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United States Rvtent and Trademark Office 



UNITED STATES DEPARTMENT OF COMMERCE 
U ni tod Stnto* Potent and Trndomarlc Offtoo 

Address: COMMISSIONER OF PATENTS AND TRADEMARKS 
Washington, D.C. 20231 

WWW.V19ptO.gOW 



APPLICATION NO. 



FILING DATE 



FIRST NAMED INVENTOR 



ATTORNEY DOCKET NO. | CONFIRMATION NO. [ 



09/864,621 



05/23/2001 



H. Ralph Snodgrass 



441472000110 



3487 



25226 7590 10/02/2002 

MORRISON & FOERSTER LLP 

755 PAGE MILL RD 

PALO ALTO, CA 94304-1018 



EXAMINER 



TON, THAIAN N 



ART UNIT 



PAPER NUMBER 



1632 

DATE MAILED: 10/02/2002 



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



PTO-90C (Rev. 07-01) 



• 

Office Action Summary 


Application No. 

09/864,621 


Applicant(s) 

SNODGRASS, H. RALPH 


Examiner 

Thaian N. Ton 


Art Unit 

1632 





-- 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 1 MONTH(S) FROM 
THE MAILING DATE OF THIS COMMUNICATION. 

- Extensions of time may be available under the provisions of 37 CFR 1 . 1 36(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. § 1 33). 

- 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 )□ Responsive to communication(s) filed on . 

2a)D This action is FINAL. 2b)D This action is non-final. 

3) Q 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) ^ Claim(s) 1-28 is/are pending in the application. 

4a) Of the above claim(s) is/are withdrawn from consideration. 

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

6) D Claim(s) is/are rejected. 

7) D Claim(s) is/are objected to. 

8) ^ Claim(s) 1-28 are subject to restriction and/or election requirement. 
Application Papers 

9) D The specification is objected to by the Examiner. 

10)Q The drawing(s) filed on is/are: a)D accepted or b)Q 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). 
11 )□ The proposed drawing correction filed on is: a)D approved b)D disapproved by the Examiner. 

If approved, corrected drawings are required in reply to this Office action. 

12) D The oath or declaration is objected to by the Examiner. 
Priority under 35 U.S.C. §§ 119 and 120 

13) 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. D 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. 

14) D Acknowledgment is made of a claim for domestic priority under 35 U.S.C. § 1 19(e) (to a provisional application). 

a) □ The translation of the foreign language provisional application has been received. 

15) D Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121. 

Attachment(s) 

1) D Notice of References Cited (PTO-892) 4) Q Interview Summary (PTO-413) Paper No(s). . 

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948) 5) □ Notice of Informal Patent Application (PTO-152) 

3) O Information Disclosure Statement(s) (PTO-1449) Paper No(s) . 6) ED Other: 



U.S. Patent and Trademark Office 
PTO-326 (Rev. 04-01) 



Office Action Summary 



Part of Paper No. 7 



Application/Control Number: 09/864,621 
Art Unit: 1632 



Page 2 



DETAILED ACTION 



Election/Restrictions 
Restriction to one of the following inventions is required under 35 U.S.C. 121* 

I. Claims 1-16 and 20*28, drawn to a library of molecular profiles of 
chemical compositions comprising contacting an isolated mammalian 
embryoid body with a chemical composition having pre -determined 
toxicities, recording alterations in gene expression in the embryoid 
body in response to the chemical composition to create a molecular 
profile of the chemical composition to create a molecular profile of the 
chemical composition and compiling a library of molecular profiles by 
repeating the above-described steps with at least two chemical 
compositions having predetermined toxicities, and a method for 
creating a molecular profile of a chemical composition suspected of 
toxicity by detecting and recording alterations in gene expression , 
classified in class 435, subclass 1.1, 4, 6, for example. 

II. Claims 1*14 and 17*28, drawn to a library of molecular profiles of 
chemical compositions comprising contacting an isolated mammalian 
embryoid body with a chemical composition having pre -determined 
toxicities, recording alterations protein expression in the embryoid 
body in response to the chemical composition to create a molecular 
profile of the chemical composition to create a molecular profile of the 
chemical composition and compiling a library of molecular profiles by 
repeating the above-described steps with at least two chemical 
compositions having predetermined toxicities, a method for creating a 
molecular profile of a chemical composition suspected of toxicity by 
detecting and recording alterations in protein expression , classified in 
class 435, subclass 1.1, 4, for example. 

The inventions are distinct, each from the other because of the following reasons: 

Inventions I and II are mutually exclusive and independent. The methods of 
creating a molecular profile of a chemical composition suspected of toxicity by 
detecting and recording alterations in gene expression and library of molecular 



Application/Control Number: 09/864,621 Page 3 

Art Unit: 1632 

profile of Invention I are not required for the implementation of the methods of 
creating a molecular profile of a chemical composition suspected of toxicity by 
detecting and recording alterations in protein expression of Invention II and vice 
versa. Furthermore, each of the methods steps requires a materially different and 
separate protocol and requires different technical considerations. 

Because these inventions are distinct for the reasons given above and have 
acquired a separate status in the art because of their recognized divergent subject 
matter, restriction for examination purposes as indicated is proper. 

Applicant is advised that the reply to this requirement to be complete must 

include an election of the invention to be examined even though the requirement be 

traversed (37 CFR 1.143). 

Any inquiry concerning this communication or earlier communications from 
the examiner should be directed to Thaian N. Ton whose telephone number is (703) 
305-1019. The examiner can normally be reached on Monday through Friday from 
8:00 to 5:00 (Eastern Standard Time), with alternating Fridays off. Should the 
examiner be unavailable, inquiries should be directed to Deborah Reynolds, 
Supervisory Primary Examiner of Art Unit 1632, at (703) 305-4051. Any 
administrative or procedural questions should be directed to Patsy Zimmerman, 
Patent Analyst, at (703) 305-2758. Papers related to this application may be 
submitted to Group 1600 by facsimile transmission. Papers should be faxed to 
Group 1600 via the PTO Fax Center located in Crystal Mall 1. The faxing of such 
papers must conform with the notice published in the Official Gazette, 1096 OG 30 
(November 15, 1989). The CM1 Fax Center number is (703)872-9306. 

Thaian N. Ton 
Patent Examiner 
Group 1632 



DEBORAH CROUCH 
PRIMARY EXAMINER 

GROUPS