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United States Patent and Trademark Office 



UNITED STATES DEPARTMENT OF COMMERCE 
United States Patent and Trademark OfTice 

Address: COMMISSIONER FOR PATENTS 
P.O. Box 1450 

Alexandria, Virginia 223 13-1450 
www.uspto.gov 



APPLICATION NO. 



FILING DATE 



FIRST NAMED INVENTOR 



ATTORNEY DOCKET NO. 



CONFIRMATION NO. 



09/804,625 



03/09/2001 



Elizabeth A. Wang 



22852 7590 05/17/2005 

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER 
LLP 

901 NEW YORK AVENUE, NW 
WASHINGTON, DC 20001-4413 



5160C-CON 



2656 



EXAMINER 



ROMEO, DAVID S 



ART UNIT 



PAPER NUMBER 



1647 

DATE MAILED: 05/17/2005 



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



PTO-90C (Rev. 10/03) 



OfficG Action Suinmarv 


Application No. 

09/804,625 


Applicant(s) 

WANG ETAL 


Examiner 

David S. Romeo 


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 3 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. 

• tf 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)13 Responsive to communication(s) filed on 22 February 2005 . 
2a)M This action is FINAL. 2b)n This action is non-final. 

3) n Since this application is in condition for allowance except for fonnal matters, prosecution as to the merits is 

closed in accordance with the practice under Ex pa/te Quayle, 1935 CD. 11, 453 O.G. 213. 

Disposition of Claims 

4) H Claim(s) 24-26, 29, 30. 33, 35,36. 38. 39. 4 1 and 42 is/are pending in the application. 

4a) Of the above claim(s) is/are withdrawn from consideration. 

5) 13 Claim(s) 26.30 and 41 is/are allowed. 

6) n Claim(s) 24.25.29.33.35.36,38.39 and 42 is/are rejected. 
?)□ Claim(s) is/are objected to. 

8) n Claim(s) are subject to restriction and/or election requirement. 

Application Papers 

9) 0 The specification is objected to by the Examiner. 

10)n The drawing(s) filed on is/are: a)n accepted or b)n 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 connection is required if the drawing(s) is objected to. See 37 CFR 1.121(d). 
1 1 )□ The oath or declaration is objected to by the Examiner. Note the attached Office Action or fonm PTO-152. 

Priority under 35 U.S.C. § 119 

12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 1 9(a)-(d) or (f). 
a)n All b)n Some * 0)0 None of: 

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

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

3. n 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. 



Attachment(s) 

1) n Notice of References Cited (PTO-892) 4) [3 Interview Sumnnary (PTO-413) 

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948) Paper No(s)/Mail Date. . 

3) IS Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08) 5) □ Notice of Infornnal Patent Application (PTO-1 52) 

Paper No(s)/MaiI Date 0305 . 6) □ Other: . 



U.S. Patent and Trademartt Office 
PTOL-326 (Rev. 1-04) 



Office Action Summary 



Part of Paper No./Mail Date 200505 



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

Art Unit: 1647 

DETAILED ACTION 

The amendment filed 02/22/2005 has been entered. Claims 24-26, 29, 30, 33, 35, 36, 38, 
39, 41, 42 are pending and being examined. 



5 Maintained Formal Matters. Objections, and/or Rejections: 

Priority 

A polynucleotide comprising nucleotides 1202-1543 of Figure 2 or comprising 
nucleotides encoding amino acids 283 through 396 of Figure 2 was first disclosed in the manner 
provided by 35 U.S.C. 1 12, first paragraph, in U. S. AppUcation No. 07/721,847 (filed 

10 06/14/1991). Accordingly, the effective filing date of the present claims that are directed to or 
encompass these embodiments is 06/14/1991. 

Applicants argue that the present application claims priority to U. S. Patent No. 
5,013,649, filed April 8, 1988, which discloses the same sequence as figure 2 of the present 
application, and therefore the present claims are entitled to the April 8, 1988 filing date. 

15 Applicant's arguments have been fully considered but they are not persuasive. There is no 

disclosure of the 1202-1543 or 283-396 subsequences of figure 2 prior to U. S. Application No. 
07/721,847, filed 06/14/1991 . Hence, these subsequences are new matter with respect to any 
prior application filed before U. S. AppHcation No. 07/721,847 and are not disclosed in the 
manner provided by 35 U.S.C. 1 12, first paragraph, in the applications filed before 06/14/1991. 



20 



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

Art Unit: 1647 

Claim Rejections - 35 USC § 102 

Claims 24, 25, 29, 33, 35, 36, 38, 39, 42 are rejected under 35 U.S.C. 102(b) as being 
anticipated by Wozney (U). 

In addition, support for the hybridization conditions (claim 33) cannot be found in the 
5 disclosure as originally filed, which raises the new matter. Accordingly, the effective filing date 
of the claims that are directed to or encompass these hybridization conditions is the filing date of 
the present application. 

Applicants argue that the pending claims are entitled to the April 8, 1988 fihng date. 
Applicant's arguments have been fully considered but they are not persuasive. There is no 
10 disclosure of the 1202-1543 or 283-396 subsequences of figure 2 prior to U. S. Application No. 
07/721,847, filed 06/14/1991. Hence, these subsequences are new matter with respect to any 
prior application filed before U. S. Apphcation No. 07/721,847 and are not disclosed in the 
manner provided by 35 U.S.C. 1 12, first paragraph, in the applications filed before 06/14/1991. 



15 New Formal Matters. Objections, and/or Rejections: 

Claim Rejections - 35 USC § 112 
Claims 33, 36, 39, 42 are rejected under 35 U.S.C. 1 12, first paragraph, as failing to 
comply with the written description requirement. The claim(s) contains subject matter which 
was not described in the specification in such a way as to reasonably convey to one skilled in the 
20 relevant art that the inventor(s), at the time the application was filed, had possession of the 

claimed invention. Support for the hybridization conditions (claim 33) cannot be found in the 
disclosure as originally filed, which raises the new matter. 



Application/Control Number: 09/804,625 
Art Unit: 1647 



Page 4 



Conclusion 



Claims 26, 30, 41 are allowable. 

Applicant's amendment necessitated the new ground(s) of rejection presented in this 
Office action. Accordingly, TfflS ACTION IS MADE FINAL. See MPEP § 706.07(a). 
Applicant is reminded of the extension of time poHcy as set forth in 37 CFR 1. 136(a). 

A shortened statutory period for reply to this final action is set to expire THREE 
MONTHS fi*om the mailing date of this action. In the event a first reply is filed within TWO 
MONTHS of the mailing date of this final action and the advisory action is not mailed until after 
the end of the THREE-MONTH shortened statutory period, then the shortened statutory period 
will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 
CFR 1. 136(a) will be calculated fi*om the mailing date of the advisory action. In no event, 
however, will the statutory period for reply expire later than SIX MONTHS fi:'om the date of this 



Any inquiry concerning this communication or earlier communications from the examiner should be directed to 
David S. Romeo whose telephone number is (571 ) 272-0890. The examiner can normally be reached on Monday through 
Friday from 7:30 a.m. to 4:00 p.m. If attempts to reach the examiner by telephone are unsuccessful, the examiner's 
supervisor, Brenda Brumback, can be reached on (571 ) 272-0961 . 

IF submitting official correspondence by fax, Applicants are encouraged to submit official correspondence to 

THE central fax NUMBER FOR OFFICIAL CORRESPONDENCE, WHICH IS (571 ) 273-8300. 

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 (571 ) 273-0890. 

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. 



final action. 




David Romeo 
Primary Examiner 
Art Unit 1647 



DSR 

May 10. 2005