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United States Bvtent and Trademark Office 



UNITED STATES DEPAHTMENT OF COMMERCE 

United States Patent and Trademark Office 

Addreaa: COMMISSIONER OF PATENTS AND TRADEMARKS 

Waahinpton, D.C. liO^ai 

wTvw.nxpr.o gov 



APPLICATION NO. 



FILING DATE 



FIRST NAMED INVENTOR 



ATTORNEY DOCKET NO. CONFIRMATION NO 



09/804,625 



03/09/2001 



Elizabeth A. Wang 



5160C-CON 



2656 



7S90 



04/14/2003 



FINNEGAN, HENDERSON, FARABOW 
GARRETT AND DUNNER, LLP 
1300 I STREET, N.W. 
WASHINGTON, DC 20005-33 1 5 



EXAMINER 



ROMEO, DAVID S 



ART UNIT 



PAPER NUMBER 



1647 

DATE MAILED: 04/14/2003 



Please find below and/or attached an Office communication concerning this application or proceeding. 



PTO-90C (Rev. 07-01) 




United States Rvtent anp Trademark Office 



UNITED STATES DEPARTMENT OF COMIVfETtOE 
Unitcid Stotnn Potent and Trndoinork Offioe 

Address: COMMISSIONER OF PATENTS AND TRADEMARKS! 
W;itfhiiifiluii. D,C. 20231 
www.it*ptf».gov 



APPLICATION NO. 



FILING DATE 



FIRST NAMED INVENTOR 



ATTORNEY DOCKET NO. 



CONFIRMATION NO. 



09/804,625 



03/09/2001 



Elizabeth A. Wang 



5I60C-CON 



2656 



7590 



02/11/2003 



American Home Products Corporation 
Attention: Kay E. Brady 
Patent & Trademark Office - 2B 
One Campus Drive 
Parsippany, NJ 07054 



EXAMINER 



ROMEO, DAVID S 



ART UNIT 



PAPER NUMBER 



1647 

DATE MAILED: 02/11/2003 



T 



Please find below and/or attached an Office communication concerning this application or proceeding. 



PTO-90C (Rev. 07-01) 



Office Action Summary 



Application No. 

09/804,625 



Examiner 

David S Romeo 



Applicant(s) 

WANG ET AL. 



Art Unit 

1647 



The MAILING DATE of this communication appears on the cover sheet with the correspondence address « 
Period for Reply 

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 1 MONTH(S) 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 the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely. 

- If 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). 

Status 

1 )£3 Responsive to communication(s) filed on 29 March 2001 . 
2a)D This action is FINAL. 2b)S This action is non-final. 

3) D 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 Ex parte Quayle, 1935 CD. 11, 453 O.G. 213. 
Disposition of Claims 

4) M Claim(s) 24-49 is/are pending in the application. 

4a) Of the above claim(s) is/are withdrawn from consideration. 

5) D Claim(s) is/are allowed. 

6) D Claim(s) is/are rejected. 

7) D Claim(s) is/are objected to. 

8) M Claim(s) 24-49 are subject to restriction and/or election requirement. 
Application Papers 

9) D The specification is objected to by the Examiner. 

10) D The drawing(s) filed on is/are: a)D accepted or b)D 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). 

11) D The proposed drawing correction filed on is: a)D approved b)D disapproved by the Examiner. 

If approved, corrected drawings are required in reply to this Office action. 

12) D The oath or declaration is objected to by the Examiner. 
Priority under 35 U.S.C. §§119 and 120 

13) D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f). 

a)DAII b)D Some*c)D None of: 

1 .□ Certified copies of the priority documents have been received. 

2. D Certified copies of the priority documents have been received in Application No. . 

3. Q 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. 

14) D Acknowledgment is made of a claim for domestic priority under 35 U.S.C. § 119(e) (to a provisional application). 

a) □ The translation of the foreign language provisional application has been received. 

15) D Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121 . 

Attachment(s) 

1) □ Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-413) Paper No(s). 



2) Q Notice of Draftsperson's Patent Drawing Review (PTO-948) 5) □ Notice of Informal Patent Application (PTO-152) 

3) CD information Disclosure Statement(s) (PTO-1449) Paper No(s) . 6) Q Other: 



U.S. Patent and Trademark Office 

PTO-326 (Rev. 04-01) 



Office Action Summary 



Part of Paper No. 8 




J 

Application/Control Number: 09/804,625 Page 2 

"Art-Unit: 1647 

DETAILED ACTION 

The preliminary amendment mailed March 9, 2001 (Paper No. 6) has been entered. 



The numbering of claims is not in accordance with 37 CFR 1. 126 which requires the 
5 original numbering of the claims to be preserved throughout the prosecution. When claims are 
canceled, the remaining claims must not be renumbered. When new claims are presented, they 
must be numbered consecutively beginning with the number next following the highest 
numbered claims previously presented (whether entered or not). 

Misnumbered claims 47-50 have been renumbered 46-49, respectively. 

10 

Claims 24-49 are pending. 

