DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Claims 1-12 and 14-21 are pending upon entry of amendment filed on 6/22/23.
Applicant’s election of group I, claims 1-12 and 17-19 with CD3, CD33 and CD123 as first, second and third target molecule as elected species without traverse in the reply filed on 3/24/26 has been acknowledged.
Accordingly, claims 14-16 and 20-21 are withdrawn from further consideration by the examiner, 37 CFR 1.142 (b) as being drawn to a nonelected invention.
Claim 1-12 and 17-19 readable upon CD3, CD33 and CD123 as elected species are under consideration in the instant application.
3. Applicant’s IDS filed on 7/24/23 has been acknowledged.
4. The oath filed on 11/9/23 has been acknowledged.
5. The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
6. 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 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.
7. 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.
8. Claim(s) 1-7, 9-11 and 17-19 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by U.S. Pub. 2013/0224859.
The ‘859 publication teaches DNA origami device comprising latch and aptamer staples comprising multiple cargo moieties on opposite sides as in Fig 1 which reads on a claimed nucleic acid nanostructure comprising at least 3 targeting agents on multiple surfaces (p. 2-3). In addition, the device is in nanoscale shape ([0019]) and meets claimed nanostructure. Given that the aptamer and latch staples comprise different sizes readable upon longitudinal and transverse axes and they meet the claimed limitation. The cargo moieties bound on aptamer are able to bind target cells of interest (p. 4) and the target cells of interest includes NK cells, cancer cells and bacterial or virus cells (p.5, [0058]). Further, the moieties bound on DNA origami structure includes antibody, Fc or fragments thereof ([0045-0050]) and the origami device improves delivery to target cells.
Moreover, the ‘859 publication teaches sizes of axis (e.g. structured dimension of the device) and surface size varies 45nm to 500nm (note [0022]) and it meets the limitations of one seze is at least 15nm and maximum size is less than 1000nm as in claim 6 of the claimed invention.
In addition, the ‘859 publication teaches DNA origami structure includes one single scaffold strand and oligonucleotide strand and staples strands are complementary (note claims) and Example 2 uses CD33 and other CD marker combinations. Therefore, the reference teachings anticipate the claimed invention.
9. 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 of this title, 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
10. Claims 1-12 and 17-19 are rejected under 35 U.S.C. 103(a) as being unpatentable over U.S. Pub. 2013/0224859 in view of U.S.Pub 2019/0269728.
The teachings of the ‘859 publication have been discussed, supra.
The disclosure of the ‘859 publication differs from the instant claimed invention in that it does not teach the combination of the CD3, CD33 and CD123 in target agents and a composition thereof as in claims 8 and 11 of the instant application.
The ‘728 publication teaches use of target agent combination including CD33 and CD123 in facilitating Tcell delivery (p.9, claims). The markers may be linked or combined to improve effectiveness in cancer therapy and T cell targeting.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to utilize specific combination of markers taught by the ‘728 publications into the DNA origami compositions taught by the ‘859 publication.
One of ordinary skill in the art at the time the invention was made would have been motivated to do so because the utilization DNA origami device improve targeted delivery to T cells and CD3 and CD33 improve therapeutic efficacy.
From the teachings of references, it would have been obvious to one of ordinary skill in art to combine the teachings of the references and there would have been a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of the ordinary in the art at the time of invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
11. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
12. Claims 1-12 and 17-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Application No. 18/286,003.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘003 application recites a DNA nanostructure comprising multiple axis and binding moieties.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
13. Claims 1-12 and 17-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-11 of U.S. Application No. 17/620,851.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘851 application recites a DNA nanostructure comprising multiple axis and binding moieties.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
14. No claims are allowable.
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUNSOO KIM whose telephone number is (571)272-3176. The examiner can normally be reached Mon-Fri 8:30-5.
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, Misook Yu can be reached at 571-272-0839. 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.
Yunsoo Kim
Patent Examiner
Technology Center 1600
May 28, 2026
/YUNSOO KIM/Primary Examiner, Art Unit 1641
Prosecution Insights