DETAILED ACTION
This Action is in response to the communication filed on 04/01/2026.
Claims 1-9 are pending.
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 .
Election/Restrictions
Applicant’s election of Group I (claims 1-7) in the reply filed on 04/01/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 8-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/01/2026.
Claims 1-7 are under consideration.
Foreign Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 7 is objected to because it recites “wherein the antisense oligonucleotide has a nucleotide sequence as shown in SEQ ID Nos: 1-2.” It would be clearer if the recitation was changed to “wherein the antisense oligonucleotide has a nucleotide sequence as shown in one of SEQ ID NO: 1 or SEQ ID NO: 2.” Applicant is asked to consider changing claim 7 as indicated or to similar language that makes it clear that “SEQ ID Nos: 1-2” means “SEQ ID NO: 1 or SEQ ID NO: 2.” It is noted that claim 7 is interpreted as suggested.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4, 6 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4 is dependent on claim 3 and indicates that the compound that specifically inhibits PBX1-G4 is an antisense oligonucleotide. However, claim 3 requires the compound to be an antisense oligonucleotide, as claim 3 recites “the antisense oligonucleotide targeting the PBX1 promoter region G-quadruplex comprises at least one of the following: a compound specifically inhibiting PBX1-G4…” (emphasis added for clarity). Claim 6 is similar to claim 4 as it is dependent on claim 3 and further indicates that the interfering molecule that specifically inhibits PBX1-G4 is an antisense oligonucleotide. However, claim 3 requires the compound to be an antisense oligonucleotide, as claim 3 recites “the antisense oligonucleotide targeting the PBX1 promoter region G-quadruplex comprises at least one of the following: an interfering molecule specifically interfering with an expression of PBX1-G4…” (emphasis added).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 112(a)
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.
Claims 1-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath, Inc., 935 F.2d at 1563-64, 19 USPQ2d at 1117.
To satisfy the written description requirement, MPEP §2163 states, in part “…a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention.” Moreover, the written description requirement for a genus may be satisfied through sufficient description of a representative number of species by “…disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between functional and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus.”
The claims encompass a genus of antisense oligonucleotides that target a PBX1 promoter region G-quadruplex in a preparation of a medicine for treating melanoma (e.g., see claim 1). Claim 3 explicitly requires that the antisense oligonucleotide is a compound that specifically inhibits PBX1-G4. Claim 7 indicates that the antisense oligonucleotide has a nucleotide sequence as shown in SEQ ID Nos: 1-2.” It is noted that “has a nucleotide sequence as shown in SEQ ID Nos: 1-2” broadly encompasses have any nucleotide sequence of SEQ ID NO: 1 or SEQ ID NO: 2, including nucleotide sequence fragments or fragments with additions, deletions or substitutions of the sequence of SEQ ID Nos: 1 or 2. That is, “having a nucleotide sequence as shown in SEQ ID Nos:1-2” is different from “having the nucleotide sequence as shown in SEQ ID Nos: 1-2”, and the difference is that “the nucleotide sequence as shown in SEQ ID Nos: 1-2” would be limited to the nucleotide sequence shown in SEQ ID Nos: 1-2, while “having a nucleotide sequence as shown in…” is broader in scope and encompasses fragments and fragment with variations as indicated above. Therefore, given the broadest reasonable interpretation, the claims encompass a genus of antisense oligonucleotides that includes a huge number of different oligonucleotides considering every possible oligonucleotide sequence encompassed by the claims.
The application discloses a single antisense oligonucleotide sequence that successfully targets a PBX1 promoter region G-quadruplex, the oligonucleotide sequence that is the sequence shown in SEQ ID NO: 1 (e.g., see Figure 5). It is noted that claim 7 explicitly indicates that the oligonucleotide sequence can be a sequence as shown in SEQ ID NO: 2; however, SEQ ID NO: 2 is identified in the specification as “Control” and “ASO scramble” (see page 15) and in Figure 5 as “ASO scr”; However, Figure 5 indicates that “ASO scr” does not target a PBX1 promoter region G-quadruplex as it does not appear to have any effect on PBX1 transcription, expression, colony number, tumor volume or tumor weight. Accordingly, the only antisense oligonucleotide sequence which targets a PBX1 promoter g-quadruplex disclose by the specification is the nucleotide sequence shown in SEQ ID NO: 1.
