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.
This office action is a response to applicant’s communication submitted September 11, 2023, wherein claims 4-7 were preliminarily amended, and claims 10-19 were added.
Claims 1-19 are pending in this application.
Priority
This application is a 371 of PCT/PL2022/050013 filed 03/10/2022 and claims foreign priority to PLP.437263 filed 03/10/2021. Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been received. The Examiner notes that no English translation has been provided.
Information Disclosure Statement
The information disclosure statement filed September 26, 2023 did 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 a reference listed that is not in the English language (Laayoun, FR 2868071, 2023). The Examiner obtained the English translation and it has been placed in the application file. Accordingly, the information disclosure statement has been considered by the examiner.
Drawings
The drawings are objected to because:
Figures 2-3 have blurry structures and labels, rendering them illegible, such as in the following:
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(figure 2) and
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(figure 3).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
Page 14 on the instant specification recites, “The presence of a functional motif with the structure of a fluorophore, for example from the group of cyanines, rhodamines or fluoresceines (according to formulas 3b-3c)….” “The presence of a functional motif with an affinity tag structure such as biotin (according to formula 3d)…..”, “A functional motif with a nucleic acid structure (according to formula 3e)….”, (bottom half of the page). However, page 5 of the instant specification recites that formula 3d is a fluorophore:
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(middle of the page), which is not a structure of biotin and that formula 3e is an affinity tag:
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(bottom of page) which is not a nucleic acid structure. The Examiner suggests that the phrases in parentheses described above should read, “(according to formulas 3b-3d)”, “(according to formula 3e)”, and “(according to formula 3f)” respectively based upon the formulas of pages 5-6 of the specification.
Appropriate correction is required.
Claim Objections
Claims 1 and 10 are objected to because of the following informalities:
In claim 1, in the following phrase “
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” the term “or” should be replaced with a comma, and a “, or” should be inserted between the structure species to properly recite a list of alternatives.
In claim 10 the phrase “
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” should have a comma inserted after the first structure, as they are alternatives are in a list.
Appropriate correction is required.
Claim Interpretation
Claim 1 recites the phrase “R3 is a functional substituent such as:”. See 112(b) rejections below regarding exemplary language. According to the instant specification, “A functional substituent is a functional group or motif” (pg. 14, middle of page, lines 17-18). The instant specification also states, “The presence of a functional group or motif is critical to the chemical spectroscopic and biological properties of the N-(2-aminoethyl)morpholine-based RNA analog).” (pg. 14, middle of page, lines 20-22). Thus the phrase “functional substituent” is not particularly limiting as any functional group can be considered to serve a functional purpose.
Claim Rejections - 35 USC § 112 (b)
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 1-19 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.
Regarding claims 1-7 and 10-19: Claims 1 recite the phrase "such as" (“R3 is a functional substituent such as:”) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Claims 2-7 and 10-19 which depend from claim 1 are similarly rejected.
Regarding claims 1-8 and 10-19: 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 1 recites the broad recitation “is a natural or modified purine or pyrimidine nitrogenous base”, and the claim also recites “preferably selected from:” which is the narrower statement of the range/limitation. Although claim 8 does not depend from claim 1, claim 8 relies on the definition of nitrogenous bases as defined in claim 1, and is thus also rendered indefinite.
In the present instance, claims 5 and 11-12 recites the broad recitation “is carried out in the presence of NaIO4”, and the claim also recites “preferably at a concentration of 1.0 to 1.5 mM, at a temperature below 40°C, and at the RNA concentration of 1 to 100 µM” which is the narrower statement of the range/limitation.
In the present instance, claims 6 and 13-15 recite the broad recitation “is carried out in the presence of a KH2PO4 buffer”, and the claims also recite “preferably at pH 5.5-7.5, a NaBH3CN reducing agent at a concentration not exceeding 100 mM, preferably at a concentration of 20 mM, and an ethylenediamine analog at a concentration of 1-10mM” which is the narrower statement of the range/limitation.
In the present instance, claims 7 and 16-19 recite the broad recitation “is isolated from the reaction mixture by a known method of RNA isolation”, and the claims also recite “preferably by alcohol precipitation of the RNA salt or by means of high performance liquid chromatography (HPLC)” which is the narrower statement of the range/limitation.
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. Claims 2-7 and 10-19 which depend from claim 1 are similarly rejected.
Regarding claims 1-8 and 10-19: The term “many” in claims 1 and 8 is a relative term which renders the claim indefinite. The term “many” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what constitutes “many of the following groups”, is two groups many? According to Merriam Webster (Many, Merriam-Webster dictionary, 2026, cited on PTO-892), many is defined as “consisting of or amounting to a large but indefinite number” (pg. 1, definition 1). Thus claims 1 and 8 are rendered indefinite, and claims 2-7 and 10-19 which depend from claim 1 are similarly rejected.
Regarding claim 8: Claim 8 recites inter alia, “Ethylenediamine analog of formula 7:
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wherein R is:”. However, formula 7 does not have an “R” group, but rather an “R3” group. Thus the R3 group remains undefined, rendering the claim indefinite. Additionally claim 8 is an independent claim that does not refer back to any previous claim, however recites the phrase “R2 is a nitrogenous base as above” throughout the claim. As an independent claim that does not refer back to any previous claim the formulas recited should have their R groups defined within the claim. Thus, the phrase ““R2 is a nitrogenous base as above” renders the claim indefinite as the R2 group is not clearly defined. For examination purposes, the claim will be interpreted such that R is meant to read “R3” and R2 is defined as R2 is in claim 1.
Regarding claim 9: Claim 9 recites inter alia, “The ethylenediamine analog according to claim 8, characterized in that is selected from the compounds of the formulas:
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. It is unclear what is meant by the brackets. It is unclear whether the compound can be either compound individually, or is a mixture of the compounds. Thus, a person of ordinary skill in the art would be unable to ascertain the metes and bounds of the invention, rendering the claim indefinite.
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 8 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Laayoun (US 7691635, published 2010, cited on PTO-892).
Regarding claim 8: Laayoun teaches the preparation of N-(3.6.9-triaminenonanyl)-biotinamide which has the following structure
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(col. 23, lines 20-40, example 2). This compound anticipates the formula 7
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as recited by instant claim 8 wherein R3 is
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and X is a combination of
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wherein m is 1 and
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wherein m is 2.
Conclusion
No claims are allowed in this action.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Butora (WO 2017/066789, cited on PTO-892) teaches the following compound
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(pg. 22, compound 44).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMUEL L GALSTER whose telephone number is (571)270-0933. The examiner can normally be reached Monday - Friday 8:00 AM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Y Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMUEL L GALSTER/Examiner, Art Unit 1693