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
Applicant’s election without traverse of Group II, claim 14, in the reply filed on 02/05/2026 is acknowledged.
Claims 1-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/05/2026.
Information Disclosure Statement
The information disclosure statement filed 12/01/2022 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
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.
Claim 14 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.
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 14 recites the broad recitation using open language “comprises terminal bases” or “comprises terminal nucleotides”, and the claim also recites closed language “consists of” which is the narrower statement of the limitation (see claim 1 on which claim 14 depends). 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.
Claim Rejections - 35 USC § 102
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(s) 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jin et al (ACS Appl. Bio Mater., 2018, 1: 643-651, cited from IDS) as evidenced by Invitrogen (Invitrogen, printed on 03/13/2026, pages 1-5) and Elbashir et al (Nature, 2001, vol.411, pages 494-498).
Jin disclose method of gene silencing by administering double-stranded siRNA targeting luciferase gene and comprising PNA sequence adjoining antisense strand of siRNA at 3’ end (see third structure on Figure 2, page 645, Figure 3). Such siRNA has a sense strand of 30 nucleotides and antisense strand of 21 nucleotides (see third structure on Figure 2). siRNA was administered in combination with intracellular carrier Lipofectamine (see the bottom of second column on page 645). PNA sequence annealed is 9 nucleotides long CACCACCAC, comprising terminal C bases (see Figure 2). Jin do not disclose the sequence of siRNA, just stating that it was purchased from Invitrogen (see Materials section on page 644). Commercially available from Invitrogen luciferase siRNA includes GL2 and GL3 siRNAs (see first page of Invitrogen reference). The sequences of the GL2 and GL3 siRNAs is published by Elbashir in Figure 1, which shows the presence of G and C bases in the 3’ termini of antisense strands (not counting the tt overhang).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EKATERINA POLIAKOVA whose telephone number is (571)270-5257. The examiner can normally be reached Mon-Fri 8-5.
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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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/EKATERINA POLIAKOVA-GEORGANTAS/Primary Examiner, Art Unit 1637
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