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 .
Claim Rejections - 35 USC § 112
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.
Claims 1-20 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.
Claim 1 is indefinite wherein R6 is listed as optionally being absent. It is unclear what would be embraced therein if the group is absent.
Claim 13 is indefinite wherein the claim states the alkyl chain is a phosphate group or derivative thereof. It is unclear what would be embraced by an alkyl group which is a phosphate group. The examiner believes the claim intends to encompass alkyl chains which comprise a phosphate group, such as
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as set forth in claim 14.
Claim 20 is indefinite wherein Y is listed as being various groups such as OH, NH2, NR32, and SH which are also attached to the P-atom and additionally R3. Does applicant intend OH to be bound to alkyl (for example for R3) and P leaving an oxygen attached to H, alkyl and P? This radical would be highly charged and unlikely to exist and/or be produced.
All claims which depend from an indefinite claim are also indefinite. Ex parte Cordova, 10 U.S.P.Q. 2d 1949, 1952 (P.T.O. Bd. App. 1989).
Claim Rejections - 35 USC § 112
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 15 is 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 15 contains groups which are not embraced by claim 1. For example, R1 is indicated as optionally being
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which is not embraced by claim 1. Adding R6 as optionally being H instead of absent would provide support for these compounds in claim 15 which do not currently have support. 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 § 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, 7-8, 10-12, 16-18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Amberg et al. (Helvetica Chemica Acta, vol. 85, 2002, pp 2503-2517).
Amberg discloses oligonucleotides having arylalkyl-modified building blocks such as:
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(see figure 1) and also discusses methylphosphonates and benzylphosphonates (see 2503, last paragraph). These aralkyl/methyl/benzyl modified phosphonates would anticipate the present compounds where X is H; B is a nucleobase; W and Z are O; Y and R2 are OH; and R1 is alkyl optionally substituted with aryl, or aryl. Regarding limitations in present claims 11-12, while these claims limit the groups of claim 8, they do not require these groups to be selected and still embrace R1 being a linear alkyl chain or alkaryl as recited in claim 8. Applicant’s invention appears to be the modified intersubunit linkage at R1 – wherein various intersubunit linkages claimed herein such as alkyl and alkaryl groups are already known in the art, as evidenced by Amberg.
Claim(s) 1, 7-9, 11-12, 16 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ohkubo et al. (Tetrahedron Letters, vol. 45, issue 51, Dec 2005, pp 8953-8957).
Ohkubo discloses hydroxymethylphosphonates used in ologodeoxyribonucleotides such as:
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as well as the sequences in Tables 1-3 which would read on the present compounds wherein R1 is methanol; X is H; B is a nucleobase; W and Z are O; and Y and R2 are OH. Regarding limitations in present claims 11-12, while these claims limit the groups of claim 8, they do not require these groups to be selected and still embrace R1 being a linear alkyl chain or alkaryl as recited in claim 8. Applicant’s invention appears to be the modified intersubunit linkage at R1 – wherein various intersubunit linkages claimed herein such as hydroxymethyl groups are already known in the art, as evidenced by Ohkubo.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRAVISS C MCINTOSH III whose telephone number is (571)272-0657. The examiner can normally be reached Monday-Friday 9AM-5:30PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett 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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/TRAVISS C MCINTOSH III/Primary Examiner, Art Unit 1693
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