U NITED S TATES P ATENT AND TRADEMARK O FFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Otlice
`Addn,ss,COM.M ISSIONER FOR PATENTS
`P.O. Box l450
`Alexa.ndria. Virginia 22313-14.50
`www.vspto.gov
`
`APPUCATION NO.
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`FUJNGDATE
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`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONF!.RMATION NO.
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`15/588,461
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`05/05/2017
`
`Joerg Zeller
`
`43612-0002014
`
`7837
`
`06126/2017
`7590
`26161
`FISH & RICHARDSON P.C. (BO)
`P.O. BOX 1022
`MINNEAPOLIS, MN 55440-1022
`
`EXAMINER
`
`LOCKARD, JON MCCLELLAND
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`ARTUNIT
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`PAPER NUMBER
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`1647
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`NOTIFICATION DATE
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`DELIVERY MODE
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`06/26/2017
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`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`PATDOCTC@fr.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`15/588,461
`
`App licant(s)
`ZELLER ET AL.
`
`Office Action Summary
`
`AIA (First Inventor to File)
`Status
`I
`No
`- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -(cid:173)
`Period for Reply
`
`Examiner
`JON M. LOCKARD
`
`Art Unit
`1647
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE~ MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MO NTHS from the mailing date of this communication.
`Failure to reply w~hin the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication. even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`1 )l:8l Responsive to communication(s) filed on 515/17.
`0 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on __ .
`2a)O This action is FINAL.
`2b)[8J This action is non-final.
`3)0 An election was made by the applicant in response to a restriction requirement set forth during the interview on
`__ ; the restriction requirement and election have been incorporated into this action.
`4)0 Since this application is in condition for allow ance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 0.G. 213.
`
`Disposition of Claims*
`5)[8J Claim(s) 1-30 is/are pending in the application.
`5a) Of the above claim(s) __ is/are withdrawn from consideration.
`6)0 Claim(s) __ is/are allowed.
`7)[8J Claim(s) 1-30 is/are rejected.
`8)0 Claim(s) __ is/are objected to.
`9)0 Claim(s) __ are subject to restriction and/or election requirement.
`• If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:i/\WM.usoto.qovtpatents/!nit events/pph/index.isp or send an inquiry to PPHfeedback@uspto.aov.
`
`Application Papers
`10)[8J The specification is objected to by the Examiner.
`11 )l:8l The drawing(s) filed on 05 May 2017 is/are: a)l:8l accepted or b)O objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`a)O All
`b)D Some** c)O None of the:
`Certified copies of the priority documents have been received.
`Certified copies of the priority documents have been received in Application No. __ .
`Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)) .
`.. See the attached detailed Office action for a list of the certified copies not received.
`
`1.(cid:143)
`2.(cid:143)
`3.(cid:143)
`
`Attachment(s)
`1) 0 Notice of References Cited (PT0-892)
`2) [8J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date __ .
`
`3) 0 Interview Summary (PT0-413)
`Paper No(s)/Mail Date. __ .
`4) 0 Other: __ .
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Su mmary
`
`Part of Paper No./Mail Date 20170617
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`

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`Application/Control Number: 15/588,461
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`Art Unit: 1647
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`Page 2
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`DETAILED ACTION
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`Status of Application, Amendments, and/or Claims
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`1.
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`2.
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`The present application is being examined under the pre-AIA fast to invent provisions.
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`Claims 1-30 are pending and the subject of this Office Action.
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`Information Disclosure Statement
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`3.
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`The information disclosure statement (IDS) submitted on 26 May 2017 has been
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`considered by the examjner.
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`Spec(fication
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`4.
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`The disclosure is objected to because of the following info1malities: An updated status of
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`the parent non provisional application should be included in the fost sentence of the specification.
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`Claim Re_iections - 35 USC§ 112
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`5.
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`The following is a quotation of 35 U.S.C. l 12(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.
`
`The following is a quotation of 35 U .S.C. 112 (pre-A IA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out
`and distinctly claiming the subject matter which the applicant regards as his
`invention.
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`6.
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`Claims 6-8, 10, 11, 16-19 and 24-29 are rejected under 35 U.S.C. 112(b) or 35 U.S.C.
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`112 (pre-AJA), second paragraph, as being indefinite for failing to patticularly point out and
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`

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`Application/Control Number: 15/588,461
`Art Unit: 1647
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`Page 3
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`distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AJA the
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`applicant regards as the invention.
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`7.
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`Claims 6, 17, 25 and 26 are rejected as being indefinite, because without reciting an
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`upper limit to the number of mutations that are present, the metes and bounds of the claims
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`cannot be determined.
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`8.
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`Claim 10 and 27 are rejected as being indefinite because they recites a particular amino
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`acid position(s) without reciting a pmticular reference sequence to which that position refers.
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`Therefore the metes and bounds of the claim cannot be determined.
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`9.
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`Claims I l, 16 and 24 are rejected as being indefinite for reciting "95% identical".
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`Without knowing what sequence the percent identity refers to, the metes and bounds of the
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`claims cannot be determined.
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`10.
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`Claims 7, 8, 18, 19, 28 and 29 are rejected for depending from an indefinite claim.
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`Double Patenting
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`11.
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`The nonstatutory double patenting rejection is based on a judicially created doctrine
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`grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or
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`improper timewise extension of the "right to exclude" granted by a patent and to prevent possible
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`harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate
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`where the claims at issue are not identical, but at least one examined application claim is not
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`patentably distinct from the reference claim(s) because the examined application claim is either
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`anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg,
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`

