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 .
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Status of Claims
US Patent 9,884,088 issued on 2/6/18 with claims 1-10. This reissue application was filed on 7/20/23 with original claims 1-10. No amendments to the claims have been made.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in the European Patent Office on 5/6/13 (EPO 13305592.1). Applicant filed a copy of this application in underlying application 14/787,483 on 10/28/15. See MPEP 1417(I) (no additional certified copy of foreign application necessary in reissue when a copy was provided in the underlying application).
Certificate of Correction
The ’088 patent contains a certificate of correction dated 4/23/19 that has not been submitted in this reissue application. See 37 CFR 1.173(a)(1), MPEP 1410.
Information Disclosure Statement
The information disclosure statement filed 7/20/23 fails to comply fully with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because it does not provide identifying bibliographic information for items 3, 4, 6-12, and 14. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Assignee’s Consent to Reissue
The 7/20/23 consent to reissue signed on behalf of Centre National de la Recherche Scientifique by Yann Bengaber on 3/9/23 is defective because it was neither signed by a person with apparent authority as defined in MPEP 325(V) nor signed by a person authorized to act on behalf of the assignee at the time of signing. MPEP 325(V) recognizes that persons with “apparent authority” to sign on behalf of an organization include officers of that organization, e.g., its chief executive officer, president, vice-president, secretary, or treasurer. Consenter Bengaber is none of these, being designated only as “Legal Representative.” There is also nothing in the record to indicate that consenter Bengaber was authorized to act on behalf of the assignee at the time of consent. Consenter Bengaber was identified in the 9/22/23 power-of-attorney document as being authorized to act on behalf of the applicant as of 8/26/23, which was after the consent was signed.
This matter would be overcome by submission of a replacement consent of the assignee signed by either a person authorized to act on behalf of the assignee; an officer of the assignee; or a patent practitioner already appointed power of attorney at the time of signing.
Claim Rejections—35 U.S.C. 251
Claims 1-10 are rejected under 35 U.S.C. 251 as being broadened in a reissue application filed outside the two-year statutory period. The amendment to the application replacing SEQ ID NO:1 with a different sequence has changed the scope of the claims such that they are broadened relative to the patent claims. The ’088 patent issued on 2/6/18, which is more than two years before this reissue application was filed on 7/20/23.
Issued claim 1 refers to SEQ ID NO: 1 and sequences having at least 90% identity to it. In this reissue, applicant has supplied a sequence listing changing the sequence associated with that designator, as evidenced by an alignment of the two sequences:
Query Match 40.3%; Score 313.5; DB 1; Length 79;
Best Local Similarity 71.3%;
Matches 72; Conservative 2; Mismatches 4; Indels 23; Gaps 10;
Reissue 40 RGHAGHHQIKQGTCEVVAVHRCCNKNRIEERSQTVKCSCFPGQVAGTTRAQPSCVEASIV 99
||||||| :||| ||||||||||| | |||||| ||||||| ||| ||:
’088 pat 2 RGHAGHH---KGTC-VVAVHRCCNKN----RRSTVKCSC---GVAGTTRA--SCV-ASV- 46
Reissue 100 IQKWWCHMNPCLEGEDCKVLPDYSGWSCSSGNKVKTTKVTR 140
||||||| | |||| ||||||||||||||||||||
’088 pat 47 --KWWCHMN-C---GDCKV--DYSGWSCSSGNKVKTTKVTR 79
A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects. In this case, the version of SEQ ID NO: 1 supplied with the reissue application would not have infringed the underlying ’088 patent because the two are not at least 90% identical to each other, as the claims require. As such, because more than two years elapsed between the grant of the patent and the filing of this reissue application, the amendment to the sequence listing (and, by extension, to the claims) constitutes improper broadening.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to include all the limitations of the claim upon which it depends.
Claim 1 is a method of treating pain by administering a TAFA4 protein that “comprises SEQ ID NO: 1 or comprises a sequence having at least 90% identity to SEQ ID NO: 1.” Claim 10 depends from claim 1 and requires that the sequence has “at least 90% identity to SEQ ID NO: 1.” Claim 10 fails to further limit claim 1 because the range “at least 90% identity” includes 100% identity. It therefore includes SEQ ID NO: 1 itself within its scope. It is not narrower than claim 1.
Applicant may cancel claim 10, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Maintenance Fees
Applicant is reminded of the requirement to pay all applicable maintenance fees on the original patent. See MPEP 1415.01.
Duty to Disclose
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 9,884,088 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LORA E BARNHART DRISCOLL, whose telephone number is (571)272-1928. The examiner can normally be reached M-F 7:00-4:00 p.m. ET.
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, Patricia Engle, can be reached at 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Lora E Barnhart Driscoll/Patent Reexamination Specialist, Art Unit 3991
Conferees:
/Kevin S Orwig/Patent Reexamination Specialist, Art Unit 3991
/Patricia L Engle/SPRS, Art Unit 3991