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 .
This is the First Office Action on the Merits of US18/684,007 filed on 02/15/2024 which is a 371 of PCT/US2022/040309 filed on 08/15/2022 which claim US priority benefit of US Provisional 63/233,522 filed on 08/16/2021.
Claims 7-9, 17, 20-21, 25-27, and 30-33 are cancelled.
Claims 1-6, 10-16, 18-19, 22-24, and 28-29 are pending.
Claims 16, 18-19, 22-24, and 29 are withdrawn
Claims 1-6, 10-15, and 28 are under examination.
Election/Restrictions
Applicant's election with traverse of Group I (e.g., claims 1-6, 10-15, and 28) in the reply filed on July 9, 2026 is acknowledged.
Applicant's election with traverse of the Species of the compound RMG8-8 in the reply filed on July 9, 2026 is acknowledged. Applicant states that RMG8-8 is a compound of the general formula: wherein:
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T is a linear (C13)alkyl; Ax is H; R1 is Ncha; R2 is Nlys; R3 is Nae; R4 is Ncha; and Q is NH2.
The traversal is on the ground(s) that the applicant argues that the inventions as claimed “can be readily evaluated in one search without placing undue burden on the Examiner”. This is not found persuasive because undue search burden does not overcome lack of unity. Also, the Applicant’s argument regarding financial and administration burden is unpersuasive because financial and administration burden does not overcome the lack of unity.
The requirement is still deemed proper and is therefore made FINAL.
Claims 16, 18-19, 22-24, and 29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention Group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on July 9, 2026.
Allowable Subject Matter
Claim 14 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Information Disclosure Statement
The IDS filed on 01/14/2025 has been considered by the examiner.
Claim Objections
Claims 1 and 2 are objected to because the text is illegible for some of the compounds.
Claim 1 is objected to because it lacks punctuation between the compounds.
Claim 4 is objected to because the term “wherin” in line 1 should recite “wherein”.
Claim 13 is objected to because the term “any two of R1, R2, R3, and R4 is Ncha” in line 1 should recite “any two of R1, R2, R3, and R4 [[is]] are Ncha”.
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.
Claims 2-3, and 13 are 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 2 is indefinite because it lacks a period at the end of the claim.
Claim 3 is indefinite insofar as it depends from claim 2.
Claim 13 is unclear because it requires any two of R1, R2, R3, and R4 to be Nlys; any two of R1, R2, R3, and R4 to be Ncha; and any one of R1, R2, R3, and R4 to be Nae. Thus the claim requires five side-chain elements for only four side-chains. For purpose of applying prior art the claim will be construed to require at least one of each of Nlys, Ncha, and Nae.
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.
Claim 3 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 3 fails to include all the limitations of claim 2 upon which claim 3 depends. Claim 2 requires the limitation that each of R1, R2, R3, and R4 are each independently one of the compounds listed in claim 2. The compounds in claim 2 do not include sarcosine. However, claim 3 requires that R1 and R4 are each a compound listed in claim 3, including sarcosine. 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.
Written Description
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-6, 10-13, 15, and 28 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the full scope of the claimed invention.
Claims are drawn to a compound of the general formula of claim 1 which encompasses a pharmaceutical (dependent claim 15, and a fungicide (dependent claim 28). Applicants’ show possession of the elected species of peptoid compound of RMG8.8 and therefore claim 14 is not included in this rejection. However, claims 1-6, 10-13, 15, and 28 required the critically essential element of a genus of compounds which encompass the species of RMG8.8 but the specification does not provide sufficient information so that one of ordinary skill in the art would be able to envision whether a given compound in the claimed genus of compounds would possess the required property of being a pharmaceutical or fungicide. See FIG 1D showing the structure of RMG8.8. FIG 3A shows killing kinetic studies of RMG8.8. FIG7 shows a mass spectrum of RMG8.8. FIG8 shows RMG8.8 and peptoid compounds 1-7. FIG 9-10 shows peptoid compounds 8-13, and 14-25. The specification discloses (page 14) that the peptoid of general Formula I is an “antimicrobial peptoid with four N-substituted glycine repeats”.
[0052] Formula I is an antimicrobial peptoid with four N-substituted glycine repeats. Each repeat has one side chain (R¹, R², R³, or R⁴) that is coupled to the amide nitrogen of the antimicrobial peptoid backbone. The antimicrobial peptoid has an N-terminal cap group T, an optional second N-terminal cap group AX (e.g., AX may be H or an N-terminal cap group T), and a C-terminal cap group Q.
The MPEP states that the purpose of the written description requirement is to ensure that the inventor had possession, as of the filing date of the application, of the specific subject matter later claimed by applicants. (see MPEP 2163.02).