The limited disclosure of the specification in view of the vast genus of molecules encompassed by the claims does not adequately describe the entire genus of molecules encompassed by the claims
“Possession may not be shown by merely describing how to obtain possession of members of the claimed genus or how to identify their common structural features.” Ex parte Kubin, 83 USPQ2d 1410, 1417 (Bd. Pat. App. & Int. 2007) citing University of Rochester, 358 F.3d at 927, 69 USPQ2d at 1895. Vas-Cath Inc. v. Mahurkar, 19USPQ2d 1111, clearly states that “applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the ‘written description’ inquiry, whatever is now claimed.” (See page 1117.) The specification does not “clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed.” (See Vas-Cath at page 1116).
Further, for a broad generic claim, the specification must provide adequate written description to identify the genus of the claim. In Regents of the University of California v. Eli Lilly & Co., the court stated:
“A written description of an invention involving a chemical genus, like a description of a chemical species, 'requires a precise definition, such as by structure, formula, [or] chemical name,' of the claimed subject matter sufficient to distinguish it from other materials. Fiers, 984 F.2d at 1171, 25 USPQ2d at 1606; In re Smythe, 480 F.2d 1376, 1383, 178 USPQ 279, 284-85 (CCPA 1973) ("In other cases, particularly but not necessarily, chemical cases, where there is unpredictability in performance of certain species or subcombinations other than those specifically enumerated, one skilled in the art may be found not to have been placed in possession of a genus. . . ."). Regents of the University of California v. Eli Lilly & Co., 43 USPQ2d 1398.
The MPEP further states that if a biomolecule is described only by a functional characteristic, without any disclosed correlation between function and structure of the sequence, it is “not sufficient characteristic for written description purposes, even when accompanied by a method of obtaining the claimed sequence.” MPEP 2163. The MPEP does state that for generic claim the genus can be adequately described if the disclosure presents a sufficient number of representative species that encompass the genus. MPEP 2163. If the genus has a substantial variance, the disclosure must describe a sufficient variety of species to reflect the variation within that genus. See MPEP 2163. Although the MPEP does not define what constitute a sufficient number of representatives, the Courts have indicated what do not constitute a representative number species to adequately describe a broad generic. In Gosteli, the Court determined that the disclosure of two chemical compounds within a subgenus did not describe that subgenus. In re Gosteli, 872 F.2d at 1012, 10 USPQ2d at 1618.
The court and the Board have repeatedly held (Amgen Inc. v. Chugai Pharmaceutical Co. Ltd.,18 USPQ2d 1016 (CA FC, 1991); Fiers v. Revel, 25 USPQ2d 1601 (CA FC 1993); Fiddes v. Baird, 30 USPQ2d 1481 (BPAI 1993) and Regents of the Univ. Calif. v. Eli Lilly & Co., 43 USPQ2d 1398 (CA FC, 1997)) that an adequate written description requires more than a mere statement that it is part of the invention and reference to a potential method for isolating it, irrespective of the complexity or simplicity of the method; what is required is a description of the nucleic acid itself.
Such is the case here, where the broad claims encompass a huge number of different oligonucleotide sequence that meet the broad structural limitations of the claims, but disclose only one oligonucleotide sequence that has the required function. The specification does not provide sufficient description or guidance that would allow one of skill to distinguish the functional species of the recited structural genus from the non-functional members without empirical determination. Thus, one of skill at the time of the invention could not have concluded that Applicant was in possession of the genus of functional oligonucleotide sequences that is encompassed by the claims.
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.
Claim(s) 1-4, 87 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sui et al. (Sig Transduct Target Ther 8, 12 (2023); hereinafter “Sui”) including the Supplemental information associated with Sui.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
It appears that Sui et al. is a reference by a group that includes inventors of the instant application as well as additional authors which are not listed as inventors of this application. It is noted that the instant application claims priority to a foreign patent application that is not in English and no English translation has been provided. Accordingly, the claimed invention does not receive the benefit of priority to the foreign application at this time and thus the effective filing date of the examined claims is the filing date of this application which is 07/10/2023. Since the publication date of the Sui reference is 01/06/2023 and has includes authors not listed as inventors, Sui et al. is applicable as prior art under 35 USC 102(a)(1). It is noted that upon receipt of a translation of the certified copy (of the foreign application as filed) and a statement that the translation of the certified copy is accurate, the translation will be reviewed to determine if the claimed invention receive the benefit of priority to the foreign application.
