Prosecution Insights
Last updated: April 19, 2026
Application No. 17/774,477

EXTRAHEPATIC DELIVERY

Final Rejection §103§112§DP
Filed
May 04, 2022
Examiner
VANHORN, ABIGAIL LOUISE
Art Unit
1636
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
Alnylam Pharmaceuticals, Inc.
OA Round
2 (Final)
47%
Grant Probability
Moderate
3-4
OA Rounds
3y 7m
To Grant
69%
With Interview

Examiner Intelligence

Grants 47% of resolved cases
47%
Career Allow Rate
557 granted / 1191 resolved
-13.2% vs TC avg
Strong +22% interview lift
Without
With
+21.9%
Interview Lift
resolved cases with interview
Typical timeline
3y 7m
Avg Prosecution
78 currently pending
Career history
1269
Total Applications
across all art units

Statute-Specific Performance

§101
1.1%
-38.9% vs TC avg
§103
42.6%
+2.6% vs TC avg
§102
9.9%
-30.1% vs TC avg
§112
23.1%
-16.9% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1191 resolved cases

Office Action

§103 §112 §DP
DETAILED ACTION Receipt of Arguments/Remarks filed on October 23 2025 is acknowledged. Claims 22-39 were/stand cancelled. Claims 1, 10, 16 and 18-19 were amended. Claims 40-48 were added. Claims 1-21 and 40-48 are pending. 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 . Withdrawn Objections/Rejections The amendments filed October 23 2025 correcting the drawings are sufficient to overcome the objection to the drawings. The amendments filed October 23 2025 correcting the specification to include the appropriate SEQ ID No: is sufficient to overcome the objection to the sequence listing. The amendments filed October 23 2025 are sufficient to overcome the objections to claims 16, 18-19. The amendment to claim 16 filed October 23 2025 is sufficient to overcome the rejection under 35 USC 112(b). Claim 16 now indicates where the seed region is located in the antisense strand. The cancellation of claim 22 in the response filed October 23 2025 has render the rejection of claim 22 under 35 U.S.C. over Manoharan in view of Grijalvo et al. and in further view of Chen et al. moot. The amendments filed October 23 2025 are sufficient to overcome the rejection of claims 1-22 on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-10, 12-19 of copending Application No. 17736251 (USPGPUB No. 20230304002). The instantly claimed lipophilic monomers no longer overlap in scope with the copending claims. Copending ‘251 was also amended to exclude the overlapping monomers. New and Modified Objections/Rejection Based on Amendments in the reply filed on October 23 2025 Claim Objections Claim 48 is objected to because of the following informalities: the recitation “end of the strand” should recite “end of the sense strand” to refer back to the sense strand recited earlier in the line of the claim. Appropriate correction is required. 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. Claim 40 and 47-48 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. Claim 40 recites the limitation "the strand" in lines 2-4. There is insufficient antecedent basis for this limitation in the claim. Claim 40 depends from claim 1 which recites a sense strand and a antisense strand. However, claim 40 does not clarify which strand (or both) is being referred to. This is different than claims 41-46 which clearly refer to the sense or antisense strand. Claims 47-48 are included in the rejection as they depend on a rejected base claim and they do not clarify the issues. Claim Rejections – 35 USC § 103 The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. Claims 1-15, 18-21 and 40-46 are rejected under 35 U.S.C. 103 as being unpatentable over Manoharan (US Patent No. 6326358) in view of Grijalvo et al. (Genes, 2018). Applicant Claims The instant application claims a compound comprising: an antisense strand which is complementary to a target gene; a sense strand which is complementary to said antisense strand; and one or more lipophilic monomers. Specific monomers include: PNG media_image1.png 328 840 media_image1.png Greyscale and wherein at least one lipophilic monomer is conjugated to one or more internal positions on at least one strand. Determination of the Scope and Content of the Prior Art (MPEP §2141.01) Manoharan is directed to carbohydrate or 2’-modified oligonucleotides having alternating internucleoside linkages. This invention relates to the design and synthesis of nuclease resistant phosphorothioate oligonucleotides which are useful for therapeutics, diagnostics and as research reagents. Oligonucleotides are provided which contain at least one region of 2′-modified nucleosides connected by alternating phosphodiester and phosphorothioate linkages. Such compounds are resistant to nuclease degradation and are capable of modulating the activity of DNA and RNA (column 1, lines 14-21). Claimed is: compound comprising a plurality of covalently-bound 2′-modified nucleosides having the formula: PNG media_image2.png 1069 594 media_image2.png Greyscale wherein: each B is a nucleobase; one of X1 or X2 is O, and the other of X1 or X2 is S; R1 can be an halogen (aka fluoro), O-alkyl (i.e. an O-methyl); R1 is a group of formula Z-R22-(R23)v wherein Z is O, S, NH or R-R22-(R23)v; R22 can be