An objective standard for determining compliance with the written description requirement is, "does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Under Vas-Cath, Inc. V. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991), to satisfy the written description requirement, an applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention, and that the invention, in that context, is whatever is now claimed.
Further, the MPEP states that for a broad generic claim, the specification must provide adequate written description to identify the genus of the claim. (see MPEP 2161.01)
For instance, generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed. Ariad, 598 F.3d at 1349-50, 94 USPQ2d at 1171 ("[A]n adequate written description of a claimed genus requires more than a generic statement of an invention's boundaries.") (citing Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1405-06); Enzo Biochem, Inc. V. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002) (holding that generic claim language appearing in ipsis verbis in the original specification did not satisfy the written description requirement because it failed to support the scope of the genus claimed); Fiers V. Revel, 984 F.2d 1164, 1170, 25 USPQ2d 1601, 1606 (Fed. Cir. 1993) (rejecting the argument that "only similar language in the specification or original claims is necessary to satisfy the written description requirement").
As set forth in the en banc decision in Ariad Pharmaceuticals Inc. V. Eli Lilly and Company, 94 USPQ2d 1161 (Fed. Cir. 2010) at 1171, the court stated as follows:
We held that a sufficient description of a genus instead requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can "visualize or recognize" the members of the genus. Id. At 1568-69. We explained that an adequate written description requires a precise definition, such as by structure, formula, chemical name, physical properties, or other properties, of species falling within the genus sufficient to distinguish the genus from other materials. Id. At 1568 (quoting Fiers V. Revel, 984 F.2d 1164, 1171 [25 USPQ2d 1601] (Fed. Cir. 1993)). We have also held that functional claim language can meet the written description requirement when the art has established a correlation between structure and function. See Enzo, 323 F.3d at 964 (quoting 66 Fed. Reg. 1099 (Jan. 5, 2001)). But merely drawing a fence around the outer limits of a purported genus is not an adequate substitute for describing a variety of materials constituting the genus and showing that one has invented a genus and not just a species.
The state of the art provides evidence that the correlation of structure to function as a pharmaceutical or fungicide is unpredictable. For example, see Stone et al published June 13, 2019 “Positive charge patterning and hydrophobicity of membrane-active antimicrobial peptides as determinant of activity, toxicity, and pharmacokinetic stability” J of Medicinal Chemistry; IDS ref). Also, Mojsoska et al discloses that changes in peptoid structure, hydrophobicity, and amphipathicity can materially affect antimicrobial activity (introduction). (See Mojsoska et al in “Structure-activity relationship study of novel peptoids that mimic the structure of antimicrobial peptides”, Antimicrobial Agents and Chemotherapy, 59(7), 4112-20, published 05/04/2015.)
In addition, Cobb et al disclose that there are “challenges in balancing the biological activity and the toxicity of peptoid compounds”. They state that “the ability to alter the chemical functionality of the cationic side chains in a given peptoid sequence, such as the lysine and arginine type monomers, may assist in these endeavours” (US2018/0201647 published 07/19/2018; para 0007).
In view of such unpredictability taught by Mojsoska, a person of ordinary skill in the art would not recognize that the inventors had possession the full scope of the compounds of claim 1 as pharmaceuticals and/or fungicidal at the time of filing. The specification does not provide a representative number of structurally varied compounds satisfying the claimed limitation, nor does it identify structural features that correlate with that function. As set forth in the en banc decision in Ariad Pharm., Inc. V. Eli Lilly & Co., 598 F.3d 1336, 1340, 94 USPQ2d 1161, 1167 (Fed. Cir. 2010), to satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention at the time of filing. Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art in a way that shows that the inventor actually invented the claimed invention at the time of filing. Id.; Ariad, 598 F.3d at 1351, 94 USPQ2d at 1172. (see MPEP 2161.01).
Accordingly, in view of the breadth of the claimed peptoid formulas and the unpredictability of the relationship between peptoid structure and function, the specification does not reasonably convey to those skilled in the art that the inventors are in possession of the full scope of claimed combination therapies at the time of filing.
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
The Supreme Court in KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. Examples of rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6, 10-13, 15, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Bicker et al (US2020/0188354, published 06/18/2020), in view of Cobb et al (US2018/0201647 published 07/19/2018), in view of Barron et al (US2012/0295838 published 11/22/2012), in view of Chongsiriwatana et al (“Peptoids that mimic the structure, function, and mechanism of helical antimicrobial peptides” Proc Natl Acad Sci, Vol 105 No.8, pages 2794-2799, published 02/19/2008).
