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/Restrictions
As noted in the Office Action mailed 4 June 2025, Applicant previously elected, without traverse, the species of “a short dummy RNA comprising a sequence complementary to at least a portion of the scaffold RNA” in the reply filed on 10 Feb 2025.
In light of the amendment of claim 1, Examiner has rejoined the nonelected species. Therefore, claim 2 is no longer withdrawn.
Claims 1-2 and 6-8 are pending and are examined herein.
All objections to the Specification are withdrawn in light of Applicant’s amendment of the specification.
All rejections of claims 3-5 and 9-11 are moot in light of Applicant’s cancelation of the claims.
The rejection of claim 6 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 is withdraw in light of Applicant’s amendment of the claims.
The rejection of claims 1 and 6-8 under 35 U.S.C. 112(a), first paragraph, as failing to comply with the written description requirement, as set forth in the Office Action mailed 4 June 2025, is withdrawn in light of Applicant’s amendment of the claims.
The rejection of claims 1 and 6-8 under 35 U.S.C. 112(a), first paragraph because the specification does not reasonably provide enablement commensurate in scope with these claims is withdrawn in light of Applicant’s amendment of the claims.
The rejection of claims 1 and 7 under 35 U.S.C. 102(a)(1) as being anticipated by New Energy and Industrial Development Organization 2018 is withdrawn in light of Applicant’s amendment of the claims.
The rejection of claims 1 and 7-8 under 35 U.S.C. 103 as being unpatentable over New Energy and Industrial Development Organization 2018 is withdrawn in light of Applicant’s amendment of the claims.
The rejection of claims 1 and 7-8 on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 11629351 B2 is withdrawn in light of Applicant’s amendment of the claims.
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.
Claims 1-2 and 6-8 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This rejection is on different grounds than the written description rejection set forth in the
Applicant has added the following new limitation to claim 1: “wherein the step of inhibiting binding of the scaffold RNA with the siRNA-AGO4 complex comprises introducing into the plant cell a short dummy RNA, wherein the short dummy RNA comprises a sequence complementary to at least a portion of the scaffold RNA, and wherein the length of the scaffold RNA is 20 bp to 50 bp”.
This limitation is new matter because the instant specification fails to provide sufficient written support for it.
In paragraph 0019, Applicant describes short dummy RNA’s with a length of, preferably, 20 bp to 50 bp.
However, nowhere in the disclosure does Applicant describe a method of inhibiting binding of the scaffold RNA with the siRNA-AGO4 complex comprises introducing into the plant cell a short dummy RNA, wherein the short dummy RNA comprises a sequence complementary to at least a portion of the scaffold RNA, and wherein the length of the scaffold RNA is 20 bp to 50 bp.
The added limitation, therefore, constitutes New Matter.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 1 recites the limitation “wherein the short dummy RNA comprises a sequence complementary to at least a portion of the scaffold RNA”.
Claim 2 is drawn to the method of claim 1, wherein the short dummy RNA comprises a sequence complementary to the siRNA incorporated in the siRNA-AGO4 complex.
As detailed in the specification, in the RdDM mechanism the siRNA incorporated into the siRNA-AGO4 complex “forms base pairs with” the scaffold RNA, i.e. the siRNA and scaffold RNA are complimentary sequences. Thus, the same short dummy RNA cannot be complimentary to both the siRNA and scaffold RNA. Therefore, claim 2 does not include all the limitations of the claim upon which it depends.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Subject matter free of the prior art
Claims 1-2 and 6-8 appear to be free of the prior art. The closest prior art is WO 2017/219027 A1, which teaches that RNA targeting effector proteins may be used to target small RNAs produced during RdDM (¶ 00713), but does not reasonably teach, suggest or provide motivation for doing so with a short dummy RNA and does not suggest doing so to target scaffold RNA with a short dummy RNA.
Conclusion
No claims are allowed.
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 ALEKSANDAR RADOSAVLJEVIC whose telephone number is (571)272-8330. The examiner can normally be reached Monday--Friday 8-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bratislav Stankovic can be reached at 571-270-0305. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEKSANDAR RADOSAVLJEVIC/Examiner, Art Unit 1662
/BRENT T PAGE/Primary Examiner, Art Unit 1663