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
Claim Status
Claims 49 and 59-80 are pending. Claims 59-80 have been added. Claims 15, 17, 22, 24-25, 31, 33, 35, 38, 41-48 and 50-58 have been canceled. Claims 49 and 59-80 are being examined in this application.
Claim Objections
Claims 60-62, 68-71 and 76 are objected to because of the following informalities: Claims 60-62 and 68-71 should be rewritten to recite “…amino acid residues in length”. Claim 76 should be rewritten to recite “…localized scleroderma . Appropriate correction is required.
Claim Rejections - 35 USC § 112
The rejection of claims 15, 17, 22, 24-25, 31, 33, 35, 38 and 41-48 under 35 USC 112(a) is withdrawn in view of the amendments to the claims.
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.
Claim 62 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 62 is drawn to the method of claim 49, wherein the at least one peptide is about 51 to about 100 amino acids in length. The specification does not define the term “about”. It is noted that the propriety of the use of the expression "about" in claims to permit "of some tolerance" is established by long practice in the Patent Office. See W.L. Gore & Associates, Inc. v. Garlock, Inc., 82 U.S.P.Q. (BNA) 303, 306 (Fed. Cir. 1983) and Ex Parte King, 82 U.S.P.Q. (BNA) 450, 451 (Pat. & Trademark Office Bd. App. 1948). The term "about" allows for some tolerance in the ranges disclosed. In In re Ayers, the Federal Circuit held that "at least about 10%" was anticipated by a reference that disclosed "about 8%" because the term "about" allowed for some tolerance. In re Ayers, 154 F.2d 182, 185 (Fed. Cir. 1946). Similarly, in Johnson and Johnson v. W.L. Gore & Associates, Inc., the Court allowed for "about 1.2" to be inclusive of 1.0. See Johnson and Johnson,436 F.Supp. 704, 728-729 (Fed. Cir. 1977). Although about has never been confined to specific percentage of variability, the Johnson and Johnson decision at least implies that 16% variability is permissible when "about" is used (1.0/1.2 = ~16.6% variability). Thus, the term about implicitly discloses some variability even though the specification may not literally cite this variability. Accordingly, "about 100 amino acids in length" encompasses 116 amino acids, which is broader than the subject matter of claim 49 (“not more than 100 amino acid residues in length”). 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
Claims 49,59,63-67,72-75 and 77-80 are allowed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 SERGIO COFFA whose telephone number is (571)270-3022. The examiner can normally be reached M-F: 6AM-4PM.
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/SERGIO COFFA Ph.D./
Primary Examiner
Art Unit 1658
/SERGIO COFFA/Primary Examiner, Art Unit 1658
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