Office Action 3: Non-Final Rejection (2023-11-22)
Rejection types: 102 - Lack of Novelty, Double Patenting

CLAIMS:
AMENDMENTS TO THE CLAIMS

Please amend claims 16 and 18-24. Following is a complete listing of the claims pending in the application, as amended. This listing of claims will replace, without prejudice, all prior versions and listings of the claims in the application.

1.-15. (Cancelled)214

16\. (Currently Amended) A composition comprising a peptide selected from the group consisting of:
(a) a peptide consisting of the amino acid sequence X1-Z1-F-N-K-P-F-X2-Z2-X3-Z3 (SEQ ID NO: 2), wherein X1 is VorL;X2 is V,LorM;
X3 is M, I or V;
Z1 is any amino acid;
Z2 is a sequence of any two amino acids; and
Z3 is a sequence of any five amino acids;
(b) a peptide consisting of the amino acid sequence VKFNKPFVFLMIEQNTK (SEQ ID NO: 1);
(c) a peptide consisting essentially of the amino acid sequence X1-Z1-F-N-X2-P-F- X3-Z2-X4-Z3-X5 (SEQ ID NO: 3), wherein X1 is VorL;X2isKorR;
X3 is V, L or M;
X4 is M, IorV;
X5 is K or Q;
Z1 is any amino acid;
Z2 is a sequence of any two amino acids; and
Z3 is a sequence of any five amino acids;

(d) a peptide consisting essentially of the amino acid sequence RFNRPFLR (SEQ ID NO: 4);
(e) a peptide consisting essentially of the amino acid sequence of RRRFNRPFLRRR (SEQ ID NO: 8); and
(f) a peptide consisting essentially of the amino acid sequence of VKFNKPFVFLMIEQNTK (SEQ ID NO: 1);
 .

17\. (Previously Presented) The composition of claim 16, further comprising at least one second peptide or protein.

18\. (Currently Amended) The composition of claim 17, wherein the at least one second protein or peptide is attached to the peptide of(c-f) as a fusion peptide.

19\. (Currently Amended) The composition of claim \[\[17\]\]18, wherein the at least one second peptide or protein is an epitope tag or a half-life extender or both.

20\. (Currently Amended) The composition of claim 16, wherein the peptide of (c)-(f) further comprises\[\[ing\]\] one or more D-amino acids.

21\. (Currently Amended) The composition of claim 16, wherein the peptide of(c)-(f) consists of 37 amino acid residues or fewer.

22\. (Currently Amended) The composition of claim 16, wherein the peptide of(c)-(f) consists of 35 amino acid residues or fewer.

23\. (Currently Amended) The composition of claim 16, wherein the peptide of(c)-(f) consists of 22 amino acid residues or fewer.

24\. (Currently Amended) The composition of claim 16, wherein the peptide of(c)-(f) consists of 21 amino acid residues or fewer.

25\. (Previously Presented) The composition of claim 16, further comprising a pharmaceutically acceptable carrier.

26\. (Previously Presented) The composition of claim 16, wherein the composition is formulated for oral administration.

27\. (Previously Presented) The composition of claim 16, wherein the composition is formulated for parenteral, intraperitoneal, rectal, cutaneous, nasal, vaginal, inhalant, or ocular administration.

28\. (Previously Presented) The composition of claim 16, wherein the composition is formulated for intramuscular, intravenous, intraperitoneal, intravesicular, intraarticular, intralesional, or subcutaneous administration.

