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United States Patent and Trademark Office 



UNITED STATES DEPARTMENT OF COMMERCE 
United States Patent and Trademark Office 
Address: COMMISSIONER FOR PATENTS 
P.O. Box 1450 

Alexandria, Virginia 22313-1450 
www.uspto.gov 



APPLICATION NO. 


FILING DATE 


FIRST NAMED INVENTOR 


ATTORNEY DOCKET NO. | 


CONFIRMATION NO. 


09/804,625 


03/09/2001 


Elizabeth A. Wang 


5160C-CON 


2656 



22852 7590 07/25/2006 

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER 
LLP 

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



EXAMINER 



ROMEO, DAVID S 



ART UNIT 



PAPER NUMBER 



1647 

DATE MAILED: 07/25/2006 



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



PTO-90C (Rev. 10/03) 



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Application No. 

09/804,625 


Applicant(s) 

WANG ET AL. 


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) OR THIRTY (30) DAYS, 
WHICHEVER IS LONGER, 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) 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 08 May 2006 . 
2a)D This action is FINAL. 2b)E3 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 Quay/e, 1935 CD. 11, 453 O.G. 213. 

Disposition of Claims 

4) |3 Claim(s) 24.26.30.35.38.41.42 and 50-54 is/are pending in the application. 

4a) Of the above claim(s) 50-54 is/are withdrawn from consideration. 

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

6) |3 Claim(s) 24.26.30.35.38.41 and 42 is/are rejected. 

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

8) K Claim(s) 24.26.30.35.38.41.42 and 50-54 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). 

Replacement drawing sheet(s) including the correction 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 form PTO-152. 

Priority under 35 U.S.C. § 119 

12)D Acknowledgment-is made of a claim for foreign priority under 35 U.S.C. § 11 9(a)-(d) or (f). 
a)D All 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. D 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) CD Notice of References Cited (PTO-892) 

2) Q Notice of Draftsperson's Patent Drawing Review (PTO-948) 

3) □ Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08) 

Paper No(s)/Mail Date . 



4) O Interview Summary (PTO-413) 

Paper No(s)/Mail Date. . 

5) CI Notice of Informal Patent Application (PTO-152) 

6) □ Other: . 



U.S. Patent and Trademark Office 
PTOL-326 (Rev. 7-05) 



Office Action Summary 



Part of Paper No./Mail Date 20060710 



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

Art Unit: 1647 

DETAILED ACTION 

The amendment filed 05/08/2006 has been entered. Claims 24, 26, 30, 35, 38, 41-42, 
and 50-54 are pending. 

Newly submitted claims 50-54 are directed to an invention that is independent or distinct 
5 from the invention originally claimed for the following reasons: Newly submitted claims 50-54 
are directed to a polypeptide, classified in class 530, subclass 350. The invention originally 
claimed is directed to a polynucleotide encoding the polypeptide, classified in class 536, subclass 
23.5. The polypeptide and polynucleotide are patentably distinct inventions for the following 
reasons. Polypeptides, which are composed of amino acids, and polynucleotides, which are 

10 composed of purine and pyrimidine units, are structurally distinct molecules; any relationship 
between a polynucleotide and polypeptide is dependent upon the information provided by the 
nucleic acid sequence open reading frame as it corresponds to the primary amino acid sequence 
of the encoded polypeptide. While the polypeptide can made by methods using the 
polynucleotides, it can also be recovered from a natural source using by biochemical means. The 

15 polynucleotide is not limited in use to production of the polypeptide and can be used as a 

hybridization probe, for example. Furthermore, searching the polynucleotide and polypeptide 
together would impose a serious search burden. The inventions have a separate status in the art 
as shown by their different classifications. In cases such as this one where descriptive sequence 
information is provided, the sequences are searched in appropriate databases. There is search 

20 burden also in the non-patent literature. Prior to the concomitant isolation and expression of the 
sequence of interest there may be journal articles devoted solely to polypeptides which would not 
have described the polynucleotide. Similarly, there may have been "classical" genetics papers 



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

Art Unit: 1647 

which had no knowledge of the polypeptide but spoke to the gene. Searching, therefore is not 
coextensive. As such, it would be burdensome to search the inventions together. 

Since applicant has received an action on the merits for the originally presented 
invention, this invention has been constructively elected by original presentation for prosecution 
5 on the merits. Accordingly, claims 50-54 are withdrawn from consideration as being directed to 
anon-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03. 

Claims 24, 26, 30, 35, 38, and 41-42 are being examined. 
New Formal Matters, Objections, and/or Rejections: 

Double Patenting 

10 Claims 24, 26, 30, 35, 38, 41-42 are rejected on the ground of nonstatutory obviousness- 

type double patenting as being unpatentable over claims 1, 3, 5, 7, 9, and 10 of U.S. Patent No. 
5,166,058. Although the conflicting claims are not identical, they are not patentably distinct 
from each other because the polynucleotides of the application's claims are generic to and fully 
encompass the longer species of the patent's claims. 

1 5 Claim Rejections - 35 USC §112 

Claim 41 is rejected under 35 U.S.C. 1 12, second paragraph, as being indefinite for 
failing to particularly point out and distinctly claim the subject matter which applicant regards as 
the invention. 

Claim 41 is indefinite over the recitation of "comprising nucleotides of because it is 
20 unclear if the claimed polynucleotide comprises the nucleotide sequence of the deposited clone 
or if it comprises an indeterminate portion and arrangement of the nucleotides of the deposited 
clone. The metes and bounds are not clearly set forth. 



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



Page 4 



Formal Matters 



The application is not fully in compliance with the sequence rules, 37 CFR. § 1.821- 
1 .825. Specifically, the claims fail to recite the appropriate sequence identifiers at each place 
where a sequence is discussed. See 37 CFR 1.821 (d). Nucleic acid sequences with 10 or more 
nucleotides, at least 4 of which are specifically defined, must comply with the sequence rules. 
Amino acid sequences with 4 or more residues, at least 4 of which are specifically defined, must 
comply with the sequence rules. Sequence identifiers can also be used to discuss and/or claim 
parts or fragments of a properly presented sequence. For example, language such as "residues 14 
to 243 of SEQ ID NO:23" is permissible and the fragment need not be separately presented in 
the "Sequence Listing." 

Correction is required. 



No claims are allowable. 



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). 

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) 308-0196. 



Conclusion 




David Romeo 
Primary Examiner 
Art Unit 1647 



dsr 

July 10, 2006