Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Claim Status
2. This Office Action is in response to the amendments and remarks received on 15 January 2026, wherein claims 1, 3-5, and 9-11 were amended. Claims 1-15 are under consideration.
Objections Withdrawn
3. The objections to the specification for use of the terms ‘PrimeSTAR’ and ‘DMEM’, which are trade names or a mark used in commerce, is withdrawn in view of Applicant’s amendments.
4. The objections to claims 1, 3-4, and 9-10 are withdrawn in view of Applicant’s amendments.
Rejections Withdrawn
5. Claim Rejections – 35 USC § 112
The rejection of claims 1-15 under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as being indefinite is withdrawn in view of Applicant’s amendments.
6. Claim Rejections – 35 USC § 102
The rejection of claims 1-2, 7-8, and 13-15 under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Watanabe (Supra) as evidenced by Miglani (Supra) is withdrawn in view of Applicant’s amendments.
Examiner-Initiated Interview
7. On 13 March 2026, the Examiner contacted Applicant to propose claim amendments that would result in the allowance of the application. Applicant later requested that Examiner send a formal Office Action on 19 March 2026. The proposed amendments were as follows:
ABSTRACT
It is unclear which abstract is to be considered based on the response received 15 January 2026 as it states that “the Abstract firstly presented is to be considered”, which would be the one filed on 02 June 2023. This abstract is not in compliance as it contains drawings. Examiner would like to consider the amended abstract filed on 12 October 2023 that has the drawing canceled.
SPECIFICATION
Examiner would like to cancel pages 13-22 of the specification as the sequence listings are already a separate listing in the Instant Application.
CLAIMS
(Currently Amended) A method for attenuating an influenza virus, comprising:
conducting synonymous mutation on an overlap of an M2 gene and an M1 gene in an M gene of SEQ ID NO: 24 from an influenza A virus without changing the amino acid sequence encoded by the M1 gene;
conducting mutation into termination codon from the 761th base to the 766th base of SEQ ID NO: 24 and deletion of partial nucleotide sequence in a transmembrane domain of the M2 gene, and
rescuing an attenuated influenza virus strain using a reverse genetics system.
(Currently Amended) The method according to claim 1, wherein SEQ ID NO: 24 is derived from A/Puerto Rico/8/1934.
(Currently Amended) The method according to claim 1, wherein the synonymous mutation comprises: replacing the 715th base to the 760th base of the M gene of SEQ ID NO: 24 with SEQ ID NO: 1.
Alternative option:
3. (Re-written) The method according to claim 1, wherein after step b), the M gene comprises a sequence selected from the group consisting of SEQ ID NOs: 2-6.
(Currently Amended) The method according to claim 1, wherein the mutation into termination codon comprises: replacing the 761th base to the 766th base of the M gene of SEQ ID NO: 24 with TGATGA.
(Previously Presented) The method according to claim 1, wherein the deletion of partial nucleotide sequence comprises: conducting deletion on a nucleotide sequence of any position and length from the 767th base to the 877th base on the M gene of SEQ ID NO: 24.
(Currently Amended) The method according to claim 5, wherein the deletion of partial nucleotide sequence specifically comprises:
conducting deletion from the 767th base to the 774th base of the M gene of SEQ ID NO: 24;
conducting deletion from the 767th base to the 794th base of the M gene of SEQ ID NO: 24;
conducting deletion from the 767th base to the 817th base of the M gene of SEQ ID NO: 24;
conducting deletion from the 767th base to the 839th base of the M gene of SEQ ID NO: 24; or
conducting deletion from the 767th base to the 877th base of the M gene of SEQ ID NO: 24;
(Previously Presented) An attenuated influenza virus strain prepared by the method according to claim 1.
(Currently Amended) The attenuated influenza virus strain according to claim 7, wherein SEQ ID NO: 24 is derived from A/Puerto Rico/8/1934.
(Currently Amended) The attenuated influenza virus strain according to claim 7, wherein the synonymous mutation comprises: replacing the 715th base to the 760th base of the M gene of SEQ ID NO: 24 with SEQ ID NO: 1.
Alternative option:
9. (Re-written) The attenuated influenza virus strain according to claim 7, wherein the M gene comprises a sequence selected from the group consisting of SEQ ID NOs: 2-6.
(Currently Amended) The attenuated influenza virus strain according to claim 7, wherein the mutation into termination codon comprises: replacing the 761th base to the 766th base of the M gene of SEQ ID NO: 24 with TGATGA.
(Previously presented) The attenuated influenza virus strain according to claim 7, wherein the deletion of partial nucleotide sequence comprises: conducting deletion on a nucleotide sequence of any position and length from the 767th base to the 877th base of the M gene of SEQ ID NO: 24.
