Prosecution Insights
Last updated: April 19, 2026
Application No. 18/197,490

METHODS FOR PROXIMAL MOLECULAR PROBE TRANSFER

Non-Final OA §102§103
Filed
May 15, 2023
Examiner
DUNN, MCKENZIE A
Art Unit
1678
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
The Regents of the University of California
OA Round
1 (Non-Final)
58%
Grant Probability
Moderate
1-2
OA Rounds
4y 1m
To Grant
99%
With Interview

Examiner Intelligence

Grants 58% of resolved cases
58%
Career Allow Rate
39 granted / 67 resolved
-1.8% vs TC avg
Strong +50% interview lift
Without
With
+49.5%
Interview Lift
resolved cases with interview
Typical timeline
4y 1m
Avg Prosecution
45 currently pending
Career history
112
Total Applications
across all art units

Statute-Specific Performance

§101
12.9%
-27.1% vs TC avg
§103
38.9%
-1.1% vs TC avg
§102
18.7%
-21.3% vs TC avg
§112
21.7%
-18.3% vs TC avg
Black line = Tech Center average estimate • Based on career data from 67 resolved cases

Office Action

§102 §103
DETAILED ACTION Claims 1-25 are pending. Election/Restrictions Applicant’s election without traverse of group I, claims 1-11 in the reply filed on 02/27/2026 is acknowledged. Claims 12-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/27/2026. Claims 1-11 are under examination. Information Disclosure Statement The information disclosure statement (IDS) filed on 03/22/2024 has been considered by the examiner. 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. (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. Claim s 1-9 and 11 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Bird et al. “ Bioorthogonal Chemistry and Its Applications.” Bioconjugate chemistry vol. 32,12 (2021): 2457-2479. doi:10.1021/acs.bioconjchem.1c00461 . Instant claim 1 is drawn to a multifunctional conjugation reagent, comprising: a first bioorthogonal reactive handle configured to be attached to a target molecule or to a modified target molecule; a detectable label; a second reactive handle configured to be attached to a polypeptide or to a modified polypeptide; and a linker disposed between the second reactive handle and the detectable label, wherein the linker comprises a selectively cleavable linkage. Bird t eaches a multifunctional conjugation reagent, comprising: a first bioorthogonal reactive handle configured to be attached to a target molecule or to a modified target molecule , wherein the first biorthogonal is an azide ( see page 2457 “ Bioorthogonal processes involve two steps. First, a bioorthogonal handle (such as an azide group) is incorporated into biomolecules using methods such as metabolic labeling. ”) ( Instant claim 2 ) ; a detectable label , wherein the label comprises biotin ( see page 2463 “B iotin ligase BirA biotinylates a lysine residue within a 15- residue biotin acceptor peptide (BAP). Proteins tagged with the BAP recognition motif can be selectively biotinylated. It has been demonstrated that BirA can accept a ketone containing analog of biotin termed ketobiotin as a substrate. After enzymatic transfer to the protein of interest, the ketobiotin can be covalently labeled with hydrazides, hydroxylamines , or alkoxyamines. ”) ( Instant claim 7 ) ; a second reactive handle configured to be attached to a polypeptide or to a modified polypeptide , wherein the second reactive handle is a biorthogonal reactive handle , that is a HALOtag ligand and/or a SNAP ligand ( see page 2463-2464 “ The SNAP-tag is a mutant of the human DNA repair protein O6-alkylguanine-DNA alkyltransferase ( hAGT ). This single turnover enzyme accepts, in most cases, label-carrying O6- benzylguanines or benzyl-2-chloro-6-aminopyrimidines as suitable substrates. The tag is introduced into the biological system as a fusion with the protein of interest through genetic techniques. ”. SNAP-tag and HALOTags are known biorthogonal reactive handles in the art) ( instant claim 3 , instant claim 5 ) ; and a linker disposed between the second reactive handle and the detectable label ( see page 2463 “ Biotin ligase BirA biotinylates a lysine residue within a 15- residue biotin acceptor peptide (BAP). Proteins tagged with the BAP recognition motif can be selectively biotinylated. It has been demonstrated that BirA can accept a ketonecontaining analog of biotin termed ketobiotin as a substrate. After enzymatic transfer to the protein of interest, the ketobiotin can be covalently labeled with hydrazides, hydroxylamines , or alkoxyamines. The tolerance of Escherichia coli BirA for unnatural substrates is limited to conservatively modified biotins. However, ligases from Pyrococcus horikoshii and yeast can catalyze the transfer of azido- and alkynylbiotin analogues to proteins. Self-labeling protein tags are small proteins designed for covalent conjugation to a small-molecule probe that can be functionalized with a bioorthogonal linker . Self-labeling enzymes and proteins directly attach substrates and reagents to an amino acid or functional group within their structure instead of an exogenous target biomolecule. In these instances, the protein itself serves as the reporter and is often expressed as a fusion to the protein of interest. Figure 6 illustrates the mechanism for labeling proteins with the Halo-Tag and SNAPTag systems .”, see figure 6 where the HALO-Tag and SNAP-Tags are the second reactive handle and the function probe contains the