_ Election/Restrictions 

Restriction to one of the following inventions is required under 35 U.S. C. 121: 
15 I. Claims 24-26, 29, 30, 33, 35, 36, 38, 39, 41, 42, to the extent that they are drawn 

to a polynucleotide encoding amino acids 299-396 of Figure 2, classified in class 
536, subclass 23.5. 

II. Claims 24, 27, 28, 31, 32, 34, 35, 37, 38, 40, 41, 43, to the extent that they are 
drawn to a polynucleotide encoding amino acids 3 1 1-408 of Figure 3, classified in 

20 class 536, subclass 23.5. 

III. Claims 44-48, drawn to a polypeptide comprising amino acids 299-396 of Figure 
2, classified in class 530, subclass 300. 




Application/Control Number: 09/804,625 Page 3 

"Art Unit: 1647 

IV. Claim 49, drawn to an antibody that binds a polypeptide comprising amino acids 
299-396 of Figure 2, classified in class 530, subclass 387. 1. 
The inventions are distinct, each from the other because of the following reasons: 

The following pairwise combinations of products are independent and distinct, wherein 
5 neither member of a pair is required for the production or use of the other, and wherein each of 
the pair can be manufactured independently of the other and/or used for independent and distinct 
purposes: I and II; II and each of III and IV. 

The polynucleotides of Invention I are related to the polypeptides of Invention III by 
virtue of encoding same. The polynucleotide has utility for the recombinant production of the 
10 polypeptide in a host cell. Although the polynucleotide and polypeptide are related since the 

polynucleotide encodes the specifically claimed polypeptide, they are distinct inventions because 
they are physically and functionally distinct chemical entities, and the polypeptide product can 
"be made by another and materially different process, such as. by synthetic polypeptide synthesis 
or purification form the natural source. Further, the polynucleotide may be used for processes 
15 other than the production of the polypeptide, such as a nucleic acid hybridization assay. 

The polynucleotide of invention I and the antibody of Invention IV are related by virtue 
of the polypeptide that is encoded by the polynucleotide and necessary for the production of the 
antibody. However, the polynucleotide itself is not necessary for antibody production and both 
are wholly different compounds having different compositions and functions. Therefore, these 
20 inventions are distinct. 

The polypeptide of invention III is related to the antibody of Invention IV by virtue of 
being the cognate antigen, necessary for the production of the antibody. Although the 




Application/Control Number: 09/804,625 Page 4 

"Ait Unit: 1647 

polypeptide and antibody are related due to the necessary stearic complementarity of the two, 
they are distinct inventions because they are physically and functionally distinct chemical 
entities, and because the polypeptide can be used in another materially different process from the 
use for production of the antibody, such as in a pharmaceutical composition in its own right, or 
5 in assays for the identification of agonists or antagonists. 

Because these inventions are distinct for the reasons given above and have acquired a 
separate status in the art as shown by their different classification, restriction for examination 
purposes as indicated is proper. 

Because these inventions are distinct for the reasons given above and the searches 
10 required are not coextensive, restriction for examination purposes as indicated is proper. 

Because these inventions are distinct for the reasons given above and have acquired a 
separate status in the art because of their recognized divergent subject matter, restriction for 
examination purposes as indicated is proper. .. 

Applicant is advised that the reply to this requirement to be complete must include an 
15 election of the invention to be examined even though the requirement be traversed (37 CFR 
1.143). 

Applicant is reminded that upon the cancellation of claims to a non-elected invention, the 
inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the 
currently named inventors is no longer an inventor of at least one claim remaining in the 
20 application. Any amendment of inventorship must be accompanied by a request under 37 CFR 

1 .48(b) and by the fee required under 37 CFR 1 . 17(i). 

Any inquiry concerning this communication or earlier communications from the examiner should be directed to 
David S. Romeo whose telephone number is (703) 305-4050. The examiner can normally be reached on Monday through 
Friday from 7:30 a.m. to 4:00 p.m. 



Application/Control Number: 09/804,625 Page 5 

"Art Unit: 1647 



If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Gary Kunz, can be 
REACHED ON (703) 308-4623. 

IF SUBMITTING OFFICIAL CORRESPONDENCE BY FAX, APPLICANTS ARE ENCOURAGED TO SUBMIT OFFICIAL CORRESPONDENCE TO 
THE FOLLOWING TC 1600 BEFORE AND AFTER FINAL RlGHTFAX NUMBERS: 

Before Final (703) 872-9306 
After Final (703) 872-9307 

In addition to the Official RightFax numbers above, the TC 1600 Fax Center has the following Official fax 
NUMBERS: (703) 305-3592, (703) 308-4242 AND (703) 305-3014. 

Customers are also advised to use Certificate of Facsimile procedures when submitting a reply to a non-final 
or final Office action by facsimile (see 37 CFR 1 .6 and 1 .8). 

Faxed draft or informal communications should be directed to the examiner at (703) 308-0294. 

Any inquiry of a general nature or relating to the status of this application or proceeding should be directed 
to the Group receptionist whose telephone number is (703) 308-01 96. 



* David Romeo 
Primary Examiner 
Art Unit 1647 



DSR 

February 10, 2003