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 .
The amended claim set dated 4/8/2026 is under consideration.
The amendments and arguments presented in the papers filed 4/8/2026 ("Remarks”) have been thoroughly considered. The issues raised in the Office action dated 1/29/2026 listed below have been reconsidered as indicated.
a) Any objections or rejections of claims 5 and 20 are rendered moot by the cancellation of the claims and are withdrawn as such.
b) The rejections of claims 1-4 and 6-13 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, are withdrawn in view of the amendments to the claims.
c) The rejections of: claim(s) 1-4, 6-11 and 13 under 35 U.S.C. 102(a)(2) as being anticipated by Savage (WO 2021/236651 A1; priority claim to 5/19/2020); and claim(s) 1-11, 13 and 20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Savage (US 2024/0141412 A1; priority claim to 5/19/2020), are withdrawn in view of the amendments to the claims.
d) The rejections of claim(s) 1-4, 6 and 9-13 under 35 U.S.C. 102(a)(1) as being anticipated by Gootenberg (Science. 2018. 360(6387):439-444 and Supplementary Materials) are withdrawn in view the amendments to the claims.
e) The rejections of claim(s) 1, 2 and 3 under 35 U.S.C. 102(a)(1) as being anticipated by Liu (JBC Papers In Press. “Chemistry of Class 1 CRISPR-Cas effectors: binding, editing, and regulation”. Published 8/14/2020) are withdrawn in view the amendments to the claims.
f) The rejections of claim(s) 1-4 and 8-12 under 35 U.S.C. 102(a)(1) as being anticipated by Pino (Entropy. 2013. 15:5362-5383) are withdrawn in view the amendments to the claims.
g) The rejections of claim(s) 1-4, 6-7 and 9 under 35 U.S.C. 102(a)(1) as being anticipated by Copp (Nucleic Acids Research. 2017. 45(17):10321-10331) are withdrawn in view the amendments to the claims.
h) The provisional rejections of claims 1-4, 6 and 13 on the ground of nonstatutory double patenting as being unpatentable over claim 1-8 and 11-33 of copending Application No. 17/926,441 (reference application) are withdrawn in view of the amendments to the claims.
The Examiner’s responses to the Remarks regarding issues not listed above are detailed below in this Office action.
New and modified grounds of rejection necessitated by amendment are detailed below and this action is made FINAL.
Election/Restrictions
Applicant elected without traverse Group I, claims 1-13, in the reply filed on 10/22/2025.
The restriction requirement between Groups I and IV was withdrawn. Claim 20, now cancelled, was included with the election of Group I.
Upon the consideration of the amended claims, tje restriction requirement between Groups I, II and V is also withdrawn.
The claims of unelected Group III have been cancelled.
Priority
The present application is a 371 national stage entry of PCT/US2021/051053 (field 9/20/201), which claims benefit of US provisional application 63/080,253 (filed 9/18/2020).
Priority is recognized.
Information Disclosure Statement
The listing of references in the specification or the citation of references throughout the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892 or cited on a submitted IDS, they have not been considered.
Claim Objections
Claims 2, 10 and 12 are objected to because of the following informalities: it is suggested the dependent claims be amended to specify the system of claim 1 “further” comprises the recited elements and/or limitations as is common practice. Appropriate correction is required.
Claim 27 is objected to because of the following informalities: the claim ends with a comma and not a period. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 8 and 9 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Copp (Nucleic Acids Research. 2017. 45(17):10321-10331 and Supporting Information).
The following are new rejections necessitated by the amendments to the claims.
Regarding claim 1, Copp teaches the following nucleic acid:
r(AAAAA)-rFA-r(AAAAA) (Table 1).
Written another way, the nucleic acid has the following structure (with additional annotations by the Examiner):
rA-rA-rA-rA-rA-rFA-rA-rA-rA-rA-rA; or
rA-rA-rA-rA-rA-rFA-rA-rA-rA-rA-rA
The nucleic acid includes an “linear A4 oligoadenylate” (underlined portion) with a 2’-fluoro modification only at it position 2 (either from the 5’ or the 3’ end of A4 sequence).
The nucleic acid of Copp includes all the required structural features of the claimed “system”.
Regarding claim 8, Copp teaches the nucleic acid includes at least one additional nucleotide depicted as bolded and italicized in the above sequence.
Regarding claim 9, the claim encompasses “activators” that comprise “a nucleotide sequence” selected from SEQ ID NO: 2 and SEQ ID NO: 20. The phrase “a nucleotide” broadly encompasses fragments of SEQ ID NO: 2 and SEQ ID NO: 20 and is contrasted with the language “the nucleotide sequence”, which requires the full-length sequence of either SEQ ID NO: 2 or 20.
A depicted above, the nucleic acid Copp includes a sequence from SEQ ID NO: 2 or 20, in particular the “rA-rFA-rA-rA” sequence.
Conclusion
Claims 2, 3, 4, 6, 7, 10, 11, 12, 13, 22, 23, 24, 25, 26, 27 and 28 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 JOSEPH G DAUNER whose telephone number is (571)270-3574. The examiner can normally be reached 7 am EST to 4:30 EST with second Fridays Off.
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, Wu-Cheng Winston Shen can be reached at 5712723157. 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.
/JOSEPH G. DAUNER/ Primary Examiner, Art Unit 1682
Prosecution Insights