OFFICE ACTION:
DETAILED ACTION
Notice of Pre-AIA  or AIA  Status
The present application is being examined under the pre-AIA  first to invent provisions.
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 1.114, 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 of RCE on 7/28/23 and the amendment of claims has been entered.
Status of the Claims
In the reply filed 7/28/23, Applicants amended claims 16 and 18-24.
Claims 16-28 are pending and under consideration.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/28/23 was considered by the examiner.
Claim Rejections-Withdrawn
The rejection of claims 18-24 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA  35 U.S.C. 112, the applicant), regards as the invention is withdrawn due to amendment of the claims.
The rejection of claims 16-28 are rejected under pre-AIA  35 U.S.C. 102(b) as being anticipated by Gelber et al. (WO2010/081131) is withdrawn due to amendment of the claims.
Specification
The title of the invention is not descriptive.  A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim interpretation
The limitation “consisting essentially of” is defined in the specification to only include additional amino acids that do not materially affect the claimed inventions basic and novel characteristics, namely the anti-inflammatory capacity. The definition specifically excludes peptides that have a sequence of a complete serpin protein and excludes peptide sequences that are equal to or longer than 37 amino acids of any naturally occurring serpin protein [PGPUB 0077]. Therefore, the peptides “consisting essentially of” can be embedded in a sequence (must be less than 37 amino acids) as long as the added amino acids do not affect the basic function of the peptide (anti-inflammatory capacity).
Claim Objections-Withdrawn
The objection to claim 16 is withdrawn due to amendment of the claims.
Claim Rejections - 35 USC § 102-NEW
The following is a quotation of the appropriate paragraphs of pre-AIA  35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 16-28 are rejected under pre-AIA  35 U.S.C. 102(b) as being anticipated by Gelber et al. (WO2011/126882, cited on IDS). This is a NEW rejection necessitated by amendment of the claims.
Gelber et al. teach anti-inflammatory D3 peptides, fragment, analogs and derivatives thereof (Abstract). Gelber et al. teach D3 fragments comprising SEQ ID NO: 74, VWFNRPFLIAVSHTHGQTIL [PGPUB0087]. SEQ ID NO: 74 is 20 amino acids in length and meets the limitations of instantly claimed 16(c), wherein X1 is V, Z is W, X2 is R, X3 is L, Z2 is IA, X4 is V, Z3 is SHTHG and X5 is Q. Please note that SEQ ID Nos: 41 and 68-73 also meet the limitations of claim 16 (c).  Gelber et al. teach the D3 peptides for treatment of diseases where inflammation plays a role [0006, 00202].
With respect to claims 17-19, Gelber et al. teach modification of the peptide, such as fusion to serum protein, e.g. serum albumin that can increase the half-life of the D3 peptides [00186].
With respect to claim 20, Gelber et al. teach the peptides comprise at least one or more D-amino acids [00127].
With respect to claims 21-24, SEQ ID NO: 74 of Gelber et al. is 20 amino acids in length.
With respect to claim 25, Gelber et al. teach the peptides formulated with a pharmaceutically acceptable carrier [00164].
With respect to claims 26-28, Gelber et al. teach oral administration and parental (subcutanous, intramuscular, intravenous) [00370].
Double Patenting-Maintained
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA  as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
The rejection of claims 16-26 on the grounds of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10,214,562 is maintained. Although the claims at issue are not identical, they are not patentably distinct from each other. Claims 1,10-12 and 15-16 of the USPN claims peptides for oral administration (SEQ ID NO: 1 and 2) that are identical to instantly claimed SEQ ID NO: 1 and 3, anticipating the limitations of claims 16 and 21-25. Claims 2-5,13 and 17 of USPN claims an oral formulation comprising at least one second peptide or protein, wherein the at least one second protein or peptide is attached to the peptide as a fusion peptide, wherein the second peptide is an epitope tag or half-life extender, wherein the peptide comprises one or more D-amino acids, anticipating the limitations of instant claims 17-20. The USPN claim 9 claims the composition comprises a pharmaceutically acceptable carrier, meeting the limitation of claim 25.
The rejection of claims 16-28 on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 10,899,797 is maintained.