(Currently Amended) The attenuated influenza virus strain according to claim 11, wherein the deletion of partial nucleotide sequence specifically comprises:
conducting deletion from the 767th base to the 774th base of the M gene of SEQ ID NO: 24;
conducting deletion from the 767th base to the 794th base of the M gene of SEQ ID NO: 24;
conducting deletion from the 767th base to the 817th base of the M gene of SEQ ID NO: 24;
conducting deletion from the 767th base to the 839th base of the M gene of SEQ ID NO: 24; or
conducting deletion from the 767th base to the 877th base of the M gene of SEQ ID NO: 24;
(Canceled)
(Canceled)
Alternative option 1:
14. (Re-written) An isolated recombinant influenza virus M gene selected from the group consisting of SEQ ID NOs: 2-6.
Alternative option 2:
14. (Re-written) An isolated plasmid comprising an influenza virus M gene selected from the group consisting of SEQ ID NOs: 2-6.
(Canceled)
Please note that any objections/rejections below can be overcome with the proposed amendments above.
Nucleotide and/or Amino Acid Sequence Disclosures
8. REQUIREMENTS FOR PATENT APPLICATIONS CONTAINING NUCLEOTIDE AND/OR AMINO ACID SEQUENCE DISCLOSURES
Items 1) and 2) provide general guidance related to requirements for sequence disclosures.
37 CFR 1.821(c) requires that patent applications which contain disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.821(a) must contain a "Sequence Listing," as a separate part of the disclosure, which presents the nucleotide and/or amino acid sequences and associated information using the symbols and format in accordance with the requirements of 37 CFR 1.821 - 1.825. This "Sequence Listing" part of the disclosure may be submitted:
In accordance with 37 CFR 1.821(c)(1) via the USPTO patent electronic filing system (see Section I.1 of the Legal Framework for Patent Electronic System (https://www.uspto.gov/PatentLegalFramework), hereinafter "Legal Framework") as an ASCII text file, together with an incorporation-by-reference of the material in the ASCII text file in a separate paragraph of the specification as required by 37 CFR 1.823(b)(1) identifying:
the name of the ASCII text file;
ii) the date of creation; and
iii) the size of the ASCII text file in bytes;
In accordance with 37 CFR 1.821(c)(1) on read-only optical disc(s) as permitted by 37 CFR 1.52(e)(1)(ii), labeled according to 37 CFR 1.52(e)(5), with an incorporation-by-reference of the material in the ASCII text file according to 37 CFR 1.52(e)(8) and 37 CFR 1.823(b)(1) in a separate paragraph of the specification identifying:
the name of the ASCII text file;
the date of creation; and
the size of the ASCII text file in bytes;
In accordance with 37 CFR 1.821(c)(2) via the USPTO patent electronic filing system as a PDF file (not recommended); or
In accordance with 37 CFR 1.821(c)(3) on physical sheets of paper (not recommended).
When a “Sequence Listing” has been submitted as a PDF file as in 1(c) above (37 CFR 1.821(c)(2)) or on physical sheets of paper as in 1(d) above (37 CFR 1.821(c)(3)), 37 CFR 1.821(e)(1) requires a computer readable form (CRF) of the “Sequence Listing” in accordance with the requirements of 37 CFR 1.824.
If the "Sequence Listing" required by 37 CFR 1.821(c) is filed via the USPTO patent electronic filing system as a PDF, then 37 CFR 1.821(e)(1)(ii) or 1.821(e)(2)(ii) requires submission of a statement that the "Sequence Listing" content of the PDF copy and the CRF copy (the ASCII text file copy) are identical.
If the "Sequence Listing" required by 37 CFR 1.821(c) is filed on paper or read-only optical disc, then 37 CFR 1.821(e)(1)(ii) or 1.821(e)(2)(ii) requires submission of a statement that the "Sequence Listing" content of the paper or read-only optical disc copy and the CRF are identical.
9. Specific deficiencies and the required response to this Office Action are as follows:
Specific deficiency – Nucleotide and/or amino acid sequences appearing in the specification are not identified by sequence identifiers in accordance with 37 CFR 1.821(d).
Required response – Applicant must provide:
A substitute specification in compliance with 37 CFR 1.52, 1.121(b)(3) and 1.125 inserting the required sequence identifiers, consisting of:
A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
A copy of the amended specification without markings (clean version); and
A statement that the substitute specification contains no new matter.
See pages 13-22 of the Instant Specification. Proper SEQ ID NO: identifiers are required for each sequence present. Alternatively, the pages could be canceled.
