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 .
Response to Amendment/Status of Claims
Receipt of Arguments/Remarks filed on 05/12/2026 is acknowledged. Claim 1 was amended. Claim 4 was cancelled. Claims 1-3,5-7 and 9-11 are pending and under examination..
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
However, there is no English translation of the non-English language foreign priority
Application.
New Rejections Necessitated by Amendment
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.
Written Description Rejection
Claims 1,6,7 and 9-11 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Instant claims 1,6,7 and 9-11 encompass a large genus of modified nucleic acids inhibiting miRNAs comprising at least any two consecutive miRNA target site sequences, each consisting of at least 6 nucleotides, wherein the miRNA target site sequence is a sequence complementary to bases in positions 2-7 or 3-8 from the 5’ end of any miRNA and having complementary G:A wobble base pairs and having the function of wherein the miRNA target site sequence selectively inhibits biological functions occurring via non-canonical target recognition of the miRNA, and at least one base is substituted with an abasic spacer between the miRNA target site sequences, wherein the abasic spacer is one or more selected from the group consisting of an abasic ribonucleotide spacer with no base (rSpacer), an abasic deoxyribonucleotide spacer with no base (dSpacer), a C3 spacer and a C6 spacer. Claim 2 is not included in the rejection because it limits the miRNA to miR-1, and claims 3 and 5 are not included in the rejection because they recite specific sequences of the modified nucleic acid inhibiting miRNA.
Regarding the function recited in amended claim 1, the instant specification discloses that the modified nucleic acid can use non-canonical target sites of miRNA, such as a nucleation bulge site and G:A or G:U wobble pair site of miRNA, as well as the canonical target sites, and therefore it is expected that only a biological function exhibited by non-canonical target recognition of miRNA can be selectively inhibited (page 6, lines 15-19). Example 2-3 pertains to confirmation of inhibition of target gene expression through G:A wobble pairing in an miR-1 seed sequence and discloses a non-canonical target site 5’-AAAUUCCA-3’ which is complementary to bases in positions 2-8 from the 5’ end of miR-1 and pairing with G in position 7 though G:A wobble pairing (page 31) and that sufficient binding with miRNA may be achieved
by using the target sites through G:A wobble pairing, and it was able to be inferred that, if such binding is competitively made, and thus can suppress miRNA, only the biological function of miRNA can be suppressed by non-canonical target suppression through G:A wobble pairing (page 34).
Example 3 pertains to confirmation of the possibility of regulating another biological function through suppression of G:A wobble pair target in seed sequence of miRNA (page 37). An experiment was conducted focusing on miR-1 to investigate whether the non-canonical G:A wobble target has a specific biological function, since miR-1 has to recognize only a non-canonical G:A wobble pair target site and not recognize a canonical target, and G was substituted with U such that G in the seed region of miR-1 pairs with A not C to use in the experiment (pages 37-38). Example 3-3 discloses that since miR-1 contains three G bases in a seed region, it does not recognize a canonical target, and to recognize only a non-canonical G:A wobble pair target site, miR-1 in which these three G bases are substituted with U bases was designed (page 39), and was determined that the non-canonical target suppressed by G:A wobble pairing in the miRNA seed region has a biologically different function from the conventional canonical target recognition, and considering this, it was expected that if only the G:A wobble target or miRNA is able to be suppressed, only the biological function occurring by a G:A wobble target will be selectively controlled (page 42). Example 4-1 discloses a tandem-target miRNA inhibitor effect on non-canonical G:A seed binding site of miR-1 and discloses the inhibitor as anti-miR-1 seed (2x) (5’p-dTdT (rSP) ACAUUCCA (rSP) ACAUUCCA (rSP)dTdT-3’) (page 42) and experiments were done to confirm the efficiency of suppressing the non-canonical G:A wobble seed target site of miR-1 (page 43), and the function of the anti-miR-1-7G:A (2x) specifically inhibiting the miR-1 function of regulating a 7G:A wobble target in the above example was confirmed (Example 4-2, page 44). Example 4-2 discloses that the tandem-target miRNA inhibitor may not only prevent the conventionally known canonical seed target region of miRNA but also effectively inhibit the specific function of miRNA even when it is applied to a non-canonical target such as a G:A wobble pair (Pages 45-46).
Therefore, the specification discloses modified nucleic acids inhibiting miRNA wherein the miRNA is miR-1, and inhibition of target gene expression through G:A wobble pairing in miR-1 seed sequence and discloses a non-canonical target site 5’-AAAUUCCA-3’ which is complementary to bases in positions 2-8 from the 5’ end of miR-1 and an miRNA inhibitor effect on non-canonical G:A seed binding site of miR-1 and discloses the inhibitor as anti-miR-1 seed (2x) (5’p-dTdT (rSP) ACAUUCCA (rSP) ACAUUCCA (rSP)dTdT-3’) (page 42) and the function of suppressing the non-canonical G:A wobble seed target site of miR-1 (page 43), and the function of the anti-miR-1-7G:A (2x) specifically inhibiting the miR-1 function of regulating a 7G:A wobble target. which meet the written description and enablement provisions of 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph. However, claims 1,6,7 and 9-11 are directed to encompass a genus of modified nucleic acids inhibiting miRNAs which only correspond in some undefined way to specifically instantly disclosed chemicals. The specification provides insufficient written description to support the genus encompassed by the claim. Note: MPEP 2163.
Vas-Cath Inc. v. Mahurkar, 19 USPQ2d 1111, (Fed. Cir. 1991), makes clear that "applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the 'written description' inquiry, whatever is now claimed." (See page 1117.) The specification does not "clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed." (See Vas-Cath at page 1116.)
Univ. of Rochester v. G.D. Searle, 69 USPQ2d 1886, 1892 (CAFC 2004), further supports this by stating that:
The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement. A description of an anti-inflammatory steroid, i.e., a steroid (a generic structural term) described even in terms of its functioning of lessening inflammation of tissues fails to distinguish any steroid from others having the same activity or function. A description of what a material does, rather than of what it is, usually does not suffice…. The disclosure must allow one skilled in the art to visualize or recognize the identity of the subject matter purportedly described. (Emphasis added).