Claims 1 and 4-6 of the USPN claims SEQ ID NO: 3 , wherein the peptide is 21 amino acids or few. SEQ ID NO: 3 o the USPN meets the limitations of claims 16 (b-f), 21-24. The USPN also claims the peptide is fused to another peptide or protein, wherein the peptide or protein is an epitope tag, half-life extender or both, wherein the peptide comprises one or more D-amino acids, wherein the composition further comprises a pharmaceutically acceptable carrier (claim 19-12 of USPN), meeting the limitation of instant claims 17-20. The USPN claims composition is administered orally, subcutaneous, intravenous, intramuscular, intraperitoneal, nasally, rectally, intravaginally, parenterally, intracisternally or topically (claims 13-15 of USPN), meeting the limitations of claims 25-28.
The rejection of claims 16-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 6-7, 9-10, 13 and 17-27 of copending Application No. 17/215,738 is maintained.
The copending Application claims SEQ ID NO: 1,4, 8, wherein the peptide has a size of 35 amino acids of less, meeting the limitations of claims 16 and 21-24 (copending Application claims 1-3, 13,21). The copending Application claims the oral or subcutaneous administration (copending claims 6, 17), meeting the limitation of claims 26-28. The copending Application claims a second peptide or protein attached to the peptide to form a fusion protein, wherein the second peptide is an epitope tag or half-life extender or both, wherein the peptide comprises one or more D-amino acids (copending claims 7, 9-10, 18-20), meeting the limitations of claims 17-20).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 7/28/23  have been fully considered but they are not persuasive. Applicants argue that the amendment of claim 16 obviated the rejection.
This argument is not persuasive for the reasons presented above. The ODP rejections are maintained.
Conclusion
No claims are allowed.

APPLICANT REBUTTAL: REMARKS/ARGUMENTS
Claims 16-28 were pending when the present Office Action was mailed on April 5, 2023
(hereinafter "Office Action" or "GA").
In this response, claims 16 and 18-24 have been amended to address informalities and to
further clarify certain features of these claims. Support for these amendments can be found in the application as originally filed, and in the original listing of the claims. No claims have been added or canceled. The foregoing amendments are made solely to expedite prosecution of this application and without prejudice to pursuing these claims in unamended or other forms in a continuation or other application. Applicant respectfully requests entry of this amendment and upon entry, claims
16-28 will remain pending.
I.
Objection to Claim 16
The Office Action objected to claim 16 for alleged informalities. OA at 4. Claim 16 has
been amended to insert "of' in between "sequence" and "any five amino acids" in part (a) and (c).
The objection has therefore been obviated.
II.
Response to the Section 112(b) Rejections
The Office Action rejected claims 18-24 for being allegedly indefinite under 35 U.S.C. @
112, second paragraph because the closed language of claim 16(a) and 16(b) "consisting of' does not allow additional elements to the peptide. OA at 4. Without acquiescing to the merits of the rej ection, if any, and solely to advance prosecution, Applicant has amended claims 18-24 to refer to the peptides recited in parts (c)-(f) of independent claim 16. The §112 rejections over claims
18-24 are therefore traversed and withdrawal of these rejections is respectfully requested. III.
Response to the Section 102 Rejections
The Office Action rejected claims 16-28 under 35 U.S.C. § 102(b) as allegedly being
anticipated by Gelber. OA at 8. Regarding independent claim 16, the Office Action stated that "Gelber et al. teach and claim peptide inhibitors containing SEQ ID NO: 6 (FNRPFL). SEQ ID
NO: 6 is identical to instantly claimed SEQ ID NO: 10." OA at 8 (Referring to claim "16(g)").
Without acquiescing to the merits of the rejection, if any, and solely to advance
prosecution, Applicant has amended claim 16. As amended, independent claim 16 no longer recites "SEQ ID NO: 10". Claims 17 -28 ultimately depend from and incorporate all of the features
of claim 16. Therefore, the §102 rejections over claims 16-28 should be withdrawn. IV.
Response to the Double-Patenting Re
j
ection
Claims 16-28 were rejected on the ground of nonstatutory obviousness-type double
patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10,214,562.
As discussed above, independent claim 16 has been amended and claims 17-28 depend
therefrom. The rejections on the grounds of nonstatutory double patenting are obviated and
therefore traversed. MPEP § 804(I)(B)(1).
CONCLUSION

