Prosecution Insights
Last updated: April 19, 2026
Application No. 18/427,072

OLIGONUCLEOTIDE-LIGAND CONJUGATES AND PROCESS FOR THEIR PREPARATION

Final Rejection §103§DP
Filed
Jan 30, 2024
Examiner
VANHORN, ABIGAIL LOUISE
Art Unit
1636
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
Alnylam Pharmaceuticals, Inc.
OA Round
2 (Final)
47%
Grant Probability
Moderate
3-4
OA Rounds
3y 7m
To Grant
69%
With Interview

Examiner Intelligence

Grants 47% of resolved cases
47%
Career Allow Rate
557 granted / 1191 resolved
-13.2% vs TC avg
Strong +22% interview lift
Without
With
+21.9%
Interview Lift
resolved cases with interview
Typical timeline
3y 7m
Avg Prosecution
78 currently pending
Career history
1269
Total Applications
across all art units

Statute-Specific Performance

§101
1.1%
-38.9% vs TC avg
§103
42.6%
+2.6% vs TC avg
§102
9.9%
-30.1% vs TC avg
§112
23.1%
-16.9% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1191 resolved cases

Office Action

§103 §DP
DETAILED ACTION Receipt of Arguments/Remarks filed on December 23 2025 is acknowledged. Claims 1-13 were/stand cancelled. Claims 14-21 are pending. Information Disclosure Statement The information disclosure statement (IDS) submitted on January 30 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. Claim Rejections - 35 USC § 103 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. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. 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. Claims 14-21 are rejected under 35 U.S.C. 103 as being unpatentable over Rajeev et al. (WO2012037254). Applicant Claims The instant application claims: PNG media_image1.png 441 569 media_image1.png Greyscale Determination of the Scope and Content of the Prior Art (MPEP §2141.01) Rajeev et al. is directed to modified iRNA agents. Claimed is an iRNA duplex agent comprising a compound having the structure I’: PNG media_image2.png 159 148 media_image2.png Greyscale wherein both A and B can be O. Y can be a hydrogen; X can be a P(Z’)(Z”)O-oligonucleotide wherein Z’ and Z” can be oxygens. R includes the structure of formula V: PNG media_image3.png 263 439 media_image3.png Greyscale wherein T5A-5C can be absent or include O, N, NHC(O), etc. L5A-5C a carbohydrate. P5A-5C can be O, NH, etc.; Q5A-5C can be alkylene which can be interrupted with O, N(RN) or C(O), etc.; R5A-5C can be absent or be NH, O, C(O)O, C(O)NH, etc. (claim 19). In some embodiments, formula I’ has the structure: PNG media_image4.png 156 208 media_image4.png Greyscale (page 32). A specific structure taught is (claim 28).: PNG media_image5.png 275 846 media_image5.png Greyscale It is taught that iRNA duplex agent includes a double stranded RNA agent or single strand agent that has a duplexed region of less than 60, 50, 40 or 30 nucleotide pairs (page 62). The double stranded iRNA duplex agent may be equal to or at least 14 up to 60 nucleotides in length (page 63). The monomer is taught as being on the 5’-end, 3’-end, at internal position or combinations thereof (page 42). Another conjugate taught is: PNG media_image6.png 596 1384 media_image6.png Greyscale (page 90). Ascertainment of the Difference Between Scope the Prior Art and the Claims (MPEP §2141.02) While Rajeev et al. teaches: PNG media_image7.png 95 105 media_image7.png Greyscale which is the same as instantly claimed (i.e. the stereocenters are the same), the difference is the location of the oligonucleotide. However, Rajeev et al. teaches the oligonucleotide can be attached either at the X or Y position of formula I’ and specifically can be P(Z’)(Z”)O-oligonucleotide wherein Z’ and Z” can be oxygen. Finding of Prima Facie Obviousness Rationale and Motivation (MPEP §2142-2143) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to attach the oligonucleotide to the X position of formula I’ of Rajeev et al. One skilled in the art would have been motivated to utilize this position as it is one of two positions taught in which the oligonucleotide can be attached. Since Rajeev et al. specifically claims a duplex agent, one skilled in the art would have been prompted to attach an oligonucleotide. It would have been obvious to one of ordinary skill in the art at the time of the instant invention to utilize either N-acetylgalactosamine with free OH groups or N-acetylgalactosamine with OAc groups. One skilled in the art would have been motivated to utilize either as Rajeev et al. teaches that conjugates can be formed with either form of galactosamine. Use of the OAc form results in the formation of the first structure found in table 2. Regarding the claimed structure, as shown above, the same stereocenters are present. The structure found in claim 28 of Rajeev et al. (corresponding to Q-R) is the same as the first structure of table 2A reading on RB. Rajeev et al. suggests oligonucleotides with a length of at least 14 up to 60 nucleotides which overlaps the instant claims 14-18. