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 .
Claim 1 has been amended.
Claims 1, 3-4, 6-7, 9-11, 13-15 and 17-25 are pending.
Claims 2, 5, 8, 12, and 16 are cancelled.
Claims 3-4 and 22-25 are withdrawn.
Election/Restrictions
Applicant’s election without traverse of Group I and Species LnP19 in the reply filed on 07/17/2025 is acknowledged.
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, 6-7, 9-11, 13-15 and 17-21 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 1 recites Y is a lysine reside, but then defines Y as moieties selected from the group consisting of
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. It is unclear which definition of variable Y is to be used since the two definitions are conflicting.
Claims 14, 15, and 17 recite the limitation of the moiety Y being selected from a group of various compounds including
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(claim 14),
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(claim 14),
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(claim 15 and 17),
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(claim 15 and 17), and
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(claim 15 and 17). These compounds do not follow the limitations set forth in claim 1 in regards to moiety Y, in partiuclar the highlihgted portions above. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the polypeptide comprises SEQ ID:2". Claim 1, recites the polypeptide comprises SEQ ID:1. This is conflicting and there is insufficient antecedent basis for this limitation in the claim.
The dependent claims fall therewith.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1, 6-7, 9-11, 13-15 and 17-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CHAU (Lanthanide-Based Peptide-Directed Visible/Near-Infrared Imaging and Inhibition of LMP1. JACS. 2021.).
Regarding claims 1, 6, 7, 9, 10, 13-15, and 17-20, CHAU teaches a polypeptide comprising the following compound
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(figure 2), which reads on a polypeptide comprising SEQ ID NO:1, where X is a click cycloadduct of formula 3, Y is
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, the water soluble residue is lysine, and the linker is a moiety having the structure of
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. This reads on the species election of LnP19 shown by
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(Applicant’s drawing).
Regarding claim 11, Applicant’s specification states that SEQ ID:2 is defined as P19, Pra-KAhx-K-LDLALK-FWLY-K-IVMSDKW-K-RrRK (Applicant’s specification, paragraph 108). The compound taught in CHAU utilized P19, with this exact sequence (figure 2).
Regarding claim 21, the composition is formed into an injection for mice (page 1038, paragraph 3), which reads on a pharmaceutically acceptable excipient.
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMANTHA L. MEJIAS whose telephone number is (703)756-5666. The examiner can normally be reached M-F.
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/S.L.M./Examiner, Art Unit 1618
/Michael G. Hartley/Supervisory Patent Examiner, Art Unit 1618