DETAILED ACTION
Claims 25-27 are currently pending.
Double Patenting
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 25-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-11 of U.S. Patent No. 9,878,026. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite a method of culturing Plasmodium parasites of human host rang in vitro during sporogonic development and comprise steps a-e of instant claim 25. Instant claim 26 and patented claim 9 both recite that the species of Plasmodium is Plasmodium falciparum. Instant claim 27 and part d) of patented claim 8 both recite use of matrix on the growth surface. Accordingly, the claimed compositions would have been obvious and the claims are not patentably distinguishable. It is noted that the instant claims were never present, nor restricted in parent applications.
Claims 25-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,207,385. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims 11 and 12 recite a method of “culturing” (instead of “preparing”) Plasmodium parasites of human host range in vitro during sporogonic development and comprise steps a-e of instant claim 25. Instant claim 26 and patented claims 9 and 17 both recite that the species of Plasmodium is Plasmodium falciparum. Instant claim 27 and part d) of patented claim 8 both recite use of matrix on the growth surface. Accordingly, the claimed compositions would have been obvious, and the claims are not patentably distinguishable. It is noted that the instant claims were never present, nor restricted in parent applications.
Claims 25-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,883,475. 385. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims 10 recites a method of “culturing” (instead of “preparing”) Plasmodium parasites of human host range in vitro during sporogonic development and comprise steps a-e of instant claim 25. Instant claim 26 and patented claims 5 and 16 both recite that the species of Plasmodium is Plasmodium falciparum. Instant claim 27 and recites the growth surface comprises a matrix which is inherent in the patented claims. Accordingly, the claimed compositions would have been obvious, and the claims are not patentably distinguishable. It is noted that the instant claims were never present, nor restricted in parent applications.
Correspondence regarding this application should be directed to Group Art Unit 1645. Papers related to this application may be submitted to Group 1600 by facsimile transmission. Papers should be faxed to Group 1600 via the PTO Fax Center located in Remsen. The faxing of such papers must conform with the notice published in the Official Gazette, 1096 OG 30 (November 15,1989). The Group 1645 Fax number is 571-273-8300 which is able to receive transmissions 24 hours/day, 7 days/week.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer E. Graser whose telephone number is (571) 272-0858. The examiner can normally be reached on Monday-Friday from 8:00 AM-4 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Thomas Visone, can be reached at (571) 270-0684.
Any inquiry of a general nature or relating to the status of this application should be directed to the Group receptionist whose telephone number is (571) 272-0500.
/JENNIFER E GRASER/Primary Examiner, Art Unit 1645 7/27/26
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