UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
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`15/310,132
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`11/10/2016
`
`Austin L. GURNEY
`
`2293.1220001/PAC/E-H
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`7085
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`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`1100 New York Avenue NW
`
`Washington, DISTRICT OF COLUMBIA 20005
`UNITED STATES OF AMERICA
`
`NATARAJAN‘ MEERA
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`1 643
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`07/02/2018
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
`e-offiee @ Sternekessler. com
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`pealvo @ Sternekesslereom
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`PTOL-90A (Rev. 04/07)
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`

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`Off/09 A0170” Summary
`
`Application No.
`15/310,132
`Examiner
`MEERA NATARAJAN
`
`Applicant(s)
`GURNEYetal.
`Art Unit
`AIA Status
`1643
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 2 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.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within 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).
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`Status
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`1). Responsive to communication(s) filed on 12/13/2017.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b) C] This action is non-final.
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`3)[:] 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.
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`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`5)
`Claim(s)
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`80—99 is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s) _ is/are allowed.
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`C] Claim(s)
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`is/are rejected.
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`[j Claim(s) _
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`is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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`Claim(s) 80-99 are subject to restriction and/or election requirement
`9
`* If any claims have been determined aflowabte. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10)[:] The specification is objected to by the Examiner.
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`11)[:] The drawing(s) filed on
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`is/are: a)D accepted or b)l:] objected to by the Examiner.
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`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).
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`Priority under 35 U.S.C. § 119
`12):] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)D All
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`b)I:J Some”
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`c)C] None of the:
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`1.[:]
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`Certified copies of the priority documents have been received.
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`2.[:]
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`Certified copies of the priority documents have been received in Application No.
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`3.[:] 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)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) C] Notice of References Cited (PTO-892)
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`2) E] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
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`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20180625
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`

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`Application/Control Number: 15/310,132
`Art Unit: 1643
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`Page 2
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`DETAILED ACTION
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`Election/Restriction
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`1.
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`REQUIREMENTFORUNITYOFINVENTION
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`As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or
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`to a group of inventions so linked as to form a single general inventive concept (”requirement of unity of
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`invention”). Where a group of inventions is claimed in a national stage application, the requirement of
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`unity of invention shall be fulfilled only when there is a technical relationship among those inventions
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`involving one or more of the same or corresponding special technical features. The expression ”special
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`technical features” shall mean those technicalfeatures that define a contribution which each ofthe
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`claimed inventions, considered as a whole, makes over the prior art.
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`The determination whether a group of inventions is so linked as to form a single general
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`inventive concept shall be made without regard to whetherthe inventions are claimed in separate
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`claims or as alternatives within a single claim. See 37 CFR 1.475(e).
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`When Claims Are Directed to Multiple Categories of Inventions:
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`As provided in 37 CFR 1.475 (b), a national stage application containing claims to different
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`categories of invention will be considered to have unity of invention ifthe claims are drawn only to one
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`of the following combinations of categories:
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`(1) A product and a process specially adapted for the manufacture of said product; or
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`(2) A product and a process of use of said product; or
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`(3) A product, a process specially adapted for the manufacture of the said product, and a use of
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`the said product; or
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`(4) A process and an apparatus or means specifically designed for carrying out the said process;
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`or
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`

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`Application/Control Number: 15/310,132
`Art Unit: 1643
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`Page 3
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`(5) A product, a process specially adapted for the manufacture of the said product, and an
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`apparatus or means specifically designed for carrying out the said process.
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`Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
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`2.
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`Restriction is required under 35 U.S.C. 121 and 372.
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`This application contains the following inventions or groups of inventions which are not so
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`linked as to form a single general inventive concept under PCT Rule 13.1.
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`In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single
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`invention to which the claims must be restricted.
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`0 Group |, claim(s) 80-81, 92, 94- drawn to an antibody or antigen binding fragment thereofthat
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`specifically binds the extracellulardomain of V-set and transmembra ne domain-containing
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`protein 4 (VSTM4)
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`0 Group II, claim(s) 82-85, 93, 95 drawn to a soluble receptor comprising the extracellulardomain
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`of VSTM4 or a fragment thereof.
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`0 Group III, claim(s) 86, 88, and 90, drawn to an isolated polynucleotide encoding the antibody
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`of Group |, a vector comprising said polynucleotide and a host cell comprising said
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`polynucleotide.
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`0 Group IV, claim(s) 87, 89 and 91, drawn toan isolated polynucleotide encoding the soluble
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`receptor of Group II
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`0 Group V, claim(s) 96, drawn to an agent that specifically binds the extracellulardomain of
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`VSTM4 or B-H4.
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`0 Group VI, claim(s) 97-99, drawn to a method comprising administering the antibody of Group |,
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`the soluble receptor of Group II or the agent of Group VI.
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`

