DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Application, Amendments, and/or Claims
2. The Response filed on 14 July 2026 has been entered in full. Claims 29, 31 and 33 have been amended, and claims 34-39 have been added. Newly submitted claims 34-39 will be examined as they fit under the rubric of the elected invention. Therefore, claims 21-39 are pending and the subject of this Office Action.
Withdrawn Objections and/or Rejections
3. The objection to the Drawings as set forth at pp. 2-4 of the previous Office action (mailed 16 January 2026) is withdrawn in view of Applicant’s amendment to the Specification and Drawings (filed 14 July 2026).
4. The objection to the Specification as set forth at pg. 4 of the previous Office action (mailed 16 January 2026) is hereby withdrawn.
5. The rejection of claims 29, 31 and 33 under 35 U.S.C. 112(b) as set forth at pg. 5 of the previous Office action (mailed 16 January 2026) is withdrawn in view of Applicant’s amendment of said claims (filed 14 July 2026).
6. The rejection of claims 29, 31 and 33 under 35 U.S.C. 112(a) as set forth at pp. 5-8 of the previous Office action (mailed 16 January 2026) is withdrawn in view of Applicant’s amendment of said claims (filed 14 July 2026).
7. The rejection of claims 29, 31 and 33 on the ground of nonstatutory double patenting as set forth at pp. 8-10 of the previous Office action (mailed 16 January 2026) is withdrawn in view of Applicants persuasive arguments (filed 14 July 2026).
Maintained and/or New Objections and/or Rejections
Double Patenting
8. 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 double patenting rejection is appropriate where the claims at issue 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).
9. 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 reference 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. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
10. 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.
11. Claims 21-28, 30 and 32 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,001,636. The basis for this rejection is set forth at pp. 8-10 of the previous Office action (mailed 16 January 2026). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘636 patent are drawn to antibody conjugates which comprise the same species of CD123 antibodies recited in the instant claims. Therefore, the claims are overlapping in scope since the antibody of the patented antibody conjugate anticipates the instantly claimed antibody.
12. Claims 21-28, 30 and 32 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,433,140. The basis for this rejection is set forth at pp. 8-10 of the previous Office action (mailed 16 January 2026). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘140 patent are drawn to antibody conjugates which comprise the same species of CD123 antibodies recited in the instant claims Therefore, the claims are overlapping in scope since the antibody of the patented antibody conjugate anticipates the instantly claimed antibody.
Response to Arguments
13. Applicant's arguments filed 14 July 2026 have been fully considered but they are not persuasive for the following reasons.
14. Applicant cites relevant case law pertaining to the analysis of obviousness double patenting at pp. 10-11 of the response. Applicant asserts at pg. 11 and pg. 12 of the response that the Examiner totally ignores the differences between the ‘636 and ‘140 Patent claims (reference claims) and the instant claims and only contends the claim sets are “similar”.
15. Applicant’s arguments have been fully considered but are not found persuasive for the following reasons. Applicant's citation of relevant case law at pp. 10-11 of the response is noted. The Examiner takes no issue with the case law. As Applicant set forth at pg. 11 of the response that “if an earlier claim renders obvious or anticipates a later claim, the later claim is not patentably distinct and is thus invalid for obviousness-type double patenting (UCR Inc v. Accord healthcare, Inc., 890 F.3d 1313, 1323 (Fed. Cir. 2018)”, such is the case with the instant claims. As set forth in the previous Office action, since the claims of the ‘636 Patent and ‘140 Patent are drawn to antibody conjugates which recite the same species of CD123 antibodies recited in the instant claims, the antibody of the patented antibody conjugate of the ‘636 Patent and ‘140 Patent anticipate the instantly claimed antibody.
Summary
16. No claim is allowed.
Claims 29, 31 and 33-39 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.
Conclusion
17. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
Advisory Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JON M LOCKARD whose telephone number is (571) 272-2717. The examiner can normally be reached M-F 9-6 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joanne Hama can be reached on (571) 272-2911. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.L/Examiner, Art Unit 1647 September 25, 2026
/Christine J Saoud/Primary Examiner, Art Unit 1645
