DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/23/2026 has been entered. Claims 19-24, 27, and 34 are cancelled. Claims 1-18, 25, 26, 28-33, and 35 are pending in this application. Claims 1-18, 25, and 28-32 are withdrawn. Claims 26, 33, and 35 are currently under examination.
Priority
This application is a CON of 15/734,182 filed on 12/01/2020, now PAT 11814621, is a 371 of PCT/US2019/035215 filed 06/03/2019, which claims benefit of US PRO 62/679,350 filed on 06/01/2018.
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed application, Application No. 62/679,350, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Claims 26 and 33 recite “R is… cycloalkyl, optionally substituted with amino in a gamma position, a delta position, an epsilon position, or a zeta position; heterocycloalkyl; alkylheterocycloalkyl… 5-aminomethyl-furan-3-yl… piperidin-4-yl, (piperidin-4-yl)methyl, piperazin-4-yl, and (piperazin-4-yl)methyl”, and/or “R is… 5-aminomethyl-furan-3-yl”, which are not disclosed or supported by the prior-filed Application No. 62/679,350. Thus, the priority date of claims 26, 33, and 35 is 06/03/2019.
Election/Restrictions
Applicant’s election without traverse of Group IV (claims 26-29) and species (R is 3-hydroxy-4-nitrophenyl,
PNG
media_image1.png
74
105
media_image1.png
Greyscale
) in the reply filed on 12/06/2024 is acknowledged. Since previously examined species “
PNG
media_image2.png
190
400
media_image2.png
Greyscale
, 3-aminopropyl, 4-aminobutyl, 5-aminopentyl, and 6-aminohexyl” have been deleted, the search is extended to cycloalkyl, optionally substituted with amino in a gamma position, a delta position, an epsilon position, or a zeta position in claim 26. Claims 1-18, 25, and 28-32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species and invention, there being no allowable generic or linking claim. Thus, claims 26, 33, and 35 are currently under examination.
Withdrawn Claim Rejections
The rejection of claim 26 under 35 U.S.C. 102(a)(1) as being anticipated by Iqbal et al., as set forth on pages 4 to 5 of the Non-Final Rejection mailed on 03/31/2026, is withdrawn in view of amended claim 26.
The provisional rejection of claim 26 on the ground of nonstatutory double patenting as being unpatentable over claims 1 , 11, and 28 of copending Application No. 17/904,211, as set forth on pages 13 to 14 of the Non-Final Rejection mailed on 03/31/2026, is withdrawn in view of amended claim 26.
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 26 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ohshiro et al. (ChemBioChem 2011, 12, 1183 – 1187, hereinafter referred to as Ohshiro ‘2011, also listed in IDS filed on 09/18/2023).
With regard to structural limitations “An acylated tRNA (transfer RNA, linked via a 3' terminal ribonucleotide) molecule having a formula defined as:
PNG
media_image3.png
200
400
media_image3.png
Greyscale
, R is selected from cycloalkyl, optionally substituted with amino in a gamma position (claim 26):
Ohshiro ‘2011 disclosed Figure 1, B) γ-aa-F-CMEs used in this study. Each γ-amino acid (3: (3-aminocyclohexane,
PNG
media_image4.png
200
400
media_image4.png
Greyscale
)carboxylic acid) is chemically coupled with F-CME to obtain the corresponding dipeptide, and its tRNA aminoacylation is performed with flexizyme. Figure 2, B) and C), and Figure 3, D) Mass spectra of the reaction product from reprogrammed translation with γ-aa-F dipeptide initiators. The detected peaks corresponding to the cyclic product (9-γ-aa) and hydrolysis product (10-γ-aa) are labeled in the spectra.
PNG
media_image5.png
200
400
media_image5.png
Greyscale
The cyclic product (7–1,
PNG
media_image6.png
200
400
media_image6.png
Greyscale
) and hydrolysis product (8–1,
PNG
media_image7.png
200
400
media_image7.png
Greyscale
) were labeled in the spectrum (page 1184, Figure 1; page 1185, Figure 2; page 1186, Figure 3).