NEXT OFFICE ACTION: DETAILED ACTION
Notice of Pre-AIA  or AIA  Status
The present application is being examined under the pre-AIA  first to invent provisions.
Please note that this is a 2nd Non-Final to present new double patenting rejections.
Status of the Claims
In the reply filed 3/1/24, Applicants amended claims 16 and 20-24.
Claims 16-28 are pending and under consideration.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1/10/24 was considered by the examiner.
Claim Rejections-Withdrawn
The rejection of claims 16-28 under pre-AIA  35 U.S.C. 102(b) as being anticipated by Gelber et al. (WO2011/126882, cited on IDS) is withdrawn due to amendment of claim 16.
Response to Arguments
Applicant’s arguments with respect to the rejection above have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim interpretation
The limitation “consisting essentially of” is defined in the specification to only include additional amino acids that do not materially affect the claimed inventions basic and novel characteristics, namely the anti-inflammatory capacity. The definition specifically excludes peptides that have a sequence of a complete serpin protein and excludes peptide sequences that are equal to or longer than 37 amino acids of any naturally occurring serpin protein [PGPUB 0077]. Therefore, the peptides “consisting essentially of” can be embedded in a sequence (must be less than 37 amino acids) as long as the added amino acids do not affect the basic function of the peptide (anti-inflammatory capacity).
Claim Rejections - 35 USC § 102-NEW
The following is a quotation of the appropriate paragraphs of pre-AIA  35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 16-19, 21-23 and 25 are rejected under pre-AIA  35 U.S.C. 102(b) as being anticipated by Cercek et al. (USPN 5,270,171). This is a NEW rejection necessitated by amendment of claim 16.
Cercek et al. teach cancer recognition factor (SCM factor) peptides (Abstract).
Cercek et al. teach the SCM peptide of X1-I-P-P-E-V-K-F-N-K-P-F-V-F-L-M-I-E-Q-N-T-K-S-P-L-F-M-G-K (claim 27). The peptide of Cercek et al. comprises instantly claimed SEQ ID NO: 1 (claim 16 (e)) (please see bolded amino acids). As indicated above, the peptides “consisting essentially of” can be embedded in a sequence (must be less than 37 amino acids) as long as the added amino acids do not affect the basic function of the peptide (anti-inflammatory capacity) [PGPUB 0077]. In the instant case, Cercek et al. teach that the SCM peptide decrease production TNF (bottom of col. 10). As evidenced by the instant specification, the instantly claimed peptides reduce inflammation by reducing the activity or expression of TNF-alpha [PGPUB 0105]. Therefore, the peptide of Cercek et al. meets the limitation of “consisting essentially” of SEQ ID NO: 1 because it is less than 37 amino acids and doe not affect the basic function of the peptide.
With respect to claims 17-18, the bolded amino acids of the peptide X1-I-P-P-E-V-K-F-N-K-P-F-V-F-L-M-I-E-Q-N-T-K-S-P-L-F-M-G-K (claim 27), meet the limitation of “one second peptide or protein”.
With respect to claim 19, Cercek et al. also teach SCM peptides can be conjugated to biotin, meeting the limitation of epitope tag (top of col. 34).
With respect to claims 21 and 22, the peptide of Cercek et al. is 29 amino acids, meeting the limitation of 37 and 35 amino acid residues or fewer.
With respect to claim 23, Cercek et al. also teach the peptide fragment of M-X2-P-P-X5-X6-K-F-X9-K-P-F-X13-F-X15-MX17-X18-X19-X20-X21-K, wherein X2, X6, X13, X15 and X17 are independently selected from I, L, and V; X5 and X18 are selected from D and E;  X9, X19 and X20 are selected from Q and N; X21 is selected from S and T. The fragment above meets the limitation of 16(e) and is 22 amino acids in length.
With respect to claim 25, Cercek et al. teach the SCM peptides in combination with a pharmaceutically acceptable carrier (col. 13, 1st para.; col. 41, 3rd para.).
Claim Rejections - 35 USC § 103-NEW
The following is a quotation of pre-AIA  35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA  35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 16-19 and 21-28  are rejected under pre-AIA  35 U.S.C. 103(a) as being unpatentable over Cercek et al. (USPN 5,270,171). This is a NEW rejection necessitated by amendment of claim 16.
The teachings of Cercek et al. are presented above. Cercek et al. does not teach the specific peptides consist of 21 or fewer amino acids or formulated for oral, parenteral, intramuscular…or subcutaneous administration (the limitations of claims 24-28). However, the teachings of Cercek et al. are suggestive of the limitations.
Cercek et al. teach fragments of the SCM peptides (col. 7, 2nd para. and part (4)). Cercek et al. teach fragments of 21 amino acids in length, such as F1 (col. 26). Please note that F1 does not meet the limitation of consists essentially of SEQ ID NO: 1 because there are 2 amino acid substitutions in F1 that are not recited in instantly claimed SEQ ID NO:21. Cercek et al. teach that the fragments are expected to have the same activity (bottom of col. 40).
It would have been obvious to a person or ordinary skill in the art to optimize the SCM peptides of Cercek et al. A person of ordinary skill in the art would look to the teachings of Cercek et al. and have a motivation to create fragments of 22 or 21 amino acids in length because Cercek et al. exemplify fragments of the length and teach they are expected to have the same activity. There is a reasonable expectation of success given that Cercek et al. teach the method of making and isolated fragments of the SCM polypeptides (col. 46).
With respect to claims 26-28, Cercek et al. teach the SCM peptides in water (Example 3, col. 42; Example 5, col. 44). Please note that the limitation “formulated for…” is regarded that intended use of a composition or product will not further limit claims drawn to a composition or product. See, e.g., Ex parte Masham, 2 USPQ2d 1647 (1987) and In Re Hack 114, USPQ 161. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim limitation. In the instant case, the SCM peptide in water are capable of oral administration, cutaneous and subcutaneous (parenteral).
Claims 16-28  are rejected under pre-AIA  35 U.S.C. 103(a) as being unpatentable over Cercek et al. (USPN 5,270,171) in view of Lifetein.com (https://www.lifetein.com/blog/d-amino-acid-peptides-to-resist-common-proteases/ 3/28/2012). This is a NEW rejection necessitated by amendment of claim 16.
