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 .
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.
Election/Restrictions
Applicant’s election without traverse in the reply filed on 2 July 2025, is acknowledged.
Applicants’ elected species Ib-1b (MTCL):
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, which is a species of genus formula Ib, wherein: R1 is methyl; R2 and R3 together with the carbon atom to which they are attached form adamantyl; R4 is Cl attached ortho to the -O-L-Pep group; A is a
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acceptor group attached ortho to the -O-L-Pep group and selected from -CH=CH-COOH; L is a linker of the formula L1; wherein R8 is H; and
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.
The elected species is free of the prior art.
The Examiner extended the Markush search to a genus formula Ia and Ib of instant claim 1, both of which are free of the prior art.
The Election of Species Requirement of 8 May 2025, is withdrawn, since the claims are free of the prior art.
All claims have been examined on the merits.
Current Status of 17/904,527
This Office Action is responsive to the amended claims of 2 July 2025.
Claims 1-2, 4, 7-8, 10-20, 22-24, and 26-31 have been examined on the merits. Claims 1-2, 4, 7-8, 10-14, 18-20 22-24, and 26 are previously presented. Claims 15-17 and 27-30 are original. Claim 31 is new.
Priority
The effective filing date is 19 February 2020.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 18 August 2022, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-2, 4, 7-8, 10-20, 22-24, and 26-31 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.
The claim 1 contains “e.g., the alpha-carboxylic group thereof” (see penultimate line on page 4). This limitation renders the metes and bounds of claim 1 undefined (hence rendering claim 1 indefinite) since the artisan does not know if the above identified limitation is a required limitation or merely exemplary in the claim.
Please delete “e.g.” from the claim(s) to render moot this rejection.
Claims 2, 4, 7-8, 10-20, 22-24, and 26-31 are similarly rejected as indefinite since these claims refer back to claim 1 but do not remedy the rationale underpinning the basis for rejecting claim 1.
Claim 27 recites the limitation "“compounds Ib-1a, Ib-1b (MTCL), Ib-Ic, Ib-1d, and Ib-1e". There is insufficient antecedent basis for these limitations in the claim.
Claim 27 contains the limitations: “compounds Ib-1a, Ib-1b (MTCL), Ib-Ic, Ib-1d, and Ib-1e”. These limitations render the metes and bounds of claim 27 undefined (hence rendering claim 27 indefinite). The artisan does not know the names or illustrations of these (undefined/hence indefinite) compounds, especially since claim 27 depends on claim 26, and claim 26 depends on claim 22, and claim 22 depends on claim 1. None of claims 1, 22, 26 or 27 contain illustrations of these compounds. As drafted, the artisan does not know the antecedent basis for any of these compounds.
Claim 30 is similarly rejected as indefinite.
Applicants could copy and paste the illustrations from claim 19 into each of claims 27 and 30 to render moot this rejection.
Conclusion
No claims are presently allowable as written.
There is no known prior art reference that either teaches or anticipates a compound of genus formula Ia or Ib.
The reference SHABAT (WO 2019/224338 A1, referenced in IDS of 18 August 2022) discloses a compound:
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(page 26).
However, SHABAT is not a prior art reference as the compound VIc is structurally distinct from the instant genus formulae and one cannot immediately envisage “Mycobacterium tuberculosis” as is required for the variable “Pep” of instant claim 1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN S KENYON whose telephone number is (571)270-1567. The examiner can normally be reached Monday-Friday 10a-6p.
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, Andrew D Kosar can be reached at (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625