With the exception of the above specifically disclosed chemical structures, the skilled artisan cannot envision the detailed chemical structure of the encompassed modified nucleic acid inhibiting miRNAs regardless of the complexity or simplicity of the method of isolation. Adequate written description requires more than a mere statement that it is part of the invention and reference to a potential method for isolating it. The chemical structure itself is required. See Fiers v. Revel, 25 USPQ2d 1601, 1606 (Fed. Circ. 1993) and Amgen Inc. V. Chugai Pharmaceutical Co. Ltd., 18 USPQ2d 1016, (Fed. Cir. 1991). In Fiddes v. Baird, 30 USPQ2d 1481, 1483, (Bd. Pat. App. & Int. 1993), claims directed to mammalian FGF's were found unpatentable due to lack of written description for the broad class. The specification provided only the bovine sequence. Finally, University of California v. Eli Lilly and Co., 43 USPQ2d 1398, 1404, 1405 (Fed. Cir. 1997) held that:
...To fulfill the written description requirement, a patent specification must describe an invention and do so in sufficient detail that one skilled in the art can clearly conclude that "the inventor invented the claimed invention." Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997); In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989) (" [T]he description must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed."). Thus, an applicant complies with the written description requirement "by describing the invention, with all its claimed limitations, not that which makes it obvious," and by using "such descriptive means as words, structures, figures, diagrams, formulas, etc., that set forth the claimed invention." Lockwood, 107 F.3d at 1572, 41 USPQ2d at 1966.
Furthermore, to the extent that a functional description can meet the requirement for an adequate written description, it can do so only in accordance with PTO guidelines stating that the requirement can be met by disclosing “sufficiently detailed, relevant identifying characteristics,” including “functional characteristics when coupled with a known or disclosed correlation between function and structure.” Univ. of Rochester v. G.D. Searle, 68 USPQ2d 1424, 1432 (DC WNY 2003). The specification does not provide sufficient structure-function correlation.
Therefore, only the above chemically structurally defined chemicals, but not the full breadth of the claim(s) meet the written description provision of 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph. The species specifically disclosed are not representative of the genus because the genus is highly variant. Applicant is reminded that Vas-Cath makes clear that the written description provision of 35 USC § 112 is severable from its enablement provision. (See page 1115.)
Claim Interpretation
Claim 1 has been amended to recite “wherein the miRNA target site sequence selectively inhibits biological functions occurring via non-canonical target recognition of the miRNA” which is a function that results from the recited structure. Art that teaches the structure of the modified nucleic acid recited in claim 2 (which depends on claim 1) which limits the miRNA to miR-1, as well as claims 3 and 5 (which depends on claim 1) which recites specific sequences in the modified nucleic acid inhibiting miRNA, would necessarily carry out the recited function as the structure of the prior art is indistinguishable from the structure recited in the claim, absent evidence to the contrary. See MPEP 2111.04 and MPEP 2112.01.
Regarding the abasic spacer in claims 1 and 9, the abasic spacer is disclosed in the instant specification as “a substitute for maintaining a space instead of a single nucleotide, and may connect neighboring nucleotides in the manner that can maintain the space. The abasic spacer is preferably an organic compound, more preferably, a phosphate group (-H2P04) or a sulfuric acid group (-H2PSO4)-containing (linked)
hydrocarbon chain, and most preferably, an alkyl group having at least three carbon atoms (C3 spacer) or an alkyl group having at least three carbon atoms (C3 spacer) or an alkyl group having at least 6 carbon atoms (C6 spacer), but the present invention is not limited thereto. In addition, the abasic spacer may include an abasic nucleotide, and such an abasic nucleotide-type spacer generally refers to a single nucleotide analogue having no base, and refers to all types of modification that cannot bind with all other biological bases comprehensively originating from RNA, including an abasic deoxyribonucleotide spacer (dSpacer) and an abasic ribonucleotide spacer (rSpacer). According to an exemplary embodiment of the present invention, the abasic spacer may be an rSpacer molecule having an Ribo nucleotide as a backbone” (page 14, lines 15-22 to page 15, lines 1-6).
Maintained Rejections-Necessitated by Amendment
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1,2,6 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2015113922 (‘922), Published 6 August 2015, cited on an IDS dated 05/26/2023, in view of Jadhav et al. (US 20180208927, Published 26 July 2018).
Regarding claims 1 and 6, ‘922 teaches antimiR oligomers and designs thereof, which comprise a contiguous nucleotide sequence fully complementary, or essentially complementary (i.e. may comprise one or two mismatches) to a microRNA sequence or subsequence thereof (Page 69, lines 8 and 13-16). ‘922 recites an oligomeric compound comprising a first region of a contiguous sequence of 7-26 phosphorothioate linked nucleosides (A), a second region of a contiguous sequence of 7-26 phosphorothioate linked nucleosides (A’), a functional group such as a conjugate moiety covalently linked to a region A or A’ via a biocleavable linker (B’), such as a biocleavable linker comprising a peptide linker, e.g. a lysine linker, wherein the first and/or second regions target microRNA targets, and wherein the first and second regions are 8-10 nucleotides in length (Claims 16 and 19). The lysine linker contains 6 carbons and is therefore an abasic C6 spacer. ‘922 teaches in some embodiments the first or second 3’ nucleobase of the oligomer corresponds to the second 5’ nucleotide of the microRNA sequence. ‘922 teaches the antimir, where nucleobase units 2-7 of the oligomer as measured from the 3’ end of the oligomer are complementary to the microRNA seed region sequence (page 70, lines 7-9). Therefore, as ‘922 teaches nucleobase units 2-7 of the oligomer as measured from the 3’ end of the oligomer are complementary to the microRNA seed region sequence, and that the second 3’ nucleobase of the oligomer corresponds to the second 5’ nucleotide of the miRNA sequence, ‘922 teaches the limitation of the miRNA target site sequence is a sequence complementary to bases in positions 2-7 from the 5’ end miRNA.
While ‘922 teaches the antimiR oligomers which comprise a contiguous nucleotide sequence that is essentially complementary (may comprise one or two mismatches) to a microRNA sequence or subsequence thereof, ‘922 does not teach the miRNA target site sequence has complementary G:A wobble base pairs.
