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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/12/2026 has been entered.
Status of the Claims
Clams 67-86 are pending
Claims 67-71, 76-86 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) with claims 67-71, 77-86 being withdrawn because they are drawn to a nonelected invention, while claim 76 is withdrawn as being drawn to a non-elected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/24/2024.
Claims 72-75 are examined herein as they read on the elected subject matter.
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 72-75 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 is a new matter rejection.
MPEP §2163.02 recites:
Whenever the issue arises, the fundamental factual inquiry is whether a claim defines an invention that is clearly conveyed to those skilled in the art at the time the application was filed...If a claim is amended to include subject matter, limitations, or terminology not present in the application as filed, involving a departure from, addition to, or deletion from the disclosure of the application as filed, the examiner should conclude that the claimed subject matter is not described in that application… If a claim is amended to include subject matter, limitations, or terminology not present in the application as filed, involving a departure from, addition to, or deletion from the disclosure of the application as filed, the examiner should conclude that the claimed subject matter is not described in that application. This conclusion will result in the rejection of the claims affected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph - description requirement, or denial of the benefit of the filing date of a previously filed application, as appropriate.
MPEP §2163.06 further notes:
Lack of written description is an issue that generally arises with respect to the subject matter of a claim. If an applicant amends or attempts to amend the abstract, specification or drawings of an application, an issue of new matter will arise if the content of the amendment is not described in the application as filed… If new matter is added to the claims, the examiner should reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph - written description requirement. In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981)… When an amendment is filed in reply to an objection or rejection based on 35 U.S.C. 112, first paragraph, a study of the entire application is often necessary to determine whether or not "new matter" is involved. Applicant should therefore specifically point out the support for any amendments made to the disclosure.
Claim 72 has been amended to add new limitations. Specifically, the claim has been amended to add “wherein each single-stranded oligonucleotide is 10-28 nucleotides in length” and “wherein each partial single-stranded oligonucleotide is 5-14 nucleotides in length.” Applicant asserts that support for the amendments can be found throughout the specification as filed, including, for example, at ¶¶ [0012], [0035]. [0083], [0102], and [0129]. The entire disclosure has been thoroughly searched, including by electronic text search, and although support was found for the new limitation “wherein each partial single-stranded oligonucleotide is 5-14 nucleotides in length” at [0035], support could not be found for the limitation “wherein each single-stranded oligonucleotide is 10-28 nucleotides in length.” Since support for the amendment cannot be found, a rejection under 35 USC 112(a) written description is appropriate because the content of the amendment is not described in the application as filed.
Should Applicants traverse the rejection, they are asked to identify the specification location (such as by paragraph or page and line number) where support for the content of the amendment can be found.
Response to Arguments
With respect to the rejection of claims under 35 USC 102 as set forth in the previous Office action, Applicant’s arguments have been fully considered and in view of the amendment to claim 72, are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration of the amended claims, a new ground(s) of rejection is made under 35 USC 112(a) for the reasons indicated above.
Regarding Applicant’s request to rejoin claim 76, since claim 76 does not depend on an allowable claim, the request is denied and claim 76 remains withdrawn from consideration but will be eligible for rejoined should claim 72 become allowable.
It is noted that no prior art was identified for amended claim 72.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to J. E. Angell whose telephone number is (571)272-0756. The examiner can normally be reached Monday-Friday (8:30-5:00).
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, Jennifer Dunston can be reached at (571) 272-2916. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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J. E. Angell
Primary Examiner
Art Unit 1637
/J. E. ANGELL/Primary Examiner, Art Unit 1637
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