Specification
9. (Objection maintained) The abstract is objected to for the following reason: the response received on 15 January 2026 does not make clear which abstract Applicant would like to be considered. Please indicate which abstract is to be considered in the application (i.e. the abstract filed on 12 October 2023 without the figure) or provide a new version of the abstract. Please note that figures are not permitted in an abstract.
Claim Objections
10. Claims 6 and 12 are objected to because of the following informalities: all of the “on” should be changed to “from” for consistency with the other claims.
Claim 13 objected to under 37 CFR 1.75 as being a substantial duplicate of claim 8. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Appropriate correction is required.
Claim Interpretation
11. Claim 7 is interpreted as a product-by-process claim, where "An attenuated influenza virus strain
prepared by the method according to claim 1" is a product-by-process limitation. Claim 4 requires an attenuated influenza virus strain that has the same characteristics as the one produced by claim 1, but does not require the method of claim 1. MPEP § 2113 makes clear that "Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps" and that "determination of patentability is based on the product itself." Therefore, the broadest reasonable interpretation of the product in claim 1 is any attenuated influenza virus strain comprising a synonymous mutation on an overlap of the M2 and M1 genes of SEQ ID NO: 24 and a mutation on the 761th base to the 766th base into termination codon and deletion of partial nucleotide sequence in a transmembrane domain of the M2 gene.
Claim Rejections - 35 USC § 112
12. 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.
13. Claims 1-15 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.
Claim 1 is rejected because of the following unclear limitation: "conducting mutation into termination codon from the 761th base to the 766th base on the M gene” is unclear. It is unclear what “conducting mutation into termination codon” encompasses. Claims 2-15 are also rejected because they depend from claim 1, but do not remedy this deficiency.
Claim 1 is rejected because of the following unclear limitation: “from the 761th base to the 766th base on the M gene”. However, the M gene of influenza viruses does not have one specific length and therefore it is unclear if the 761st and 766th bases are relative to a full-length M gene, a 5’ starting point, or a 3’ ending point. Claims 2-15 are also rejected because they depend from claim 1, but do not remedy this deficiency.
Regarding claims 2, 8, and 13, "wherein a background strain from which the M gene derives comprises" is unclear because there is not one singular M gene.
Claims 3 and 9 are rejected because of the following unclear limitation: "conducting mutation into the nucleotide sequence of SEQ ID NO: 1 from the 715th base to the 760th base on the M gene of SEQ ID NO: 24" is unclear. SEQ ID NO: 1 is 46 nucleotides long and based on the specification applicants inserted SEQ ID NO: 1 into SEQ ID NO: 24 by replacing the endogenous 715th to 760th nucleotides. Therefore, it is unclear what “conducting mutation into the nucleotide sequence of SEQ ID NO: 1” encompasses.
Claims 4 and 10 are objected to because of the following informalities: "conducting mutation into the nucleotide sequence of TGATGA from the 761th base to the 766th base on the M gene of SEQ ID NO: 24" is unclear. However, based on the specification, the sequence TGATGA is to be inserted into SEQ ID NO: 24 by replacing the endogenous 761st to 766th nucleotides. Therefore, it is unclear what “conducting mutation into the nucleotide sequence of TGATGA” encompasses.
14. 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.
15. Claims 14-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for preparing an attenuated influenza virus with 8 plasmids containing all the necessary genes, does not reasonably provide enablement for preparing an attenuated virus with a set of defective plasmids that comprise the M gene with the mutations and deletions of claim 1. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
In making a determination as to whether an application has met the requirements forenablement under 35 U.S.C. 112 ¶ 1, the courts have put forth a series of factors. See, In reWands, 8 USPQ2d 1400, at 1404 (CAFC 1988). The factors considered include: (1) the breadth of the claims, (2) the nature of the invention, (3) the relative skill of those in the art, (4) the presence or absence of working examples, (5) the amount of direction or guidance provided, (6) the state of the prior art, (7) the level of predictability in the art, and (8) the quantity of experimentation necessary.
1) The claims are drawn to a set of defective plasmids for preparing the attenuated influenza virus strain, wherein the defective plasmids comprise the M gene of the influenza virus with the mutations and deletions as specified in claim 1.
2) The nature of the invention is an attenuated influenza virus with an M gene with the mutations and deletions of claim 1.
3) The relative skill of those in the art is high.
4) Example 2 of the Instant Specification illustrates the rescue of defective recombinant influenza virus with plasmids for the 6 PR8 internal genes, 2 external genes, and a full-length M2.
5) The specification provides no direction or guidance for obtaining an attenuated influenza virus using a defective virus set with only the mutated M gene.
