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 .
Status of Application/Amendment/Claims
This Office action is in response to the communications filed on July 27, 2026.
Currently, claims 8, 10, 12-20, 23-29, 32-33, 44, 46, and 49-53 are pending in the instant application. Claims 49-53 are withdrawn from further consideration as being drawn to a nonelected invention, there being no allowable generic or linking claim. Accordingly, claims 8, 10, 12-20, 23-29, 32-33, 44, and 46 are under examination on the merits in the instant application.
The following rejections are either newly applied or are reiterated and are the only rejections and/or objections presently applied to the instant application.
Response to Arguments and Amendments
Withdrawn Rejections
Any rejections/objections not repeated in this Office action are hereby withdrawn.
New Objections/Rejections Necessitated by Amendment
Claim Objections
Claim 8 is objected to because of the following informalities: the semicolon following “2” should be deleted. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: the semicolon following “2690” should be deleted. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 8, 10, 12-20, 23-29, 32-33, 44, and 46 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.
Clams 8, 10, 12-20, 23-29, 32-33, 44, and 46 as currently amended are drawn to “a modified oligonucleotide consisting of 12 to 30” nucleotides “comprising at least 15,…contiguous nucleobases”. It is noted that it is structurally impossible for the oligonucleotide “consisting of 12” nucleotides in length, for instance, to comprise at least 15 nucleotides. Hence, the instant claims recite structurally conflicting/impossible limitations, thereby rendering the structure of the claimed oligonucleotide indefinite.
Claim 12 recites that the modified oligonucleotide of claim 8 has the sequence that is at least 85% complementary to an equal length portion of SEQ ID NO:2. However, the modified oligonucleotide consisting of 12-30 nucleotides is now required to comprise “at least 15,…, or at least 20 contiguous nucleobases complementary to an equal length portion” of SEQ ID NO:2. It is unclear how a 15-mer modified oligonucleotide, for instance, comprising 15 contiguous nucleotides complementary to a 15-mer of SEQ ID NO:2 can be less than 100% complementary to the equal length (15) of SEQ ID NO:2. That is, less than 100% sequence complementarity no longer makes sense for certain lengths as currently amended as opposed to previously presented claims that recited a minimum oligonucleotide length of 12 and shorter (e.g., at least 10) contiguous nucleobases that are complementary to an equal length portion in SEQ ID NO:2. Hence, the claim recites structurally conflicting limitations, thereby rendering the claim indefinite.
Claim 20 recites that the modified oligonucleotide is required to comprise at least 15 contiguous nucleobases complementary to an equal length (15) of SEQ ID NO:2 has a minimum of 1 base in each of the 5’ region and the 3’ region and a minimum of 6 nucleosides in the central region, thereby resulting in an 8-mer length for the nucleobase sequence. The length ranges in the three recited regions do not structurally correspond to the minimum length (15) that is currently required to be complementary to the target, thereby rendering the claim indefinite.
Allowable Subject Matter
SEQ ID NOs:744, 837, 943, 971, 1068, and 2690 recited in claim 10 are found free of the prior art searched and of record.
Conclusion
No claim is 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 DANA H SHIN whose telephone number is (571)272-8008. The examiner can normally be reached Monday-Thursday: 8am - 6:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RAM SHUKLA can be reached at 571-272-0735. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANA H SHIN/Primary Examiner, Art Unit 1635
