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 .
Claims Status
Claims 15-31, 33-37, 39-45, 47-51, 54-61, 63-67, 69-74 is/are cancelled. Claims 1-14, 32, 38, 46, 52-53, 62, 68 is/are currently pending and under examination.
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) 46 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Templin (US9340789B2).
Regarding claim 46, Templin teaches an RNA molecule comprising at least three nucleotides and comprising a 5’ terminal acyclonucleoside, wherein the acyclonucleoside comprises a linear unbranched structure instead of a ribose (claims 1, 3-4, 7).
Allowable Subject Matter
Claims 1-14, 32, 38, 52-53, 62, 68 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: searches of the prior art for the chemical structure of Formula I, required by claim 1, or more broadly for cap structures comprising two cyclic nucleotides and a 5’ acyclic nucleotide (required by independent claims 1 and 32) did not yield any prior art anticipating or obviating independent claims 1 or 32. Furthermore, the prior art teaches away from cap0, cap1, or cap2 analogs comprising a 5’ acyclic nucleoside (see Fechter, 2005, page 1243 col. 2: “relative contribution of the different chemical groups of the m7GTP analogue was tested by binding studies of different derivatives…different bases, e.g. adenine derivatives, but not acyclic nucleosides, could replace guanine”, emphasis added). Cai (1999), referenced by Fechter in the discussion of acyclic terminal nucleosides in a cap structure, only teaches acyclo GpppG structures (see Table 1), and thus does not teach an analogue of cap0, cap1, or cap2 comprising a 5’ terminal acyclic nucleoside, which require a 5’ terminal acyclic guanine, a triphosphate moiety 3’ of the 5’ terminal guanine, and two guanosines 3’ of the 5’ terminal guanosine triphosphate.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AFRICA M MCLEOD whose telephone number is (703)756-1907. The examiner can normally be reached Mon-Fri 9:00AM-6:00PM EST.
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/AFRICA M MCLEOD/ Examiner, Art Unit 1635
/KIMBERLY CHONG/ Primary Examiner, Art Unit 1636
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