a C1-C20 alkyl, R23 can be a carboxyl (claim 1). Exemplified oligonucleotides are 20 nucleotides in length (see tables). It is known that phosphorothioate linkages are essential for certain pharmacological properties of oligonucleotides, such as nuclease resistance. However, excessive numbers of phosphorothioate linkages are thought to create toxicity problems for drug compounds, for example by create some non-sequence specific side effects. It has been discovered that compounds represented by the formulas provided herein beneficially possess both improved nuclease resistance relative to uniform phosphodiester oligomers, and increased binding affinity relative to phosphorothioate oligomers. In addition, the oligonucleotides described herein may have reduced toxicity relative to uniform phosphorothioate oligonucleotides (column 9, lines 47-59). The addition of phosphodiester linkages to phosphorothioate oligonucleotides is expected to favorably alter the pharmacokinetics of the oligonucleotide (for example, with respect to urinary excretion, preferred distribution to kidney). The staggered phosphorothioate/phosphodiester linkages also will modulate the protein binding to plasma proteins (serum, albumin, etc.) (column 9, lines 59-65). The plurality of covalently-bound 2’-modified nucleosides, can form the entire oligonucleotide, or a part thereof. Thus, the plurality of covalently-bound 2’-modified nucleosides can be located at the 3’-terminal portion of an oligonucleotide, the 5’-terminal portion of an oligonucleotide, or at any position in between (column 10, lines 21-26). In especially preferred embodiments, the region of alternating phosphodiester/phosphorothioate linkages occurs at least one terminal of the oligonucleotide. It is especially preferred that the terminal nucleotide of such region have a phosphorothioate linkage (column 12, lines 9-13). The compounds of the invention can have appended thereto any of a variety of molecular conjugate species that serve to facilitate uptake, targeting or efficacy of the oligonucleotide. Examples include peptides (column 12, lines, 13-31). The term “nucleotide” refers to a nucleoside having a phosphate group on its 3’ or 5’ sugar hydroxyl group (column 14, lines 57-59). Ascertainment of the Difference Between Scope the Prior Art and the Claims (MPEP §2141.02) While Manoharan teaches modification of oligonucleotides, Manoharan does not expressly teach an antisense strand and a sense strand. Manoharan does not expressly teach VP and the targeting ligands. However, this deficiency is cured by Grijalvo et al. Grijalvo et al. is directed to covalent strategies for targeting messenger and non-coding RNAs. The formation of DNA:RNA and RNA:RNA hybrid complexes obtained from annealing complementary oligonucleotide sequences with target mRNA is the easiest way a priori to regulate gene expression and therefore inhibit the synthesis of proteins. Despite the existence of extensive knowledge of action mechanisms, these strategies sometimes exhibit lower silencing activities than expected. This loss of therapeutic efficacy is mainly caused by low stability in oligonucleotides in the bloodstream, innate immune system stimulation and its inability to impart cellular uptake among other side effects. Some of these deficiencies have been overcome by increasing the nuclease stability of nucleic acids and immunogenicity by chemically modifying nucleobases, sugar as well as their internucleotide linkage, respectively (page 2, first paragraph). RNA interference (RNAi) is based on the discovery that double-stranded RNAs can trigger the silencing of up-regulated genes (page 2, last paragraph). Figure 1 shows the gene regulation mechanism mediated by the various oligonucleotides. RNAi contain a passenger strand (sense strand) and guide strand (antisense strand) (page 3). Cell-penetrating peptides (CPPs) are a family of short cationic peptides that have been employed as delivery vehicles for a good number of small molecules and macromolecules (e.g., antibodies, proteins or nucleic acids). CPPs may come from natural or synthetic sources and have the ability to cross biological barriers like plasma membrane and blood-brain barrier, among others (page 5, section 2.). To increase the stability of phosphate groups at the 5′-termini of the siRNA guide strand, (E)-vinylphosphonate (VP) has proven to be a stable phosphate group mimic that has afforded important stability. 