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 .
Acknowledgments and Claim Status
The Examiner acknowledges receipt of the amendment filed 2/20/2025 wherein claims 1-67 were canceled and claims 68, 98, and 102 were amended. In addition, the Examiner acknowledges receipt of the amendment filed 6/20/2022.
Note(s): Claims 68-107 are pending.
Priority
This application is a DIV of 16/908,204 filed 6/22/2020 (now US Patent No. 11,365,219); 16/908,204 is a CON of 14/310,201 filed 6/20/2014 (now US Patent No. 11,168,115); 14/310,201 claims benefit to PRO of 61/925,058 filed 1/8/2014; and 14/310,201 also claims benefit to PRO of 61/837,556 filed 6/20/2013.
Note(s): The earliest effective filing date is 6/20/2013 as the full scope of the pending invention is supported. See the detailed discussion under ‘Clarification of the Record’.
Clarification of the Record
Remarks were filed on 5/12/2025 to clarify the record. In particular, an elected species was identified. Applicant elected Formula Id,
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(see independent claim 92), wherein R = -C(=O)-L3A wherein L3 is a linker moiety and A is an alkyne; L = -(CH2)6-; G = carbon-carbon double bond; y = 3; R3 = linkage to a solid support; and SEQ = YYTYT (SEQ ID No. 4).
The elected species is also encompassed by Formula Ic (see independent claim 68),
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, when R = -C(=O)-L3A wherein L3 is a linker moiety and A is an alkyne; L = -(CH2)6-; G = carbon-carbon double bond; L1 = -(CH2)3-CH(C(O)NHR3)-NH- wherein R3 = linkage to a solid support and SEQ = YYTYT (SEQ ID No. 4).
Thus, the elected species reads on claims 68, 69, 71, 72, 74-76, 78, 92, 94, and 96.
Claim Interpretation
Independent claim 68 is directed to cyclic peptide of formula
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as set forth therein.
Claim 80 is directed to a method of identifying a target binding compound as set forth therein.
Independent claim 92 is directed to a compound of formula
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as set forth therein.
Claim 97 is directed to a method of identifying a target binding compound as set forth therein.
Independent claim 98 is directed to compounds of formula
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as set forth therein.
Claim 101 is directed to a method of identifying a target binding compound as set forth therein.
Independent claim 102 is directed to compounds of formula
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as set forth therein.
Claim 107 is directed to a method of identifying a target binding compound as set forth therein.
Applicant’s Election
Applicant's election without traverse of Group I (pending claims 68, 69, 71-79, 92-96, 98-100, and 102-106) filed 2/20/2025 is acknowledged. Hence, the restriction requirement is still deemed proper and is therefore made FINAL.
Applicant identified the elected species in the response filed 2/20/2025 and further elaborated on the elected species in the response filed 5/12/2025. Applicant’s elected species was discussed in detailed supra (see ‘Clarification of the Record’ section). Claims 68, 69, 71, 72, 74-76, 78, 92, 94, and 96 read on the elected species. Initially, Applicant’s elected species was searched. However, since no prior art was found to reject the claims, the search was the search was extended to the full scope of Group I. Group I (claims 68, 69, 71-79, 92-96, 98-100, and 102-106) is directed to cyclic peptides of formulae
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and
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wherein G = carbon-carbon bond. The search was not extended beyond Group I.
Withdrawn Claims
Claims 68 (in part), 70, and 71-107 (all in part) are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Information Disclosure Statement
The information disclosure statement filed 7/13/2023 and 2/8/2023 were considered.
112 Second Paragraph Rejections
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 68 and 92-97 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 68, line 9: Did Applicant intend to replace the comma between ‘alkyne’ and ‘azide’ with ‘or’? It is unclear whether or not Applicant intended to add more text.
Claims 92-97: Independent claim 92 is ambiguous because the variable ‘y’ is not defined. Since claims 93-96 depend upon independent claim 92 for clarity, those claims are also vague and indefinite.
Allowable Claims
Claims 98-107 are allowable over the prior art of record.
Claim Objections
Claims 69 and 71-91 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Rejoining of Claims
The claims of Group I are directed to a product over which no prior art is found. Pursuant to the procedures set forth in MPEP § 821.04(B), claims 80-91, 97, 101, and 107, directed to the process of making or using an allowable product, previously withdrawn from consideration as a result of a restriction requirement, are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on 12/20/2024 is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, 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.
Comments/Notes
In order to advance prosecution, the claims were rejoined since no prior art is cited against the claims. Thus, claims 68, 69, and 71-107 were only examined to the extent that they read on the compounds of Group I.
It should be noted that no prior art is cited against the pending invention. However, Applicant must address and overcome the 112 rejections and unexamined subject matter. In particular, the claims are distinguished over the prior art of record because the prior art neither anticipates nor renders obvious the cyclic peptides compounds of Group I (pending claims 68 (in part), 69, 71-79 (all claims in part), 92-96 (all claims in part), 98-100 (all claims in part), and 102-106 (all claims in part)) and uses thereof as detailed above. The closest art is Applicant’s own work (US Patent Nos. 11,168,115 and 11,365,219) which are directed to structurally similar compounds.
Conclusion
Claims 98-107 are allowable over the prior art of record. Claims 69 and 71-91 are objected to as being dependent upon a rejected base claim. Claims 68, 92-97 are rejected. Claims 68 (in part), 70, and 71-107 (all in part) are withdrawn.
Future Correspondences
Any inquiry concerning this communication or earlier communications from the examiner should be directed to D L Jones whose telephone number is (571)272-0617. The examiner can normally be reached M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael G. Hartley can be reached at (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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/D. L. Jones/
Primary Patent Examiner
Art Unit 1618
August 1, 2025
Prosecution Insights