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Appl. No. 09/848,616
L Status of the Claims and Support for Amendments
By the foregoing amendments, claims 1-85 and 87-89 have been cancelled without
prejudice thereto or disclaimer thereof, and claims 98-100 and 108 have been amended.
Support for these amendments maybe found in the specification and originally filed claims
at, inter alia, paragraphs , , , , ,  to , and
Example 25. Claims 111 and 1 12 are new, and are drawn to the subject matter of previous
claims 98 and 99. Accordingly, no new matter is added by the foregoing amendments and
their entry and consideration are respectfully requested. Upon entry of these amendments,
claims 86 and 90-112 are pending in the application, with claim 86 being the sole
//. Summary of the Office Action
In the Office Action dated June 22, 2004, the Examiner has made one objection to,
and one rejection of, the claims. Applicants respectfully traverse each of these elements of
the Office Action, and offer the following remarks concerning the same.
Objection to Claims 101-105
At pages 2-3 of the Office Action, the Examiner has objected to claims 101-105
under 37 C.F.R. § 1.75(c) as allegedly being of improper dependent form for failing to
further limit the subject matter of the claim 98, from which these claims ultimately depend.
To overcome this objection, the Examiner has suggested that Applicants amend claims 98 to
99 to recite "an immunogenic composition" rather than "a vaccine composition" and delete
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Appl. No. 09/848,616
the word "vaccine" from claims 100 and 108. In order to expedite prosecution, Applicants
have amended claims 98-100 and 108 as suggested by the Examiner. In so doing, the
Examiner's objection has been accommodated. Reconsideration and withdrawal of this
objection therefore are respectfully requested.
IV. Provisional Obviousness-Type Double Patenting Rejections
In the Office Action at page 3, the Examiner has provisionally rejected claims 86
and 90-110 under the judicially created doctrine of obviousness-type double patenting as
allegedly being unpatentable over claims 100-114 of commonly owned, co-pending U.S.
Appl. No. 10/050,902; and over claims 14-16 of commonly owned, co-pending U.S. Appl.
No. 10/050,898. Applicants respectfully traverse both rejections. However, to expedite
prosecution, Applicants have filed herewith properly executed Terminal Disclaimers Under
37 C.F.R. § 1.321(c). Hence, the Examiner's rejection has been obviated; reconsideration
and withdrawal are respectfully requested.
V. Information Disclosure Statement
The Examiner has also indicated that, as of the date of mailing of the present Office
Action, Applicants* Information Disclosure Statement filed July 15, 2004, had not been
made available to the Examiner. Applicants presume that the Examiner has now had an
opportunity to consider the information disclosed in the Information Disclosure Statement
and, to indicate same, respectfully request the return of the initialed Form PTO-1449 with
the next communication.
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SEBBEL et al
In the Office Action at page 4, the Examiner stated that !, [c]laims 86, 90-100, 106-
1 10 are allowable, subject to resolution of provisional double patenting issues." Applicants
have resolved the double patenting issue by filing of terminal disclaimers, and all remaining
grounds of objection or rejection have been overcome. Applicants therefore respectfully
request that the Examiner reconsider all presently outstanding objections and rejections and
that they be withdrawn.
Applicants believe that a full and complete reply has been made to the outstanding
Office Action and, as such, the present application is in condition for immediate allowance.
If the Examiner believes, for any reason, that personal communication will expedite
prosecution of this application, the Examiner is invited to telephone the undersigned at the
number provided. Prompt entry and consideration of the present Amendment and Reply,
and allowance of all pending claims, are earnestly solicited.
Sterne, Kessler, Goldstein & Fox p.l.l.c.
Brian J. Del Buono
Attorney for Applicants
Registration No. 42,473
Date: December 2 K 2004
1 100 New York Avenue, N.W.
Washington, D.C. 20005-3934