Before the effective filing date, Jadhav et al. taught multi-targeted molecules comprising at least two nucleic acid based effector molecules covalently or non-covalently linked to each other, capable of modulating expression of a target (paragraph 0004). Jadhav et al. taught the nucleic acid based effector molecules capable of modulating gene expression of a target gene as anti-microRNAs or antimirs, supermirs, and antagomirs (paragraph 0005). Jadhav et al. taught at least two antimirs covalently linked to each other via a non-nucleotide based linker (paragraph 0265), and also taught at least two antagomirs covalently linked to each other via a non-nucleotide based linker (paragraph 0267). Jadhav et al. taught the effector molecules can be optimized for RNA interference by decreasing the free energy of the duplex association by introducing thermally destabilizing modifications in the sense strand at a site opposite to the seed region of the antisense strand (i.e. at positions 2-8 of the 5’ end of the antisense strand) which can increase the propensity of the duplex to dissociate or melt in the seed region of the antisense strand (paragraph 0376). Jadhav et al. taught the thermally destabilizing modification can be mismatches (i.e. noncomplementary base pairs) between the thermally destabilizing nucleotide in the opposite strand within the dsRNA duplex, and exemplary mismatch base pairs include G:A (paragraph 0382).
Regarding claim 2, ‘922 recites the oligomeric compound, wherein the at least one or both of the first and second regions target a microRNA selected from the group consisting of miR ID NO 40-976 (claim 20). ‘922 teaches the target microRNA may be miR-1, which is SEQ ID NO: 113 and is cited in the SEQ ID NO range in claim 20 (Table 2, page 115). ‘922 teaches miR-1 is related to cardiac arrythmia (page 67).
Regarding claim 9, ‘922 teaches methods of synthesis and manufacture of the oligomer of the invention by sequential synthesis of oligomer region A’, region B, second oligomer region A’, optionally followed by the addition of the third region C, optionally via a linker Y (page 108, lines 4-9).
‘922 does not teach the miRNA target site sequence has complementary G:A wobble base pairs.
Jadhav et al. cures this deficiency as discussed above regarding claim 1.
Regarding claim 10, ‘922 recites a method of inhibiting the expression of a target gene in a cell by administering the oligomeric compound according to any one of the preceding claims to a cell which is expressing said target gene, suitably in an amount effective to reduce the expression of the target gene in said cell (Claim 31) and claims 16 and 20 recite the target is microRNA.
Regarding claim 11, the preamble recites “a gene transfer system” which is an intended use, and the body of the claim does not recite any additional steps or components of that of claim 1, and therefore comprises the same limitations as claim 1.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date, to modify the oligomeric antimir compound of ‘922 wherein nucleobase units 2-7 of the oligomer as measured from the 3’ end of the oligomer are complementary to the microRNA seed region sequence to have complementary G:A base pairs based on the teachings of Jadhav et al. There would be a reasonable expectation of success, because both ‘922 and Jadhav et al. pertain to nucleic acid molecules comprising multiple nucleic acid sequences that target miRNAs joined by non-nucleotide linkers, and would amount to combining prior art elements according to known methods to yield predictable results. In addition, ‘922 suggests that the antimiR oligomers comprise a contiguous nucleotide sequence that is essentially complementary (may comprise one or two mismatches) to a microRNA sequence or subsequence thereof. All the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. While Jadhav et al. does not call the G:A base pair a wobble base pair, Jadhav et al. teaches the G:A as a mismatch and the benefits thereof. One of ordinary skill in the art would have been motivated to provide G:A base pairs in the sequence complementary to bases in positions 2-7 of the miRNA, because Jadhav et al. taught that the effector molecules can be optimized for RNA interference by decreasing the free energy of the duplex association by introducing thermally destabilizing modifications in the sense strand at a site opposite to the seed region of the antisense strand (i.e. at positions 2-8 of the 5’ end of the antisense strand) which can increase the propensity of the duplex to dissociate or melt in the seed region of the antisense strand (paragraph 0376), and taught the thermally destabilizing modification can be mismatches between the thermally destabilizing nucleotide in the opposite strand within the dsRNA duplex, and exemplary mismatch base pairs include G:A (paragraph 0382). Therefore, an ordinary artisan could have provided a G:A base pair in the antimir sequence that would function as a wobble base pair, that is complementary to bases in positions 2-7 from the 5’ end of the miRNA based on the teachings of Jadhav et al. in order to introduce thermally destabilizing modifications to optimize the inhibiting activity the oligomeric antimir compound of ‘922.
Since ‘922 in view of Jadhav et al. teach the structure required by claims 1 and 2 (two antimirs covalently linked to each other via a non-nucleotide based linker (paragraph 0265 of ‘922), and also taught at least two antagomirs covalently linked to each other via a non-nucleotide based linker (paragraph 0267 of ‘922), and taught an antimir where nucleobase units 2-7 of the oligomer as measured from the 3’ end of the oligomer are complementary to the microRNA seed region sequence (page 70, lines 7-9 of ‘922), and that at least one or both of the first and second regions target a microRNA which includes miR-1 (SEQ ID NO: 113) that is cited in the SEQ ID NO range in claim 20 (Table 2, page 115 of ‘922)) and Jadhav et al. also taught at least two antimirs covalently linked to each other via a non-nucleotide based linker (paragraph 0265) as well as at least two antagomirs covalently linked to each other via a non-nucleotide based linker (paragraph 0267), and that mismatch base pairs including G:A can be introduced (paragraph 0382) to optimize RNA interference, this structure would necessarily perform the function “wherein the miRNA target site sequence selectively inhibits biological functions occurring via non-canonical target recognition of the miRNA” recited in claim 1.
Accordingly, the limitations of claims 1,2,6 and 9-11 would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing date.
Response to Arguments
Applicant's arguments filed 05/12/2026 have been fully considered but they are not persuasive.