5′-VP has shown important biological properties as it is able to prolong the gene silencing efficacy and therefore protect the siRNA from exonucleases (5′-to-3′) (page 9). RGD peptides are taught that enhance and direct locked nucleic acid oligonucleotide delivery into cancer cells (page 22). Figure 6 shows chemical structure of siRNA conjugates. Shown is a 2 nucleotide overhang. Lipids are also one of the most used modification for introduction to nucleic acid. Fatty acids have become the main hydrophobic residue used to improve important properties of nucleic acids (page 12). Finding of Prima Facie Obviousness Rationale and Motivation (MPEP §2142-2143) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Manoharan and Grijalvo et al. and utilize the modified oligonucleotides of Manoharan with RNAi, such as siRNA or miRNA. One skilled in the art would have been motivated to utilize the modifications with an siRNA with a reasonable expectation of success as Manoharan teaches modified oligonucleotides and Grijalvo et al. teaches that RNA interference (RNAi) is based on the discovery that double-stranded RNAs can trigger the silencing of up-regulated genes. Since both Manoharan and Grijalvo et al. recognize that modifications can improve stability, one skilled in the art would have been motivated to utilize the modifications in order to improve stability in double stranded RNAs which are used to silent up-regulated genes. Rendering claims 1 and 10 obvious. Regarding the claimed lipophilic monomer, a specific lipophilic monomer claimed is: PNG media_image3.png 182 434 media_image3.png Greyscale Manoharan teaches the following structure: PNG media_image2.png 1069 594 media_image2.png Greyscale This structure reads on the instant claims when R1 is a group of formula Z-R22-(R23)v wherein Z is O; R22 can be a C1-C20 alkyl, R23 can be a carboxyl (which corresponds to R” being H) (claim 1). Since R1 is shown on the middle nucleoside (i.e. internal), Manoharan teaches at least one lipophilic monomer internal. The C1-C20 alkyl overlaps with the instantly claimed n. Furthermore, one skilled in the art would have been motivated to utilize longer alkyl chains as Grijalvo et al. teaches that lipids, via their hydrophobic residues, improve properties of nucleic acids. Therefore, one skilled in the art would have been motivated to manipulate the length of the alkyl chain in order to determine the optimal length to improve properties of the nucleic acids. Regarding claims 2-4, Manoharan exemplifies oligonucleotides of about 20 nucleotides in length. Grijalvo et al. teaches oligonucleotides containing about 21-23 nucleotides (page 4). Regarding claim 5-7, as shown in Grijalvo et al. the siRNA has a 2-nucleotide overhang (figure 6). Regarding claims 8-9, Manoharan teaches that R1 can be fluoro and O-alkyl. Both Manoharan and Grijalvo et al. discuss modifications increasing the stability of the oligonucleotides. Therefore, one skilled in the art would manipulate the number of modifications in order to achieve the desired stability while also maintaining the ability of the oligonucleotide to hybridize to the desired target. Regarding claims 11-15, Manoharan teaches It is known that phosphorothioate linkages are essential for certain pharmacological properties of oligonucleotides. The plurality of covalently-bound 2’-modified nucleosides, can form the entire oligonucleotide, or a part thereof. Thus, the plurality of covalently-bound 2’-modified nucleosides can be located at the 3’-terminal portion of an oligonucleotide, the 5’-terminal portion of an oligonucleotide, or at any position in between (column 10, lines 21-26). In especially preferred embodiments, the region of alternating phosphodiester/phosphorothioate linkages occurs at least one terminal of the oligonucleotide. It is especially preferred that the terminal nucleotide of such region have a phosphorothioate linkage (column 12, lines 9-13). Grijalvo et al. teaches to increase the stability of phosphate groups at the 5′-termini of the siRNA guide strand (i.e. antisense strand), (E)-vinylphosphonate (VP) has proven to be a stable phosphate group mimic that has afforded important stability. 5′-VP has shown important biological properties as it is able to prolong the gene silencing efficacy and therefore protect the siRNA from exonucleases (5′-to-3′) (page 9). Regarding claims 18-21, Manoharan teaches the compounds of the invention can have appended thereto any of a variety of molecular conjugate species that serve to facilitate uptake, targeting or efficacy of the oligonucleotide. Examples include peptides (column 12, lines, 13-31). Grijalvo et al. teaches cell-penetrating peptides (CPPs) are a family of short cationic peptides that have been employed as delivery vehicles for a good number of small molecules and macromolecules (e.g., antibodies, proteins or nucleic acids). CPPs may come from natural or synthetic sources and have the ability to cross biological barriers like plasma membrane and blood-brain barrier, among others (page 5, section 2.). Conjugates taught include GalNAc which targets apolipoprotein B100 (ApoB100) (page 8). It is taught that lipid-siRNA conjugates include LDL (page 13). Therefore both Manoharan and Grijalvo et al. recognize that targeting ligands can be conjugated to the oligonucleotides. One skilled in the art would manipulate the targeting ligand depending on the desired target. As recognized by Grijalvo et al., these targeting ligands can deliver to a CNS tissue (reading on instant claim 18), can be an LDL conjugate (reading on claim 19) or an RGD peptide (reading on claim 20-21). Regarding claims 40-46, these claims are interpreted as merely claim the internal positions. Nothing in the claims limit the lipophilic monomers to ONLY be in these positions, just that these positions are the internal positions. Claim 1 recites “comprising” which allows for other positions to also contain the lipophilic monomer. Manoharan teaches the plurality of covalently-bound 2’-modified nucleosides, can form the entire oligonucleotide, or a part thereof. Thus, the plurality of covalently-bound 2’-modified nucleosides can be located at the 3’-terminal portion of an oligonucleotide, the 5’-terminal portion of an oligonucleotide, or at any position in between (column 10, lines 21-26). Thus all the positions of the sense and/or sense strand can contain the covalently-bound 2’-modified nucleosides which reads on these claims. Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Manoharan in view of Grijalvo et al. as applied to claims 1-15 and 18-21 above and in further view of Schlegel et al. (JACS, 2017). Applicant Claims The instant application claims the antisense strand comprises at least one GNA in the seed region which is at position 2-8 from 5’-end of the antisense strand. The instant application claims the seed region is at position 5-7 from the 5'-end of the antisense strand. Determination of the Scope and Content of the Prior Art (MPEP §2141.01) The teachings of Manoharan and Grijalvo et al. are set forth above. Ascertainment of the Difference Between Scope the Prior Art and the Claims (MPEP §2141.02) While Manoharan and Grijalvo et al. teach modifications of oligonucleotides, GNA modification in the seed or the seed region is not taught. However, these deficiencies are cured by Schlegel et al. Schlegel et al. is directed to chirality dependent potency enhancement and structural impact of glycol nucleic acid modification on siRNA. With regards to chemical modifications of siRNAs, it has been demonstrated that acyclic, thermally destabilizing modifications have the capability to improve stability and/or enhance RNAi-mediated gene silencing via several different mechanisms. For instance, differentiation between the two strands of an siRNA that is loaded within Argonaute strongly depends on the thermal stability of the terminal regions of the duplex; Ago2 favors loading of the 5′-end of the strand from the duplex end which has a lower thermal stability. It has been shown that thermally destabilizing modifications incorporated at certain positions of an siRNA duplex can lead to an increase in potency by improving strand bias, thereby favoring loading of the desired guide strand into RISC. In addition, the introduction of thermally destabilizing modifications may help facilitate sense strand dissociation during Ago2 loading, thereby increasing the rate of formation of active RISC (page 8537, right column). Figure 1 shows the siRNA with a 2 nucleotide overhang, sense strand (passenger) 21 nucleotide length and guide (antisense strand) 23 nucleotide length. This figure shows various modification that can be included. Loss of potency was observed when GNA was incorporated toward the 3′-end of the guide strand or the 5′-end of the passenger strand, respectively. The loss in silencing activity may have been the result of an improper thermal balancing toward loading of the passenger strand. In contrast, positions 13–15 of the guide and 6–9 of the passenger strand maintained in vitro efficacy comparable to the parent. Substitution of positions 3–9 of the guide strand (within the seed region) and positions 13–19 of the passenger strand were also well tolerated. Of particular interest are nucleotides 6–7 of the guide strand where it has been shown that an isoleucine side chain causes a kink in the guide RNA structure complexed with Ago2 (pages 8541-8542). Finding of Prima Facie Obviousness Rationale and Motivation (MPEP §2142-2143) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Manoharan, Grijalvo et al. and Schlegel et al. and utilize destabilizing modifications incorporated at certain positions of the siRNA duplex to increase potency by improving strand bias as taught by Schlegel et al. Therefore, one skilled in the art would manipulate not only the position but the type of modification in order to achieve the optimal combination of destabilizing modifications but also stabilizing modifications to ensure delivery of the siRNA as well as gene silencing. Regarding claims 3-9 and 16-17, Schlegel et al. teaches siRNA with a sense and antisense strand wherein the sense strand (passenger) is 21 nucleotide in length and the guide (antisense strand) is 23 nucleotide in length and a 2 nucleotide overhang. Schlegel et al. teaches that GNA substitution of positions 3–9 of the guide strand (within the seed region) and positions 13–19 of the passenger strand were also well tolerated. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Manoharan, Grijalvo et al. and Schlegel et al. and utilize GNA as it is a modification which can be used in siRNA as taught by Schlegel et al. Since Manoharan suggests modification in the oligonucleotides there is a reasonable expectation of success. Response to Arguments Applicants’ arguments filed October 23 2025 have been fully considered but they are not persuasive. Applicants argue (page 16) that (1) one skilled in the art would not have readily derived or envisioned the claimed lipophilic monomers from the broad and generic disclosure of Manoharan. It is argued that each of the claimed four monomers terminates with a carboxylic acid/ester functional group and a chain length of at least 8 carbon atoms. It is argued that Manoharan’s disclosure provides an expansive and generic framework and that there are infinite possible combinations disclosed in Manoharan. It is argued that one skilled would have to select the specific R1 formula, and O for Z from 3 different functional groups, select C1-C20 alkyl for R2 and carboxyl for R23. Even if one selected C1-C20 alkyl, this range is broad and fails to provide any guidance for a chain length of at least 8 carbon atoms. Manoharan fails to provide teachings, suggestion or motivation that would lead to the instantly claimed lipophilic monomers. Grijalvo does not remedy the deficiencies of Manoharan. Grijalvo discusses cholesterol not a long chain that terminates with a carboxylic acid/ester functional group. Regarding Applicants arguments, the examiner cannot agree that there are an infinite number of choices taught in Manoharan. With respect to R1 there are 3 different formulas claimed wherein Z-R22-R23 is the first R1 recited in the claims. There are 4 choices for Z with O being the first choice. There are three choices for R22 with C1-C20 alkyl being the first choice. While R23 recites several different choices, this is still a finite list. Claim 1 recites R1 is O-CH2-CH2-O-CH3 this corresponds to Z of O, C2 alkyl for R22 and O-alkyl for R23. Therefore, the choice of O for Z and alkyl for R22 is pointed to by Manoharan. While the specifically claimed compound has a shorter alkyl length, the length taught clearly overlaps. Therefore, all that is required to arrive at the claimed invention is choosing from a finite number of identified, predictable solutions with a reasonable expectation of success. MPEP 2143. The recitation C1-C20 alkyl overlaps the instant claims. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Note MPEP 2144.05. Applicants argue (page 18) that (2) that at least one lipophilic monomer is conjugated to one or more internal positions. It is argued that Manoharan and Grijalvo do not teach or suggest this claimed feature. Applicant has demonstrated through the working examples that conjugating the lipophilic monomers to an internal position of at least one strand of an siRNA provides the technical benefit of great in vivo ocular delivery and intrathecal delivery of the siRNA. As shown in the examples and Tables 12 and 18 and Figures 13 and 19A-D the siRNAs containing the claimed lipophilic monomers conjugated to an internal position provide good silencing results. Regarding Applicants’ second argument, the examiner cannot agree that Manoharan does not disclose conjugation of the lipophilic monomer to an internal position. As shown in claim 1, R1 is on every sugar moiety. Manoharan teaches the plurality of covalently-bound 2’-modified nucleosides, can form the entire oligonucleotide, or a part thereof. Thus, the plurality of covalently-bound 2’-modified nucleosides can be located at the 3’-terminal portion of an oligonucleotide, the 5’-terminal portion of an oligonucleotide, or at any position in between (column 10, lines 21-26). The instant claims do not exclude the lipophilic monomer on every nucleoside. Therefore, the structure in claim 1 and the recitation in column 10 indicate that the modification can be on all nucleosides rendering obvious the instantly claimed internal position. Regarding the results in the instant specification, the data shows that the instantly claimed compounds are effective. But this does not establish an unexpected effect. The fundamental requirement is that “any superior property must be unexpected to be considered as evidence of non-obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007). None of Applicants arguments point to where the specification teaches the claimed compounds possess an unexpected effect merely that they provide great in vivo ocular delivery and intrathecal delivery and good silencing does not establish an unexpected effect. Allowable Subject Matter Claims 47-48 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. The claims limit the compound to only include one lipophilic monomer (claim 47) and the location of that one lipophilic monomer (claim 48). This claim is interpreted as requiring one of the lipophilic monomers recited in claim 1 but excluding any other lipophilic monomer from being present. The prior art does not teach or suggest a compound comprising a sense strand and an antisense strand wherein one lipophilic monomer is conjugated to one internal position on at least one strand. 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 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 ABIGAIL VANHORN whose telephone number is (571)270-3502. The examiner can normally be reached M-Th 6 am-4 pm 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, Neil Hammell can be reached at 571-270-5919. 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. /ABIGAIL VANHORN/ Primary Examiner, Art Unit 1636
Read full office action