Regarding claims 1, and 4-6, 15, and 28, Bicker et al teaches antifungal peptoids and pharmaceutical pepoids. Bicker et al teach that the peptoids may have a hydrophobic terminal group, including a linear tridecyl, or C13 alkyl group which meet the limitation of the peptoid compound of instant claims 1, and 4-5, regarding the Ax and T elements. Regarding claims 1 and 6, Bicker et al teach the Q element of the peptoid is an NH2. (See abstract and AEC5 compound).
Especially regarding claims 1-3, 11-13, Bicker et al show a sarcosine monomer, a cationic amine in the position of instant peptoid R1 and an aromatic heterocycle (such as Ncha) in the position of instant peptoid R2. (See page 20 Section: Round 3 SAR disclosing an arginine mimic (beta-4), a lysine mimic (beta-5); Table 1.)
Further, especially regarding claims 2-3, in para 0039, Bicker et al teach that their antifungal peptoid includes a compound of Table 1 (see FIG1-5), and that in some embodiments, “the antifungal peptoid includes a combination (for example, a mixture) of the compounds of Table 1.” Bicker et al teach that the hydrophobic terminal group is a pharmacologically important structural feature affecting antimicrobial or antifungal potency and mammalian cell toxicity (see para 0069). Bicker et al teach that an iterative structure activity optimization process in which the terminal hydrophobic group and individual aromatic, heterocyclic, hydrophobic, and cationic peptoid residues are varied, and resulting compounds are evaluated for minimum inhibitory concentration, mammalian cell toxicity, and selectivity ratio (see para 0042, 0068-0072, and Figure 1-7).
However, Bicker et al does not explicitly disclose the peptoid compound having R1, R2, R3, and R4 as shown just below.
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Cobb et al disclose pharmaceutical compositions for treating microbial infections comprising peptoids containing lysine and arginine type monomers. (e.g., see Abstract). Cobb et al disclose the peptoid may be a linear peptoid comprising at least 3, 4, 5, or 6 monomers. (See para 0118-0119) Cobb et al disclose these peptoids are an “emerging class of therapeutic agent, which are structurally very similar to peptides, but have a superior proteolytic stability in vivo when compared with standard peptide-based drugs” (see para 0004). Cobb et al disclose that Nspe monomers and Nrpe monomers are preferred types of monomers. Cobb et al list preferred types of monomers comprising an aromatic residue are listed in para 0116.
Especially regarding claims 1-3, 10-13, and 28, Cobb et al disclose the peptoids are anti-fungal (see FIG1 showing peptoid having three monomer R groups; para 0136-0137). Cobb et al disclose they have successfully synthesized comprising a mix of lysine type monomers (Nae), arginine type monomers (NnArg), and aromatic residues (Nspe). (See para 0209-0220). Cobb et al disclose peptoid monomers include NLys, Nspe, NhArg, Nae, Nrpe, Npfb, Nsfb, Nch. (See ref claims 6 and 15; FIG 13-14).
In addition, especially regarding claim 15, Barron et al teach a pharmaceutical antimicrobial peptoid compounds comprising one or more of the compound of its poly-N-substituted glycine compounds and a pharmaceutically acceptable carrier (see para 0013, 0021). Barron et al teaches that antimicrobial poly-N-substituted glycine compounds (i.e., antimicrobial peptoids), having a six residue peptoid backbone and comprising combinations of cationic and hydrophobic side chains (paragraph [0039], [0075], and [0082]); such peptoids show antimicrobial activity and arrangement of the side chain residues may be modified to alter their biological properties (paragraph [0039], and [0043]); and the antimicrobial activity and selectivity of peptoids are affected by their cationicity, hydrophobicity, amphipathicity, and residue arrangement (table 2, paragraph [0046], and [0058]). Barron et al recite in para 0004:
Poly-N-substituted glycines (peptoids) comprise another class of peptidomimetics, and are isomers of peptides in that peptoid side chains are attached to the backbone amide nitrogen rather than to the .alpha.-carbon. More than any of the other peptidomimetic systems under study, including .beta.-peptides, .beta.-peptoids, oligoureas, and oligo(phenylene ethynylene)s, peptoids are particularly well-suited for AMP mimicry because they are easily synthesized on solid phase (using conventional peptide synthesis equipment) with access to diverse sequences at relatively low cost. By way of an elegant submonomer synthetic method, any chemical functionality available as a primary amine can be incorporated, whether it be an analog of a proteinogenic amino acid or a totally non-natural moiety; thus, peptoids are highly and finely tunable. Furthermore, they are protease-resistant, and can be designed to form amphipathic helices that resist thermal and chaotropic denaturation.
Barron et al disclose in para [0012]:
In part, the present invention can be directed to a poly-N-substituted glycine antibiotic compound of a formula: A-(X--Y--Z).sub.n—B.
