flows from the substantial structural feature. This is a rejection on the merits and may be appealed to the Board of Patent Appeals and Interferences in accordance with 35 U.S.C. 134 and 37 CFR 41.31(a)(1).
When the Markush grouping is for alternatives of chemical compounds, they shall be regarded as being of a similar nature where the following criteria are fulfilled:
(A) All alternatives have a common property or activity; and
(B) (1) A common structure is present, i.e., a significant structural element is shared by all of the alternatives; or
(B) (2) In cases where the common structure cannot be the unifying criteria, all alternatives belong to a recognized class of chemical compounds in the art to which the invention pertains.
In paragraph (B)(1), above, the words “significant structural element is shared by all of the alternatives” refer to cases where the compounds share a common chemical structure which occupies a large portion of their structures, or in case the compounds have in common only a small portion of their structures, the commonly shared structure constitutes a structurally distinctive portion in view of existing prior art, and the common structure is essential to the common property or activity. The structural element may be a single component or a combination of individual components linked together.
In paragraph (B)(2), above, the words “recognized class of chemical compounds” mean that there is an expectation from the knowledge in the art that members of the class will behave in the same way in the context of the claimed invention. In other words, each member could be substituted one for the other, with the expectation that the same intended result would be achieved.
In order for the members of the Markush group to belong to “recognized class of chemical compounds” there must be an expectation that the members of the class will behave in the same way in the context of the claimed invention. In other words, each member of the class could be substituted one for the other with the expectation that the same intended result would be achieved. In the instant case, activity of any specific siRNA molecule is dependent upon the specific sequence of nucleotides. There is no expectation that any one of the nucleotide sequences as claimed can be substituted for any of the other with a completely different sequence with the expectation of the same activity.
The patent office does not have the resources to search dozens of sequences in one application and perform the corresponding examination.
See 37 CFR 1.141(a),
The examination guidelines determined that “up to ten sequences” are reasonable depending upon the circumstances. Each of the instant sequences are structurally unique, each comprising a distinct sequence of nucleotides, each having no common structural core. To search for more than ten of the sequences in the same application would present an undue search and corresponding examination burden. Furthermore, see Examination of Patents with Nucleotide Sequences - OG Date: 27 March 2007, wherein the document explains the rescission of the 1996 Notice that allowed up to ten independent and distinct sequences for search and examination in an application.
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).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-5, 7-9 and 11-16 are rejected on the grounds of nonstatutory obviousness-type double patenting as being unpatentable over claims 53 and 57 of U.S. Patent No. 12239710 B2. An obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but an examined application claim not is patentably distinct from the reference claim(s) because the examined 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).
Although the conflicting claims are not identical, they are not patentably distinct from each other because it would have been obvious to use the pharmaceutical composition comprising composition comprising a FN3 polypeptide domain linked by a linker to an siRNA molecule comprising a sense strand and an antisense strand, wherein the FN3 polypeptide domain comprises the amino acid sequence of SEQ ID NO: 509, and wherein the siRNA molecule comprises a sense strand 20-23 nucleotides in length comprising an oligonucleotide or a modified oligonucleotide comprising the nucleobase sequence of SEQ ID NO: 1074 and an antisense strand 21-23 nucleotides in length comprising an oligonucleotide or a modified oligonucleotide comprising the nucleobase sequence of SEQ ID NO: 1075 of U.S. Patent No. 12239710 in the method of treating a glycogen storage disease in a subject in need thereof, the method comprising administration of: a composition comprising one or more FN3 domains linked to an siRNA comprising a sense strand and an antisense strand, wherein the siRNA targets Gys1; and an enzyme replacement therapy (ERT) used to treat the glycogen storage disease as presently claimed. NOTE: 12239710 discloses that the FN3 polypeptide domain linked by a linker to an siRNA molecule comprising a sense strand and an antisense strand of their invention is used to treat a glycogen storage disease in a subject in need thereof. Further, NOTE: SEQ ID NOs: 1074 and 1075 represent a GYS1 siRNA pair. See 12239710 Table 1A where SEQ ID NOs: 1074 and 1075 are SEQ ID NOs: 632 and 633, respectively.
The claims of U.S. Patent No. 12239710 overlaps in scope and fully embraces that which is claimed in the present invention.
A terminal disclaimer disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 12239710 is required, or some other appropriate action.
