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 49-59 are pending for examination.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 07/29/2024 and 07/29/2024 in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the IDS statement.
Double Patenting Rejection
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
The instant Claims are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-6 of US PAT12018326. The instant application is a CON of US PAT12018326. An obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but an examined application claim not is patentably distinct from the reference claim(s) because the examined claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985). Although the conflicting claims are not identical, they are not patentably distinct from each other.
The instant application is a CON of US PAT 12018326. The claims 1-6 of US PAT 12018326 are directed to method of use polypeptide variant of SEQ ID NO: 2 comprising K94 mutation and optionally other mutations . The Instant claims directed to kit to target polynucleotide comprising a transmembrane protein pore comprising variant of SEQ ID NO: 2 variant of SEQ ID NO: 2 comprising K94 mutation and optionally other mutations. The specification that teach pore comprising polypeptide variant of SEQ ID NO: 2 for the claim 1-6 of that patent can also teach in different embodiment the polypeptide variant of SEQ ID NO: 2 variant of SEQ ID NO: 2 comprising K94 mutation and optionally other mutations of the instant claims of the instant application. It would have been obvious to one of ordinary skill in the art to select this specific embodiment of the genera of polypeptide variant of SEQ ID NO: 2 variant of SEQ ID NO: 2 comprising K94 mutation and optionally other mutations that practiced for the claims of that patent to use in the apparatus of instant claims. Therefore claims 49-59 of instant application are obvious over claims of US PAT12018326.
The instant Claims are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-6 of US PAT 11186868. The instant application is a CON of US PAT 11186868. An obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but an examined application claim not is patentably distinct from the reference claim(s) because the examined claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985). Although the conflicting claims are not identical, they are not patentably distinct from each other.
The instant application is a CON of US PAT 11186868. The claims 1-6 of US PAT 11186868 are directed to method of use polypeptide variant of SEQ ID NO: 2 comprising K94 mutation and optionally other mutations . The Instant claims directed kit to target polynucleotide comprising a transmembrane protein pore comprising variant of SEQ ID NO: 2 variant of SEQ ID NO: 2 comprising K94 mutation and optionally other mutations. The specification that teach pore comprising polypeptide variant of SEQ ID NO: 2 for the claim 1-6 of that patent can also teach in different embodiment the polypeptide variant of SEQ ID NO: 2 variant of SEQ ID NO: 2 comprising K94 mutation and optionally other mutations of the instant claims of the instant application. It would have been obvious to one of ordinary skill in the art to select this specific embodiment of the genera of polypeptide variant of SEQ ID NO: 2 variant of SEQ ID NO: 2 comprising K94 mutation and optionally other mutations that practiced for the claims of that patent to use in the apparatus of instant claims. Therefore claims 49-59 of instant application are obvious over claims of US PAT 11186868.
Claim 49 of instant application is rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 4 of U.S. Patent No. 10975428. The claims at least 4 of U.S. Patent No. 10975428 is directed to method of use of polypeptide variant of SEQ ID NO: 2 comprising K94 and R93 mutations and optionally other mutations . The Instant at least claim 52 is directed to pore comprising variant of SEQ ID NO: 2 comprising K94 mutation and R93 mutation and optionally other mutations. The specification that teach pore comprising polypeptide variant of SEQ ID NO: 2 for the claim 4 of that patent can also teach in different embodiment the polypeptide variant of SEQ ID NO: 2 comprising K94 and R93 mutation and optionally other mutations of the instant claim 52 of the instant application. It would have been obvious to one of ordinary skill in the art to select this specific embodiment of the genera of polypeptide variant of SEQ ID NO: 2 variant of SEQ ID NO: 2 comprising K94 mutation and R93 mutation and optionally other mutations that practiced for the claim 4 of that patent to use in the apparatus of instant at least claim 49. Therefore claim at least 49 of instant application are obvious over at least claim 4 of Patent No. 10975428.
Claims at least 49 of instant application is rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 4 of U.S. Patent No. 11685949. The at least claims 4 of U.S. Patent No. 11685949 is mutant pore comprising polypeptide variant of SEQ ID NO: 2 comprising K94 and R93 mutations and other mutations . The Instant at least claim 52 is directed to pore comprising variant of SEQ ID NO: 2 comprising K94 mutation and R93 mutation and optionally other mutations. The specification that teach pore comprising polypeptide variant of SEQ ID NO: 2 for the claim 4 of that patent can also teach in different embodiment the polypeptide variant of SEQ ID NO: 2 comprising K94 and R93 mutation and optionally other mutations of the instant claim 52 of the instant application. It would have been obvious to one of ordinary skill in the art to select this specific embodiment of the genera of polypeptide variant of SEQ ID NO: 2 variant of SEQ ID NO: 2 comprising K94 mutation and R93 mutation and optionally other mutations that practiced for the claim 4 of that patent to use in the apparatus of instant at least claim 49. Therefore claim at least 49 of instant application are obvious over at least 4 of U.S. Patent No. 11685949.
Claims at least 49 of instant application is rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 3 of U.S. Patent No. 11597970. The at least claims 3 of U.S. Patent No. 11597970 is directed to mutant pore comprising polypeptide variant of SEQ ID NO: 2 comprising K94 and R192 mutations and other mutations . The Instant at least claim 49 is directed to pore comprising variant of SEQ ID NO: 2 comprising K94 mutation and R192 mutation and optionally other mutations. The specification that teach pore comprising polypeptide variant of SEQ ID NO: 2 for the claim 3 of that patent can also teach in different embodiment the polypeptide variant of SEQ ID NO: 2 comprising K94 and R192 mutation and optionally other mutations of the instant claim 49 of the instant application. It would have been obvious to one of ordinary skill in the art to select this specific embodiment of the genera of polypeptide variant of SEQ ID NO: 2 variant of SEQ ID NO: 2 comprising K94 mutation and R 192 mutation and optionally other mutations that practiced for the claim 3 of that patent to use in the apparatus of instant at least claim 49. Therefore claim at least 49 of instant application are obvious over at least claims 3 of U.S. Patent No. 11597970..
TD submit ions will overcome the above rejections
Conclusion
Claims 49-59 are rejected. No claim is allowed.
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/MOHAMMAD Y MEAH/Examiner, Art Unit 1652
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