The teachings of Cercek et al. are presented above in detail. The reference does not teach the SCM peptide comprise one or more D-amino acids. However, the teachings of Lifetein cure this deficiency.
Lifetein teaches that design of D-peptides have been applied to increase bioactive peptides resistance to endogenous enzymes, as well as their bioavailability. Lifetein teaches that the significantly improved biostability of D-peptides usually leads to longer in vivo circulation times, making D-peptides more attractive and efficient than their L-peptide counterparts.
It would have been obvious to a person of ordinary skill in the art to include D- amino acids in the SCM peptide of Cercek et al. because Lifetein teaches that peptides that incorporate D-amino acids have improved biostability leading to longer circulating time and are more efficient than their L-peptide counterparts. There is a reasonable expectation of success given that peptide incorporating D-amino acids are routine in the art.
Double Patenting-Maintained
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA  as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
The rejection of claims 16-26 on the grounds of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10,214,562 is maintained. Although the claims at issue are not identical, they are not patentably distinct from each other. Claims 1,10-12 and 15-16 of the USPN claims peptides for oral administration (SEQ ID NO: 1 and 2) that are identical to instantly claimed SEQ ID NO: 1, anticipating the limitations of claims 16 and 21-25. Claims 2-5,13 and 17 of USPN claims an oral formulation comprising at least one second peptide or protein, wherein the at least one second protein or peptide is attached to the peptide as a fusion peptide, wherein the second peptide is an epitope tag or half-life extender, wherein the peptide comprises one or more D-amino acids, anticipating the limitations of instant claims 17-20. The USPN claim 9 claims the composition comprises a pharmaceutically acceptable carrier, meeting the limitation of claim 25.
The rejection of claims 16-28 on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 10,899,797 is maintained.
Claims 1 and 4-6 of the USPN claims SEQ ID NO: 1 , wherein the peptide is 17 amino acids and meets the limitations of claims 16.  The USPN also claims the peptide is fused to another peptide or protein, wherein the peptide or protein is an epitope tag, half-life extender or both, wherein the peptide comprises one or more D-amino acids, wherein the composition further comprises a pharmaceutically acceptable carrier (claim 19-12 of USPN), meeting the limitation of instant claims 17-20. The USPN claims composition is administered orally, subcutaneous, intravenous, intramuscular, intraperitoneal, nasally, rectally, intravaginally, parenterally, intracisternally or topically (claims 13-15 of USPN), meeting the limitations of claims 25-28.
The rejection of claims 16-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 6-7, 9-10, 13 and 17-27 of copending Application No. 17/215,738 is maintained.
The copending Application claims SEQ ID NO: 1,4, 8, wherein the peptide has a size of 35 amino acids of less, meeting the limitations of claims 16 and 21-24 (copending Application claims 1-3, 13,21). The copending Application claims the oral or subcutaneous administration (copending claims 6, 17), meeting the limitation of claims 26-28. The copending Application claims a second peptide or protein attached to the peptide to form a fusion protein, wherein the second peptide is an epitope tag or half-life extender or both, wherein the peptide comprises one or more D-amino acids (copending claims 7, 9-10, 18-20), meeting the limitations of claims 17-20).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 3/1/24 have been fully considered but they are not persuasive. Applicants argue that the amendment of claim 16 obviated the rejection.
This argument is not persuasive for the reasons presented above. The ODP rejections are maintained.
Double Patenting-NEW
Claims 16-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 9,951,104.
The USPN claims a composition comprising a peptide, wherein the peptide consists of SEQ ID NO: 1. SEQ ID NO: 1 of the USPN is identical to instantly claimed SEQ ID NO: 1. The USPN also claims a second peptide or protein, wherein the second protein or peptide is an epitope tag or half life extender or both, comprises a carrier, comprises an injectable carrier (claims 1-6). Claim 7 of the USPN is a fusion polypeptide of SEQ ID NO: 1 and an epitope tag or half-life extender (claims 7-9). Therefore, the USPN anticipates the instant claims.
Claims 16-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 8,975,224.
The USPN claims a composition for treating an inflammatory condition, comprising administering an oral formulation comprising a peptide consisting of SEQ ID NO: 1. SEQ ID NO: 1 of the USPN is identical to instantly claimed SEQ ID NO: 1. The USPN also claims a second peptide or protein, wherein the second protein or peptide is an epitope tag or half-life extender or both, wherein one of the amino acids is a D-amino acid (claims 1-8). Therefore, the USPN anticipates the instant claims.
Claims 16-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 10-13, 22-23 and 26-27 of copending Application No. 18/148,942.
The copending Application claims a method of reducing inflammation in a subject comprising administering SEQ ID NO:2. SEQ ID NO: 2 of the copending Application is identical to instantly claimed SEQ ID NO: 1. The copending application claims oral, parenteral…and intranasal administration. Therefore, the copending Application anticipates the instant claims.
Claims 16-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of 18/582,061 of copending Application No. 18/148,942.
The copending Application claims a method of treating a disease associated with a cytokine storm, a method of reducing infarct size and a method of treating AMI with SEQ ID NO: 1. SEQ ID NO: 1 of the copending Application is identical to instantly claimed SEQ ID NO: 1. The copending Application claims an oral formulation, comprises an epitope tag or half-life extender, comprises D- amino acids, is less than 32, 22 or 21 amino acids and comprises a carrier (claims 1-16). Therefore, the copending Application anticipates the instant claims.
Conclusion
No claims are allowed.

