DETAILED ACTION
This office action is in response to applicant’s filing dated January 28, 2026.
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 .
Status of Claims
Claims 1, 2, 4, 8, 11, 14, 15, 17, 18, 20 - 22, 25, 29, 30, 34, 37, 38, 41 - 43, 47, 49, 55, 57, 59, 62, 66, 69, 72, 75, 99, 100, 110, 113, 120, 125 and 134 are pending in the instant application. Receipt and consideration of Applicants' amended claim set and remarks/arguments filed on January 28, 2026 are acknowledged. Claims 20 – 22, 25, 29, 30, 34, 37, 38, 41 - 43, 47, 49, 55, 59, 62, 66, 69, 75, 99, 100, 110, 113, 120, 125 and 134 remain withdrawn, as being drawn to an unelected invention or specie. Acknowledgement is made of Applicant's amendment of claims 1, 2, 4 and 11 and cancelation of claim 10.
Claims 1, 2, 4, 8, 11, 14, 15, 17, 18, 57 and 72 are under consideration in the instant office action.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on January 28, 2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Objections and/or Rejections and Response to Arguments
Applicants' arguments, filed on January 28, 2026, have been fully considered.
Acknowledgement is made of the Applicant’s amendment of claim 1, and cancellation of claim 10.
Accordingly, the rejection of claims 1, 2, 8, 10 and 14 under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Guo is withdrawn.
In view of recent claims amendments, the rejection of claims 1, 2, 4, 8, 10, 11, 14, 15, 17, 18, 57 and 72 under 35 U.S.C. 103 as obvious over Guo, Apgar and Crew been rendered moot.
Acknowledgement is made of the Applicant’s arguments regarding the point of attachment of a linker to kinase activator (e.g. AMPK activator). The arguments as shown herein: “[The applied art fails to teach]where on kinase binding structures one would attach a linker, nor how such attachment would preserve kinase binding and activation properties while enabling productive phosphorylation of non-natural substrates”. Arguments are found persuasive and affect claim 18.
Accordingly rejection of claims 1, 2, 4, 8, 10, 11, 14, 15, 17, 18, 57 and 72 under 35 U.S.C. 103 as being unpatentable over Guo, Apgar and Crew is withdrawn.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated (Maintained Objections and/or Rejections) or newly applied (New Objections and/or Rejections, Necessitated by Amendment or New Objections and/or Rejections, NOT Necessitated by Amendment). They constitute the complete set presently being applied to the instant application.
Modified Objections and/or Rejections
Modifications Necessitated by Claim Amendment
Claim Objections
Claim 4 is objected to because of the following informalities:
claim 4 recites: “A chimeric small molecule according to any of claims 2[…]”, which appears to be a typographical error and should read: “A chimeric small molecule according to claim 2[…]”. Appropriate correction is required.
Claim 18 is 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.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 2 recites a structure of a chimeric small molecule according to the formula: A-(L)n-B, whereas claim 1, on which claim 2 is being dependent, describes the structure of a chimeric small molecule having a “[…]kinase binding moiety and a target binding moiety connected via one or more linker molecules, and an electrophilic reactive group[…]”, which description indicates that the presence of a linker and an electrophilic reactive group in the structure of chimeric small molecule is required. However, the chimeric small molecule of structure A-(L)n-B, recited by claim 2, does not incorporate electrophilic reactive group in its structure. Also, integer n can be a 0, which should mean that if n=0, the linker in the molecule A-(L)n-B is absent, and A is directly connected to B. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 4, 8, 11, 14, 57 and 72 are rejected under 35 U.S.C. 103 as being unpatentable over Conway (J. Med. Chem. 2020, 63, 2802−2806) in view of Maniaci et al (Current Opinion in Chemical Biology 2019, 52:145–156) and Guo et al (Nat Commun. 11, 4268 (2020, cited in IDS, filed 09/05/2025).