Applicant argues on pages 6-7 of response that the approach disclosed in Jadhav is fundamentally different than the approach underlying the presently claimed modified nucleic acid. The multi-targeted single entity conjugates disclosed in Jadhav are substances that inhibit miRNA by conjugating at least two miRNA target sequences. Applicant states that as explained in Bartel, in order for a sequence to function as an miRNA target sequence it is essential that the seed region (positions 2-8) contain at least 6 consecutive Watson-Crick base pairs (A-U and G-C) which is a well-established principle in the miRNA field. Applicant provides an example using the miR-1 sequence in which the seed region sequence is GGGAAUGU and the corresponding target sites (seed sites) are CAUUCC (positions 2-7), ACAUUC (positions 3-8). Applicant states that Jadhav teaches that the target sequence may contain 1-5 mismatches, however the fundamental premise of Jadhav is even with the mismatches, the sequence must still function as a target. Applicant argues that as shown in the examples of Jadhav, all target sequences contain the seed site within a longer sequence, and the essential seed site remains conserved while additional nucleotides outside the seed site further strengthen the interaction between the miRNA and target sequence. It is well known in the art that depending on the RNA structure, certain mismatches outside the conserved seed site may contribute to stabilization of the miRNA-target interaction. Applicant argues that the approach disclosed in Jadhav (introducing G:A mismatches to intentionally destabilize and melt a double-stranded structure) is fundamentally different from the present claims, in which the G:A noncanonical base pairing is intentionally created by converting G to U within the seed site positions, and that such a mismatch directly contradicts the conventional miRNA target rules based on the canonical seed site concept and would not be recognized as a functional miRNA target sequence under conventional understanding in the art, and therefore a person skilled in the art would not have contemplated such a sequence as an miRNA-inhibitory sequence and clearly distinguishes the present claims from Jadhav. Applicant argues the remaining references do not cure the deficiencies of ‘922 and Jadhav.
This is not found persuasive. Regarding Applicant’s argument that the approach of Jadhav being fundamentally different that the present claims, Jadhav et al. taught at least two antimirs covalently linked to each other via a non-nucleotide based linker (paragraph 0265), and also taught at least two antagomirs covalently linked to each other via a non-nucleotide based linker (paragraph 0267). Jadhav et al. taught the effector molecules can be optimized for RNA interference by decreasing the free energy of the duplex association by introducing thermally destabilizing modifications in the sense strand at a site opposite to the seed region of the antisense strand (i.e. at positions 2-8 of the 5’ end of the antisense strand) which can increase the propensity of the duplex to dissociate or melt in the seed region of the antisense strand (paragraph 0376), and taught the thermally destabilizing modification can be mismatches between the thermally destabilizing nucleotide in the opposite strand within the dsRNA duplex, and exemplary mismatch base pairs include G:A (paragraph 0382). It is well settled that "any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). As long as some suggestion to combine the elements is provided by the prior art as a whole, the law does not require that they be combined for the reason or advantage contemplated by the inventor. In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); In re Kronig, 539 F.2d 1300, 1304 (CCPA 1976). MPEP 2143.01 and 2144 (IV). The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). Therefore, this is not found persuasive, as Jadhav suggests what the inventor has done but for a different purpose. As stated in the rejection, an ordinary artisan could have provided a complementary G:A base pair in the antimir sequence that would function as a wobble base pair, that is complementary to bases in positions 2-7 from the 5’ end of the miRNA based on the teachings of Jadhav et al. in order to introduce thermally destabilizing modifications to optimize the inhibiting activity the oligomeric antimir compound of ‘922.
Applicant argues on page 8 that the present claims recite that “the miRNA target site sequence selectively inhibits biological functions occurring via non-canonical target recognition of the miRNA”, and that the cited references do not disclosure or suggest this feature.
This is not found persuasive. As stated in the claim interpretation above, the structure recited in claim 2 would necessarily carry out the recited function. The structure of the prior art is indistinguishable from the structure recited in the claim, absent evidence to the contrary. See MPEP 2111.04 and MPEP 2112.01: "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In the instant case, since ‘922 in view of Jadhav et al. teach the structure required by claims 1 and 2 (two antimirs covalently linked to each other via a non-nucleotide based linker (paragraph 0265 of ‘922), and also taught at least two antagomirs covalently linked to each other via a non-nucleotide based linker (paragraph 0267 of ‘922), and taught an antimir where nucleobase units 2-7 of the oligomer as measured from the 3’ end of the oligomer are complementary to the microRNA seed region sequence (page 70, lines 7-9 of ‘922), and that at least one or both of the first and second regions target a microRNA which includes miR-1 (SEQ ID NO: 113) that is cited in the SEQ ID NO range in claim 20 (Table 2, page 115 of ‘922)) and Jadhav et al. also taught at least two antimirs covalently linked to each other via a non-nucleotide based linker (paragraph 0265) as well as at least two antagomirs covalently linked to each other via a non-nucleotide based linker (paragraph 0267), and that mismatch base pairs including G:A can be introduced (paragraph 0382) to optimize RNA interference, this structure would necessarily perform the function “wherein the miRNA target site sequence selectively inhibits biological functions occurring via non-canonical target recognition of the miRNA” recited in claim 1.
Therefore the rejection is maintained.
Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over ‘922 and Jadhav et al., as applied to claims 1,2,6 and 9-11 above, and further in view of Bartel (Cell 136, Published 23 January 2009, pages 215-230) cited on an IDS dated 11/30/2020.
The teachings of ‘922 and Jadhav et al. as applicable to claims 1,2,6 and 9-11 are described above.
‘922 and Jadhav et al. do not teach the modified nucleic acid inhibiting miRNA contains a 5’-ACAUUCCA-3’ or 5’-AAAUUCCA-3’ sequence, or wherein the modified nucleic acid inhibiting miRNA consecutively comprises at least two 5’-AAAUUCCA-3’ sequences, and at least one abasic spacer before and after the sequence.
Before the effective filing date, Bartel teaches the understanding of miRNA target recognition and miRNA target sites. Bartel teaches mammalian targets can be predicted by searching for conserved 7 nt matches in aligned regions of vertebrate 3’-UTRs, and prediction specificity increases when requiring an 8 nt match or multiple matches to the same miRNA, and that enough genomes have been sequenced and aligned such that these targets with single sites can now be predicted with confidence that most are authentic (page 218, left column). Bartel teaches using a three-step protocol for predicting evolutionary conserved targets for metazoan miRNA: (1) identify the two 7 nt matches to the seed region (Figures 1A and 1B), for example, miR-1 with the sequence of 5’-UGGAAUGUAAAGAAGUAUGUA would recognize the CAUUCCA match and the ACAUUCC match, (2) use available whole-genome alignments to compile orthologous 3’UTRs, (3) search within the orthologous UTRs for conserved occurrence of either 7 nt match which are the predicted regulatory sites (page 218, left column). Bartel teaches that a search for conserved 8 nt sites comprised of both 7 nt motifs (e.g. ACAUUCCA in the case of miR-1, Figure 1C) yields greater prediction specificity, and a search for conserved 6 nt seed matches (Fig 1D) yields greater sensitivity (page 217-218).