******
Claims 1-5, 7-9 and 11-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 8, 16, 18, 25 and 29-32 of copending Application No. 18863539 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are directed to a method of treating a glycogen storage disease in a subject in need thereof, the method comprising administration of: a composition comprising one or more FN3 domains linked to an siRNA comprising a sense strand and an antisense strand, wherein the siRNA targets Gys1; and an enzyme replacement therapy (ERT) used to treat the glycogen storage disease. The claims of copending Application No. 18863539 are directed to a method of reducing glycogen levels in a subject in need thereof, the method comprising administering a composition comprising one or more FN3 domains conjugated to an siRNA molecule, wherein the siRNA molecule comprises a sense strand and an antisense strand, and wherein the one or more FN3 domains comprises an FN3 domain that binds CD71 and the siRNA molecule targets GYS1.
The claims of the present application and copending Application No. 18863539 in are drawn to overlapping subject matter. The instant claims overlap in scope, embrace and encompass the claims of copending Application No. 18863539.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
******
Claims 1-5, 7-9 and 11-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 35, 37 and 38 of copending Application No. 18052897 (reference application) in view of U.S. Patent Publication 2021/0108201 A1 (Aro Biotherapeutics Company) (hereinafter, "Aro") (submitted on the IDS filed August 30, 2023). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are directed to the invention discussed supra. The claims of copending Application No. 18052897 are directed to a method for treating Pompe disease in a subject in need thereof, comprising: providing a polynucleic acid conjugate comprising: an antibody or antigen-binding fragment thereof conjugated to a polynucleic acid molecule that hybridizes to a target sequence of GYS1 mRNA; wherein the polynucleic acid molecule conjugate mediates RNA interference against the GYS1.
NOTE: Copending Application No. 18052897 teach in some embodiments, the antibody-siRNA conjugate of their invention has enhanced intracellular uptake the conjugate delivers the siRNA to the site of interest, such as diseased muscle tissue. For example, see:
“In some embodiments, described herein include polynucleic acid molecules and polynucleic acid molecule conjugates for the treatment of the genetic disorder affecting muscle tissues, especially Pompe disease. In some instances, the polynucleic acid molecule conjugates described herein enhance intracellular uptake, stability, and/or efficacy of the polynucleic acid molecule.”
FN3 domains (also known as Centyrins) are similar to antibodies and are “antibody-like” in that they bind cellular targets with high selectivity and affinity and deliver siRNAs to targeted cells and tissues. See the evidence of Klein et al. (Molecular Therapy Vol. 29 No 6 June 2021, pages 2053-2066).
Aro teaches a method of treating a disease in a subject in need thereof, the method comprising the administration of: a composition comprising one or more FN3 domains conjugated/linked to an siRNA (paragraphs [0022], [0109]-[0110], [0129]). Aro teach the FN3-siRNA conjugate has enhanced intracellular uptake and the conjugate delivers the siRNA to the site of interest, such as diseased muscle tissue. For example, see:
“The target gene is found to be knock downed in the muscles and such knockdown is enhanced by conjugating the siRNA or ASO to the CD71 FN3 binding domain.”
Cell-specific and functional delivery of siRNA is key in disease treatment. A person of ordinary skill in the art would have been motivated to substitute the siRNA antibody conjugate of copending Application No. 18052897 with the FN3 Domain-siRNA Conjugate of Aro since they are functional equivalents of each other, and it is obvious to substitute one functional equivalent for another, particularly when they are to be used for the same purpose. See MPEP 2144.06. Applicant is reminded that Aro teach the FN3-siRNA conjugate has enhanced intracellular uptake and the conjugate delivers the siRNA to the site of interest, such as diseased muscle tissue.
Furthermore, KSR forecloses that the simple substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. See Board Decision Ex parte Smith, --USPQ2d--, slip op. at 20, (Bd. Pat. App. & Interf. June 25, 2007) (citing KSR, 82 USPQ2d). Also, see M.P.E.P. §2144.07 which states, "The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).” When substituting equivalents known in the prior art for the same purpose, an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). M.P.E.P. §2144.06.
The claims of the present application and copending Application No. 18052897 in view of Aro are drawn to overlapping subject matter. The instant claims overlap in scope, embrace and encompass the claims of copending Application No. 18052897 in view of Aro.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowable at this time.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Terra C. Gibbs whose telephone number is 571-272-0758. The Examiner can normally be reached from 8 am - 5 pm M-F.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's supervisor, Ram Shukla can be reached on 571-272-0735. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TERRA C GIBBS/Primary Examiner, Art Unit 1635