CTNF 17/323,683 CTNF 83445 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Continued Examination Under 37 CFR 1.114 07-42-04 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/14/26 has been entered. Election/Restrictions and Claim Status Applicants’ arguments and amendments filed 1/14/26 are acknowledged. Any objection or rejection from the 10/23/25 office action that is not addressed below is withdrawn based on the amendments. Previously, Group 1 and the species of claim 5 were elected. Claims to the elected species are rejected as set forth below. 12-151-10 AIA 12-51-10 Claim s 1-6 and 8-20 have been canceled. Claim 7 is being examined. Priority The priority information is provided in the filing receipt dated 6/1/21. This application is properly designated as a CIP of 16/894,036. The disclosure of the prior-filed application, Application No. 16/894,036, 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. Instant claim 7 requires at least instant SEQ ID NO:27 (SW2_152F). MPEP 2163 I B recognizes that “claim limitations must be supported in the specification through express, implicit, or inherent disclosure”. Application No. 16/894,036 does not recite SEQ ID NO:27 (SW2_152F). Application No. 16/894,036 recites a generic formula (claim 1). However, the generic formula is not express, implicit or inherent disclosure for SEQ ID NO:27. As such, the priority date for instant claim 7 is 5/18/21. Claim Rejections - 35 USC § 112 The 112 rejections are new rejections necessitated by amendment. 07-30-02 AIA 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. 07-34-01 Claim 7 is 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 7 has been amended to refer to ‘compared to other paralogs’. It is unclear which paralogs are considered ‘other’ paralogs. It is unclear if the comparison is to CBX4 and CBX8 or CBX6 and CBX7 or CBX6 and CBX7 and CBX8 or something else. If the comparison is unclear, then the corresponding effective amount is unclear. 07-30-01 AIA 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. 07-31-01 AIA Claim 7 is 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. This rejection is a ‘new matter’ rejection. Section 2163 of the MPEP states: ‘While there is no in haec verba requirement, newly added claim limitations must be supported in the specification through express, implicit, or inherent disclosure’. Claim 7 refers to an amount to specifically bind CBX2 with at least 24-fold specificity as compared to other paralogs. First, the phrase ‘at least 24-fold’ includes 24-fold and anything higher including 100-fold, 1000-fold and 1000000-fold. The claim recites an ‘effective amount’ which is related to a function (i.e. binding). Although the specification provides some data (figure 10C), such data does not appear to relate to effective amounts. Further, such data does not support 1000-fold specificity. Although the instant specification (page 72 section 00230) refers to bar graphs plotted as mean plus/minus S.D. no such information seems to appear in figure 10C. For at least these reasons there is no reason to conclude that claim 7 is supported in the specification through express, implicit, or inherent disclosure . Claim Rejections - 35 USC § 103 Claim 7 was previously rejected based on the references cited below. Since the claims have been amended, the rejection is updated to correspond to the instant claim. 07-20-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Denton et al. (‘Robustness of In Vitro Selection Assays of DNA-Encoded Peptidomimetic Ligands to CBX7 and CBX8’ SLAS Discovery v23(5) 2018 pages 417-428; ‘Denton’) in view of Stuckey et al. (‘Structure-activity relationships and kinetic studies of peptidic antagonists of CBX chromodomains’ Journal of Medicinal Chemistry v59 2016 pages 8913-8923; ‘Stuckey’) in view of Wang et al. (‘Optimization of ligands using focused DNA-encoded libraries to develop a selective, cell-permeable CBX8 chromodomain inhibitor’ ACS Chem Biol v15 2020 pages 112-131; ‘Wang2020’) . The priority date of instant claim 7 is discussed above (priority section). Wang2020 lists the publication date as November 22, 2019 (bottom right corner of page 112). The Denton et al. article includes supplemental material (page 417 bottom right corner). For completeness, a copy of the supplemental material of Denton et al. (supplement for ‘Robustness of In Vitro Selection Assays of DNA-Encoded Peptidomimetic Ligands to CBX7 and CBX8’ SLAS Discovery v23(5) 2018, 12 pages; ‘DentonSupplement’) is provided. Denton publication date information (retrieved from https://pubmed.ncbi.nlm.nih.gov/29309209/ on 4/26/21, 2 pages) shows (line before the title) that the publication date is Jan 8 2018. Denton teach peptidomimetic ligands to CBX7 and CBX8 (title and abstract). Denton teach the structure of a parental peptide (figure 2 and figure 4). Denton teach specific off-DNA compounds including PSL-3 which has an Ile substitution at the P(-1) position (table I on page 425) and Denton teach that the compound was assayed (table I on page 425) and that varying amounts of the peptide was used (page 420 first complete paragraph of 2 nd column). Denton does not a specific example of the elected species nor does Denton teach a diethyllysine amino acid. Denton does suggest replacements at particular residues with advantageous effects (Figure 3 and Table 1) and shows enrichment for CBX8 for 79 at P(-4), 61 at P(-3), 35 at P(-2) and 3 at P(-1) (see figure 3). Stuckey teach ligands that bind CBX (abstract). Stuckey teach compound 4 which comprises a trimethyllysine residue (Table 1). Stuckey