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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 filed on 6/5/2026 has been entered.
Claims 21, 25-27, 30-32, 34-48 and 40-43 are pending and currently under examination.
All previous rejection not reiterated in this office action are withdrawn.
Claim Rejections - 35 USC § 112
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.
Claims 21, 25-27, 30-32, 34-48 and 40-43 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.
Regarding claim 21, the recitation of “the host species having intracellularly incorporated the source species DNA sequences in replicable form” renders the claim indefinite because it is unclear whether the source species in such replicable form is before the fragmentation or after fragmentation. In other words, it is unclear whether the exposing step is performed with a composition that comprises extracellular DNA or intracellularly introducing the source and host species DNA. As such, the metes and bounds of the claim cannot be established.
Dependent claims 25-27, 30-32, 34-48 and 40-41 are rejected for same reason because they depend on claim 21 and fails to remedy the indefiniteness.
Regarding claim 42 and 43, it is unclear whether the individual organism is source species, target species or host species.
The following rejection is based on the interpretation that the exposing step occurs within a cell.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 21 is/are rejected under 35 U.S.C. 102(a1)(a2) as being anticipated by Srivastava (US 9,909,136).
Claim 21 is drawn to a method of inhibiting a target species that comprises a single step of exposing said target species to a mixture of DNA molecules comprising source species and host species.
Srivastava teaches a method of downregulating FPGS1 expression by using a DNA molecules expressing a nucleic acid sequence complementary to a portion of an FPGS1 gene sequence or mRNA, including RNAi, siRNA, shRNA or miRNA construct (col.8, lines 40-49). Srivastava teaches expression vectors for said construct includes plasmids, cosmids, YACs and BACs (col.11, lines 24-29). Srivastava teaches RNAi or antisense constructs that targets part of promoter, exons, introns, or even exon-intron boundaries of a gene (col.15, lines 49-54). Srivastava teaches introducing said constructs into a plant cell to inhibit the expression of FPGS1 gene (col.17, lines 12-28). The teaching from Srivastava meets the limitation of exposing DNA from source species and host species, the expression vector encoding an antisense nucleic acid that targets an endogenous plant gene (target species), introducing said expression construct into a plant cell, wherein said expression construct is replicable in host species (plasmids, BACs and YACs are replicable in corresponding microbial species). The antisense nucleic acid in the construct meets the limitation of fragment DNA because it only comprises a portion of the target DNA. Since claim 21 only comprises a single step, the teaching from Srivastava meets this claim limitation.
Regarding claim 25, the FPGS1 is chromosomal DNA.
Regarding claims 26 and 27, the antisense construct comprise antisense DNA sequences flanked by vector sequences that meets the limitation of host species DNA or an artificial DNA construct.
Regarding claims 30 and 31, since the specification does not provide a limiting definition for “phylogenetic similar species,” it would have been inherent that are at least from same family.
Regarding claim 32, Srivastava teaches the transformation of plant cells may be accomplished with Agrobacterium comprising said vector (col.17, lines 12-29).
Regarding 34, Srivastava teaches the host species of the expression construct may be Agrobacterium, which meets the limitation of a microbial species.
Regarding claim 38, the source species is an antisense nucleic acid targeting a plant gene, whereas the host species is microbial species. As such, they are phylogenetically distant.
Regarding claim 40 and 41, since there is no limiting definition of “pharmaceutically acceptable form” or “agronomical composition,” a medium for the vector transformation meets this limitation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CELINE X QIAN whose telephone number is (571)272-0777. The examiner can normally be reached M-F (8-4:00).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dunston can be reached at 571-272-2916. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CELINE X QIAN/Primary Examiner, Art Unit 1637
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