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 .
Application Status
This action is written in response to applicant’s correspondence received Aug 10, 2023. Claims 1-20 are currently pending and examined herein.
Priority
The instant application claims priority based on a US Provisional Application No. 63/150,563 filed on February 17, 2021. The provisional application describes instant claims 1-2 (claims 1-2), instant claim 5 (claim 7), instant claim 7 ([0036]), instant claim 8 ([0015]), instant claim 9 (claim 3), instant claim 10 (claim 9), instant claim 12 (claim 12), instant claim 15 (claims 19-21), instant claims 16-17 (claims 24-28), and recitation of “CspRecT” in instant claim 20 ([0015]). Accordingly, the effective filling dates of claims 1-2. 5, 7-10, 12, 15-17, and recitation of “CspRecT” in claim 20 is February 17, 2021.
However, support for the recitation “motif I/LGXXXSQ (SEQ ID NO:2)” (claim 3), “derived from a non-mutagenic reverse-transcriptase” (claim 4), “adenine mutagenesis activity” (claim 6), “at least two spacer RNAs” (claim 13), “kit” (claims 18-19), and “phage lambda’s Red Beta protein, RecT, PapRecT” (claim 20) could not be found in US Provisional Application No. 63/150,563. Therefore, claims 3, 4, 6, 13, 18, 19, and “phage lambda’s Red Beta protein, RecT, PapRecT species” in claim 20 are not afforded the effective filling date of February 17, 2021.
The instant application also claims priority based on Foreign Application PCT/EP2022/053934. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Accordingly, the effective filling date of claims 3, 4, 6, 13, 18, 19, and “phage lambda’s Red Beta protein, RecT, PapRecT species” in claim 20 is February 17, 2022.
Drawings
The drawings are objected to for the following reasons:
37 CFR 1.84 (u)(1) states “Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter.” In the current case, the view numbers for the partial views for Figures 3, 6-8 that appear on several sheets are followed by "Cont." instead of a capital letter such as FIG. 1A, FIG. 1B, etc.
37 CFR 1.84 (u)(1) states “View numbers must be preceded by the abbreviation "FIG."”. In the current case, the view numbers for Figures 1 to 8 are preceded by the word "Figure" instead of the abbreviation "FIG.".
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 2, 5, and 19 are objected to because of the following informalities:
The following acronyms are recited in claims without definitions in the instant or prior claims: “DGR” (claim 2), “BPP-1” (claim 5), and “SSAP” (claim 19). It is noted that claim 8 includes recitation of “single-stranded annealing protein mediating oligo recombineering” but the first recitation of acronym “SSAP” is not included in this claim.
Claim 2 recites acronym “RT” to refer to two different terms, recombinant error-prone reverse transcriptase and recombinant DGR reverse transcriptase major subunit. This formality can be resolved by modifying the “RT” acronym with respect to the recombinant DGR reverse transcriptase major subunit to “DGR RT” because “DGR RT” appears in additional dependent claims 5, 9, 18.
Appropriate correction is required.
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 3, 5, 7, 10, 11, and 15 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 recites the limitation "the motif" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "the Bordetella bacteriophage" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the DGR retrohoming" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "the mutagenized target sequence" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 1 recites “a recombinant spacer RNA comprising a target sequence” and “a mutagenized cDNA polynucleotide”. It is unclear whether “the mutagenized target sequence” recited in the instant claim is related to spacer RNA or mutagenized cDNA.
Claim 11 recites the limitation "the adenine content" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites the limitation "the two exonucleases” in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 for establishing a background for determining obviousness under 35 U.S.C. 103 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.
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.
Claims 1, 3, 6-8, 10-14, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Miller et al (US 2010/0041033 A1; Published Date: Feb 18, 2010) in view of Lu et al (US 2017/0204399 A1; Published Date: Jul 20, 2017).
Regarding claim 1, Miller teaches a method of site-specific mutagenesis (i.e., generating targeted nucleic acid diversity) comprising the following components matching to instant claim:
expressing in a recombinant cell (e.g., bacterial cells comprising the nucleic acids of the invention [0184])
a recombinant error prone reverse transcriptase (RT) (e.g., a reverse transcriptase that substitutes “one or more adenine nucleotide for a non-adenine nucleotide…of interest or visa versa” ([0053]), and “is essential for the generation of diversity…mutagenesis occurs exclusively at sites occupied by adenine” ([0016]))
a recombinant spacer RNA comprising a target sequence (e.g, a variable region (VR) comprising a sequence of interest, and is operably linked to a template region (TR) ([0159))
making a mutagenized cDNA polynucleotide homologous to a DNA sequence (e.g., the TR directs RT to diversify adenines within the TR and results in making a mutagenized cDNA polynucleotide, and the TR shares homologous repeats with VR ([0159]). Further, “cDNA integration at the 5’ end of VR required only short stretches of sequence homology” ([0185]), which demonstrates that the mutagenized cDNA is homologous to VR.)
