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 .
Detailed Action
Claims 3, 8-9, 11-14, 17-21 are pending in the instant application.
Election/Restrictions
Applicant elected without traverse Group 1 (claims 1-12) drawn to a peptide and without traverse SEQ ID NO:62 in the response filed May 28, 2026. Please note that the elected species was found free of the art, however, the search was extended to other species and art was found.
The restriction is deemed proper and is made FINAL in this office action. Claims 13-14, 17-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected
invention/species, there being no allowable generic or linking claim.
Claims 3, 8-9, 11-12 are examined on the merits of this office action.
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 9 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 further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 9 depends from claim 8 but does not further limit the subject matter of claim 8. Specifically, claim 8 recites a peptide comprising a sequence selected from SEQ ID NOS: 3–7, 15–18, 23–27, 31–33, 35, 36, 42–46, 59–63, 65, 69, 72, 87, and 96–100, and claim 9 recites the same set of SEQ ID NOS without imposing an additional substantive limitation. Therefore, claim 9 fails to further restrict the scope of claim 8 as required by 35 U.S.C. § 112(d).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 3, 8-9, 11-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Joseph (Peptides, 31, 2010, pages 2304-2313, cited in Applicant’s IDS).
Joseph teaches of MC3R agonist pepitdes (see Table 1). In particular, Joseph teaches the peptide Tyr-Val-NIe-Gly-His-Phe-Arg-dTrp-Asp-Arg-Phe-Gly which meets the limitations of instant claim 1 and SEQ ID NO:1 wherein X is absent, AA0 is absent, AA1 is Tyr, AA2 is Val, AA3 is NIe, AA4 is Gly, AA5 is His, AA6 is Phe, AA7 is Arg, AA8 is D-trp, AA9 is Asp, AA10 is Arg, AA11 is Phe, AA12 is Gly, Y is absent. The peptide agonist found in Table 1, peptide 4, anticipates instant claim 3. Regarding claims 8-9, peptide 4 in Table 1 comprises the sequence NIe-Gly-His-Phe-Arg-dTrp-Asp-Arg-Phe-Gly which is instant SEQ ID NO:72. Regarding claims 11-12, the peptide 4 of Joseph is selective for MC3R over MC4R and is a MC3R agonist (see Table 1, EC, activity).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERINNE R DABKOWSKI whose telephone number is (571)272-1829. The examiner can normally be reached Monday-Friday 7:30-5:30 Est.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lianko Garyu can be reached at 571-270-7367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERINNE R DABKOWSKI/ Primary Examiner, Art Unit 1654
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