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 .
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.
DETAILED ACTION
This action is in response to claim amendments filed 7/9/24. Claims 45-61 are pending and under examination.
Claim Objections
Claim 47 is objected to because of the following informalities: at line 5, the phrase “a or bladder cancer” should be “or a bladder cancer”. 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.
Claim 50 is 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 50 depends from itself. There is no “a method of claim 50” as recited and so the claim limitations cannot be determined.
Therefore, claim 50 is indefinite. The claim will be treated as depending from claim 49.
Claim 55 is 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 55 provides for the use of certain assays, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced; see MPEP §2173.05(q).
Therefore, claim 55 is indefinite.
Claim 61 is 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 61 depends from claim 62. No such claim exists and so the limitations of this claim cannot be determined.
Therefore, claim 61 is indefinite. For the purpose of examination, the claim has been treated as depending from claim 60.
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.
Claims 50 and 61 are 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.
A dependent claim must depend from a claim previously set forth. A claim cannot depend from itself (such as claim 50) or to a succeeding claim (such as claim 61).
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.
Allowable Subject Matter
A phone call was made to Applicant’s representative on 7/21/26 and 7/22/26. A voicemail was left but the examiner was unable to reach Representative Sohee Kim Yoon.
The Examiner suggests the following:
Claim 47: change “a or” to “or a”
Claim 50: change “of claim 50” to “of claim 49”
Claim 55: change “use of” to “utilizing” (see MPEP §2173.05(q) for the distinction between “use” and “utilizing”)
Claim 61: change “of claim 62” to “of claim 60”.
Regarding the prior art, there is no art of record whereby antibodies obtained from a myositis patient without cancer are assayed for their anti-cancer potential. This is the only active step (the “wherein” clauses describe properties of the antibodies, not a comparison step) and so there is no art which anticipates the instant claims. Regarding a potential §103 rejection, the specification provides adequate information to demonstrate that antibodies obtained from a myositis patient without cancer surprisingly inhibit cancer better than the same antibodies obtained from a myositis patient with cancer. These surprising results are sufficient to overcome a conclusion of obviousness.
The claims are limited to obtaining the antibodies from subjects with myositis, which is considered patentably distinct from those subjects with scleroderma and so no double patenting rejection is made over US 11938183.
See US20140336282 (form 892).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM M WEIDNER whose telephone number is (571)272-3045. The examiner can normally be reached M-T 9-18; W-R 9-15.
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/Adam Weidner/ Primary Examiner, Art Unit 1675
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