recombining the mutagenized cDNA with the homologous DNA sequence in the recombinant cell (e.g., “DGR homing occurs via a “copy and replace” pathway that substitutes parental VR sequences with diversified cDNA copies of TR transcripts.” ([0111]))
However, Miller does not teach expressing a recombinant recombineering system.
Lu teaches a method that enables “in vivo DNA writing” ([0076]) using retron cassettes (e.g., Ec86) that encode three components: a RT and two RNA moieties, msr and msd, which act as the primer and template for the RT, respectively ([0150]). Lu further teaches that RT produced single-stranded DNA (ssDNA) molecules having sequence homology to specific genomic target locio, and that these ssDNAs are integrated into the genome in cert with a ssDNA-annealing recombinase protein, in particular, bacteriophage lambda red beta protein (Beta) (0077]). Liu also discloses that recombination frequency using Beta protein is above 5% ([0187]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to have modified the recombination step in the method of Miller to include a ssDNA-annealing recombinase protein as taught by Lu because it would have merely amounted to a simple substitution of prior art elements according to known methods to yield predictable results. The substituted component (Beta protein) and its function (facilitating recombination of RT-derived cDNA intro a target DNA sequence) were known in the art. One would have been motivated to have done so for the advantage of increasing recombination frequency as taught by Lu. One would have had a reasonable expectation of success in doing so because Miller teaches a method of generating nucleic acid diversity that is similar to Lu’s method (e.g., using TR and VR in Miller versus msr and msd in Lu), both of which rely on RT-generated cDNA that are subsequently integrated into target DNA sequences.
Regarding claim 3, Miller teaches wherein the recombinant error-prone RT is “identified by searching for one or both amino acid sequences IGXXXSQ or LGXXXSQ.” ([0061])
Regarding claim 6, Miller teaches wherein the recombinant error-prone RT has adenine mutagenesis activity ([0016]).
Regarding claims 7 and 8, the obviousness for modifying Miller’s method with a ssDNA-annealing recombinase protein (i.e., recombinant single-stranded annealing protein mediating oligo recombineering) is discussed above as applied to claim 1.
Regarding claim 10, Miller teaches wherein the mutagenized target sequence is from 40 to 200 base pairs long or more ([0016]).
Regarding claim 11, Miller teaches the following regarding modifying adenine content and/or positions in the target sequence to control sequence diversity ([0160]).
The presence of adenine residues may be due to natural occurrence in the TR or the result of deliberate insertion or substitution into the TR as described herein. In the case of naturally occurring adenine nucleotides in the TR, mutagenesis may be allowed to occur or may be avoided by a substitution of the adenine nucleotide to a non-adenine nucleotide without changing the encoded amino acid (silent substitution). In the case of deliberate insertion or substitution, the invention provides for the introduction of 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20 or more adenine nucleotides into a TR.
Regarding claim 12, the obviousness for modifying Miller’s method with a ssDNA-annealing recombinase protein to achieve a recombination frequence of at least 1% is discussed above as applied to claim 1.
Regarding claim 13, Miller teaches “the instant invention also provides for a diversified collection of more than one VR sequences, per se or in the context of a vector, wherein at least two of the VR sequences differ from each other in sequence” ([0183]), which positively teaches the recombinant cell in Miller’s metho comprises at least two spacer RNAs as recited in the instant claim.
Regarding claim 14, Miller teaches wherein the recombinant cell is a bacterial cell ([0184]).
Regarding claim 16, the obviousness for modifying Miller’s method with a ssDNA-annealing recombinase protein is discussed above as applied to claim 1. Both Miller and Lu teach expression vectors or plasmids comprising the recited components ([0182], [0090], and [0077] respectively).
Regarding claim 17, the obviousness for modifying Miller’s method with a ssDNA-annealing recombinase protein is discussed above as applied to claim 1. Both Miller and Lu teach a recombinant cell comprising components of the method ([0049] and claim 8, respectively).
Regarding claims 18 and 19, the obviousness for modifying Miller’s method with a ssDNA-annealing recombinase protein is discussed above as applied to claim 1. Miller teaches expression vectors or plasmids comprising the recited components ([0182], [0090]).