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`Application/Control Number: 15/588,461
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`Art Unit: 1647
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`Page 4
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`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).
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`12.
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`A timely filed terminal disclaimer in compliance with 37 CFR l.32l(c) or l.32l(d) may
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`be used to overcome an actual or provisional rejection based on a nonstatuto1y double patenting
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`ground provided the reference application or patent either is shown to be commonly owned with
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`this application, or claims an invention made as a result of activities unde1taken within the scope
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`of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR
`
`l.32l(b).
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`13.
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`The USPTO internet Web site contains terminal disclaimer fo1ms which may be used.
`
`Please visit http://www.uspto.gov/fo1ms/. The filing date of the application will determine what
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`form should be used. A web-based eTe1minal Disclaimer may be filled out completely online
`
`using web-screens. An eTerrninal Disclaimer that meets all requirements is auto-processed and
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`approved immediately upon submission. For more information about eTenninal Disclaimers,
`
`refer to http://www.uspto.gov/patents/process/file/efs/!!"uidance/eTD-info-Lisp.
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`14.
`
`Claims 1-30 are rejected on the ground of nonstatutory obviousness-type double
`
`patenting as being unpatentable over claims 1-9 of U.S. Patent No. 8,007,794. Although the
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`conflicting claims are not identical, they are not patentably distinct from each other because the
`
`antibodies recited in the instant claims is encompassed by the antibodies recited in claims 1-9 of
`
`the '794 Patent. Therefore, the claims are overlapping in scope.
`
`15.
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`Claims l-30 are rejected on the ground of nonstatutory obviousness-type double
`
`patenting as being unpatentable over claims 1-9 of U.S. Patent No. 8,597,649. Although the
`
`

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`Application/Control Number: 15/588,461
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`Art Unit: 1647
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`Page 5
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`conflicting claims a.re not identical, they are not patentably distinct from each other because the
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`antibodies recited in the instant claims is e ncompassed by the antibodies recited in claims 1-9 of
`
`the '649 Patent. Therefore, the claims are overlapping in scope.
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`16.
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`Claims 1-30 are rejected on the ground of nonstatutory double patenting as being
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`unpatentable over claims 1-19 of U.S. Patent No. 9,266,951. Although the conflicting claims
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`are not identical, they are not patentably distinct from each other because the antibodies recited
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`in the instant claims is encompassed by the antibodies recited in claims 1-19 of the '951 Patent.
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`Therefore, the claims are overlapping in scope.
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`17.
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`Claims 1-30 are rejected on the ground of nonstatutory double patenting as being
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`unpatentable over claims 1-19 of U.S. Patent No. 9,346,881. Although the conflicting claims
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`are not identical, they are not patentably distinct from each other because the antibodies recited
`
`in the instant claims is encompassed by the antibodies recited in claims 1-19 of the '881 Patent.
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`Therefore, the claims are overlapping in scope.
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`18.
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`Claims 1-30 are rejected on the ground of nonstatutory double patenting as being
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`unpatentable over claims 1-20 of U.S. Patent No. 9,340,614. Although the conflicting claims
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`are not identical, they are not patentably distinct from each other because the antibodies recited
`
`in the instant claims is encompassed by the antibodies recited in claims 1-20 of the '614 Patent.
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`Therefore, the claims are overlapping in scope.
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`

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`Application/Control Number: 15/588,461
`Art Unit: 1647
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`Page 6
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`19.
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`Claims 1-30 are provisionally rejected on the ground of nonstatutory double patenting as
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`being unpatentable over claims l-30 of U.S. Application No. 15/588,432. Although the
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`conflicting claims are not identical, they are not patentably distinct from each other because the
`
`antibodies recited in the instant claims is encompassed by the antibodies recited in claims 1-30 of
`
`the '432 Application. Therefore, the claims are overlapping in scope.
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`This is a provisional nonstatutory double patenting rejection because the patentably
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`indistinct claims have not in fact been patented.
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`20.
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`No claim is allowed.
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`Summary
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`

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`Application/Control Number: 15/588,461
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`Art Unit: 1647
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`Page 7
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`Advisory Information
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to Jon M. Lockard whose telephone number is (571) 272-2717. The examiner
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`can normally be reached on Monday through Friday, 8:00 AM to 4:30 PM.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor,
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`Joanne Rama, can be reached on (571) 272-2911. The fax number for the organization where
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`this application or proceeding is assigned is 571-273-8300.
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`Infonnation 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 P1ivate PAIR or Public PAIR. Status information for unpublished
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`applications is available through Piivate PAIR only. For more info1mation about the PAIR
`
`system, see http:/ipair-dir<'ct.uspto.gov. Should you have questions on access to the P1ivate
`
`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you
`
`would like assistance from a USPTO Customer Service Representative or access to the
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`automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/JON M LOCKARD/
`Examiner, Art Unit 1647
`June 17, 2017
`
`