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 .
Election/Restriction
Inventor’s election, without traverse, of Compound 89 (specification page 29) as the species elected to begin prosecution is acknowledged. The election/restriction is hereby made FINAL.
The examiner notes for clarity of the record that inventor has added new claim 105. The subject matter of this claim is encompassed by the original election/restriction requirement (an election of species across the entire claim set).
Claim Objections
Claim 56 is objected to because of the following informalities: the claim does not terminate with a period (after the table). Claims must begin with a capital letter and end with a period. MPEP 608.01(m).
Appropriate correction is required.
Inventor’s assistance is respectfully requested in correcting any other minor grammatical and/or spelling errors which may be present in the claim set.
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 1, 25, 29 and 53-55 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.
In the various definitions of variables L3, A, B and Q in the claims, it is unclear what a C1 alkenyl (“…C1-20 alkenyl…”) or a C1 heteroalkenyl (“…C1-20 heteroalkenyl…”) might be. This is so because an alkenyl ligand would necessitate at least 2 carbon atoms.
Clarification is in order.
Claims 2, 5, 24, 31, 36, 38, 50-52, 56, 63, 68 and 105 are also 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.
The claims all depend, or ultimately depend, from an indefinite claim yet do not relieve the indefiniteness. Dependent claims 2, 5, 24, 31, 36, 38, 50-52, 56, 63, 68 and 105 are also, therefore, indefinite.
Markush Search
All claims have been examined with respect to formal matters.
The elected species has been searched and is deemed free of the prior art.
The search was therefore expanded as called for under Markush examination practice, a compound-by-compound search, to include a single additional species. That species is: Trilinolenin (instant Compound 73).
All claimed but as yet unexamined subject matter which does not read on the above species is hereby withdrawn from consideration, for purposes of this Office Action, as being drawn to non-elected subject matter. This subject matter will be rejoined as appropriate as the Markush examination progresses.
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.
Claim 57, in so far as it reads on the above species, is rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by WO 2018/119514 A1.
The reference teaches a method of transfecting cells with a nucleic acid utilizing a composition which comprises the triglyceride trilinolenin (abstract; page 4, lines 15ff and line 25).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN J DAVIS whose telephone number is (571)272-0638. The examiner can normally be reached M-F 8:30-5:00 PM EST.
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/BRIAN J DAVIS/Primary Examiner, Art Unit 1614 12/14/2025