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 .
DETAILED ACTION
Claim Status
Claims 1-5, 7, 9, 12-19 and 23 are pending. Claim 6 has been canceled. Claims 1, 3, 5, 7, 9, 12, 15, 18-19 and 23 have been amended.
Claims 1-5 and 9 are allowable. Claims 12-19 and 23, previously withdrawn from consideration as a result of a restriction requirement, require all the limitations of an allowable claim. Pursuant to the procedures set forth in MPEP § 821.04(a), the restriction requirement between inventions I-VIII, as set forth in the Office action mailed on 2/13/2025, is hereby withdrawn and claims 12-19 and 23 are hereby rejoined and fully examined for patentability under 37 CFR 1.104. In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 should be rewritten to recite “….wherein R7 and R8 are independently selected from C1-C10 alkyl or C1-C10 alkyl phenyl, wherein C1-C10 alkyl is interrupted by n amino groups…”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The rejection of claim 1 under 35 USC 112(b) is withdrawn in view of the amendments to the claims.
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.
This is a new rejection.
Claims 7, 15-19 and 23 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 7 depends upon a cancelled claim. Thus, it is indefinite.
Claims 15, 18 and 23 recite the limitation "the radionuclide-labelled conjugate" in line 3. There is insufficient antecedent basis for this limitation in the claims. If Applicants intended to claim “the radionuclide conjugate”, the claims should be amended to recite said phrase.
Claim 16 recites the limitation "the targeting agent" in line 1. There is insufficient antecedent basis for this limitation in the claim. If Applicants intended to claim “the PSMA targeting agent”, the claim should be amended to recite said phrase.
Claim 17, which depend from claim 16, is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as this claim incorporates by dependency the indefiniteness of claim 16.
Claim 19 recites the limitation "a radionuclide-labelled conjugate" in line 1. There is insufficient antecedent basis for this limitation in the claim. To overcome the rejection of claim 19, Applicants should amend the claim to recite “the radionuclide
Claim Rejections - 35 USC § 103
The rejection of claim 1 under 35 U.S.C. 103 as being unpatentable over Rudd et al. in view of Donin et al. is withdrawn in view of the amendments to the claims.
Double Patenting
The rejection of claim 1, on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 9980930 in view of Donin et al., is withdrawn in view of the amendments to the claims.
Allowable Subject Matter
Claims 1-5, 9 and 12-14 are allowed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 SERGIO COFFA whose telephone number is (571)270-3022. The examiner can normally be reached M-F: 6AM-4PM.
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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.
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/SERGIO COFFA Ph.D./
Primary Examiner
Art Unit 1658
/SERGIO COFFA/Primary Examiner, Art Unit 1658