PNG
media_image1.png
100
320
media_image1.png
Greyscale
PNG
media_image2.png
113
316
media_image2.png
Greyscale
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date, that the oligomeric antimir compound of ‘922 targeting miR-1 modified by complementary G:A base pairs of Jadhav et al., would comprise a 5’-ACAUUCCA-3’ sequence based on teaching of Bartel regarding the three-step protocol for predicting evolutionary conserved targets using miR-1. There would be a reasonable expectation of success because ‘922 teaches the antimir compound may target miR-1 and Bartel teaches the miR-1 sequence and the corresponding matches in the seed region, and would amount to simple substitution of one known element for another to obtain predictable results. One of ordinary skill in the art would have been motivated to provide the oligomeric antimir compound of ‘922 that is taught as targeting miR-1, modified by the complementary G:A base pairs of Jadhav et al. with a 5’-ACAUUCCA-3’ sequence based on Bartel’s simple three-step protocol to predict evolutionarily conserved targets for a miRNA, and which identifies the sequence ACAUUCCA as a seed matched site.
It would have been obvious to one of ordinary skill in the art to provide the oligomeric antimir compound of ‘922 that is taught as targeting miR-1 modified by complementary G:A base pairs of Jadhav et al., with at least 2 consecutive 5’-AAAUUCCA-3’ sequences and at least one abasic spacer before and after the sequence to increase potency of the molecule based on teaching of Bartel regarding the three-step protocol for predicting evolutionary conserved targets using miR-1 as an example. There would be a reasonable expectation of success because ‘922 teaches the antimir compound may target miR-1 and Bartel teaches the miR-1 sequence and the corresponding matches in the seed region. While Bartel does not teach the exact sequence of “AAAUUCCA”, Bartel does teach “ACAUUCCA”, which has one different nucleotide. An ordinary artisan could have arrived at the sequence “AAAUUCCA” from the sequence “ACAUUCCA” by replacing the 2nd ‘C’ nucleotide with ‘A’ based on the teachings of Jadhav et al. regarding introducing thermally destabilizing modifications to optimize the inhibiting activity, and which modifications can be mismatches (i.e. noncomplementary base pairs) between the thermally destabilizing nucleotide in the opposite strand and exemplary mismatch base pairs include G:A (paragraph 0382). One of ordinary skill in the art would have been motivated to provide at least 2 consecutive AAAUUCCA sequences and at least one abasic spacer before and after the sequence to increase potency of the molecule because ‘922 taught at least one or both of the first and second regions target a microRNA which may be miR-1 and Bartel teaches prediction specificity increases when requiring multiple matches to the same miRNA.
Accordingly, the limitations of claims 3-5 would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing date.
Response to Arguments
Applicant's arguments filed 05/12/2026 have been fully considered but they are not persuasive.
Applicant argues on page 8 that claim 5 recites that the modified nucleic acid inhibiting miRNA consecutively comprises at least two 5’-AAAUUCCA-3’ sequences, and this claim is patentable for the following additional reasons. Bartel explains that canonical miRNA target sequences in the miRNA field require at a minimum, 6 consecutive Watson-Crick base pairs (A-U and G-C). Applicant uses the sequence of miR-1 as an example and lists the canonical seed sites. Applicant states that in the present claims, one or more G to U substitutions are intentionally introduced into the canonical seed-site sequences in order to strengthen the G:A noncanonical base pairing rather than maintaining the conventional Watson-Crick pairing pattern and again using miR-1 as an example shows examples of modified seed-site sequences. The sequence of claim 5 corresponds to positions 1-8 sequences containing the 7G>U substitution. Therefore, the sequence of claim 5 cannot be regarded as a conventional seed site sequence and would not ordinarily be recognized as a function miRNA target sequence. It is a modified seed-site sequence generated by introducing a G>U substitution and is distinct from the conventional seed-site sequences, and therefore claim 5 is patentable over the cited references.
This is not found persuasive. Bartel teaches that a search for conserved 8 nt sites comprised of both 7 nt motifs (e.g. ACAUUCCA in the case of miR-1, Figure 1C) yields greater prediction specificity. An ordinary artisan could have arrived at the sequence “AAAUUCCA” from the sequence “ACAUUCCA” by replacing the 2nd ‘C’ nucleotide with ‘A’ based on the teachings of Jadhav et al. regarding introducing thermally destabilizing modifications to optimize the inhibiting activity, and which modifications can be mismatches (i.e. noncomplementary base pairs) between the thermally destabilizing nucleotide in the opposite strand and exemplary mismatch base pairs include G:A (paragraph 0382). One of ordinary skill in the art would have been motivated to provide at least 2 consecutive AAAUUCCA sequences and at least one abasic spacer before and after the sequence to increase potency of the molecule because ‘922 taught at least one or both of the first and second regions target a microRNA which may be miR-1 and Bartel teaches prediction specificity increases when requiring multiple matches to the same miRNA. As stated in the previous response to arguments above, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. Therefore the rejection is maintained.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over ‘922 and Jadhav et al., as applied to claims 1,2,6 and 9-11 above, and further in view of Wang (Bioinformatics, 2014 Jan 26; 30(10):1377-1383).
The teaching of ‘922 and Jadhav et al. as applicable to claims 1,2,6 and 9-11 is described above.
‘922 and Jadhav et al. do not teach wherein the seed region of the miRNA is a sequence between positions 1 to 8 from the 5’ end of the miRNA.
Before the effective filing date, Wang taught using high-throughput experimental data from a CLASH study (crosslinking, ligation and sequence of hybrids) as an opportunity to characterize miRNA target recognition patterns which may provide guidance for improved miRNA target prediction (Abstract). Wang taught canonical seed is defined as any 6-mer sequence within positions 2–8 or 7-mer sequence within positions 1–8 of the miRNA (page 1378, left column, Section 2.2; Table 1, page 1379).