CITED REFERENCE SUMMARIES: Ref WO2010081131: Claims:
An isolated and modified peptide comprising an amino acid sequence selected from the group consisting of SEQ ID NO: 1, SEQ ID NO: 6, SEQ ID NO:7, R[S/K]XXPP and SXXPP, wherein F= phenylalanine, N= asparagine, R= arginine, P= proline, L= leucine, M= methionine, S= serine, G= glycine, K= lysine, V= valine, and X= any amino acid.
The isolated and modified peptide of claim 1, wherein the modified peptide comprises a chemical modification.
The isolated and modified peptide of claim 2, wherein the chemical modification is selected from the group consisting of addition of a chemical functional group, glycosylation, phosphorylation, or peptide cyclization.
The isolated and modified peptide of any of the preceding claims, wherein the modified peptide comprises a fusion protein.
A derivative or analog of SEQ ID NO: 1.
A pharmaceutical composition comprising a modified peptide or a peptide fragment of any of the preceding claims and a pharmaceutically acceptable carrier.
A use of a pharmaceutical composition of claim 6 for inhibiting one or more kinases in a subject.
The use according to claim 7, wherein the one or more kinases is selected from the group consisting of kinases listed in TablelÎ´ or Table 20.
Ref WO2011126882: Claims:
1. A peptide selected from the group consisting of SEQ ID NOs: 2-98 and peptides set forth in Table 7, and derivatives and conservative amino acid substitution variants thereof.
2. The peptide of claim 1 , wherein the peptide is selected from the group consisting of SEQ ID NO.
6, 11, and 16, and derivatives and conservative substitution variants thereof.
3. The peptide of claim 1, wherein the peptide comprises the amino acid sequence selected from the group consisting of SEQ ID NO. 29, 30, 31, 32, 33, 34, and 35 and derivatives and conservative amino acid substitution variants thereof.
4. An isolated peptide selected from the group consisting of SEQ ID NOs: 106-110, an analog, a derivative, a chemical derivative, and a salt thereof, wherein
X!X2X3 is any permutation of amino acids RPP;
X4X5X6X7X8X9X10Xn is any permutation of amino acids MIVWFNRP; χι2χΐ3χΐ4χΐ5χΐ6χΐ7 ^ any permutation of amino acids PLIAVS;
χι8χΐ9χ2οχ2ΐχ22 ig any permutation of amino acids HTHGQ; and
χ23χ24χ25χ26 ^ any permutation of amino adds KVIN,
with the proviso that SEQ ID NOs: 106-110 are not SEQ ID 1.
5. The isolated peptide of claim 1, wherein the peptide is selected from the group consisting of SEQ ID NOs: 106 and 110, an analog, a derivative, a chemical derivative, and a salt thereof.
6. The peptide of claim 1, wherein the peptide is selected from the group consisting of SEQ ID NOs:
111 and 115, an analog, a derivative, a chemical derivative, and a salt thereof.
7. An isolated peptide selected from the group consisting of SEQ ID NO. 117, an analog, a
derivative, a chemical derivative, and a salt thereof, wherein
χ27χ28χ29χ3οχ3ΐ ig any permutation of amino adds SGRPP; and
χ32χ33χ34χ35χ36χ37χ38χ39χ40χ41χ42χ43χ44χ45χ46 ί8 &ny permutadon Qf aminQ ^
QTILFMAKVINPVGA,
with the proviso that SEQ ID NO. 117 is not SEQ ID 1.
8. The peptide of claim 4, wherein the peptide is SEQ ID NO. 118, an analog, a derivative, a
chemical derivative, or a salt thereof.
9. An isolated peptide selected from the group consisting of SEQ ID NOs: 119-123, an analog, a derivative, a chemical derivative, and a salt thereof, wherein
Y1 is M, Nleu or R;
Y2 is W, T, N or H;
Y3 is I or T; and
Y4 is M, Nleu or Thr,
with the proviso that SEQ ID NOs: 119-123 are not SEQ ID 1.
10. The peptide of claim 6, wherein the peptide is is selected from the group consisting of SEQ ID NOs: 120-123, an analog, a derivative, a chemical derivative, and a salt thereof.
11. The peptide of claim 6, wherein the peptide is selected from the group consisting of SEQ ID NOs:
124-131, an analog, a derivative, a chemical derivative, and a salt thereof.
12. The peptide of claim 6, wherein the peptide is SEQ ID NO. 127, an analog, a derivative, a
chemical derivative, and a salt thereof.
13. The peptide of any of the preceding claims, wherein the peptide comprises at least one D-amino acid.
14. The peptide of any of the preceding claims, wherein the peptide comprises at least one beta-amino acid.
15. The peptide of any of the preceding claims, wherein the peptide comprises at least one peptide bond replacement.
16. The peptide of any of the preceding claims, wherein the peptide comprises at least one peptide bond replacement selected from the group consisting of urea, thiourea, carbamate, sulfonyl urea, trifluoroethylamine, ortho-(aminoalkyl)-phenylacetic acid, para-(aminoalkyl)-phenylacetic acid, meta-(aminoalkyl)-phenylacetic acid, thioamide, tetrazole, boronic ester, olefinic group, and derivatives thereof.
17. The peptide of any of the preceding claims, wherein the peptide comprises at least one amino aid selected from the group consisting of homocysteine, phosphoserine, phosphothreonine, phosphotyrosine, hydroxyproline, gamma-carboxyglutamate; hippuric acid, octahydroindole-2- carboxylic acid, statine, l,2,3,4,-tetrahydroisoquinoline-3-carboxylic acid, penicillamine (3- mercapto-D-valine), ornithine, citruline, alpha-methyl-alanine, para-benzoylphenylalanine, para- amino phenylalanine, p-fluorophenylalanine, phenylglycine, propargylglycine, sarcosine, and tert- butylglycine), diaminobutyric acid, 7-hydroxy-tetrahydroisoquinoline carboxylic acid, naphthylalanine, biphenylalanine, cyclohexylalanine, amino-isobutyric acid, norvaline, norleucine, tert-leucine, tetrahydroisoquinoline carboxylic acid, pipecolic acid, phenylglycine,
homophenylalanine, cyclohexylglycine, dehydroleucine, 2,2-diethylglycine, 1-amino-l-  cyclopentanecarboxylic acid, 1-amino-l-cyclohexanecarboxylic acid, amino-benzoic acid, amino- naphthoic acid, gamma-aminobutyric acid, difluorophenylalanine, nipecotic acid, alpha-amino butyric acid, thienyl-alanine, t-butylglycine, and derivatives thereof.
18. The peptide of any of the preceding claims, wherein the peptide inhibits at least one kinase.
19. The peptide of any of the preceding claims, wherein the peptide inhibits at least one kinase
selected from the group consisting of MAPK9 (JNK2), NEK9, MST4, CHEKl (CHKl), SPHKl, SPHK2, MAPK14 (p38 alpha), MAP4K2 (GCK), SGK (SGK1), RPS6KA1 (RSK1), MAPK10 (JNK3), RPS6KA3 (RSK2), RPSKB 1 (p70S6K), BRAF, PRKD2 (PKD2), MAP3K9 (MLK1), MAP3K8 (COT), PRKX, and any combinations thereof.
20. The peptide of any of the preceding claims, wherein the peptide inhibits the production of at least one pro-inflammatory cytokine in a cell.
21. The peptide of any of the preceding claims, wherein the peptide comprises at least one ligand.