Instant claims are drawn to a chimeric small molecule according to formula A-L-El-B, where A is a kinase binding moiety (e.g. BTK, EGFR, AKT), B is a target binding moiety, such as BTK, BRD4 or EGFR binding moiety, L is a linker which is an amine, amide, PEG or a combination thereof, E is an electrophilic reactive group, wherein the kinase binding moiety facilitates labeling of an enzyme a kinase, via the electrophilic reactive group, with a target binding moiety and the kinase binding moiety brings the kinase into proximity to a target substrate and induces modification of the target substrate. In the structure of a chimeric small molecule of formula A-L-El-B, ligands A and B might each separately bind a kinase of the same type.
Conway teaches chimeric bifunctional molecules, consisting of AKT or EGFR binding ligands, connected via linker with the ligand that binds phosphatase PP1 (page 2803, Fig.1(C)). The molecule recruits a kinase (AKT or EGFR) and brings it into the proximity of protein phosphatase 1 (PP1) to promote dephosphorylation of kinase as a post-translational modification (PTM) to the POI. Small molecule AKT inhibitor was taken as an AKT binding ligand, and EGFR inhibitor was used as EGFR binding ligand (page 2804, Fig.2). By describing this molecule, Conway discusses the potentials of chimeric bifunctional molecules to modulate PTMs beyond ubiquitination. Conway further suggests development of heterobifunctional molecules to promote phosphorylation through harnessing of kinase activity, since phosphorylation has been recognized as key PTM, which modulates function in a wide range of cellular contexts including disease states (page 2805, left column 2nd paragraph).
Furthermore, Maniaci teaches bispecific molecules that serve as bridging agents to bring proteins together. Bifunctional chimeric molecules composed of two binding units, enabling recruitment of two target proteins simultaneously, where proximity-induced stabilization or de novo formation of protein–protein interactions (PPIs) is a common feature of their molecular recognition (page 145, right column, 1st paragraph).
As an example of bifunctional molecules Maniaci teaches MT1:
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, where two molecules of JQ1 (BET family, such as BRD4 inhibitor) are joined together using a linker length of seven ethylene glycol units (PEG-7 linker) (page 148, Fig. 3). Two BET inhibitors bridge across two molecules of bromodomains and inducing extensive intermolecular PPIs. MT1 was found to be 100-fold more potent than the corresponding monovalent inhibitor JQ1 at blocking Brd4 from binding to chromatin in cells (page 147, right column, 2nd paragraph). Since BRD4 functions as an atypical kinase, the bifunctional molecule MT1 is within the scope of instant claim 4.
Thus, Conway and Maniaci teach chimeric bifunctional molecules, having a structure where two protein binders were connected by a covalent linker (such as PEG linker), where at least one of the protein binging ligands binds a kinase, and where kinase binding ligands were selected from known small molecule kinase inhibitors. Said “bivalent” molecules bind two same or different proteins, bringing them into proximity to promote protein-protein interaction.
Conway and Maniaci do not teach a chimeric bifunctional molecule where electrophilic reactive group is incorporated into the structure.
However, Guo teaches a chimeric small bifunctional molecule of formula A-L-El-B:
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(page 3, Fig. 2a, (RC-1)), where BTK binding ligand ibrutinib (kinase binder) connected via linker with CRBN E3 ligase binder (ligase binding moiety) and where electrophilic group E (cyanoacrylamide) is incorporated between kinase binding ligand and a linker. Although Guo teaches bifunctional molecules that function as a BTK degraders, the compound RC-1 is still an example of structure of bifunctional molecules where two protein binding ligands connected via linker, engage target proteins and bring them into proximity to induce protein-protein interaction, where cyanoacrylamide group is incorporated between protein binder (BTK binder) and a linker to enhance binding affinity of target protein (BTK).
Thus, since prior art teaches chimeric bifunctional molecules, comprising two protein binding ligands, connected via linker, where protein binding ligands were selected from known small molecules protein inhibitors (e.g. BTK, EGFR, AKT, BRD4), where linker is selected from known linker structures (e.g. PEG), where electrophilic group E of known structure (e.g. cyanoacrylamide) can be incorporated between protein binder and a linker to enhance binding affinity of target protein, and which molecules were designed to bring two proteins into proximity and induce the desired function, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the present invention to try to make various bifunctional compounds by combining known in the art structural elements, which molecules possess similar or better desired properties to arrive at claimed compounds. The one of ordinary skills would be motivated to do so to modulate proteins proximity and inducement of the desired biological action with the reasonable expectation of success.