It would have been obvious to one of ordinary skill in the art before the effective filing date, to modify the teachings regarding the miRNA seed region of ‘922 to comprise a sequence between positions 1 to 8 from the 5’ end of the miRNA based on the teachings of Wang with a reasonable expectation of success. There would be a reasonable expectation of success as this would amount to simple substitution of the miRNA seed region of ‘922 with the miR seed region of positions 1-8 of the miRNA of Wang. One of ordinary skill in the art would have been motivated to do so because Wang taught canonical seed is defined as any 6-mer sequence within positions 2–8 or 7-mer sequence within positions 1–8 of the miRNA (page 1378, left column, Section 2.2; Table 1, page 1379).
Accordingly, the limitations of claim 7 would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing date.
Response to Arguments
No additional arguments regarding the specific rejection of claim 7 were made. The Examiner has responded to the arguments regarding the rejections involving Jadhav above.
Claims 1,6,7 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2011117353 (’353), Published 29 September 2011, cited on an IDS dated 05/26/2023, Lee et al. (Nature Communications, Published 18 December 2015, pages 1-14), cited on an IDS dated 11/30/2020, and Jadhav et al. (US 20180208927, Published 26 July 2018).
Regarding claim 1, ‘353 teaches bivalent molecules comprising a first oligonucleotide linked to a second oligonucleotide (page 5, lines 14-15), and that the first and/or second oligonucleotide comprise an antisense sequence complementary to a cellular RNA such as microRNA (page 5, lines 19-20). ‘353 teaches the antisense sequence may be an antimir antisense sequence capable of binding to a microRNA and that the first and/or second oligonucleotide comprise a seed sequence of microRNA capable of base pairing to the complementary sequence of the seed sequence (page 5, lines 23-27) and may be used to block microRNA activity by binding to microRNA to deregulate all targets of the microRNA (page 5, lines 32-33). ‘353 teaches that preferred contiguous sequences are at least 6 nucleotides (page 8, lines 6-7), and the preferred length of the first and the second oligonucleotide is preferably more than 5 nucleotides or 6 nucleotides (page 17, line 17). ‘353 teaches the first and/or second oligonucleotide comprise a sequence selected from the group consisting of contiguous sequences that are capable of base pairing to the complementary sequence of a sequence of positions 2-7 (page 8, lines 26-35 to page 9 lines 1-20). ‘353 teaches the linking moiety may comprise abasic units and is attached to the 3’ end of the first oligonucleotide and to the 5’ end of the second oligonucleotide (page 27 lines 1-5). ‘353 teaches bivalent antimirs may be more potent than monovalent antimirs because two microRNAs will bind cooperatively to the bivalent molecule and they may have more favorable biodistribution (Example 1 page 30).
‘353 does not teach that at least one base is substituted with an abasic spacer between the miRNA target site sequences. ‘353 does not teach that the abasic spacer is an abasic ribonucleotide spacer with no base (rSpacer, rSp), an abasic deoxyribonucleotide spacer (dSpacer), a C3 spacer or a C6 spacer. ‘353 does not teach the miRNA target site sequence has complementary G:A wobble base pairs.
However, before the effective filing date, Lee et al. taught that gene silencing by RNA interference represses hundreds of off-target transcripts and that avoiding miRNA-like off-target repression is a major challenge (Abstract). Lee et al. taught using an abasic spacer that contains no base but functions as a linker, including an abasic deoxynucleotide spacer, dSpacer, as a substitute for a nucleotide in the nucleation region (position 2-6) and that the substitution prevents miRNA-like off-target repression and conserves on-target activity (page 3). Lee et al. also taught using a C3 spacer substitution elicited excellent repression activity for a perfectly matched on-target without inducing seed-mediated target repression (page 9).
Regarding the miRNA target site sequence having complementary G:A wobble base pairs, Jadhav et al. taught multi-targeted molecules comprising at least two nucleic acid based effector molecules covalently or non-covalently linked to each other, capable of modulating expression of a target (paragraph 0004). Jadhav et al. taught the nucleic acid based effector molecules capable of modulating gene expression of a target gene as anti-microRNAs or antimirs, supermirs, and antagomirs (paragraph 0005) . Jadhav et al. taught at least two antimirs covalently linked to each other via a non-nucleotide based linker (paragraph 0265), and also taught at least two antagomirs covalently linked to each other via a non-nucleotide based linker (paragraph 0267). Jadhav et al. taught the effector molecules can be optimized for RNA interference by decreasing the free energy of the duplex association by introducing thermally destabilizing modifications in the sense strand at a site opposite to the seed region of the antisense strand (i.e. at positions 2-8 of the 5’ end of the antisense strand) which can increase the propensity of the duplex to dissociate or melt in the seed region of the antisense strand (paragraph 0376). Jadhav et al. taught the thermally destabilizing modification can be mismatches (i.e. noncomplementary base pairs) between the thermally destabilizing nucleotide in the opposite strand within the dsRNA duplex, and exemplary mismatch base pairs include G:A (paragraph 0382).
Regarding claim 6, ‘353 teaches the first and/or second oligonucleotide of the molecule comprises a contiguous sequence that is at least 6,7 or 8 nucleotides (page 8 line 7).
Regarding claim 7, ‘353 teaches the first and/or second oligonucleotides comprises a contiguous sequence capable of base pairing to the complementary sequence of a sequence of position 1-8 (page 8, lines 26-35 and page 9, lines 8-13).
Regarding claim 9, ‘353 teaches that the linking moiety is attached during oligonucleotide synthesis and when the first oligonucleotide has been synthesized, the linking moiety is attached to the first oligonucleotide, where after the second oligonucleotide is synthesized (page 27, lines 33-35).
‘353 does not teach the miRNA target site sequence has complementary G:A wobble base pairs.
Jadhav et al. cures this deficiency as discussed above regarding claim 1.
