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 .
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.
This office action is a response to applicant’s communication submitted December 7, 2022, wherein claims 3-5, 9-11, 13, 24-26, 30, 32, and 41 were preliminarily amended, and claims 6-8, 12, 15-21, 27-29, 34-40, 42-53, and 55-63 were canceled. This application claims benefit of provisional application 63/237,082 filed August 25, 2021.
Claims 1-5, 9-11, 13-14, 22-26, 30, 32-33, 41, and 54 are pending in this application.
Claim Rejections - 35 USC § 112 (b)
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 41 is 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 41: A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 41 recites the broad recitation “12-24” linked nucleosides, and the claim also recites “12-20, 16-20, 18-20, or 22-23” which are the narrower statements of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Allowable Subject Matter
Claims 1-5, 9-11, 13-14, 22-26, 30, 32-33 and 54 allowed.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art is Catana et al (J. Nucleic Acids, 2012, IDS filed December 7, 2022).
Catana teaches the following known macrocyclic-constrained nucleotides
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384
722
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(pg. 3, figure 2). The closest macrocyclic-constrained nucleotide is represented by formula VII. While the art demonstrates the macrocyclic structures can be connected via saturated or unsaturated alkoxy chains, there is no teaching or suggestion to replace with alkoxy chains connecting phosphate groups with alkyl groups as recited by the oligomeric formulas in instant claims 1 and 22. It would be improper hindsight to suggest a person of ordinary skill in the art would have had the motivation to do so as there is no teaching or suggestion this would be beneficial for the purpose of acting as antisense modified oligonucleotides. Thus claims 1 and 22 are allowed. Wherein claims 1 and 22 cannot be anticipated or rendered obvious over the prior art dependent claims 2-5, 9-11, 13-14, 23-26, 30, 32-33 and 54 are similarly allowed.
Conclusion
Claims 1-5, 9-11, 13-14, 22-26, 30, 32-33 and 54 are allowed and claim 41 is rejected.
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/S.L.G./Examiner, Art Unit 1693
/ERIC OLSON/Primary Examiner, Art Unit 1693