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 .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 8-11, 13, 14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because use claims are considered an improper definition of a process. The claims do not recite any active, positive method steps. See MPEP § 2173.05(q). This rejection affects all dependent claims.
Therefore, the claims cannot be evaluated for examination purposes and the claims have not been further treated on the merits.
Claim Objections
Applicant is advised that should claim 1 be found allowable, claims 2 and 3 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Claims 2 and 3 merely recite types of cells that may be modified by the composition of claim 1. Cells are not claimed as a component in claim 1, only the polypeptide is claimed. Thus, claims 2 and 3 do not alter the scope of claim 1 in any significant way.
Applicant is advised that should claim 1 be found allowable, claim 5 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Claim 5 merely recites a different intended use of the composition of claim 1, thus, claim 5 does not alter the scope of the claimed composition in any significant way.
Claim Rejections - 35 USC § 102
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) 1-3, 5-7, 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yu et al (US 20080287342 A1, of record).
Yu et al teach collagen mimetic peptides (CMP) that comprise (ProHypGly)n repeats, wherein one exemplified repeat is n=6. See the abstract, Figure 2 and ¶ [0009]. The instant claim limitations of “reprogramming agents” are intended use limitations at best and do not add further structure to the claimed polypeptide products. If a prior art structure is capable of performing the intended use as recited, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). (MPEP 2111.02). Cells are not claimed as a component in claim 1, only the polypeptide is claimed. Thus, instant claims 2 and 3 do not alter the scope of claim 1 in any significant way. Claim 5 merely recites a different intended use of the composition of claim 1, thus, claim 5 does not alter the scope of the claimed composition. Yu et al teach cell culture substrates wherein the surface is treated with the polypeptide of claim 1 (Figure 7, ¶’s [0010], [0057], [0125]). Yu et al teach cell culture systems comprising the CMP polypeptides and somatic (fibroblasts) cells or cancer (MCF-7) cells (Figure 7, ¶’s [0178], [0257]).
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael Burkhart whose telephone number is (571)272-2915. The examiner can normally be reached M-F 8-5.
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/MICHAEL D BURKHART/Primary Examiner, Art Unit 1638
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