Regarding claim 10, ‘353 teaches using the molecules of the invention for modulating microRNA regulation by blocking a microRNA or blocking a microRNA binding site in a target RNA in vitro (page 29, lines 21-24), and transfecting the oligonucleotides into HUH7 cells expressing microRNA-122 (Example 4, page 37 and Fig 1 and 2). Regarding claim 11, ‘353 teaches a vector construct comprising two microRNA-122 binding sites (Example 4 page 34).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the bivalent molecule of ‘353 with the dSpacer or C3 spacer of Lee et al. between the two miRNA target site sequences, for the purpose of preventing off target repression and conserving on-target activity, and to have complementary G:A base pairs based on the teachings of Jadhav et al. with a reasonable expectation of success. There would be a reasonable expectation of success, because both ‘353 and Jadhav et al. pertain to nucleic acid molecules comprising multiple nucleic acid sequences that target miRNAs joined by non-nucleotide linkers, and would amount to combining prior art elements according to known methods to yield predictable results. All the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been motivated to substitute a base with an abasic spacer between the two miRNA target site sequences, and for the abasic spacer to be dSpacer or C3 spacer, as Lee et al. teach using an abasic spacer that contains no base but functions as a linker, including an abasic deoxynucleotide spacer, dSpacer, as a substitute for a nucleotide in the nucleation region (position 2-6) and that the substitution prevents miRNA-like off-target repression and conserves on-target activity (page 3) as well as using a C3 spacer substitution elicited excellent repression activity for a perfectly matched on-target without inducing seed-mediated target repression (page 9).
Regarding the complementary G:A wobble base pairs, while Jadhav et al. does not call the G:A base pair a wobble base pair, Jadhav et al. teaches the G:A as a mismatch and the benefits thereof. One of ordinary skill in the art would have been motivated to modify the bivalent molecule of ‘353 to have complementary G:A wobble base pairs, because Jadhav et al. taught that the effector molecules can be optimized for RNA interference by decreasing the free energy of the duplex association by introducing thermally destabilizing modifications in the sense strand at a site opposite to the seed region of the antisense strand (i.e. at positions 2-8 of the 5’ end of the antisense strand) which can increase the propensity of the duplex to dissociate or melt in the seed region of the antisense strand (paragraph 0376), and taught the thermally destabilizing modification can be mismatches (i.e. noncomplementary base pairs) between the thermally destabilizing nucleotide in the opposite strand within the dsRNA duplex, and exemplary mismatch base pairs include G:A (paragraph 0382). Therefore, an ordinary artisan could have provided a complementary G:A base pair in the sequence that would function as a wobble base pair, that is complementary to bases in positions 2-7 from the 5’ end of the miRNA based on the teachings of Jadhav et al. in order to introduce thermally destabilizing modifications to optimize the inhibiting activity the bivalent molecule of ‘353.
It would be obvious for the miRNA target site sequence to comprise 6-8 nucleotides complementary to a seed region of miRNA to arrive at the instant invention with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to provide a miRNA target site sequence comprising 6-8 nts complementary to a seed target region of miRNA, as ‘353 teaches that the first and/or second oligonucleotide comprise a seed sequence of microRNA capable of base pairing to the complementary sequence of the seed sequence (page 5, lines 23-27) and that preferred contiguous sequences are at least 6 nucleotides (page 8, lines 6-7), and would make obvious the limitations of claim 6.
It would be obvious that the seed region is a sequence between positions 1-8 from the 5’ end of the miRNA to arrive at the instant invention with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to provide a modified nucleic acid, wherein the seed region is a sequence between positions 1-8 from the 5’ end of the miRNA, as ‘353 teaches the first and/or second oligonucleotides comprises a contiguous sequence capable of base pairing to the complementary sequence of a sequence of position 1-8 (page 8, lines 26-35 and page 9, lines 8-13), and would make obvious the limitations of claim 7.
It would be obvious to one of ordinary skill in the art to modify the synthesis method of the oligonucleotide of ‘353 with the teaching of Lee et al. and substitute a base with an abasic spacer in-between the consecutively arranged base sequences to improve on-target activity. One of ordinary skill in the art would be motivated to substitute a base with the abasic spacer between the consecutively arranged base sequence as Lee et al. teach using an abasic spacer that contains no base but functions as a linker, including an abasic deoxynucleotide spacer, dSpacer, as a substitute for a nucleotide in the nucleation region (position 2-6) and that the substitution prevents miRNA-like off-target repression and conserves on-target activity (page 3), and would make obvious the limitations of claim 9.
It would be obvious to provide a method of inhibiting miRNA comprising introducing the modified oligonucleotide of ‘353 inhibiting miRNA into cells in vitro for the purpose of testing the activity of the modified nucleic acid in a cell in vitro. One of ordinary skill in the art would have been motivated to introduce the bivalent molecule into cells in vitro, as ‘353 teaches using the molecules of the invention for modulating microRNA regulation by blocking a microRNA or blocking a microRNA binding site in a target RNA in vitro (page 29, lines 21-24), and transfecting the oligonucleotides into HUH7 cells expressing microRNA-122 (Example 4, page 37 and Fig 1 and 2), and would make obvious the limitations of claim 10.
It would be obvious to provide a gene transfer system comprising the modified oligonucleotide inhibiting miRNA, in order to provide a means for introducing the modified nucleic acid into a cell. One of ordinary skill in the art would have been motivated incorporate the modified nucleic acid into a gene transfer system, as ‘353 teaches a vector construct comprising two microRNA-122 binding sites (Example 4 page 34), and would make obvious the limitations of claim 11.
Therefore the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing date.
Response to Arguments
No additional arguments regarding ‘353 or Lee et al. were made. Applicant provided arguments regarding Jadhav et al. and the Examiner has responded to the arguments regarding the rejections involving Jadhav above.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over ‘353, Lee et al. and Jadhav et al. as applied to claims 1,6,7 and 9-11 above, and further in view of Chen et al. (The Journal of Cell Biology, Vol. 190, Published 6 September 2010, pages 867-879), cited on an IDS Dated 05/26/2023.
The teaching of ‘353, Lee et al. and Jadhav et al. regarding claims 1,6,7 and 9-11 is described above.
‘353, Lee et al. and Jadhav et al. do not teach wherein the miRNA is miR-1.
