Office Action 1: Non-Final Rejection (2024-03-22)
Rejection types: Double Patenting

CLAIMS:
1.000726 What is Claimed:

1\. An isolated antibody, or antigen-binding fragment thereof, that immunospecifically binds to platelet factor 4 (PF4), the antibody or antigen-binding fragment thereof comprising a light chain CDR and framework region comprising SEQ ID NO: 4 and a heavy chain CDR and framework region comprising SEQ ID NO: 10.

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OFFICE ACTION:
DETAILED ACTION
Notice of Pre-AIA  or AIA  Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 11,524,999. This is a statutory double patenting rejection.
Conclusion

APPLICANT REBUTTAL: DOCKET NO.: 103241.006892
PATENT
Application No.: 18/071,057 Office Action Dated: March 22, 2024 REMARKS
Claim 1 is canceled herein and claims 2-24 are newly added. Support for these claims is found throughout the specification as originally filed. No new subject matter has been added.
Claim Rejections - Double Patenting
Claim 1 stands rejected on the grounds of statutory double patenting for allegedly claiming the same invention as claim 1 of U.S. Patent No. 11,524,999.
Without conceding the correctness of rejection, but rather to expedite prosecution, claim
1 is canceled herein, thereby rendering moot the rejection. Applicant respectfully requests withdrawal of the statutory double patenting rejection.
CONCLUSION

NEXT OFFICE ACTION: DETAILED ACTION
Notice of Pre-AIA  or AIA  Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim 1 has been cancelled.  Claims 2-24 have been newly added.
Applicant's arguments filed 6/26/2024 have been fully considered but they are not persuasive.
The prior art of record does not disclose or suggest polynucleotides encoding the light chain and heavy chain anti-platelet factor 4 (PF4) antibodies or antigen binding fragments recited in the claims.  The prior art of record does not disclose or suggest expression vectors or host cell containing them.  SEQ ID NO: 4 is 74 amino acids and contains the light chain CDRs of SEQ ID NOS: 1, 2, and 3 and the second and third framework regions. SEQ ID NO: 4 is contained within SEQ ID NOS: 5 and 6. SEQ ID NO: 10 is 83 amino acids and contains the heavy chain CDRs of SEQ ID NOS: 7, 8, and 9 and the second and third framework regions. SEQ ID NO: 10 is contained within SEQ ID NOS: 11 and 12. See at least Table 2.
Specification
The substitute specification filed 5/16/2023 has been entered.
Double Patenting
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 2-4, 11-13, and 20-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 10-12 of U.S. Patent No. 11,524,999. Although the claims at issue are not identical, they are not patentably distinct from each other because issued claims 10-13 are directed to recombinant cells comprising polynucleotides encoding sequences comprising SEQ ID NOS: 4 and 10.  Issued claims 1-5 are directed to antibodies comprising SEQ ID NOS: 4 and 10; SEQ ID NOS: 5 and 11; and SEQ ID NOS: 6 and 12.  SEQ ID NOS: 4-6 and 10-12 correspond to instant SEQ ID NOS: 4-6 and 10-12.  Issued claims 10-12 contain the polynucleotides of instant claims 2, 11, and 20.  The issued claims comprise these polynucleotides and fairly include polynucleotides encoding the polypeptides of SEQ ID NOS: 5-6 and 11-12 recited in issued claims 2-5.
The issued claims are not patentably distinct from the instant claims.
Claims 5-10, 14-19, and 23-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 10-12 of U.S. Patent No. 11,524,999 in view of Cabilly et al. U.S. Patent No. 4,816,567 (of record).
The issued claims are as described above.  Issued claims 12-13 disclose the host cells of instant claims 9-10 and 18-19.  The issued claims do not specifically disclose an expression vector.
Cabilly et al. discloses using expression vectors when recombinantly producing antibodies from polynucleotides encoding the heavy or light chain.  Polynucleotides encoding both chains can be in the same expression vector.  See at least claims and column 5, lines 35-46; column 8, lines 20-45; and column 12, lines 57-65.
It would have been obvious to use an expression vector as the vector in the recombinant cells of the issued claims.  One would have been motivated to do so in order to recombinantly produce the encoded proteins.
The issued claims in view of Cabilly et al. are not patentably distinct from the instant claims.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA  35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 20-24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA  35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 20-24 are not original claims.  They were added by amendment on 6/24/2024.  No specific basis for these claims was pointed to and none is apparent.
The specification does not appear to disclose a composition of two discrete polynucleotides as recited in claim 20 and dependent claims 21-22.  The specification does not appear to disclose a single expression vector containing the two polynucleotides of claim 22 as recited in claim 23 or a host cell containing such an expression vector as recited in claim 24.
These claims constitute new matter.  Applicant should point to page and line number in the specification to provide support for these claims.
The following is a quotation of 35 U.S.C. 112(b):
(b)  CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 21-24 are rejected 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.
Claims 21-24 depend upon claim 20 which is directed to a composition.  Claims 21-22 incorrectly refer to the polynucleotide of claim 20 rather than the composition of claim 20.  Claim 23 refers to the polynucleotide of claim 22.  It is noted that an expression vector cannot contain a composition having two discrete elements as in claim 22.  It appears that this claim should recite an expression vector comprising a polynucleotide encoding SEQ ID NO: 5 and a polynucleotide encoding SEQ ID NO: 11.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action.  Accordingly, THIS ACTION IS MADE FINAL.  See MPEP § 706.07(a).  Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action.  In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action.  In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.

