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.
Priority
The instant application claims domestic benefit to US provisional application no. 63/294,057 filed on 12/27/2021 and also claims foreign priority to Taiwan application no. TW111143952 filed on 11/17/2022. The certified copy of the foreign priority application TW111143952 in the instant application is acknowledged.
Status of the Claims
The claim amendments and remarks filed on 12/15/2025 are acknowledged. Claim 1 is amended. Claims 2-4 are cancelled.
Claims 1 and 5-11 are pending.
Claims 5-11 were previously withdrawn in the office action dated 12/12/2024 from further
consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no
allowable generic or linking claim.
The declaration by Ming-Chun Lin filed on 08/19/2025 is acknowledged, and the contents are discussed in the response to argument section below.
Accordingly, claim 1 is being examined on the merits herein.
The following grounds of rejection are maintained from the previous Office Action dated 09/15/2025.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1 is rejected under 35 U.S.C. 103 as being unpatentable over Guzaev et al. (US20040152905 in IDS filed on 05/29/2023).
Guzaev et al. discloses compounds useful in the preparation of novel universal building blocks and support media (see paragraph 0002). Guzaev et al. teaches the following compound (120) for the synthesis of oligomeric compounds shown below (see paragraph [0490]):
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Here, the “Ac” is a common abbreviation for an acetyl group, and “DMT” in the compound is 4,4’-demethoxytrityl (see paragraph [0132]). Guzaev et al. also discloses their compounds can have a general Formula VII structure shown below (paragraph 0075):
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Here, the n integer in the recited “(CH2)n” portion of the formula can be from 0 to about 12 (see paragraph 0024).
Guzaev et al. does not specifically disclose the recited Formula 1-1, Formula 1-3, and Formula 1-4 structures. However, it would have been prima facie obvious before the effective filing date of the claimed invention to have modified the compound 120 of Guzaev by increasing the alkyl chain length between the nitrogen and acetyl group to arrive at the recited Formula 1-1 and Formula 1-3 structures. One of ordinary skill in the art would have made this modification with a reasonable expectation of success because Guzaev provides a general Formula VII structure that has the same base structure of compound 120 with the n integer of the (CH2)n being 1 and provides further guidance that the n integer (CH2)n can range from about 0 to about 12, which suggests compounds within the general Formula VII structure can also be used for synthesis of oligomeric compounds as taught for compound 120. Therefore, an ordinary skilled artisan could have chosen from a finite number of identified, predictable solutions of alkyl chain lengths from 0 to about 12, with a reasonable expectation of success.
Response to Arguments
Applicant’s arguments filed on 12/15/2025 and declaration under 35 CFR 1.132 filed on 08/19/2025 have been fully considered but were not found persuasive.
Applicant states that the structural difference between the compound represented by Formula 1-2 (Compound 2) and the compound represented by Formula 1-3 (Compound 4) is merely one carbon shown below:
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Applicant states that in Table 2 (page 18) of the instant specification, solid carriers prepared by Formula 1-3 (compound 4) demonstrate a significantly superior number of binding sites compared to solid carriers prepared by Formula 1-2 (compound 2). Applicant states that this data provides evidence that minor structure differences do indeed result in significant different technical effects. Applicant further states that Formula 1-1 (compound 1), Formula 1-3 (compound 4), and Formula 1-4 (compound 5) all exhibited superior number of binding sites compared to the solid carriers prepared by Formula 1-2 (compound 2) or Formula 1-5 (compound 6) as seen in Table 2. Applicant states that an ordinary skilled artisan would have no motivation to select a specific n value represented by Formula VII of Guzaev to arrive at the compound represented by Formula 1-1, 1-3, or 1-4 and further achieve the technical effect of good number of binding sites.
Applicant’s arguments described above were not found persuasive because the rejection over Guzaev is not based on a motivation to select a specific n value to arrive the claimed compounds. Rather, the rationale to arrive at the claimed compounds is based on an “obvious to try”, where an ordinary skilled artisan could have chosen from a finite number of identified, predictable solutions, with a reasonable expectation of success as described above (see KSR (E) in MPEP 2141 III). Additionally, MPEP 2144.09 II states that “Compounds which are … homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”.
Furthermore, the technical result of improved binding sites must be compared to the closest prior art as stated in MPEP 816.02(e). Here, the closest prior art is Guzaev et al., and Applicant has not demonstrated this improved binding site effect over compound 120 of Guzaev, which discloses one less carbon atom than the compound represented by Formula 1-1. Therefore, Applicant has not provided evidence that this improved binding site effect occurs over compound 120 of Guzaev, as this comparison was not provided.
Additionally, it is noted that MPEP 716.02 states “A difference of degree is not as persuasive as a difference in kind – i.e., if the range produces ‘"a new property dissimilar to the known property,’" rather than producing a predictable result but to an unexpected extent.”. Here, the increased number of binding sites appears to be correlated with shorter lengths of alkyl chains, since Formula 1-1 and Formula 1-3 have shorter alkyl chain lengths and increased binding sites in comparison to Formula 1-2. The compound 120 of Guzaev has an even shorter alkyl chain length compared to either Formula 1-1 and 1-3. Therefore, a proper comparison to this compound of Guzaev is further necessary in order to determine if Applicant’s data and argument of an unexpected result is changed to an unexpected degree.
Furthermore, the technical result of improved binding sites does not appear to be commensurate in scope of the instant claim. As seen in Table 2 on pages 18-19 shown below, the number of binding sites differed depending also on the type of column used.
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Applicant further submits a declaration under 37 C.F.R. 1.132 filed on 08/19/2025 to demonstrate the superior effect of the present application. Applicant demonstrates in the declaration that a solid carrier prepared by a compound represented by Formula 1-1 had a recovery ratio in six experiments of 90% or more of the initial preparation as seen in Supplementary Table 1 on page 2. Applicant states that these results prove the compound of the present application has good reusability. Therefore, Applicant states the solid carrier comprising the compound having a specific structure may be recovered and reused after the preparation of nucleic acid, and has a good reusability which cannot be attained in the prior art.
In response to these arguments, it is noted that the features upon which applicant relies (i.e., the reusability of the claimed compound in a solid carrier) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Here, the instant claims are drawn to a different compound than what is being presented in the Declaration, which discloses a solid carrier that contains the Formula 1-1 compound.
Furthermore, in response to Applicant’s argument that there is no teaching, suggestion, or motivation to combine and arrive at the claimed invention, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, an ordinary skilled artisan could have modified the compound 120 of Guzaev by increasing the alkyl chain length between the nitrogen and acetyl group to arrive at the recited Formula 1-1 and Formula 1-3 structures based on Guzaev providing a general Formula VII structure that has the same base structure of compound 120 with the n integer of the (CH2)n being 1 and provides further guidance that the n integer (CH2)n can range from about 0 to about 12. Additionally, MPEP 2144.09 II states that “Compounds which are … homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”.
Lastly, as described above, even if Applicant were to amend to include the features into the instant claims, the technical result of reusability must be compared to the closest prior art as stated in MPEP 816.02(e). However, Applicant has not provided a proper comparison to the compound 120 of Guzaev as described above because the declaration only provides data for a solid carrier prepared by a compound represented by Formula 1-1.
Conclusion
No claim is found allowable.
THIS ACTION IS MADE FINAL. 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.
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/D.H.C./Examiner, Art Unit 1693
/SCARLETT Y GOON/Supervisory Patent Examiner, Art Unit 1693