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 .
Claim Status
To expedite the compact prosecution, the Examiner is pursuing the claims dated 19 May 2025, in which applicants claims 1-20.
Therefore, claims 1-20 are pending in the application.
Priority
This application was filed 01/17/2025 and a continuation of 17050741, filed 10/26/2020, now U.S. Patent # 12233136 is a National Stage entry of PCT/US2019/029366 filed 04/26/2019, which claims benefit to the Provisional Application 62663679 filed 04/27/2018. Thus, the earliest possible priority for the instant application is 04/27/2018.
Information Disclosure Statement
Applicant has filed Information Disclosure Statements on July 16, 2015, that have been considered. The signed and initialed PTO Forms 1449 are mailed with this action.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-4 and 8 are non-provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 10, 22-25 of patent US12233136B2. This is a non-provisional nonstatutory double patenting rejection because the patentably indistinct claims have in fact been patented.
The subject matter claimed in the instant application is disclosed in the reference claims as follows:
Competing claim 10 would anticipate the instant claim 1 directed to polynucleotide having at least 95% sequence identity to the sequence of SEQ ID NO: 13 thereto, if it were available as prior art. Competing claim 20-25 anticipates the instant claim 2-4 and 8 because it discloses nucleic acid vector comprising the polynucleotide sequence of SEQ ID NO: 13 and operably linked to a transgene encoding a therapeutic protein MYO15, if it were available as prior art. Since it is not, the claims are patentably indistinct.
Since the instant application claims are anticipated by competing patented claims, said claims are not patentably distinct.
Subject Matter Free of Art
Claim 1 is free of are, because art does not teach or reasonably suggest SEQ ID NO: 13 (see ABSS report filed 09/17/2026). Claims 5-7, 9-20 are objected to because these claims are dependent on the rejected base independent claim 1. Claim 6-7, 9-20 would be free of the art, if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Claims 1-4 and 8 are rejected and claims 5-7, 9-20 are objected, therefore, no claims are allowed.
Examiner Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MASUDUR RAHMAN whose telephone number is (571)272-0196. The examiner can normally be reached M-F 8-5 (EST).
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, Christopher Babic, can be reached on (571) 272-8507. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MASUDUR RAHMAN/ Patent Examiner, Art Unit 1633
/JEREMY C FLINDERS/ Primary Examiner, Art Unit 1684
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