teach trimethylated lysine is abbreviated Kme3 (page 8913 2 nd paragraph of introduction). Stuckey teach compound 27 which comprises a diethyllysine and (Table 3) and concludes that the data confirms that diethyllysine is a suitable Kme3 replacement (page 8918 first complete paragraph). Stuckey also teach that the incorporation of diethyllysine as in compound 18 resulted in similar affinities for all chromodomains as compound 6 which comprises trimethyllysine (Table 1 and page 8916 first complete paragraph). Wang2020 also teach CBX8 chromodomain inhibitors (title and abstract). Wang2020 teach conjugates formed by using peptide alkynes (page 125 2 nd complete paragraph of column 2). Wang2020 shows the structure of a C-terminal peptide alkyne (figure with abstract). Wang2020 teach labeling of the peptide with FITC or FAM for fluorescence polarization binding assay (page 125 last 3 complete paragraphs). Wang2020 teach the synthesis of C-terminal alkyne peptides (page 125 paragraph connecting columns 1-2). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Denton because Denton does suggest replacements at particular residues with advantageous effects (Figure 3). Denton shows enrichment for CBX8 for 79 at P(-4), 61 at P(-3), 35 at P(-2) and 3 at P(-1) (see figure 3). Thus, one would have been motivated to use such residues. Further, Stuckey teach that the data confirms that diethyllysine is a suitable Kme3 replacement (page 8918 first complete paragraph) for the same class of compounds taught by Denton. Thus one would have been motivated to substituted diethyllysine for Kme3. Since Denton teach assaying the compounds (Table 1) one would have been motivated to make compositions and one would have been motivated to prepare compounds suitable for conjugation (with a C-terminal alkyne) as taught by Wang2020. Since Denton teach that the compound was assayed (table I on page 425) and that varying amounts of the peptide was used (page 420 first complete paragraph of 2 nd column) one would have been motivated to prepare the peptides in appropriate amounts. One would have had a reasonable expectation of success since the methods of making the compounds were known (DentonSupplement pages 11-12). Further, Wang2020 teach methods of synthesis (page 125 2 nd complete paragraph and paragraph connecting columns 1-2). In relation to the compound of claim 7, Denton teach the structure of a parental peptide (figure 2 and figure 4). Denton shows enrichment for CBX8 for 79 at P(-4), 61 at P(-3), 35 at P(-2) and 3 at P(-1) (see figure 3). Wang2020 shows the structure of a C-terminal peptide alkyne (figure with abstract).When using such substitutions the resulting peptide is the elected species. In relation to the compositions and amounts of claim 7, Denton teach that the compound was assayed (table I on page 425). Denton teach that the compound was assayed (table I on page 425) and that varying amounts of the peptide was used (page 420 first complete paragraph of 2 nd column). Response to Arguments - 103 07-37 AIA Applicant's arguments filed 1/14/26 have been fully considered but they are not persuasive with respect to the rejection set forth above . Although applicants argue that the claims have been amended, the amended claims are addressed above. Although applicants argue that the claims relate to CBX2 inhibition, the instant claim is drawn to a composition not to a method of inhibition. Although applicants argue that the prior art does not disclose specificity as compared to paralogs, the instant claim is drawn to a composition not to a method of comparing paralogs. Claim 7 does refer to an effective amount. Since Denton teach that the compound was assayed (table I on page 425) and that varying amounts of the peptide was used (page 420 first complete paragraph of 2 nd column) one would have been motivated to prepare the peptides in appropriate amounts. Although applicants argue that the cited art does not teach the instant compound as a CBX2 inhibitor, MPEP 2112.01 recognizes that a chemical composition and its properties are inseparable. Thus, adding language that the claimed compound has certain inhibitory functions would not necessarily change the scope of the claim. Although applicants argue about modifications at particular positions, the rejection above addresses the exact compound recited in claim 7. Although applicants argue about a motivation to discover CBX2 inhibitors, MPEP 2144 IV recognizes that is it not necessary that the prior art suggest the same advantage or result discovered by the applicant and that a rationale different from applicants is permissible. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONALD T NIEBAUER whose telephone number is (571)270-3059. The examiner can normally be reached M - F 6:30 - 2:30 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, Melissa Fisher can be reached at 571-270-7430. 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. RONALD T. NIEBAUER Primary Examiner Art Unit 1658 /RONALD T NIEBAUER/Examiner, Art Unit 1658 Application/Control Number: 17/323,683 Page 2 Art Unit: 1658 Application/Control Number: 17/323,683 Page 3 Art Unit: 1658 Application/Control Number: 17/323,683 Page 4 Art Unit: 1658 Application/Control Number: 17/323,683 Page 5 Art Unit: 1658 Application/Control Number: 17/323,683 Page 6 Art Unit: 1658 Application/Control Number: 17/323,683 Page 7 Art Unit: 1658 Application/Control Number: 17/323,683 Page 8 Art Unit: 1658 Application/Control Number: 17/323,683 Page 9 Art Unit: 1658 Application/Control Number: 17/323,683 Page 10 Art Unit: 1658
Prosecution Insights