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 .
Status of the Claims
Claims 1-14 are pending. Claims 1-12 are rejected. Claims 13-14 are objected to.
Information Disclosure Statement
The Information Disclosure Statements (IDS’s) submitted on 5/5/2023 and 8/15/2024 were considered by the Examiner.
Election/Restriction
Examiner with withdrawing election of species request mailed on 10/10/2025. Claims 1-14 have been examined in full.
Claim Objections
Claim 2 is objected to because of the following informalities: Replace “cancers, cardiovascular diseases, liver diseases, and neurodegenerative diseases” with “ a cancer, a cardiovascular disease, a liver disease, and a neurodegenerative disease”.
Claim 5 is objected to because of the following informalities: “castration-resistant” does not need to be in quotation marks.
Appropriate correction is required.
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 1-12 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 1 recites “or suspected of having a condition….”. The instant specification does not clarify what “suspected of having a condition” means. It is unclear of what parameters are met for an individual to be suspected of having a condition. Additionally, instant claim 1 also does not provide guidelines for “an individual in need of treatment”; thus, the claim is indefinite because the metes and bounds cannot be ascertained. Examiner recommends incorporating the limitations of instant claim 13 into independent claim 1 to provide clarity to the individual in need of treatment.
Claims 2-12 are rejected for depending from an indefinite claim and failing to remedy its deficiencies.
Allowable Subject Matter
Claims 13 and 14 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.
The closest prior art is PubChem CID 9113063 (PubChem entry created 7/30/2006 and listed on a 5/5/2023 Applicant IDS). PubChem CID 9113063 is drawn to the following compound:
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. However, PubChem CID 9113063 does not have the utility, for the method as instantly claimed. Therefore, the prior art does not provide motivation for, nor render obvious, the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEGHAN C HEASLEY whose telephone number is (571)270-0785. The examiner can normally be reached Monday - Friday 8:30-4:30 PM.
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/MEGHAN C HEASLEY/Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626
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