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 .
The instant application is a CON of 17/671,571, now U.S. Patent No. 11,884,924 B2.
Claims 21-39 are examined in the instant 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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 21-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,884,924 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because while the both instant claim 21 and claim 1 of ‘924 are drawn to same method of performing nucleic acid-guided nickase/reverse transcriptase fusion editing in a target locus in a genome of a live cell, instant step (d) requires the complementarity between the first cassette and a second strand and complementarity between the second cassette and first strand and this would be obvious in view of dependent claims 6-8 of ‘924 which provide regions of complementarity between the two strands of 4 to 120 nucleotides in length. Since this first and second strands have up to 120 nucleotides in complementarity this encompasses the complementarity between the first cassette and a first strand and complementarity between the second cassette and second strand in step (d) of claim 1 in ‘924.
Regarding instant claims 22-37, they are identical to claims 2-17 of ‘924 respectively.
Regarding instant claim 38 this would be obvious over claims 6-8 of ‘924 since this instant claim 38 encompasses partial complementarity.
Regarding instant claim 39, this would be obvious over claim 1 of ‘924 since the CF cassette encompass either DNA or RNA and uses a CFgRNA.
Closest Prior Art
The closest prior art to the claimed invention is the teachings of Anzalone et al. (WO 2020/191153 A1) who teaches using editing cassettes to edit a target locus in a genome of a live cell. However, the prior art does not teach or suggest using two fusion editing cassettes and a nickase/reverse transcriptase fusion enzyme to edit two strands simultaneously.
Conclusion
No claims are allowed. The claims are free of the prior art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID A MONTANARI whose telephone number is (571)272-3108. The examiner can normally be reached M-Tr 8-6.
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/DAVID A MONTANARI/Examiner, Art Unit 1632
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