Claims 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Conway (J. Med. Chem. 2020, 63, 2802−2806) in view of Maniaci et al (Current Opinion in Chemical Biology 2019, 52:145–156) and Guo et al (Nat Commun. 11, 4268 (2020, cited in IDS, filed 09/05/2025) as applied to claims 1, 2, 4, 8, 11, 14, 57 and 72 above, and further in view of Apgar et al (WO 2014/031515 A1, hereinafter Apgar).
Conway, Maniaci and Guo teach all the limitations of claims 15 and 17 as discussed supra and are applied here in the same manner, except where a kinase binding moiety is an AMPK binding moiety according to formula:
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.
However, Apgar teaches compounds, acting as a activators of AMP-activated protein kinase (AMPK) (page 5, line3) and having a structure (e.g. MK8722 derivative):
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(page 196, Table 13, ex. 151). The compound, taught by Apgar has a structure which is a closest homologue of the instantly claimed AMPK binding moiety (see the structure above) and different in structure by -CH2- group. Since compound, taught by prior art and instantly claimed compound have close structural similarity it is reasonably expected to have similar properties. MPEP 2144.09.II. states: Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
Thus, since Conway, Maniaci and Guo teach chimeric bifunctional molecules, comprising two protein binding ligands, connected via linker (e.g. PEG), and designed to recruit two proteins of interest, bring them into proximity and induce the desired biological function, where recruitment of certain proteins is achieved by selecting target specific ligand from known small molecules protein inhibitors (e.g. BTK, EGFR, AKT, BRD4), and since Apgar teaches compounds, activators of AMPK having a structure of MK8722 derivative, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the present invention to modify bifunctional compounds taught by Conway, Maniaci or Guo, by substituting one of the protein binding ligands with the AMPK binder (e.g. MK8722 derivative) taught by Apgar, to arrive at claimed compounds. The one of ordinary skills would be motivated to do so to design a bifunctional molecule where one of the binding ligands would recruit an AMPK, modulate two proteins proximity and induce a desired protein-protein interaction with the reasonable expectation of success.
Therefore, taking all together, taught by prior art, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant argues:
- The Office's rejection fails to appreciate that Guo's PROTAC operates through a fundamentally different mechanism than the claimed kinase bifunctional molecule, and any modification to arrive at the claimed invention would both render Guo unsatisfactory for its intended purpose and change its principle of operation. Guo's RC-1 PROTAC functions by recruiting an E3 ubiquitin ligase (CRBN) to ubiquitinate BTK, leading to proteasomal degradation of the target protein. In contrast, the claimed chimeric small molecules bring a kinase into proximity with a target to induce phosphorylation rather than degradation.
- The art of creating kinase-recruiting bifunctional molecules for phosphorylation is fundamentally distinct from PROTAC technology. The Office has not identified where on kinase binding structures one would attach a linker, nor how such attachment would preserve kinase binding and activation properties while enabling productive phosphorylation of non-natural substrates.
- Without Applicant's disclosure, there would be no reasonable expectation that simply attaching a kinase binder to a target binding moiety would result in functional phosphorylation. The complex interplay between linker length, attachment points, binding affinities, and spatial orientation required for successful bifunctional molecule design cannot be predicted from the cited references.
- Apgar teaches AMPK activators, specifically MK8722 derivatives as standalone compounds, these compounds solely used as AMPK activators for treating metabolic disorders, not as components of bifunctional molecules designed to recruit AMPK to phosphorylate non-natural substrates. Apgar provides no teaching, suggestion, or motivation to incorporate its AMPK activator structures into a bifunctional molecule, much less one designed to operate through proximity- induced phosphorylation rather than simple AMPK activation.