22. The peptide of any of the preceding claims, wherein the peptide is PEGylated.
23. The peptide of any of the preceding claims, wherein the peptide is glycosylated.
24. The peptide of any of the preceding claims, wherein the peptide is a fusion protein.
25. A composition consisting essentially of one or more peptide of any of the preceding claims as an active ingredient.
26. A pharmaceutical composition or medicament comprising the composition of claim 25, and a pharmaceutically acceptable carrier.
27. The pharmaceutical composition or medicament of claim 26, further comprising a second
pharmaceutically active agent.
28. Use of a composition of claim 25 for preventing, treating and/or ameliorating immune related and/or inflammatory disease.
29. Use of pharmaceutical composition or medicament of claim 26 or 27 for preventing, treating and/or ameliorate immune related and/or inflammatory diseases.
30. The use of claims 28 or 29, wherein the immune related and/or inflammatory disease is selected from the group consisting of diabetes, pre -diabetic condition, rheumatoid arthritis, chronic obstructive pulmonary disease, and atherosclerosis.
A method of preventing, treating and/or ameliorating an immune related and/or an inflammatory disease in a subject comprising administering to the subject a pharmaceutical composition or medicament of claim 26 or 27.
32. The method of claim 31 , wherein the immune related and/or inflammatory disease is selected from the group consisting of diabetes, pre-diabetic condition, rheumatoid arthritis, chronic obstructive pulmonary disease and atherosclerosis.
33. A method of treating diabetes or pre-diabetic condition in a subject comprising administering to the subject a pharmaceutical composition of claim 26 or 27.
34. A method for treating and/or preventing or inhibiting or slowing the development of rheumatoid arthritis in a subject affected with arthritis, the method comprising: administering to the subject a pharmaceutical composition of claim 26 or 27.
35. The method of claim 34, wherein the subject has not been diagnosed with diabetes.
36. A method for treating and/or preventing or inhibiting or slowing the development of rheumatoid arthritis in a subject that has previously been diagnosed with diabetes, the method comprising:
(a) selecting a subject that has been previously diagnosed with diabetes and that is not being treated with a pharmaceutical composition of claim 26 or 27, and
(b) administering to the subject a therapeutically effective amount of a pharmaceutical composition of claim 26 or 27 to the subject.
37. A method for treating and/or preventing or inhibiting or slowing the development of rheumatoid arthritis in a subject that has been previously diagnosed with diabetes, the method comprising:
(a) selecting a subject that has been previously diagnosed with diabetes and that is being treated with a pharmaceutical composition of claim 26 or 27, and
(b) adjusting the therapeutic regime of the subject such that at least one symptom of rheumatoid arthritis is reduced.
38. The method of claim 37, wherein adjusting the therapeutic regime comprises at least one of:
(a) modulating the dose of the pharmaceutical composition of claim 26 or 27,
(b) modulating the frequency of administration of the pharmaceutical composition of claim 26 or 27, or  (c) altering the site or mode of administration.
39. The method of any of claims 34-38, further comprising a step of diagnosing rheumatoid arthritis in the subject prior to administering the pharmaceutical composition of claim 26 or 27.
40. The method of any of claims 34-39, wherein the subject is diagnosed with rheumatoid arthritis by having increased levels of at least one rheumatoid arthritis marker compared to the level of that marker in a subject not diagnosed with rheumatoid arthritis.
41. The method of claim 40, wherein the rheumatoid arthritis marker is selected from the group consisting of rheumatoid factor, IL6, IL-8 or IL-17.
42. A method for treating an inflammatory disease in a subject, the method comprising: administering to the subject a therapeutically effective amount of a pharmaceutical composition of claim 26 or 27.
43. The method of claim 42, wherein the subject does not have or has not been diagnosed with
diabetes.
44. A method for treating an inflammatory disease in a subject that has previously been diagnosed with diabetes, the method comprising:
(a) selecting a subject that has been previously diagnosed with diabetes and that is not being treated with a pharmaceutical composition of claim 26 or 27, and
(b) administering to the subject a therapeutically effective amount of pharmaceutical composition of claim 26 or 27.
45. A method for treating an inflammatory disease in a subject that has been previously diagnosed with diabetes, the method comprising:
(a) selecting a subject that has been previously diagnosed with diabetes and that is being treated with a therapeutic regime comprising a pharmaceutical composition of claim 26 or 27, and
(b) adjusting the therapeutic regime of the subject such that at least one symptom of the inflammatory disease is reduced.
46. The method of claim 45, wherein adjusting the therapeutic regime comprises at least one of:
(a) modulating the dose of the pharmaceutical composition of claim 26 or 27,
(b) modulating the frequency of administration of the pharmaceutical composition of claim 26 or 27, or
(c) altering the site or mode of administration.
47. The method of any of claims 42-46, further comprising a step of diagnosing a subject with an inflammatory disease prior to administering the pharmaceutical composition of claim 26 or 27.
48. The method of any of claims 42-47, wherein the subject is diagnosed with an inflammatory
disease by having increased levels of at least one inflammatory disease marker compared to the level of that marker in a subject not having the inflammatory disease.
49. The method of claim 48, wherein the inflammatory disease marker is IL6, IL-8, or IL-17.
50. A method for preventing, inhibiting, slowing down the progression of COPD and/or treating COPD or a related disorder in a subject affected with COPD or a related disorder comprising administering to the subject a therapeutically effective amount of a pharmaceutical composition of claim 26 or 27.
51. The method of claim 50, wherein the subject does not have diabetes.
52. A method for treating and/or preventing, inhibiting or slowing down the progression of COPD or a related disorder in a subject that has previously been diagnosed with diabetes, the method comprising:
(a) selecting a subject that has been previously diagnosed with diabetes and that is not being treated with a pharmaceutical composition of claim 26 or 27, and