Sui teaches an application of an antisense oligonucleotide that is identical to SEQ ID NO: 1 to melanoma cells wherein the antisense oligonucleotide is an antisense compound that specifically inhibits PBX1-G4 (e.g., see last paragraph on page 1, Figure 1o-u, Supplementary Figures 11-13, Supplementary Table 7, etc.). Accordingly, Sui teaches an application of an antisense oligonucleotide targeting a PBX1 promoter region G-quadruplex in a preparation of a medicine for treating melanoma (claim 1), wherein the medicine for treating melanoma has one or more of following uses: inhibiting a proliferation of melanoma cell; inhibiting a migration of melanoma cell; inhibiting an invasion of melanoma cell; inhibiting a growth of melanoma; and inhibiting a lung metastasis of melanoma (claim 2), wherein the antisense oligonucleotide targeting the PBX1 promoter region G-quadruplex comprises at least one of followings: a compound specifically inhibiting PBX1-G4 and is an antisense oligonucleotide (claims 3-4, 6), wherein the antisense oligonucleotide has a nucleotide sequence as shown in SEQ ID NO: 1 (claim 7).
Claims 1-4, 6-7are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO2017172356 (hereinafter “Hinkle”).
As indicated above, the claims encompass an application of an antisense oligonucleotide targeting a PBX1 promoter region G-quadruplex in a preparation of a medicine for treating melanoma (see claim 1), wherein an antisense oligonucleotide targeting a PBX1 promoter region G-quadruplex in a preparation of a medicine for treating melanoma explicitly encompasses any antisense oligonucleotide that has a nucleotide sequence as shown in SEQ ID No: 1 (see claim 7). As indicated above, an “antisense oligonucleotide that has a nucleotide sequence as shown in SEQ ID No: 1” broadly encompasses fragments and variants of the nucleotide sequence shown in SEQ ID NO: 1.
Hinkle teaches an antisense oligonucleotide that “has a nucleotide sequence as shown in SEQ ID No: 1.” Specifically, Hinkle teaches a sequence identified as SEQ ID NO: 159 that matches with 15 nucleotides of instant SEQ ID NO: 1, thus having a similarity of 78.9% (see sequence alignment information below). Thus, Hinkle teaches an antisense oligonucleotide that meets the structural requirements of the claim. It is also noted that “for treating melanoma” as recited in the instant claims, is only an intended use for the acclaimed antisense oligonucleotide which does not impart any structural limitations to the antisense oligonucleotide. Similarly, “wherein the medicine has one or more of the following uses” as recited in claim 2 is also considered an intended use for the medicine and does not impart any structural limitations to the antisense oligonucleotide. Hinkle teaches pharmaceutical compositions comprising the antisense oligonucleotide, as well as method of treatment using the pharmaceutical compositions comprising the antisense oligonucleotide (e.g., see claims 1-2, 45-53, 54-74, etc.). Therefore, Hinkle teaches all of the required structural elements of the instant claims (i.e., an antisense oligonucleotide that has a sequence as shown in SEQ ID NO: 1 and an application of formulating the antisense oligonucleotide into a pharmaceutical composition for treatment). Furthermore, since the Hinkle teaches all of the required structural elements of the claims, the antisense oligonucleotide taught by Hinkle would also necessarily have the same functional characteristics as well,
SEQUENCE ALIGNMENT INFORMATION
CC PN WO2017172356-A1.
XX
CC PD 05-OCT-2017.
XX
CC PF 15-MAR-2017; 2017WO-US022390.
XX
PR 30-MAR-2016; 2016US-0315255P.
XX
CC PA (ALNY ) ALNYLAM PHARM INC.
XX
CC PI Hinkle G;
XX
DR WPI; 2017-685027/71.