- Neither of [cited] reference addresses the critical inventive step of creating bifunctional molecules that recruit kinases to phosphorylate non-natural substrates, a mechanism fundamentally different from the degradation mechanisms taught by Guo and Crew, and the simple activation mechanism taught by Apgar.
Examiner’s response:
Applicant's arguments have been fully considered but they are not persuasive because: the rejected claims are very broad in scope and encompass a vast variety of bifunctional compounds designed not for ubiquitination only, but to induce other types of protein interactions, such as dephosphorylation or inhibition, including modification of non-native substrates. Newly applied art gives examples of bifunctional molecules engineered to promote post-translational protein modifications, not degradation. Moreover, prior art clearly suggests development of bifunctional molecules to recruit kinases to promote phosphorylation of substrate (see the rejection section above).
Regarding argument that invented compounds promote phosphorylation, not a degradation, is not persuasive because rejected claims do not require “phosphorylation”. BRI of the rejected claims is broader than what is argued.
Regarding arguments that applied art does not suggest linker length, point of attachment of the linker etc. is not persuasive, because rejected clams only mention fragments of bifunctional molecule (e.g. kinase binder, linker) without specifying length of the linker or points of attachment of the linker to the protein binding ligands. It is improper to import limitations from the specification into the claims (MPEP 2111.01(II)).
Regarding arguments about structure of AMPK activator MK8722, which has been taught as a standalone compound, without motivation to incorporate AMPK activator structures into a bifunctional molecule, this is not persuasive because, it is a common practice in the design of bifunctional molecules to use known target specific protein inhibitors or activators and connect them by a linker to yield bivalent compound, which would bind desired proteins. Instant claims 15 and 17 only describe the structure of AMPK activator as a binding ligand within the bifunctional molecule, without specifying point of attachment of this fragment to the linker.
Therefore, Applicant’s arguments are not persuasive, and the rejection of claims 1, 2, 4, 8, 11, 14, 57 and 72 as obvious over teachings of Conway, Maniaci and Guo, as well as rejection of claims 15 and 17 as obvious over teachings of Conway, Maniaci, Guo and Apgar is maintained.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 8 and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 14 of copending Application No. 18/854,590 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims are directed to a chimeric small molecule according to formula A-(L)n-B, A-L-El-B or A-L1-El-L2-B where A is a kinase binding moiety such as AMPK, EGFR, AKT binding moiety, B is a target binding moiety, L is a linker which is an amine, amide, PEG or a combination thereof, n is 0 – 6, and E is an electrophilic reactive group.
Copending claims are directed to a chimeric small molecule of formula A-L1-E-B or A-L1-E-L2-B where A is a kinase binding moiety such as AMPK binding moiety, B is a target binding moiety, L1 and L2 each is a linker which is an amine, amide, PEG or a combination thereof, and E is an electrophilic reactive group.
Thus the compounds of copending claims anticipate instantly claimed compounds.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant argues:
- The applications cited in the rejection have a later effective filing date. Where a provisional non-statutory obviousness-type double patenting (ODP) rejection is the only remaining rejection in an application having an earlier effective filing date, the provisional ODP rejection should be withdrawn.
Examiner’s response:
Applicant's arguments have been fully considered but they are not persuasive because: regarding filing date of copending application MPEP 804 states: “If a provisional nonstatutory double patenting rejection is the only rejection remaining in an application having the earlier patent term filing date, the examiner should withdraw the rejection in the application having the earlier patent term filing date and permit that application to issue as a patent, thereby converting the provisional nonstatutory double patenting rejection in the other application into a nonstatutory double patenting rejection upon issuance of the patent. Since provisional nonstatutory double patenting over copending application No.18/854,590 is not the only rejection of the instant application, the argument is not found persuasive.
Therefore, Applicant’s arguments are not persuasive and the provisional rejection of claims 1, 2, 8 and 11 on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No.18/854,590 is maintained.
Conclusion
Claims 1, 2, 4, 8, 10, 11, 14, 15, 17, 57 and 72 are rejected.
Claims 4 and 18 are objected to.
No claim is allowed.
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.
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/E.V.V./Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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