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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. us pto . go V 



APPLICATION NO. 


FILING DATE 


FIRST NAMED INVENTOR 


ATTORNEY DOCKET NO. 


CONFIRMATION NO. 


09/848,616 


05/04/2001 


Peter Sebbel 


1 700.0 180002/JAG/BJD 


6018 



28393 7590 07/22/2004 

STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 
1 100 NEW YORK AVE., N.W. 
WASHINGTON, DC 20005 



EXAMINER 



MOSHER, MARY 



ART UNIT 



PAPER NUMBER 



1648 

DATE MAILED: 07/22/2004 



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



PTO-90C (Rev. 10/03) 



Office Action Summary 


Application No. 

09/848,616 


Applicant(s) 

SEBBEL ET AL 


Mary E. Mosher, Ph.D. 


Art Unit 

1648 





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. 

- 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)13 Responsive to communication(s) filed on 29 April 2004 . 
2a)D This action is FINAL. 2b)K 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) [X] Claim(s) 86 and 90-110 is/are pending in the application. 

4a) Of the above claim(s) is/are withdrawn from consideration. 

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

6) M Claim(s) 86 and 90-110 is/are rejected. 

7) M Claim(s) 101-105 is/are objected to. 

8) D Claim(s) __ 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) D 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. § 1 19(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. 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. 



Attachment(s) 

1) O Notice of References Cited (PTO-892) 

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

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

Paper No(s)/Mail Date . 



4) □ Interview Summary (PTO-413) 

Paper No(s)/Mail Date. . 

5) IZ] Notice of Informal Patent Application (PTO-1 52) 

6) □ Other: . 



U.S. Patent and Trademark Office 

PTOL-326 (Rev. 1-04) 



Office Action Summary 



Part of Paper No./Mail Date 20040721 



Application/Control Number: 09/848,61 6 Page 2 

Art Unit: 1648 

DETAILED ACTION 
Continued Examination Under 37 CFR 1.114 

A request for continued examination under 37 CFR 1.114, including the 
fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 
Since this application is eligible for continued examination under 37 CFR 1114, 
and the fee set forth in 37 CFR 1 .17(e) has been timely paid, the finality of the 
previous Office action has been withdrawn pursuant to 37 CFR 1.114. 
Applicant's submission filed on 4/29/2004 has been entered. 

Response to Arguments 

On consideration, applicant's arguments presented 4/29/2004 are 
convincing, and the rejections under 35 USC 103 are withdrawn. 

Claim Objections 

Claims 101 - 105 are objected to under 37 CFR 1.75(c), as being of 
improper dependent form for failing to further limit the subject matter of a 
previous claim. Applicant is required to cancel the claim(s), or amend the 
claim(s) to place the claim(s) in proper dependent form, or rewrite the claim(s) in 
independent form. Claims 101 and 105 depend indirectly from claim 98, which is 
drawn to a vaccine composition. Since a vaccine, by definition, induces a 
protective immune response, claims 101 and 105 provide no further limitation 
upon parent claim 100, which is drawn to a method of immunizing using the 
(protective) vaccine composition of claim 98. This affects dependent claims 102- 
104. It is suggested that applicant amend claims 98 and 99 to recite "an 



Application/Control Number: 09/848,616 Page 3 

Art Unit: 1648 

immunogenic composition" rather than "a vaccine composition", and delete the 
word "vaccine" from claims 100 and 108. 

Information Disclosure Statement 
Applicant's representative recently contacted the examiner to indicate that 
a new IDS was being filed; the IDS has not been made available to the examiner 
at this date (it either has not been received or has not been scanned into the 
image file). 

Double Patenting 

Claims 86, 90-1 10 are provisionally rejected under the judicially created 
doctrine of obviousness-type double patenting as being unpatentable over 
claim100-1 14 of copending Application No. 10/050,902. Although the conflicting 
claims are not identical, they are not patentably distinct from each other because 
both sets of claims include the array based upon the cysteine-modified derivative 
of SEQ ID NO: 158. 

This is a provisional obviousness-type double patenting rejection because 
the conflicting claims have not in fact been patented. 

Claims 86, 90-1 10 are provisionally rejected under the judicially created 
doctrine of obviousness-type double patenting as being unpatentable over claims 
14-16 of copending Application No. 10/050,898. Although the conflicting claims 
are not identical, they are not patentably distinct from each other because both 
sets of claims include the array based upon the cysteine-modified derivative of 
SEQ ID NO: 158. 

This is a provisional obviousness-type double patenting rejection because 
the conflicting claims have not in fact been patented. 



Application/Control Number: 09/848,616 Page 4 

Art Unit: 1648 

Allowable Subject Matter 

Claims 86 F 90-100, 106-1 10 are allowable, subject to resolution of 
provisional double patenting issues. Note that, when provisional double 
patenting issues are the only issues remaining, the provisional rejection can be 
withdrawn in one of the applications, see MPEP 822. 

Conclusion 

Any inquiry concerning this communication or earlier communications from 
the examiner should be directed to Mary E. Mosher, Ph.D. whose telephone 
number is 571-272-0906. The examiner can normally be reached on M-T and 
alternate F. 

If attempts to reach the examiner by telephone are unsuccessful, the 
examiner's supervisor, James Housel can be reached on 571-272-0902. The fax 
phone number for the organization where this application or proceeding is 
assigned is 703-872-9306. 

Information regarding the status of an application may be obtained from 
the Patent Application Information Retrieval (PAIR) system. Status information 
for published applications may be obtained from either Private PAIR or Public 
PAIR. Status information for unpublished applications is available through 
Private PAIR only. For more information about the PAIR system, see http://pair- 
direct.uspto.gov. Should you have questions on access to the Private PAIR 
system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll- 
free). 



Application/Control Number: 09/848,616 Page 5 

Art Unit: 1648 



7/21/04 

MARY E. MCSHM