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 .
Restriction Requirement
Applicant’s election without traverse of Group I in the reply filed on 3/18/2026 is acknowledged.
Claim Rejections - 35 USC § 112
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.
Claim 5 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. There is no description in the application of what conjugates are obtained by or obtainable from the method of claim 1 so as to describe the genus of conjugates obtained by or obtainable by the method of claim 1. As there is no description of the genus of conjugates obtained by or obtainable by the method of claim 1, the artisan would not accept that applicant had possession of the invention at the time the invention was filed.
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 1-7 and 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. Regarding claim 1, it’s unclear how the appearance of “Ph” within the phenyl ring limits the claim. The artisan would recognize the structure as a phenyl ring, and it’s unclear why the letters “Ph” appear in the formula. It’s therefor unclear if “Ph,” which is not defined by the claim, stands for something else. It is further confusing why the phenyl aromatic ring is labeled and not the neighboring aromatic ring. The examine recommends either removing the “Ph” in the formula or defining the term in the claim. Regarding claim 4, the appearance of “preferably” renders the claim indefinite because it’s unclear if the recitation following the term are positive claim limitations or are merely exemplary. Further regarding claim 4, it’s unclear why “(activated)” is in parentheses and if this is a positive claim limitation or merely exemplary. Further regarding claim 4, the recitation “wherein contacting the aqueous solution… a) is added in solid form to the aqueous solution of b) or at least partially in crystalline form, or at least 90 weight-% in crystallin form.” It’s unclear how one can choose between “ added in solid form” and “or at least partially in crystalline form,” as both of these forms are are solid forms as crystalline materials are solid. It’s further unclear how one can choose between “crystalline form” and “at least 90 weight-% in crystalline form,” as both of these terms are directed to crystalline form. Further regarding claim 4, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites “from 9 to 12” and further recites “from 9.5 to 11.5,” and “from 10 to 11,” which are narrower embodiments of the range/limitation. Further, claim 4 recites “from 9.5 to 11.5,” and also recites “from 10 to 11,” which is a narrower embodiment of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Notes and Comments
The closest prior art is Qingqing (Org. Lett. 2019). Although Qingqing teaches a method of functionalization of sulfonamide-containing peptides (pages 5858-5860), it fails to teach or fairly suggest the present method, particularly the structure of Formula (I) required by the present claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL W DICKINSON whose telephone number is (571)270-3499. The examiner can normally be reached on M-F 9 AM to 7:30 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached on 571-272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL W DICKINSON/Primary Examiner, Art Unit 1618
May 30, 2026
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