However, before the effective filing date, Chen et al. taught that aberrant miRNA expression has been observed in muscle diseases such as cardiac and skeletal muscle hypertrophy, heart failure, and muscular dystrophy, and that expression of muscle-specific miR-1 is induced during skeletal muscle differentiation, plays a role in myoblast proliferation and differentiation, and is an important regulator of cardiomyocyte differentiation and heart development (page 867-868). Chen et al. teach knocking down miR-1 using an miRNA antagomir which resulted in decreased expression level of miR-1 in skeletal muscle (page 871, right column), and it was determined that knockdown of miR-1 enhanced muscle cell proliferation (page 872, left column), and therefore may be therapeutic tools and targets for human skeletal muscle disease (page 877, left column).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date, to modify the bivalent molecule of ‘353, Lee et al. and Jadhav et al. with the teaching of Chen et al. regarding miR-1 as the target, in order to inhibit miR-1 as the miRNA. One of ordinary skill in the art would have been motivated to provide a modified bivalent molecule inhibiting miR-1, as Chen et al. taught that aberrant expression of miRNAs have been observed in muscle diseases, and knocking down miR-1 enhances muscle cell proliferation and may therefore be a therapeutic target for human skeletal muscle disease (pages 867,871,877).
Therefore the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing date.
Response to Arguments
No additional arguments regarding ‘353 or Lee et al. were made. Applicant provided arguments regarding Jadhav et al. and the Examiner has responded to the arguments regarding the rejections involving Jadhav above.
Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over ‘353, Lee et al., Jadhav et al. and Chen et al. as applied to claim 2 above, and further in view of Bartel (Cell 136, Published 23 January 2009, pages 215-230) cited on an IDS dated 11/30/2020.
The teachings of ‘353, Lee et al., Jadhav et al. and Chen et al. as applied to claim 2 is described above.
‘353, Lee et al., Jadhav et al. and Chen et al. do not teach wherein the modified nucleic acid inhibiting miRNA contains a 5’-ACAUUCCA-3’ or 5’-AAAUUCCA-3’ sequence, or wherein the modified nucleic acid inhibiting miRNA consecutively comprises at least two 5’-AAAUUCCA-3’ sequences, and at least one abasic spacer before and after the sequence.
However, before the effective filing date, Bartel teaches the understanding of miRNA target recognition and miRNA target sites. Bartel teaches mammalian targets can be predicted by searching for conserved 7 nt matches in aligned regions of vertebrate 3’-UTRs, and prediction specificity increases when requiring an 8 nt match or multiple matches to the same miRNA, and that enough genomes have been sequenced and aligned such that these targets with single sites can now be predicted with confidence that most are authentic (page 218, left column). Bartel teaches using a three-step protocol for predicting evolutionary conserved targets for metazoan miRNA: (1) identify the two 7 nt matches to the seed region (Figures 1A and 1B), for example, miR-1 with the sequence of 5’-UGGAAUGUAAAGAAGUAUGUA would recognize the CAUUCCA match and the ACAUUCC match, (2) use available whole-genome alignments to compile orthologous 3’UTRs, (3) search within the orthologous UTRs for conserved occurrence of either 7 nt match which are the predicted regulatory sites (page 218, left column). Bartel teaches that a search for conserved 8 nt sites comprised of both 7 nt motifs (e.g. ACAUUCCA in the case of miR-1, Figure 1C) yields greater prediction specificity, and a search for conserved 6 nt seed matches (Fig 1D) yields greater sensitivity (page 217-218).
PNG
media_image1.png
100
320
media_image1.png
Greyscale
PNG
media_image2.png
113
316
media_image2.png
Greyscale
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date, that the bivalent molecule of ‘353 modified by the abasic spacer of Lee et al. and sequence having complementary G:A base pairs of Jadhav et al. that targets miR-1 according to the teaching of Chen et al., would comprise a 5’-ACAUUCCA-3’ sequence based on teaching of Bartel regarding the three-step protocol for predicting evolutionary conserved targets using miR-1 as an example. One of ordinary skill in the art would have been motivated to provide the bivalent molecule of ‘353 modified by the teachings of Lee et al., Jadhav et al. and Chen et al., with a 5’-ACAUUCCA-3’ sequence based on Bartel’s simple three-step protocol to predict evolutionarily conserved targets for a miRNA, and which identifies the sequence ACAUUCCA as a seed matched site of miR-1.
It would have been obvious to one of ordinary skill in the art to provide the bivalent molecule of ‘353 modified by the abasic spacer of Lee et al. and sequence having complementary G:A base pairs of Jadhav et al. that targets miR-1 according to Chen et al., with at least 2 consecutive 5’-AAAUUCCA-3’ sequences and at least one abasic spacer before and after the sequence to increase potency of the molecule based on teaching of Bartel regarding the three-step protocol for predicting evolutionary conserved targets using miR-1 as an example. While Bartel does not teach the exact sequence of “AAAUUCCA”, Bartel does teach “ACAUUCCA”, which is only one nucleotide different. An ordinary artisan could have arrived at the sequence “AAAUUCCA” from the sequence “ACAUUCCA” by replacing the 2nd ‘C’ nucleotide with an ‘A’ nucleotide based on the teachings of Jadhav et al. regarding introducing thermally destabilizing modifications to optimize the inhibiting activity, and which modifications can be mismatches (i.e. noncomplementary base pairs) between the thermally destabilizing nucleotide in the opposite strand and exemplary mismatch base pairs include G:A (paragraph 0382). One of ordinary skill in the art would have been motivated to provide at least 2 consecutive AAAUUCCA sequences and at least one abasic spacer before and after the sequence to increase potency of the molecule because Bartel teaches prediction specificity increases when requiring multiple matches to the same miRNA.
Accordingly, the limitations of claims 3 and 5 would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing date.
Response to Arguments
No additional arguments regarding ‘353 or Lee et al. were made. Applicant provided arguments regarding Jadhav et al. and Bartel and the Examiner has responded to the arguments regarding Jadhav and Bartel above.
Conclusion
Claims 1-3,5-7 and 9-11 are rejected.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE L SULLIVAN whose telephone number is (703)756-4671. The examiner can normally be reached Monday-Friday, 7:30-3:30 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ram R Shukla can be reached at 571-272-0735. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEPHANIE L SULLIVAN/Examiner, Art Unit 1635
/ABIGAIL VANHORN/Primary Examiner, Art Unit 1636
Prosecution Insights