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`Application/Control Number: 15/310,132
`Art Unit: 1643
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`Page4
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`3.
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`The groups of inventions listed above do not relate to a single general inventive concept under
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`PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical
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`features for the following reasons: Groups I-VI lack unity of invention because the groups do not share
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`the same or corresponding technical feature. Groups II, IV-VI do not require an antibody that binds the
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`extracellulardomain of VSTM4, Groups I, III, Vdo not require a soluble receptor comprising the
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`extracellulardomain of VSTM4and Groups | and N do not require an agent that disrupts signaling from
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`B7-H4/VSTM4 pathway.
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`4.
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`This application contains claims directed to more than one species of the generic invention.
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`These species are deemed to lack unity of invention because they are not so linked as toform a single
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`general inventive concept under PCT Rule 13.1.
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`The species are as follows:
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`> |fGroup| or III is elected applicant is required to elect one species from (i) — (v) listed in
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`Claim 81
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`> |fGroup II or IV is elected applicant is required to elect one species from (i) — (v) listed in
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`Claim 83
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`> If Group VI is elected applicant is required to elect either the antibody of Group |, the
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`soluble receptor of Group II or the agent of Group V to be administered.
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`Applicant is required, in reply to this action, to elect a single species to which the claims shall be
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`restricted if no generic claim is finally held to be allowable. The reply must also identify the claims
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`readable on the elected species, including any claims subsequently added. An argument that a claim is
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`allowable or that all claims are generic is considered non-responsive unless accompanied by an election.
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`Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to
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`additional species which are written in dependent form or otherwise require all the limitations of an
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`allowed generic claim.
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`

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`Application/Control Number: 15/310,132
`Art Unit: 1643
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`Page 5
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`5.
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`Applicant is reminded that upon the cancellation ofclaims to a non-elected invention, the
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`inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently
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`named inventors is no longer an inventor of at least one claim remaining in the application. A request to
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`correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in
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`accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing
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`fee required under 37 CFR 1.17(i).
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`6.
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`The examiner has required restriction between product or apparatus claims and process claims.
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`Where applicant elects claims directed to the product/appa ratus, and all product/appa ratus claims are
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`subsequently found allowable, withdrawn process claims that include all the limitations ofthe allowable
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`product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected
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`process invention must include all the limitations of an allowable product/apparatus claim for that
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`process invention to be rejoined.
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`In the event of rejoinder, the requirement for restriction between the product/apparatus claims
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`and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully
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`examined for patenta bility in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims
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`must meet all criteria for patentabilityincluding the requirements of 35 U.S.C. 101, 102, 103 and 112.
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`Until all claims to the elected product/appa ratus are found allowable, an otherwise proper restriction
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`requirement between product/a ppa ratus claims and process claims may be maintained. Withdrawn
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`process claims that are not commensurate in scope with an allowable product/apparatus claim will not
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`be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that
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`the process claims should be amended during prosecution to require the limitations ofthe
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`product/a ppa ratus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition
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`against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is
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`withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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`

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`Application/Control Number: 15/310,132
`Art Unit: 1643
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`Page 6
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`7.
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to MEERA NATARAJAN whose telephone number is (571)270-3058. The examiner
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`can normally be reached on M-F 9AM - 5PM.
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`Examiner interviews are available via telephone, in-person, and video conferencing using a
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`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
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`the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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`Ifattemptsto reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
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`MISOOK YU can be reached on 571-272-0839. The fax phone number for the organization where this
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`application or proceeding is assigned is 571-273-8300.
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`Information rega rdingthe status of an application may be obtained from the Patent Application
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`Information Retrieval (PAIR) system. Status information for published applications may be obtained
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`from either Private PAIR or Public PAIR. Status information for unpublished applications is available
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`through Private PAIR only. For more information about the PAIR system, see http://pair-
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`direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). Ifyou would like assistance from a USPTO Customer
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`Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR
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`CANADA) or 571-272-1000.
`
`/Meera Nataraja n/
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`Examiner, Art Unit 1643
`
`