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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/721,831
`
`04/15/2022
`
`Gregory I. OSTROW
`
`46682-701.319
`
`7573
`
`WILSON SONSINI GOODRICH & ROSATI
`650 PAGE MILL ROAD
`PALO ALTO, CA 94304-1050
`
`HARTSFIELD, KATHRIEN ANN
`
`ART UNIT
`
`1629
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`07/19/2023
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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
`following e-mail address(es):
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`patentdocket @ wsgr.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`49-68 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj} Claim(s)
`is/are allowed.
`Claim(s) 49-68is/are rejected.
`S)
`) © Claim(s)___is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J accepted or b)( 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)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1... Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin 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.
`
`Attachment(s)
`
`1) ([] Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
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`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230714
`
`Application No.
`Applicant(s)
`17/721,831
`OSTROWetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`KATHRIEN A HARTSFIELD
`1629
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 2 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom 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) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
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`1) Responsive to communication(s) filed on 6/1/2023.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto 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 allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 17/721,831
`Art Unit: 1629
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`Page 2
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013,
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`is being examined
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`under the first inventor to file provisions of the AIA.
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`DETAILED ACTION
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`Election/Restriction
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`Restriction to one of the following inventions is required under 35 U.S.C. 121:
`
`|. Claims 49-58, drawn to composition, classified in A61K47/02.
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`ll. Claims 59-68, drawn to a method of treat the pre-myopia, myopia or
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`progression of myopia, classified in A61K9/8.
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`The inventions are independentor distinct, each from the other because:
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`Inventions | and Il are related as product and process of use. The inventions can
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`be shown to be distinctif either or both of the following can be shown: (1) the process
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`for using the product as claimed can be practiced with another materially different
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`product or (2) the product as claimed can be usedin a materially different process of
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`using that product. See MPEP § 806.05(h).
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`In the instant case the treatment of myopia
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`may be treated by prescribing glasses in order to correct the myopia.
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`Restriction for examination purposes as indicated is proper because all the
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`inventions listed in this action are independent or distinct for the reasons given above
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`and there would be a serious search and/or examination burden if restriction were not
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`required because one or more of the following reasons apply:
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`The inventions relate to different areas of technical endeavor. A search for each
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`invention will require searches of different areas of non-patentliterature, different patent
`
`

`

`Application/Control Number: 17/721,831
`Art Unit: 1629
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`Page 3
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`classes and subclasses, and different commercial database resources. Furthermore, it
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`does not appearlikely that prior art found to be relevant to the patentability of one group
`
`of claims will also be relevant to the patentability of the other groups of claims. Finally,
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`each group of claims presents its own unique questions of enablement, and therefore
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`evaluating the independent factors of enablement for each group together presents an
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`examination burden.
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`Applicant
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`is advised that the reply to this requirement to be complete must
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`include (i) an election of an invention to be examined even though the requirement
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`may be traversed (37 CFR 1.148) and(ii) identification of the claims encompassing
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`the elected invention.
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`The election of an invention may be made with or without traverse. To reserve a
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`right to petition, the election must be made with traverse. If the reply does not distinctly
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`and specifically point out supposederrors in the restriction requirement, the election
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`shall be treated as an election without traverse. Traversal must be presented at the time
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`of election in order to be considered timely. Failure to timely traverse the requirement
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`will result in the loss of right to petition under 37 CFR 1.144.
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`If claims are added after
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`the election, applicant must indicate which of these claims are readable upon the
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`elected invention.
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`Should applicant traverse on the ground that the inventions are not patentably
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`distinct, applicant should submit evidence or identify such evidence now of record
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`showing the inventions to be obvious variants or clearly admit on the record that this is
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`the case. In either instance, if the examiner finds one of the inventions unpatentable
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`

`

`Application/Control Number: 17/721,831
`Art Unit: 1629
`
`Page 4
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`over the prior art, the evidence or admission may be usedin a rejection under 35 U.S.C.
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`103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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`Upon the allowance of a generic claim, applicant will be entitled to consideration
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`of claims to additional species which depend from or otherwise require all the limitations
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`of an allowable generic claim as provided by 37 CFR 1.141.
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`Applicant is reminded that upon the cancelation of claims to a non-elected
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`invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one
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`or more of the currently named inventors is no longer an inventor of at least one claim
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`remaining in the application. A request to correct inventorship under 37 CFR 1.48(a)
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`must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that
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`identifies each inventor by his or her legal name and by the processing fee required
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`under 37 CFR 1.17(i).
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`The examiner has required restriction between product or apparatus claims and
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`process claims. Where applicant elects claims directed to the product/apparatus, and all
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`product/apparatus claims are subsequently found allowable, withdrawn process claims
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`that include all the limitations of the allowable product/apparatus claims should be
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`considered for rejoinder. All claims directed to a nonelected process invention must
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`include all the limitations of an allowable product/apparatus claim for that process
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`invention to be rejoined.
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`In the event of rejoinder, the requirement for restriction between the
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`product/apparatus claims and the rejoined process claims will be withdrawn, and the
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`rejoined process claims will be fully examined for patentability in accordance with 37
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`

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`Application/Control Number: 17/721,831
`Art Unit: 1629
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`Page 5
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`CFR 1.104. Thus, to be allowable, the rejoined claims must meetall criteria for
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`patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all
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`claims to the elected product/apparatus are found allowable, an otherwise proper
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`restriction requirement between product/apparatus claims and process claims may be
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`maintained. Withdrawn process claims that are not commensurate in scope with an
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`allowable product/apparatus claim will not be rejoined. See MPEP § 821.04.
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`Additionally,
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`in order for rejoinder to occur, applicant is advised that the process claims
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`should be amended during prosecution to require the limitations of the
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`product/apparatus claims. Failure to do so may result in no rejoinder. Further, note
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`that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply
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`wherethe restriction requirement is withdrawn by the examiner before the patent
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`issues. See MPEP § 804.01.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to KATHRIEN A. HARTSFIELD whose telephone number
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`is (571)270-5238. The examiner can normally be reached Monday - Thursday 10-6pm.
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`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/AWwww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Jeffrey Lundgren can be reached on (571) 272-5541. The fax phone number
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`for the organization where this application or proceeding is assigned is 571-273-8300.
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`

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`Application/Control Number: 17/721,831
`Art Unit: 1629
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`Page 6
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`Information regarding the status of published or unpublished applications may be
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`available to registered users. To file and manage patent submissions in Patent Center,
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`visit: httos://patentcenter.uspto.gov. Visit https:/Awww.uspto.gov/patents/apply/patent-
`
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`
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`
`additional questions, contact the Electronic Business Center (EBC) at 866-217-9197
`
`(toll-free).
`
`If you would like assistance from a USPTO CustomerService
`
`Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/KATHRIEN A HARTSFIELD/
`Primary Examiner, Art Unit 1629
`
`