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 .
Applicant’s amendments and remarks filed August 14, 2026, have been received and reviewed. Claims 1-20 are pending in this application.
Terminal Disclaimer
The terminal disclaimer filed on August 14, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent No. 12,110,288 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 112
Claims 3, 6, 9, 12, 15, 18 and 20 are again rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention.
The basis of this rejection is the same as given in the previous office action and is incorporated herein fully by reference. Applicants’ arguments have been fully considered but not found persuasive. The claims are now drawn to a method for inhibiting MASP-2 in a subject with below normal MASP-2 activity, MASP-2 activity in subjects with normal MASP-2 activity, or in asymptomatic mammals with up-regulated MASP-2 activity. The specification fails to teach any benefit to be gained from such actions. The skilled artisan cannot say which subject should have their MASP-2 activity inhibited and what is achieved by such action. Enablement for the method is lacking. That is, the utility itself is not enabled.
The specification fails to teach how to use this inhibition. The fact that a person of skill in the art could easily accomplish the inhibition is beside the point because the issue is the failure of the specification to teach how to use the process, not how to do the process. Enablement requires that the inhibition of MASP-2 activity be useful. Applicants need to say what is the actual usefulness of doing this inhibition in each subject and how one skilled in the art can use this method without undue experimentation. Does every subject need to have their MASP-2 activity inhibited or is it only certain subjects?
As the Supreme Court said in Brenner v. Manson, 148 USPQ at 696: “a patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion.”
As U.S. Court of Customs and Patent Appeals stated In re Diedrich 138 USPQ at 130, quoting with approval from the decision of the board: “We do not believe that it was the intention of the statutes to require the Patent Office, the courts, or the public to play the sort of guessing game that might be involved if an applicant could satisfy the requirements of the statutes by indicating the usefulness of a claimed compound in terms of possible use so general as to be meaningless and then, after his research or that of his competitors has definitely ascertained an actual use for the compound, adducing evidence intended to show that a particular specific use would have been obvious to men skilled in the particular art to which this use relates.”
Patent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable. Tossing out the mere germ of an idea does not constitute enabling disclosure. Genentech Inc. v. Novo Nordisk 42 USPQ2d 1001.
Allowable Subject Matter
Claims 1-2, 4-5, 7-8, 10-11, 13-14, 16-17 and 19 are allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRUCK KIFLE whose telephone number is (571)272-0668. The examiner can normally be reached 8 AM - 6 PM, M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey H. Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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September 21, 2026
/BRUCK KIFLE/Primary Examiner, Art Unit 1624
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