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Full text of "USPTO Patents Application 09848616"

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- 9 - SEBBEL et aL 

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 [0032], [0034], [0065], [0068], [0069], [0247] to [0254], 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 
independent claim. 

//. 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 

- 10- SEBBEL et al, 

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 
Appl.No. 09/848,616 

VI. Conclusion 

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. 

Respectfully submitted, 

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