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 .
Claims 1, 17-19, 21, 24, 25 and 27 are pending in the application.
This action is in response to applicants' amendment dated December 11, 2025. Claims 17, 25 and 27 have been amended and claims 20 and 22 have been canceled.
Response to Amendment
Applicant's arguments filed December 11, 2025 have been fully considered with the following effect:
With regards to the 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph rejection, labeled paragraph 1) maintained in the last office action, the applicant’s amendments and remarks have been fully considered but they are not persuasive. The applicants stated that claim 16 was previously cancelled and replaced by claim 27 with essentially the same scope, which it is herein acknowledge that the reference to claim 16 was a cut and paste error, however claim 16 was not part of the rejection nor was newly added claim 27. Pointing to the claims with respect to the rejection, i.e. claims 17-20 and 22, it is acknowledged that claims 20 and 22 have been canceled thus the rejection is herein maintained with respect to claims 17-19. The applicants stated that Claim 17 is amended to recite only those compounds of claim 27 and further, the diseases are only limited to “prostate cancer, breast cancer, and Kennedy’s disease”. However, this is not so. Only claim 21 is limited to prostate cancer, breast cancer, and Kennedy’s disease and thus as stated in the last office action is enable and thus is not included in the enablement rejection.
Claims 17-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for prostate cancer, breast cancer, and Kennedy’s disease, does not reasonably provide enablement for targeting chimeras regulated by androgen receptors. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims, for reasons of record and stated above.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejections, labeled paragraph 2eee) in the last office action, which is hereby withdrawn.
With regards to the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejections, labeled paragraph 7a) maintained in the last office action, the applicant’s amendments and remarks have been fully considered but they are not persuasive.
a) The applicants’ failed to comment on this rejection which is herein reiterated. Claim 1 and claims dependent thereon are vague and indefinite in that it is not known what is meant by the definition of X0 where the definition includes the moiety NHCH3 which is a monovalent moiety, however, X0 is a divalent variable.
Claim 1 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 applicant regards as the invention, for reasons of record and stated above.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejections, labeled paragraph 8a), b), c), d), e), f), g) and h) in the last office action, which are hereby withdrawn.
With regards to the provisional nonstatutory double patenting rejection as being unpatentable over claims 1-8 of copending Application No. 18/950,929 of the last office action, the applicants request that the Examiner hold the rejection over the 18/950,929 Application in abeyance until there is allowable subject matter.
Claims 1, 7-19, 21, 24, 25 and 27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/950,929, for reasons of record and stated above.
With regards to the provisional nonstatutory double patenting rejection as being unpatentable over claims 1-18 of copending Application No. 18/950,818 of the last office action, the applicants request that the Examiner hold the rejection over the 18/950,818 Application in abeyance until there is allowable subject matter.
Claims 1, 7-19, 21, 24, 25 and 27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18/950,818, for reasons of record and stated above.
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 BRENDA L COLEMAN whose telephone number is (571)272-0665. The examiner can normally be reached Mon-Fri 10-6 (flex).
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, Jeffrey H. Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRENDA L COLEMAN/Primary Examiner, Art Unit 1624
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