XX
CC PT Antisense polynucleotide agent useful for inhibiting expression of
CC PT insulin like growth factor acid labile subunit (IGFALS) in cell, or
CC PT treating human having disease, preferably IGFALS-associated disease,
CC PT comprises contiguous nucleotides.
XX
CC PS Example 2; SEQ ID NO 159; 123pp; English.
XX
CC The present invention relates to an antisense polynucleotide agent useful
CC for inhibiting expression of insulin like growth factor acid labile
CC subunit (IGFALS) in a cell. The invention further relates to: (1) a
CC pharmaceutical composition comprising the above-mentioned agent and a
CC lipid formulation; (2) a method for inhibiting IGFALS expression in the
CC cell; and (3) a method for treating and preventing a disease or disorder
CC that would benefit from reduction in IGFALS expression which involves
CC administering an agent or a pharmaceutical composition to the subject.
CC The disease or disorder includes acromegaly, gigantism and cancer
CC (metastatic cancer). The present sequence represents a IGFALS gene
CC targeting antisense oligonucleotide, used in the pharmaceutical
CC composition for treating and preventing acromegaly, gigantism and cancer
CC (metastatic cancer) in the subject.
XX
SQ Sequence 20 BP; 2 A; 3 C; 12 G; 2 T; 1 U; 0 Other;
Query Match 71.0%; Score 14.2; Length 20;
Best Local Similarity 78.9%;
Matches 15; Conservative 1; Mismatches 3; Indels 0; Gaps 0;
Qy 1 GGGGTTGCGGGGTGAGGGT 19 (INSTANT SEQ ID NO: 1)
|||| ||||| |||| ||:
Db 2 GGGGCTGCGGCGTGAAGGU 20 (HINKLE’S SEQ ID NO: 159)
Claim Rejections - 35 USC § 103
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 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, 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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Sui et al. (Sig Transduct Target Ther 8, 12 (2023); hereinafter “Sui”) including the Supplemental information associated with Sui.
Sui teaches the limitations of claims 1-4, 6-7, as indicated in the rejection above.
Sui does not teach that the antisense oligonucleotide in the medicine is 15 mg/ml to 35 mg/ml, as required by claim 5.
It is noted that Sui does teach that the antisense oligonucleotide was administered at a concentration of 25 nM (see description of Fig. 1-o on page 3) and administration of 20mg/kg (e.g., see pages 14, 17 of the Supplementary information). However, it would have been a matter of routine experimentation to one of ordinary skill in the art prior to the day the claimed invention was filed to determine the optimal and effective dosage range of the antisense oligonucleotide. Although some claimed concentrations differ from those of cited reference, section 2144.05 II of the MPEP states: “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.").”
Therefore, it would have been a matter of routine experimentation/optimization to determine the effective and optimal dosage for the antisense oligonucleotide and to arrive at the claimed concentration of 15 mg/ml to 35 mg/ml, as required by claim 5, with a reasonable expectation of success.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over WO2017172356 (hereinafter “Hinkle”).
Hinkle teaches the limitations of claims 1-4, 6-7, as indicated in the rejection above.
Hinkle does not teach that the antisense oligonucleotide in the medicine is 15 mg/ml to 35 mg/ml, as required by claim 5.
It is noted that Hinkle does teach concentrations of the antisense oligonucleotide for administration, such as 0.5 mg/kg to 50 mg/kg, as well as at a concentration of 10 nM (e.g., see claim 69, page 5 lines 13-17, etc.). However, it would have been a matter of routine experimentation to one of ordinary skill in the art prior to the day the claimed invention was filed to determine the optimal and effective dosage range of the antisense oligonucleotide. Although some claimed concentrations differ from those of cited reference, section 2144.05 II of the MPEP states: “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.").”
Therefore, it would have been a matter of routine experimentation/optimization to determine the effective and optimal dosage for the antisense oligonucleotide and to arrive at the claimed concentration of 15 mg/ml to 35 mg/ml, as required by claim 5, with a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to J. E. Angell whose telephone number is (571)272-0756. The examiner can normally be reached Monday-Friday (8:30-5:00).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dunston can be reached at (571) 272-2916. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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J. E. Angell
Primary Examiner
Art Unit 1637
/J. E. ANGELL/Primary Examiner, Art Unit 1637