CITED REFERENCE SUMMARIES: Ref US11524999B2: [content unavailable]
Ref US11524999: Claims:
1. An isolated antibody, or antigen-binding fragment thereof, that immunospecifically binds to platelet factor 4 (PF4), the antibody or antigen-binding fragment thereof comprising a light chain CDR and framework region comprising SEQ ID NO: 4 and a heavy chain CDR and framework region comprising SEQ ID NO: 10.
2. The isolated antibody, or antigen-binding fragment thereof, of claim 1, wherein the isolated antibody or antigen-binding fragment thereof has a light chain variable domain comprising the amino acid sequence of SEQ ID NO: 5 and a heavy chain variable domain comprising the amino acid sequence of SEQ ID NO: 11.
3. The isolated antibody, or antigen-binding fragment thereof, of claim 2, wherein the light chain variable domain has the amino acid sequence of SEQ ID NO: 5 and the heavy chain variable domain has the amino acid sequence of SEQ ID NO: 11.
4. The isolated antibody, or antigen-binding fragment thereof, of claim 1, wherein the isolated antibody or antigen-binding fragment thereof has a light chain comprising the amino acid sequence of SEQ ID NO: 6 and a heavy chain comprising the amino acid sequence of SEQ ID NO: 12.
5. The isolated antibody, or antigen-binding fragment thereof, of claim 4, wherein the light chain has the amino acid sequence of SEQ ID NO: 6 and the heavy chain has the amino acid sequence of SEQ ID NO: 12.
6. The isolated antibody, or antigen-binding fragment thereof, of claim 1, wherein the antibody isotype is IgG.
7. The isolated antibody, or antigen-binding fragment thereof, of claim 1, wherein the antigen-binding fragment is a Fv, Fab, Fab', Fab'-SH or F(ab')2.
8. The isolated antibody, or antigen-binding fragment thereof, of claim 1, wherein the antibody is a single chain antibody, a diabody, or a multispecific antibody formed from more than one antigen-binding fragment.
9. A pharmaceutical composition comprising the isolated antibody or the antigen-binding fragment of claim 1 and a pharmaceutically acceptable carrier.
10. A recombinant cell comprising:
(a) a vector comprising a nucleic acid molecule encoding a heavy chain CDR and framework region comprising SEQ ID NO: 10;
(b) a vector comprising a nucleic acid molecule encoding a light chain CDR and framework region comprising SEQ ID NO: 4; or
(c) the vectors of both (a) and (b).
11. A recombinant cell comprising:
(a) a vector comprising a nucleic acid molecule encoding a heavy chain comprising SEQ ID NO: 12;
(b) a vector comprising a nucleic acid molecule encoding a light chain comprising SEQ ID NO: 6; or
(c) the vectors of both (a) and (b).
12. The recombinant cell of claim 11, wherein the recombinant cell is a eukaryotic cell, a yeast cell, a plant cell or a bacterium.
13. The recombinant cell of claim 12, wherein the eukaryotic cell is a 293T cell or a Chinese Hamster Ovary (CHO) cell.
14. A method of reducing thrombosis in a subject having heparin-induced thrombocytopenia (HIT), the method comprising administering to the subject a therapeutically effective amount of the isolated antibody or antigen-binding fragment thereof of claim 1, thereby reducing thrombosis.
15. The method of claim 14, wherein the isolated antibody or antigen-binding fragment thereof is administered with heparin.
16. The method of claim 15, wherein the heparin is heparin fragment, low-molecular-weight heparin or unfractionated heparin.
17. The method of claim 14, wherein the isolated antibody or antigen-binding fragment thereof is administered with a heparin mimic.
18. The method of claim 17, wherein the heparin mimic is fondaparinux.