Thus, these teachings of Ohshiro ‘2011 anticipate Applicant’s claim 26.
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, 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 26, 33, and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Nawrot et al. (Nucleosides Nucleotides 17 (1998) 4, 815-829, hereinafter referred to as Nawrot ‘1998) in view of Stewart (Aust. J. Chem., 32, 923-925, 1979, hereinafter referred to as Stewart ‘1979, cited in the previous Office Action).
With regard to structural limitations “An acylated tRNA (transfer RNA) molecule having a formula defined as:
PNG
media_image3.png
200
400
media_image3.png
Greyscale
, R is 3-hydroxy-4-nitrophenyl” (claims 26, 33, and 35):
Nawrot ‘1998 disclosed Aminoacyl-tRNA Analogues; Synthesis, Purification and Properties of 3’-Anthraniloyl Oligoribonucleotides. Reaction of isatoic anhydride (II) with adenosine nucleosides such as (I) results in the attachment of an anthraniloyl residue at 2’- or 3’-OH groups of 3’-terminal ribose residue. No protection of the 5’-hydroxyl group or internal 2’-hydroxyl group is required for this specific reaction. The anthraniloyl residue is used as an fluorescent reporter group to monitor interactions with proteins.
PNG
media_image8.png
200
400
media_image8.png
Greyscale
(Abstract, 29-290).
Nawrot ‘1998 did not explicitly disclose the limitation “R is 3-hydroxy-4-nitrophenyl,
PNG
media_image1.png
74
105
media_image1.png
Greyscale
, elected)”, required by claims 26, 33, and 35.
Stewart ‘1979 disclosed that preparation of the proposed amino acid derivatives (3) would best proceed from phenolic components with the carboxyl group protected by the acid-labile 2,4,6-trimethylbenzyl group:
PNG
media_image9.png
200
400
media_image9.png
Greyscale
. The homologues (4) with n = 0 and 1 were intended to provide two series of final anionic active esters (3) with substantially different pKa values. The 2,4,6-trimethylbenzyl derivatives (4) were also used similarly for the preparation of several anionic active esters of adipic (=
PNG
media_image10.png
119
291
media_image10.png
Greyscale
) and sebacic acids (=
PNG
media_image11.png
98
325
media_image11.png
Greyscale
) to obtain derivatives of amino acids (page 923, para. 3, page 924, para. 1 to 2; page 925, para. 2).
Thus, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to substitute the
PNG
media_image12.png
200
400
media_image12.png
Greyscale
as taught by Nawrot ‘1998 with
PNG
media_image13.png
200
276
media_image13.png
Greyscale
in view of Stewart ‘1979, followed by optimization of the position of carboxylic group on the aromatic ring to obtain a unnatural amino acid to synthesize an aminoacyl-tRNA analogue because (a) Nawrot ‘1998 teaches attachment of an anthraniloyl residue 3’-OH groups of 3’-terminal ribose residue of tRNA, and (b) Stewart ‘1979 teaches the
PNG
media_image13.png
200
276
media_image13.png
Greyscale
is an acceptable moiety as an amino acid analogue and n is 0 or 1 in the (CH2)nCO2H moiety, described above. Thus, one of skill in the art would have a reasonable expectation that by substituting the
PNG
media_image12.png
200
400
media_image12.png
Greyscale
as taught by Nawrot ‘1998 with
PNG
media_image13.png
200
276
media_image13.png
Greyscale
in view of Stewart ‘1979, followed by optimization of the position of carboxylic group on the aromatic ring to obtain a unnatural amino acid to synthesize an aminoacyl-tRNA analogue, one would achieve Applicant’s claims 26, 33, and 35. "Exemplary rationales that may support a conclusion of obviousness include: (B) Simple substitution of one known element for another to obtain predictable results". See MPEP § 2143 [R-01.2024] [I].
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YIH-HORNG SHIAO whose telephone number is (571)272-7135. The examiner can normally be reached Mon-Thur, 08:30 am to 07:00 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, Renee Claytor can be reached at 571-272-8394. 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.
/YIH-HORNG SHIAO/Primary Examiner, Art Unit 1691
Prosecution Insights