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Note MPEP 2144.05. Regarding the elected species, as set forth above the OAc form is obvious. Rajeev et al. teaches that T5A-T5C or R5A-5C can include O, N, NHC(O), etc. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the instant invention to substitute the exemplified O with NHC(O). One skilled in the art would have been motivated to replace the exemplified O with NHC(O) as both are taught as suitable species in the formation of the conjugate as taught by Rajeev et al. Regarding the number of carbons, Rajeev et al. exemplifies those with varying length and specifically teaches that the Q5A-Q5B is alkylene Regarding claim 17 and 19-20, Rajeev et al. teaches the oligonucleotide can be either single stranded or double stranded. Regarding claim 21, Rajeev et al. claims a pharmaceutical composition comprising an iRNA duplex agent in combination with a pharmaceutically acceptable carrier (aka vehicle) (claim 33). Response to Arguments Applicants’ arguments filed December 23 2025 have been fully considered but they are not persuasive. Applicants argue that the courts have laid out a two-part test for determining the obviousness of a chemical compound. The first step is identifying a lead compound in the prior art. The second step is providing a reason that would have led a chemist to modify the lead compound. It is argued absent a reason or motivation based on such prior art evidence, mere structural similarity between the prior art compound and the claimed compound does not inform the lead compound selection. It is argued that to select a lead compound from Rajeev, one would have to look to the activity data for the compound. Examples 14-16 of Rajeev illustrate that compounds having -Q11-L96 (chol-GalNac) as well as -L96. These examples from Rajeev are bound to the oligonucleotide at the 2-position. In contrast the presently claimed conjugates have the oligonucleotide bound at the 4-position. Rajeev does not provide any reason to change the position the oligonucleotide is bound. It is argued that Formula I’ in Rajeev teaches numerous points of attachment for an oligonucleotide. None of the exemplified compounds have an oligonucleotide conjugated at the 4’-position. Regarding Applicants’ argument, firstly, the MPEP makes it clear that cases involving so-called “lead compounds” form an important subgroup of the obviousness cases that are based on substitution. It should be noted that the lead compound cases do not stand for the proposition that identification of a single lead compound is necessary in every obviousness rejection of a chemical compound. For example, one might envision a suggestion in the prior art to formulate a compound having certain structurally defined moieties, or moieties with certain properties. If a person of ordinary skill would have known how to synthesize such a compound, and the structural and/or functional result could reasonably have been predicted, then a prima facie case of obviousness of the claimed chemical compound might exist even without identification of a particular lead compound. Obviousness of a chemical compound in view of its structural similarity to a prior art compound may be shown by identifying some line of reasoning that would have led one of ordinary skill in the art to select and modify the prior art compound in a particular way to produce the claimed compound. Note: MPEP 2143. Here the examiner cannot agree that attachment at the 2’ position would be the only position that one skilled in the art based on the teachings of Rajeev would be motivated to attach the oligonucleotide. The previous Office action stated the motivation one skilled in the art would have to attach the oligonucleotide at the 2’-position (i.e. corresponding to the X position of formula 1’ of Rajeev). Specifically Rajeev teaches two different positions to which the oligonucleotide can be attach, specifically either the X (2’-position) or Y (4’-position). Since there are only two choices and the synthesis for attaching the oligonucleotide at the X or Y position would be the same, attaching at either position is obvious. MPEP 2143 makes it clear: If a person of ordinary skill would have known how to synthesize such a compound, and the structural and/or functional result could reasonably have been predicted, then a prima facie case of obviousness of the claimed chemical compound might exist even