PNG
media_image1.png
800
559
media_image1.png
Greyscale
6-8) The state of the prior art is such that it is well established that the preparation of an attenuated influenza virus requires all 8 plasmids, as taught by Anhlan (Vaccine, 22 June 2012, 30: 4480-4489): “The genome of influenza A virus (IAV) consists of 8 RNA segments with negative sense orientation (vRNA), which encode for up to 12 viral proteins (see review [11]). To produce infectious virions an effective incorporation of all 8 gene segments into the viral particle is necessary [12].” (Introduction, ¶ 2). This is further supported by Neumann (PNAS, 3 August 1999, 96(16): 9345-9350), which teaches “Reverse-genetics method for generating segmented, negative-sense RNA viruses entirely from cloned cDNA. Plasmids containing the RNA polymerase I promoter, a cDNA for each of the eight viral RNA segments, and the RNA polymerase I terminator are transfected into cells together with protein expression plasmids. Although infectious viruses can be generated with plasmids expressing PA, PB1, PB2, and NP, expression of all remaining structural proteins (shown in brackets) increases the efficiency of virus production” (Figure 3, see image).
In view of the lack of the predictability of the art to which the invention pertains as evidenced by the art above, the lack of guidance and direction provided by applicant, and the absence of working examples, undue experimentation would be required to make and use an attenuated virus strain without all 8 plasmids, absent a specific and detailed description in applicant’s specification of how to effectively practice this and absent working examples providing evidence which is reasonably predictive, commensurate in scope with the claimed invention.
Allowable Subject Matter
16. The following is a statement of reasons for the indication of allowable subject matter: the prior art of record fails to teach or suggest:
A method for attenuating an influenza virus, comprising:
Conducting synonymous mutation on an overlap of an M2 gene and an M1 gene in an M gene of SEQ ID NO: 24 from an influenza A virus without changing the amino acid sequence encoded by the M1 gene;
Conducting mutation into termination codon from the 761th base to the 766th base on the M gene and deletion of partial nucleotide sequence in a transmembrane domain of the M2 gene, and
Rescuing an attenuated influenza virus strain using a reverse genetics system.
The closest prior art is Watanabe (Supra) in view of Miglani (Supra) and Kawaoka (US 8475806 B2; issued 02 July 2013). Watanabe teaches "the recombinant virus of the invention includes one or more genes from influenza A virus." (¶ [0019]) and "In one embodiment, the influenza DNA is a DNA that has been manipulated in vitro, e.g., by inserting, deleting or substituting, or a combination thereof, one or more nucleotides in, for example, the coding region." (¶ [0020]).
"...the mutations in the M2 gene of a M gene segment that result in deletions(s) or substitution(s) in the extracellular domain of M2 do not substantially alter the function of the protein encoded by the M1 gene." (¶ [0013]) and "The C-terminal residues of M1 and C-terminal portion of the extracellular domain of M2 are encoded by the overlapping 3' coding sequences." (¶ [0006]). Additionally, Miglani teaches that synonymous mutations are a type of substitution mutation: Synonymous mutation A class of gene mutations that represent base pair substitutions in DNA that do not result in the substitution of a different amino acid into the encoded protein." (Page 279). Therefore, it is taught that conducting a synonymous mutation on the M1/M2 gene overlap will not alter the function of the M1 amino acid sequence, as claimed. Watanabe nor Miglani teaches the M gene with SEQ ID NO: 24. However, Kawaoka teaches SEQ ID NO: 5, which encodes an influenza M gene and reads on SEQ ID NO: 24:
PNG
media_image2.png
79
613
media_image2.png
Greyscale
It would have been obvious to one of ordinary skill at the time of filing to use the methods of Watanabe and apply them to the influenza sequence from Kawaoka;
Watanabe further teaches “Deletion in the transmembrane domain of the M2 gene, which can be a result of a substitution into a stop codon (¶ [0012]). However, Watanabe does not teach the specific mutation of bases 761-766 into termination codon;
Generating both the wild-type and attenuated virus via "plasmid-based reverse genetics"
(¶ [0101]).
Therefore, a method for attenuating an influenza virus with the specific termination codon mutation is free of the prior art of record.
Conclusion
17. No claim is allowed. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTINA E LY whose telephone number is (571)272-5169. The examiner can normally be reached Monday - Thursday, 8:00 am - 5:00 pm EST.
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, Michael Allen can be reached at (571) 270-3497. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KRISTINA E. LY/Examiner, Art Unit 1671
/BENJAMIN P BLUMEL/Primary Examiner, Art Unit 1671