[0015] In certain other embodiments, A can be a terminal N-alkyl substituted glycine residue, with such an alkyl substituent as can be selected from about C.sub.6 to about C.sub.18 linear alkyl moieties. Regardless, B can be NH.sub.2, and n can be selected from 1 and 2. In certain such embodiments, A can be a terminal N-alkyl substituted glycine residue, with an alkyl substituent selected from about C.sub.6 to about C.sub.18 linear alkyl moieties. Regardless, B can be an N.sub.Lys residue, and n can be 1.
Chongsiriwatana et al teaches that antimicrobial peptoid activity and selectivity depend on net cationic charge and hydrophobicity (introduction, Structure-Activity Studies, and discussion section). Chongsiriwatana explains that cationic residues promote association with negative charged microbial membranes, while aromatic and other hydrophobic residues facilitate membrane insertion and disruption (discussion section). Chongsiriwatana further teaches that hydrophobicity may increase nonspecific interaction with mammalian cell membranes and reduce selectivity (Ampetoid Selectivity Evaluated by Using Cultured Mammalian Cells, and discussion section). Accordingly, the identities, numbers, and positional arrangement of the cationic, aromatic, and hydrophobic residues are known result-effective variables for controlling antimicrobial potency, mammalian cell toxicity, and microbial selectivity.
The level of skill in the art was high before the effective filing date of the presently claimed invention.
It would have been obvious to a PHOSITA at the time of the invention to introduce the linear C13 alkyl terminal group proposed by Bicker into the linear peptoid comprising at least 3, 4, 5, or 6 monomers of Cobb et al for the rationale to modify the known cationic, aromatic, heterocyclic, and hydrophobic residues at positions R1 through R4 in accordance with the teachings regarding structure-activity relationships presented by Bicker et al, Cobb et al, Barron et al, and Chongsiriwatana et al.
A person of ordinary skill in the art would have been motivated to make such modifications to improve antimicrobial or antifungal efficacy, reduce mammalian cytotoxicity, and enhance selectivity by optimizing the existing effects associated with cationic, hydrophobic, and amphiphilic properties and residue distribution.
Because peptoids are known to be modular oligomers assembled from selectable N-substituted glycine building block, the skilled artisan would have had a reasonable expectation that the claimed residue alternatives could be incorporated into linear peptoid comprising at least 3, 4, 5, or 6 monomers backbone and that at least some of the resulting compounds would retain or improve antimicrobial activity and selectivity. For example, compound 911-M1 contains a hydrophobic N terminal C13 alkyl group and shows improved antifungal activity and selectivity compared with the compound RMG9-11. In addition, 911-M2 which contains an additional cationic N-substituted residue, shows reduce mammalian cytotoxicity, although its antifungal activity is somewhat reduced. Accordingly, the proposed combination would have been expected to provide the recognized advantages of improved potency, reduced toxicity, and enhanced microbial selectivity, and the variations are known result-effective variables for controlling antimicrobial potency, mammalian cell toxicity, and microbial selectivity. (see MPEP 2144.05)
The references are directed to the same field of endeavor.
Consistently, applying KSR example rationale (D) in the independent claim 1, it would have been prima facie obvious to apply the structure activity relationships of known peptoid optimization techniques taught by Bicker, and Chongsiriwatana to the structures of Cobbs et al and Barron et al, yielding predictable improved antimicrobial or antifungal potency, reduced mammalian cell toxicity, and enhanced microbial selectivity. (see MPEP 2141)
Conclusion
No claim is allowed.
Related prior art which may be applied in a future office action if appropriate:
Sutton et al (WO2021/111121 published June 10, 2021).
Hanh et al in “Effect of Aging on the Absorption of Small Peptides in Spontaneously Hypertensive Rats” (J of Agri and Food Chem Vol 65, No. 29, July 26, 2017). Hanh et al discloses a compound having the core structure of the general formula (See Abstract, a Gly-Sar-Sar-Sar tetrapeptide); a pharmaceutical composition comprising the compound or a pharmaceutically acceptable salt thereof (See Abstract which discloses that a Gly-Sar-Sar-Sar tetrapeptide and a Gly-Sar-Sar-Sar-Sar pentapeptide were administered at doses of 10 mg/kg each to 8- and 40-week-old SHRs.
Green & Bicker Medicinal Chemistry 2021.
Thappeta et al Infectious Diseases 2020.
Pokorski et al Organic Letters 2007.
Wang & Sun Pharmaceutics 2021.
Armand et al PNAS 1998.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE S HIBBERT whose telephone number is (571)270-3053. The examiner can normally be reached M-F 8:00-5:00.
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/CATHERINE S HIBBERT/Primary Examiner, Art Unit 1658