without identification of a particular lead compound. Rajeev teaches compounds of formula 1’, it is the examiners position that this is where one skilled in the art would start. Then one skilled in the art would recognize from the teachings of Rajeev all that is required to arrive at the instantly claimed invention is to select from the choices taught in Rajeev to arrive at the instant claims. The examiner notes that none of the arguments establish an unexpected effect with attachment of the oligonucleotide at the 2’-position compared to the 4’-position. No where in Rajeev is there a teaching away from attaching the oligonucleotide at the 2’-position. In fact claim 19 makes it clear that the oligonucleotide could be attached at either the X or Y position. The rejection is made under 103 and does not need to exemplify all embodiments, only suggest. “Disclosed examples and preferred embodiments do not constitute a teaching away from the broader disclosure or non-preferred embodiment.” In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). MPEP 2123. Therefore, while attachment at the 2’-position is not exemplified, the examiner cannot agree that Rajeev would not provide motivation to attach the oligonucleotide at this position. Contrary to Applicants position, Rajeev teaches a finite number of positions to which the oligonucleotide can be attached, specifically two different positions. While Rajeev might teach different functional groups which can be used to attach the oligonucleotide, Rajeev still only teaches the oligonucleotide can be at two different positions either the X or Y position. The examiner notes that while the instant claims require the oligonucleotide has a 5’-end attached to the oxygen atom, nothing in the specification excludes a linker being used to connect the 5’-end to the oxygen (i.e. the claim does not require a particular linkage between the 5’-end and the oxygen). Thus, the examiner cannot agree that multiple of the choices for X or Y could read on the instant claims. Double Patenting 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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer. Claims 14-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 8106022 in view of Rajeev et al. (WO2012037254). Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope. The instant application claims: PNG media_image1.png 441 569 media_image1.png Greyscale Patent ‘022 claims an iRNA agent comprising a compound having the structure shown in formula I: PNG media_image8.png 118 151 media_image8.png Greyscale wherein A and B can both be O; Y can be H: X can be P(Z’)(Z”)O-oligonucleotide wherein Z’ and Z” can be O; wherein linker-R are of a similar structure as instantly claimed. The iRNA agent is double stranded. While Patent ‘022 claims a similar linker-R structure, Patent ‘022 does not expressly claim the structures found in Table 2 or 2A. However, this deficiency is cured by Rajeev et al. Rajeev et al. is directed to modified iRNA agents. Claimed is an iRNA duplex agent comprising a compound having the structure I’: PNG media_image2.png 159 148 media_image2.png Greyscale wherein both A and B can be O. Y can be a hydrogen; X can be a P(Z’)(Z”)O-oligonucleotide wherein Z’ and Z” can be oxygens. R includes the structure of formula V: PNG media_image3.png 263 439 media_image3.png Greyscale wherein T5A-5C can be absent or include O, N, NHC(O), etc. L5A-5C a carbohydrate. P5A-5C can be O, NH, etc.; Q5A-5C can be alkylene which can be interrupted with O, N(RN) or C(O), etc.; R5A-5C can be absent or be NH, O, C(O)O, C(O)NH, etc. (claim 19). In some embodiments, formula I’ has the structure: PNG media_image4.png 156 208 media_image4.png Greyscale (page 32). A specific structure taught is (claim 28).: PNG media_image5.png 275 846 media_image5.png Greyscale It is taught that iRNA duplex agent includes a double stranded RNA agent or single strand agent that has a duplexed region of less than 60, 50, 40 or 30 nucleotide pairs (page 62). The double stranded iRNA duplex agent may be equal to or at least 14 up to 60 nucleotides in length (page 63). The monomer is taught as being on the 5’-end, 3’-end, at internal position or combinations thereof (page 42). Another conjugate taught is: PNG media_image6.png 596 1384 media_image6.png Greyscale (page 90). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patent ‘022 and Rajeev et al. and attach the oligonucleotide to the X position of formula I of Patent ‘022. One skilled in the art would have been motivated to utilize this position as it is one of two positions taught in which the oligonucleotide can be attached. Since Patent ‘022 specifically claims a duplex agent, one skilled in the art would have been prompted to attach an oligonucleotide. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patent ‘022 and Rajeev et al. and utilize either N-acetylgalactosamine with free OH groups or N-acetylgalactosamine with OAc groups. One skilled in the art would have been motivated to utilize either as Rajeev et al. teaches that conjugates can be formed with either form of galactosamine. Use of the OAc form results in the formation of the first structure found in table 2. Regarding the claimed structure, as shown above, the same stereocenters are present. The structure found in claim 28 of Rajeev et al. (corresponding to Q-R) is the same as the first structure of table 2A reading on RB. Rajeev et al. suggests oligonucleotides with a length of at least 14 up to 60 nucleotides which overlaps the instant claims 14-18. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Note MPEP 2144.05. Since both Patent ‘022 and Rajeev et al. teach iRNA agents there is a reasonable expectation of success. Regarding the elected species, as set forth above the OAc form is obvious. Rajeev et al. teaches that T5A-T5C or R5A-5C can include O, N, NHC(O), etc. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the instant invention to substitute the exemplified O with NHC(O). One skilled in the art would have been motivated to replace the exemplified O with NHC(O) as both are taught as suitable species in the formation of the conjugate as taught by Rajeev et al. Regarding the number of carbons, Rajeev et al. exemplifies those with varying length and specifically teaches that the Q5A-Q5B is alkylene Regarding claim 17 and 19-20, Rajeev et al. teaches the oligonucleotide can be either single stranded or double stranded. Regarding claim 21, Rajeev et al. claims a pharmaceutical composition comprising an iRNA duplex agent in combination with a pharmaceutically acceptable carrier (aka vehicle) (claim 33). Claims 14-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 8450467 in view of Rajeev et al. (WO2012037254). Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope. The instant claims are set forth above. Patent ‘467 claims a process of making a ligand-containing conjugate having the structure of formula I: PNG media_image8.png 118 151 media_image8.png Greyscale ; wherein A and B can both be O; Y can be H: X can be P(Z’)(Z”)O-oligonucleotide wherein Z’ and Z” can be O; wherein linker-R are the same as instantly claimed. Conjugation to the 5’end of the oligonucleotide is claimed. While Patent ‘467 claims the same linker, Patent ‘467 does not expressly claim all the claimed limitations. However, these deficiency are cured by Rajeev et al. The teachings of Rajeev et al. are set forth above. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patent ‘467 and Rajeev et al. and utilize either N-acetylgalactosamine with free OH groups or N-acetylgalactosamine with OAc groups. One skilled in the art would have been motivated to utilize either as Rajeev et al. teaches that conjugates can be formed with either form of galactosamine. Use of the OAc form results in the formation of the first structure found in table 2. Regarding the claimed structure, as shown above, the same stereocenters are present. The structure found in claim 28 of Rajeev et al. and claim 16 of Patent ‘467 (corresponding to Q-R) is the same as the first structure of table 2A reading on RB. Rajeev et al. suggests oligonucleotides with a length of at least 14 up to 60 nucleotides which overlaps the instant claims 14-18. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Note MPEP 2144.05. Since both Patent ‘467 and Rajeev et al. teach iRNA agents there is a reasonable expectation of success. Regarding the elected species, as set forth above the OAc form is obvious. Rajeev et al. teaches that T5A-T5C or R5A-5C can include O, N, NHC(O), etc. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the instant invention to substitute the exemplified O with NHC(O). One skilled in the art would have been motivated to replace the exemplified O with NHC(O) as both are taught as suitable species in the formation of the conjugate as taught by Rajeev et al. Regarding the number of carbons, Rajeev et al. exemplifies those with varying length and specifically teaches that the Q5A-Q5B is alkylene Regarding claim 17 and 19-20, Rajeev et al. teaches the oligonucleotide can be either single stranded or double stranded. Regarding claim 21, Rajeev et al. claims a pharmaceutical composition comprising an iRNA duplex agent in combination with a pharmaceutically acceptable carrier (aka vehicle) (claim 33). Claims 14-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-33 of U.S. Patent No. 9290760 in view of Rajeev et al. (WO2012037254). Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope. The instant claims are set forth above. Patent ‘760 claims an iRNA duplex agent comprising a compound having the structure shown in formula I’: PNG media_image9.png 191 224 media_image9.png Greyscale wherein A and B can both be O, Y can be H; X can be P(Z’)(Z”)O-oligonucleotide wherein Z’ and Z” are O. The oligonucleotide comprises a sense and antisense strand. A similar Q-R as instantly claimed is claimed. A similar ligand is recited (claim 23). While Patent ‘760 claims the same linker, Patent ‘760 does not expressly claim all the claimed limitations. However, these deficiency are cured by Rajeev et al. The teachings of Rajeev et al. are set forth above. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patent ‘760 and Rajeev et al. and utilize either N-acetylgalactosamine with free OH groups or N-acetylgalactosamine with OAc groups. One skilled in the art would have been motivated to utilize either as Rajeev et al. teaches that conjugates can be formed with either form of galactosamine. Use of the OAc form results in the formation of the first structure found in table 2. Regarding the claimed structure, as shown above, the same stereocenters are present. The structure found in claim 28 of Rajeev et al. and claim 23 of Patent ‘760 (corresponding to Q-R) is the same as the first structure of table 2A reading on RB. Rajeev et al. suggests oligonucleotides with a length of at least 14 up to 60 nucleotides which overlaps the instant claims 14-18. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Note MPEP 2144.05. Since both Patent ‘760 and Rajeev et al. teach iRNA agents there is a reasonable expectation of success. Regarding the elected species, as set forth above the OAc form is obvious. Rajeev et al. teaches that T5A-T5C or R5A-5C can include O, N, NHC(O), etc. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the instant invention to substitute the exemplified O with NHC(O). One skilled in the art would have been motivated to replace the exemplified O with NHC(O) as both are taught as suitable species in the formation of the conjugate as taught by Rajeev et al. Regarding the number of carbons, Rajeev et al. exemplifies those with varying length and specifically teaches that the Q5A-Q5B is alkylene Regarding claim 17 and 19-20, Rajeev et al. teaches the oligonucleotide can be either single stranded or double stranded. Regarding claim 21, Rajeev et al. claims a pharmaceutical composition comprising an iRNA duplex agent in combination with a pharmaceutically acceptable carrier (aka vehicle) (claim 33). Response to Arguments Applicants’ arguments filed December 23 2025 have been fully considered but they are not persuasive. Applicants argue that the claims of the ‘022 patent show compounds having oligonucleotides at the 2 position not the 4 position. Applicants argue that the ‘476 patent recites an enormous genus encompassing thousands of compounds which do not require an oligonucleotide attached at the 4’-position. Applicants argue that the ‘760 patent is the US counterpart of Rajeev. The claims are distinct for the reasons set forth above. Additionally, claim 1 of the ‘760 patent recites an enormous genus. Applicants arguments are not persuasive for the reasons set forth above. The claims of the patents still recite that the oligonucleotide can be attached at two different positions (or both). Therefore, the scope is not so enormous that one skilled in the art would not have obvious to make the structural modification to arrive at the claimed invention. Again, nothing in the arguments establish an unexpected effect with attachment of the oligonucleotide at the 2’ position opposed to the 4’position. Conclusion THIS ACTION IS MADE FINAL. 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 ABIGAIL VANHORN whose telephone number is (571)270-3502. The examiner can normally be reached M-Th 6 am-4 pm EST. 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, Neil Hammell can be reached at 571-270-5919. 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. /ABIGAIL VANHORN/ Primary Examiner, Art Unit 1636
Read full office action

Prosecution Timeline

Jan 30, 2024
Application Filed
Sep 27, 2025
Non-Final Rejection — §103, §DP
Dec 23, 2025
Response Filed
Feb 19, 2026
Final Rejection — §103, §DP (current)

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Prosecution Projections

3-4
Expected OA Rounds
47%
Grant Probability
69%
With Interview (+21.9%)
3y 7m
Median Time to Grant
Moderate
PTA Risk
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