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 .
Acknowledgement is made to Applicant’s response filed 04/21/2026.
Claims 1-20 are pending.
Claims 11, 12, 19, and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected groups and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/21/2026.
Claim 2 is currently amended.
Claims 1-10 and 13-18 are pending and are currently under consideration to the extent that they read upon Applicant’s elected species. It is noted that in the process of searching the elected species, the Examiner came across art that reads upon the polyoxazoline being poly(2-ethyl-2-oxazoline), the crosslinker being maleimide, and the binding site being cysteine. For the sake of compact prosecution, the species election is being broadened to encompass these species.
Claim Rejections - 35 USC § 112
112 1st paragraph, Pre-AIA / 112(a), AIA
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2 and 13-18 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Applicant amended claim 2 to recite that the binding site is “lysine,” primary amine at protein terminus, or cysteine. The Specification and Claims as originally filed did not recite the concept of lysine. It is noted that if Applicant believes that the translations of the foreign priority documents are incorrect, they should file a certified translation of said documents.
112 2nd paragraph, Pre-AIA / 112(b), AIA
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, 6-9, 13, 16, and 17 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.
Regarding claims 3, 6-9, 13, 16, and 17, the claims utilize single brackets to mark off portions of the claims. These single brackets render the claims indefinite because it is unclear whether the limitation(s) within the brackets are part of the claimed invention. See MPEP § 2173.05(d). It is noted that double brackets would be appropriate for deleting short limitations, while the deletion of longer limitations should be lined through, but in either case, appropriate status identifies would be necessary. However, if Applicant is intending said limitations to be pending and part of the claims, they should not be bracketed or parenthetical, as this does not provide clarity in the record. For the sake of compact prosecution, the claims are being interpreted as if the limitations are intended to be deleted, wherein the variable are being interpreted based on the Specification, however, this does result in the claims lacking essential subject matter. For both the inappropriate brackets, and the lack of essential subject matter, the claims are being rejected. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-10 and 13-18 (all claims currently under consideration) is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Alvaradejo et al (IDS Reference).
Alvaradejo teaches a polyoxazoline-bound albumin comprising maleimide functionalized poly(2-ethyl-2-oxazoline) of 6100 g/mol (or 6100 Daltons) conjugated to bovine serum albumin (BSA) attached under conditions to arrive at attachment to the free cysteine on the BSA (see entire document, for instance, page 9477, right column).
It is noted that limitations directed to a component being derived from another component only carry weight to the extent that the limitation results in a structural distinction. It is further noted that derivation is a broad concept, wherein multiple changes can be made to a starting material to arrive at a myriad of derivatives. It is further noted that the instant claims are directed to a product, and not a method of making, wherein the method utilized by the art for arriving at the product does not need to be the same as Applicant.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TREVOR M LOVE whose telephone number is (571)270-5259. The examiner can normally be reached M-F typically 6:30-3.
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, Bethany Barham can be reached at 5712726175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TREVOR LOVE/Primary Examiner, Art Unit 1611
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