Prosecution Timeline

May 04, 2022
Application Filed
Dec 06, 2022
Response after Non-Final Action
Jul 23, 2025
Non-Final Rejection — §103, §112, §DP
Oct 23, 2025
Response Filed
Dec 29, 2025
Final Rejection — §103, §112, §DP (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12600972
LIPOPOLYSACCHARIDE (LPS) APTAMERS AND ASSOCIATED METHODS
2y 5m to grant Granted Apr 14, 2026
Patent 12582609
CANCER VACCINES
2y 5m to grant Granted Mar 24, 2026
Patent 12577271
MODIFIED NUCLEOTIDES AND USES THEREOF
2y 5m to grant Granted Mar 17, 2026
Patent 12553081
METHODS AND CONTROL COMPOSITIONS FOR A QUANTITATIVE POLYMERASE CHAIN REACTION
2y 5m to grant Granted Feb 17, 2026
Patent 12540323
NUCLEIC ACID, PHARMACEUTICAL COMPOSITION, CONJUGATE, PREPARATION METHOD, AND USE
2y 5m to grant Granted Feb 03, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

AI Strategy Recommendation

Get an AI-powered prosecution strategy using examiner precedents, rejection analysis, and claim mapping.
Powered by AI — typically takes 5-10 seconds

Prosecution Projections

3-4
Expected OA Rounds
47%
Grant Probability
69%
With Interview (+21.9%)
3y 7m
Median Time to Grant
Moderate
PTA Risk
Based on 1191 resolved cases by this examiner. Grant probability derived from career allow rate.

Sign in with your work email

Enter your email to receive a magic link. No password needed.

Personal email addresses (Gmail, Yahoo, etc.) are not accepted.

Free tier: 3 strategy analyses per month