However, Miller does not teach a kit.
Lu teaches providing the recited components in a kit to perform the claimed method ([0188]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to have provided the components of the method of claim 1 in a kit because it would have merely amounted to a simple combination of prior art elements according to known methods to yield predictable results. Each component in the combination performs the same function as they do separately because the kit merely represents the combination of components without modifying their structures. One would have been motivated to have done so for the advantage of allowing users to practice the method in a more convenient way. One would have had a reasonable expectation of success in doing so because a kit merely represents a predictable variation and Lu teaches facilitating components of the method in a kit.
Regarding claim 20, the obviousness for modifying Miller’s method with a ssDNA-annealing recombinase protein, specifically bacteriophage lambda Red Beta protein is discussed above as applied to claim 1.
Claims 2, 5, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Miller et al (US 2010/0041033 A1; Published Date: Feb 18, 2010) in view of Lu et al (US 2017/0204399 A1; Published Date: Jul 20, 2017) as applied to claim 1 above, and further in view of Handa et al (Determinants of adenine-mutagenesis in diversity-generating retroelements; NAR, 2021, 49(2):1033-1045; Published online: Dec 24, 2020).
Regarding claim 2, the obviousness for modifying Miller’s method with a ssDNA-annealing recombinase protein is discussed above as applied to claim 1. Miller teaches the recombinant error-prone RT comprises a recombinant DGR RT (e.g., Bordetella brt) (FIG. 16A; [0089]). Miller further teaches wherein the recombinant spacer RNA comprises a recombinant DGR spacer RNA comprising a target sequence (claim 1).
However, Miller does not teach inclusion of a recombinant DGR accessory subunit (Avd).
Handa teaches that “a complex formed by the Bordetella bacteriophage DGR RT, bRT, and the associated pentameric Accessory Variability Determinant (Avd) protein, along with a specific DGR RNA, are necessary and sufficient for adenine-mutagenesis.” (Fig. 1; pg. 1033, right-column, third paragraph). Handa further teaches “bRT=Avd and the DGR RNA combine to form a structured ribonucleotprotein…and the bRT-Avd complex is also capable of synthesizing cDNAs from non-DGR RNA templates”, in which the synthesized cDNAs are adenine-mutagenized (pg. 1034, left-column, second paragraph).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to have modified Miller’s method to further comprise DGR Avd it because it would have merely amounted to a simple combination of prior art elements according to known methods to yield predictable results. Each component in the combination performs the same function as they do separately. Miller teaches DGR bRT, TR and VR are responsible for generating cDNA diversity while Handa teaches that DGR bRT and Avd form a functional ribonucleoprotein complex that enables adenine-mutagenesis on RNA template. Thus, the combination merely represents incorporation of a known accessory protein with a known RT to achieve its established function of performing mutagenic cDNA synthesis. One would have had a reasonable expectation of success in doing so because Miller teaches a method of obtaining cDNAs where adenines are substituted by DGR bRT and Handa teaches that the same RT, when complexed with Avd intrinsically performs adenine substitutions on cDNA.
Regarding claim 5, the obviousness for modifying Miller’s method, comprising a recombinant DGR RT, a recombinant GDR spacer RNA from Bordetella bacteriophage BPP-1, to further comprise a recombinant DGR Avd from Bordetella is discussed above as applied to claim 2.
Regarding claim 9, the obviousness for modifying Miller’s method with recombinant DGR RT, recombinant DGR Avd, and recombinant DGR spacer RNA is discussed above as applied to claim 2. Further, Miller ([0090]) and Lu ([0077], claim 4) teach wherein the components of the method are expressed from recombinant plasmids. Handa also teach wherein the bRT-Avd complex is expressed in E. coli (pg. 1034, right-column, second paragraph).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Miller et al (US 2010/0041033 A1; Published Date: Feb 18, 2010), Lu et al (US 2017/0204399 A1; Published Date: Jul 20, 2017) in view of Handa et al (Determinants of adenine-mutagenesis in diversity-generating retroelements; NAR, 2021, 49(2):1033-1045; Published online: Dec 24, 2020) as applied to claim 2 above, and further in view of Simon et al (Retrons and their applications in genome engineering; NAR, 2019, 47(21):11007-11019).
Regarding claim 4, the obviousness for modifying Miller’s method to include a ssDNA-annealing recombinase protein of Lu is discussed above as applied to claim 1. Miller further teaches wherein the recombinant error-prone RT is derived from naturally occurring mutagenic RTs (e.g., Bordetella) (FIG. 16A; [0089]), and Lu teaches wherein the retron cassette comprises of non-mutagenic RT (e.g., Ec86) ([0150]).
