Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
This Official Action considers the response filed 6/6/2024. The arguments filed therewith are sufficient to overcome the rejection of Olek et al (WO200177384) under 35 U.S.C. 102(b), and the rejections under the nonstatutory double patenting rejections based on a judicially created doctrine.
Election/Restrictions
Applicant’s election without traverse of Group I and SEQ ID NO:35 in the reply filed on 9/01/2023 is acknowledged.
Claims 1-34 are pending and examined herein.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 1-9, 12-17, and 20-27 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Yague et al (US20090176728).
Yague et al have disclosed at least SEQ ID NOS282 and 283 which correspond to an siRNA targeting Tau/MAPT. The siRNA comprises at least 8 contiguous nucleotides of the instant SEQ ID NO:35 and is 100% complementary to the instant SEQ ID NO:1. It has been disclosed the modifications recited in the claims. See, for example, paragraphs 2, 33, 37, 41-44, 47, 48, 50, 52, 57, 59, and 60.
Applicants arguments filed 6/6/2024 have been considered but are not convincing. Applicant is remined that the nucleic acids disclosed in Yague et al are comprised of two single stranded oligonucleotides. Applicants alignments are drawn to the sense strand. The antisense strand is the oligonucleotide relied on the rejection of record.
Claims 10, 11, 18, 19 and 28-34 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and limited to the elected examined species. There is no motivation to modify an siRNA molecule with morpholino modifications.
THIS ACTION IS MADE FINAL. 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN MCGARRY whose telephone number is (571)272-0761. The examiner can normally be reached M-Th/F 9:00-7:30.
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/SEAN MCGARRY/Primary Examiner, Art Unit 1635