label ) , wherein the linker comprises a selectively cleavable linkage ( see pages 2469-2470 ) ( instant claim 1 ), and the cleavable linkage is a protease cleavable linkage (see pages 2469-2470 “ Incorporating an alkyne at its N-terminus to form alkyne-086 allowed the modified protein to be trapped from solution by reaction using a biotin-substituted azide with a linker susceptible to cleavage by a protease ”) ( instant claim 8 ). Bird teaches where in the target molecule is a first protein and the polypeptide is a second protein ( see figure 6 and figure 6 legend stating “ Chemical mechanisms of chemical labeling for HaloTag (top) and SNAP-tag (bottom). The tags are expressed as fusions with the protein of interest. Once in place, they catalyze the covalent bonding of the bioorthogonal handle to the tag protein. ”) ( instant claim 4 ). Bird teaches that the detectable label comprises a fluorogenic moiety ( see page 2467 “ In this example, a 7-azabenzonorbornadiene derivative (ABN) was prepared as a strained dienophile that could undergo tetrazine-mediated transfer (TMT) with the internally quenched tetrazine− BODIPY compound TzH . ”. 7-azabenzonorbornadiene derivative (ABN) is a known and used fluorogenic moiety.) ( Instant claim 6 ). Bird teaches the target molecule being a lipid and/or a carbohydrates ( see abstract “ Collection to determine how often different types of biomolecules such as proteins, carbohydrates, glycans, and lipids have been studied using bioorthogonal chemistry ”, see page 2464 under “3.2 Glycans” , see page 2464 under “3.3 Lipids” ) ( instant claim 9 ). Bird teaches wherein the first bioorthogonal reactive handle and the second reactive handle are located at different termini of the conjugation reagent ( see figure 6 , see page 2457 teaching that the probe with a functional group reacts with the biorthogonal hand, attaching the probe to the biomolecule, see page 2463 “ Self-labeling enzymes and proteins directly attach substrates and reagents to an amino acid or functional group within their structure instead of an exogenous target biomolecule. In these instances, the protein itself serves as the reporter and is often expressed as a fusion to the protein of interest. ”) ( instant claim 11 ). 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. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Bird et al., as applied to claims 1-9 and 11 above, in view of Goswami et al. “Efficient synthesis of diverse heterobifunctionalized clickable oligo(ethylene glycol) linkers: potential applications in bioconjugation and targeted drug delivery.” Organic & biomolecular chemistry vol. 11,7 (2013): 1116-26. doi:10.1039/c2ob26968f . The teachings of Bird as it pertains to claims 1-9 and 11 is discussed in the 35 USC 102 rejection above. Bird does not teach the linker further comprising a PEG polymer. Goswami teaches the linker further comprising a PEG polymer ( see abstract “ Also, the alkyne- and azide -terminated OEGs are useful for generating larger discrete poly(ethylene glycol) (PEG) linkers (e.g., PEG16 and PEG24) by employing a Cu(I)-catalyzed 1,3-dipolar cycloaddition click reaction. ”, see page 1117 “ PNPC-functionalized PEG linkers are useful for biomedical applications because they can readily react with the amine functionality of amino acids present in bioactive peptides or antibodies to form carbamate bonds under very mild reaction conditions. ”) ( instant claim 10 ). It would have been obvious to one of ordinary skill in the art at the time of the instant application to modify the conjugation reagent of Bird with the PEG polymer linker taught by Goswami . Goswami provides motivation by teaching that PEG linkers are useful in biomedical applications because they can readily react with amine functionality of amino acids present in bioactive peptides or antibodies to form carbamate bonds under very mild reaction conditions ( see page 1117 ). Goswami provides further motivation by teaching PEGS are used as spacers or linkers because they are inexpensive, water soluble, biostable, and available in a wide range of molecular weight distributions ( see page 1116 ). The artisan would have reasonable expectation of success based on the cumulative disclosure of these prior art references at the time the instant application was filed. Conclusion No claim is allowed. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT MCKENZIE A DUNN whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-0490 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Monday-Tuesday 730 am -530pm, Wednesday-Friday 730 am-430 pm . 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, FILLIN "SPE Name?" \* MERGEFORMAT Gregory Emch can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT (571)272-8149 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MCKENZIE A DUNN/ Examiner, Art Unit 1678 /GREGORY S EMCH/ Supervisory Patent Examiner, Art Unit 1678
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Prosecution Timeline

May 15, 2023
Application Filed
Mar 26, 2026
Non-Final Rejection — §102, §103 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
58%
Grant Probability
99%
With Interview (+49.5%)
4y 1m
Median Time to Grant
Low
PTA Risk
Based on 67 resolved cases by this examiner. Grant probability derived from career allow rate.

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