However, neither Miller or Lu teaches the recombinant error-prone RT is derived from a non-mutagenic RT.
Handa teaches that mutation of Bordetella DGR bRT (e.g., bRT I181N) “enables correct TPP incorporation across a template adenine at TR117 shows a large increase in Km as compared to wild-type bRT-Avd” (pg. 1041, left-column, second paragraph). Handa further identifies a signature motif [I/V/L]GxxxSQ in DGR RTs that differs from the prototypical QGxxxSP motif. (pg. 1041, left-column, third paragraph). Handa’s findings are supported by Simon’s teachings, that DGR bRT and non-mutagenic retron RTs (e.g., RT-Eco1/Ec86) share structural similarities, including conservations of regions RT4 and catalytic XXDD core (Fig. 2). Both Handa and Simon positively teach that the [I/V/L]GxxxSQ motif of mutagenic DGR RTs and the QGxxxSP motif of non-mutagenic retron RTs occupy corresponding positions illustrated in annotated figure below. Both Handa and Simon positively teach that such substitution or modification of residues in these motifs would have been understood to influence RT fidelity.
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210
623
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Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to have modified a non-mutagenic RT taught by Lu and further exemplified by Simon to introduce mutagenic activity based on the structure and function relationship taught by Handa. This modification would have merely amounted to a simple substitution of prior art elements according to known methods to yield predictable results because the substituted component (DGR bRT motif) and its function (to introduce adenine substitutions during cDNA synthesis) were known in the art. One would have been motivated to have done so for the advantage of obtaining known property of DGR RTs in additional RTs and expand the applications of generation of nucleic acid diversity. One would have had a reasonable expectation of success in doing so because Simon teaches structural and sequence homology between DGR RTs and retron RTs, including conservation of critical regions, which indicates that substitution within identified motifs would expect mutagenic properties without abolishing RT activity.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Miller et al (US 2010/0041033 A1; Published Date: Feb 18, 2010) in view of Lu et al (US 2017/0204399 A1; Published Date: Jul 20, 2017) as applied to claim 1 above, and further in view of Wannier et al. (Improved bacterial recombineering by parallelized protein discovery; PNAS, 2020, 117(24):13689-13698.
Regarding claim 15, the obviousness for modifying Miller’s method with a ssDNA-annealing recombinase protein is discussed above as applied to claim 1. Lu further teaches wherein the recombinant cell is E. coli that lacks exonuclease Exo-I (i.e., SbcB) and RecJ to promote recombination frequence (FIG. 9A and 9B). Lu also teaches “knocking out mutS did not result in significant increase in the recombination efficieny” ([0162]).
However, neither Miller or Lu teaches wherein the bacterial cell expresses dominant negative mutL.
Wannier teaches another ssDNA-annealing recombinase protein, CspRecT, that “exhibited editing efficiency of 35% to 51% for various single-base mismatches, averaging 43% or more than double the efficiency of cells expressing Redβ” and overexpression of a dominant negative mutL reduced off-target mutations when compared to a knockout of mutS (Fig. 3B; pg. 13692, right-column, first paragraph). Wannier’s teachings are consistent with Lu’s findings.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the invention to have modified Lu’s bacterial cell to express mutL as taught by Wannier because it would have merely amounted to a simple substitution of prior art elements according to known methods to yield predictable results given that the substituted component (mutL) and its function (involvement in MMR) were known in the art. One would have been motivated to have done so for the advantage of enhancing recombination frequency as taught by Wannier. One would have had a reasonable expectation of success in doing so because Lu and Wannier teach recombination using ssDNA-annealing recombinase proteins and improving recombination frequency through manipulation of MMR.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5, 8, 13-15, and 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 8, 19-22, and 31 of copending Application No. 19/102,556 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Instant claims 1-5, 8, 13-15, and 19-20 are being anticipated over claims 1-5, 8, 19-22, and 31 of ‘556 because same limitations are recited in the same combination. For compact prosecution, the following table outlines the instant claims that corresponds to claims of ‘556.
Instant claims
1
2
3
4
5
8, 20
12
13
14
15
19
‘556 claims
1
2
3
4
5
8
19
20
21
22
31
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to QIWEN SU-TOBON whose telephone number is (571)272-0331. The examiner can normally be reached Monday - Friday, 9:30am - 5:00pm.
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QIWEN SU-TOBON
Examiner
Art Unit 1636
/NEIL P HAMMELL/Supervisory Patent Examiner, Art Unit 1636