(b) administering a therapeutically effective amount of a pharmaceutical composition of claim 26 or 27 to the subject.
53. A method for treating and/or preventing, inhibiting or slowing down the progression of COPD or a related disorder in a subject that has been previously diagnosed as having diabetes, the method comprising:
(a) selecting a subject that has been previously diagnosed with diabetes and that is being treated with a therapeutic regime comprising a pharmaceutical composition of claim 26 or 27, and
(b) adjusting the therapeutic regime of the subject such that at least one symptom of COPD or a related disorder is reduced.
54. The method of claim 54, wherein adjusting the therapeutic regime comprises at least one of:
(a) modulating the dose of the pharmaceutical composition of claim 26 or 27,
(b) modulating the frequency of administration of the pharmaceutical composition of claim 26 or 27, or
(c) altering the site or mode of administration.
55. The method of any of claims 50-54, further comprising a step of diagnosing a subject with COPD or a related disorder prior to administering the pharmaceutical composition of claim 26 or 27.
56. The method of any of claims 50-55, wherein the subject is diagnosed with COPD or a related disorder by having increased levels of at least one COPD marker compared to the level of that marker in a subject not having COPD or a related disorder.
57. The method of claim 56, wherein the COPD marker is IL6, IL-8, or IL-17.
58. The method of any of claims 50-57, wherein the subject is diagnosed with COPD or a related disorder by assessing lung function in the subject.
59. The method of any of claims 50-58, wherein the pharmaceutical composition of claim 26 or 27 is administered using an inhaler.
60. A method for treating and/or preventing atherosclerosis in a subject, the method comprising: administering to a subject a therapeutically effective amount of a pharmaceutical composition of claim 26 or 27.
61. The method of claim 60, wherein the subject does not have or has not been diagnosed as having diabetes.
62. A method for treating and/or preventing atherosclerosis in a subject that has previously been diagnosed with diabetes, the method comprising:
(a) selecting a subject that has been previously diagnosed with diabetes and that is not being treated with a pharmaceutical composition of claim 26 or 27, and
(b) administering a therapeutically effective amount of a pharmaceutical composition of claim 26 or 27 to the subject.
63. A method for treating and/or preventing atherosclerosis in a subject that has been previously diagnosed with diabetes, the method comprising:
(a) selecting a subject that has been previously diagnosed with diabetes and that is being treated with a therapeutic regime comprising a pharmaceutical composition of claim 26 or 27, and
(b) adjusting the therapeutic regime of the subject such that at least one symptom of
atherosclerosis is reduced.
64. The method of claim 63, wherein adjusting the therapeutic regime comprises at least one of:
(a) modulating the dose of the pharmaceutical composition of claim 26 or 27,
(b) modulating the frequency of administration of the pharmaceutical composition of claim 26 or 27, or
(c) altering the site or mode of administration.
65. The method of any of claims 60-64, further comprising a step of diagnosing a subject as having atherosclerosis prior to administering the pharmaceutical composition of claim 26 or 27.
66. The method of any of claims 60-65, wherein the subject is diagnosed as having atherosclerosis by having increased levels of at least one atherosclerotic marker compared to the level of that marker in a subject not having atherosclerosis.
67. The method of claim 66, wherein the marker is atherosclerotic marker is C-reactive protein, fibrinogen, homocysteine, Lpl, IL6, IL-8 or IL-17.
68. The method of any of claims 34-67, wherein the pharmaceutical composition of claim 26 or 27 thereof is administered topically, systemically, by sustained release, or by local injection.
69. The method of any of claims 34-68, wherein the subject is a mammal.
70. The method of any of claims 34-69, wherein the mammal is a human.
71. The method of any of claims 34-70, wherein the mammal is a non-human mammal.
72. The pharmaceutical composition of claim 26 or 27 for use in the treatment and/or prevention of rheumatoid arthritis in a subject.
73. The use according to claim 72, wherein the subject has not been diagnosed with diabetes.
74. The use of any of claims 72-73, further comprising a step of diagnosing a subject as having
rheumatoid arthritis prior to administering the pharmaceutical composition of claim 26 or 27 thereof.
75. The use of any of claims 72-74, wherein the subject is diagnosed with rheumatoid arthritis by having increased levels of at least one rheumatoid arthritis marker compared to the level of that marker in a subject not having rheumatoid arthritis.
76. The use of claim 75, wherein the rheumatoid arthritis marker is rheumatoid factor, IL6, IL-8 or IL-17.
77. The pharmaceutical composition of claim 26 or 27 for use in the treatment of an inflammatory disease in a subject.
78. The use according to claim 77, wherein the subject does not have or has not been diagnosed with diabetes.
79. The use of any of the claims 77-78, further comprising a step of diagnosing a subject as having an inflammatory disease prior to administering the pharmaceutical composition of claim 26 or 27.
80. The use of claims 77-79, wherein the subject is diagnosed as having an inflammatory disease by having increased levels of at least one inflammatory disease marker compared to the level of that marker in a subject not having the inflammatory disease.
81. The use of claim 80, wherein the inflammatory disease marker is IL6, IL-8 or IL-17.
82. The pharmaceutical composition of claim 26 or 27 for use in the treatment of COPD or a related disorder in a subject that has not been diagnosed with diabetes.
83. The use of claim 82, further comprising a step of diagnosing a subject as having COPD or a
related disorder prior to administering the D3 peptide, analog or a fragment thereof.
84. The use of any of claims 82-83, wherein the subject is diagnosed as having COPD or a related disorder by having increased levels of at least one marker compared to the level of that marker in a subject not having COPD or a related disorder.
85. The use of claim 84, wherein the COPD marker is IL6, IL-8 or IL-17.
86. The use of any of claims 82-85, wherein the subject is diagnosed as having COPD or a related disorder 
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