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 OFFICE ACTION
This Office Action is in response to the papers filed on 13 July 2026.
ELECTION
Applicants’ election with traverse of Group II (Claims 9 and 11-13; drawn to a method of enhancing the production of at least one desired component in a cell) in the reply filed on 13 July 2026 is acknowledged. The Applicant argues Examiner has not provided any indication that the contents pf the claims interpreted in light of the description was considered in making the assertion of a lack of unity. The Applicant argues there is not a serious search burden in examining all of the claims.
The argument is not persuasive. The restriction is made under 35 U.S.C. 371 restriction practice. For applications submitted under 35 U.S.C. 371 search burden is not a requirement. The claims are given their broadest reasonable interpretation in light of the specification. As stated in the restriction requirement mailed on 12 May 2026, the shared technical feature does not make a contribution over Rabinovich et al. The Applicant has provided no evidence Rabinovich does not teach the identified shared technical feature. The requirement is still deemed proper and is therefore made FINAL.
Claims 1-3, 8, 10 and 14-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
CLAIMS UNDER EXAMINATION
Claims 9 and 11-13 have been examined on their merits.
PRIORITY
The Applicant claims priority to 29 October 2021 and 26 April 2022. Certified translations have not been provided.
REJECTIONS
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 13 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 13 recites the method “increases survival of at least one of the cell and activity of the cell”. It is unclear how the method increases survival of activity of the cell. It is unclear if the claim means “increases survival of the cell and/or increases activity of the cell”. The metes and bounds of the claim are unclear. 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.
Claims 9 and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
Gripon et al. (Hepatitis B virus infection of adult human hepatocytes cultured in the presence of dimethyl sulfoxide. J Virol 62:1988. Pages 4136-4143).
Gripon cultures human hepatocytes (Materials and Methods, first and second paragraph of “Cell Isolation and culturing” section on page 3136, right column). The art teaches culturing in a media supplemented with DMSO (see left column, last sentence of first paragraph). As evidenced by the specification, DMSO is an organic solvent ([0008] of specification filed on 29 April 2024).
Because the art anticipates contacting a cell with a composition (media) comprising an organic solvent (DMSO), it would inherently enhance production of at least one desired component in a cell as recited in the claim. Claim 9 is rejected.
Gripon infects cells with HBV (see page 4137, left column, second paragraph). The art measures HBV proteins and DNA from infected cells (see page 4138, left column, third paragraph; see page 4141, right column, first paragraph). Therefore a DNA producing a desired component is introduced to the hepatocytes. Claim 11 is rejected.
Because Gripon anticipates the method recited in claim 9, it would inherently regulate cell survival are recited in claim 12. Claim 12 is included in this rejection.
Because Gripon anticipates the method recited in claim 9, it would inherently increase survival of at least one of the cell and activity of the cell. Claim 13 is included in this rejection.
Therefore Applicant’s Invention is anticipated as claimed.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATALIE MOSS whose telephone number is (571) 270-7439. The examiner can normally be reached on Monday-Friday, 8am-5pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sharmila Landau can be reached on (571) 272-0614. The fax phone number for the organization where this application or proceeding is assigned is (571) 270-8439.
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/NATALIE M MOSS/ Examiner, Art Unit 1653
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