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 Claims
Claims 1-19 are pending in the instant application. Claims 17-18 are amended via the amendment filed July 21st, 2026.
Priority
This is a 35 U.S.C. 371 National Stage filing of International Application No. PCT/US2021/064385 filed December 20th, 2021, which claims priority to provisional Application No. 63128541, filed December 21st, 2020.
Information Disclosure Statement
The Information Disclosure Statements (IDS) filed November 14th, 2023 have been considered by the Examiner.
Restriction/Election
Applicant’s election without traverse of “the compound of instant claim 17,
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” to prosecute the invention of Group I, drawn to a heterobifunctional linker comprising a peptide-reactive activated functional group and photocaged reactive group in the reply filed on July 21st, 2026 is acknowledged.
Applicant states claims 1-7, 15 and 17 read on the elected species.
As per MPEP 803.02, the examiner will determine whether the entire scope of the claims is patentable. Applicants' elected species of the compound of instant claim 17 appears allowable. Therefore, according to MPEP 803.02: should the elected species be found allowable, the examination of the Markush-type claim will be extended. If the examination is extended and a non-elected species found not allowable, the Markush-type claim shall be rejected and claims to the nonelected invention held withdrawn from further consideration. The examination of the Markush-type claims has been extended to include the scope of claim 15, as well as structural species:
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Since a non-elected species has been found not allowable, examination has been limited to claims directed to the elected species, which are presently claims 1-7, 15 and 17. Claims 1-7, 15 and 17 have been examined to the extent that they are readable on the elected embodiment and the above identified nonelected species. Since the nonelected species has been found not allowable, subject matter not embraced by the elected embodiment or the above identified nonelected species is therefore withdrawn from further consideration.
Claims 8-14, 16 and 18-19 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention or species. Election was made without traverse in reply filed July 21st, 2026.
Claim Rejections - 35 USC § 112(b)
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 2 and 15 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.
Regarding claims 2 and 5, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 2 and 5 recite the broad recitations “N-hydroxysuccinimidide (NHS) activated amine-reactive functional group” and “N-hydroxysulfosuccinimido (NHSS) activated amine-reactive functional group”, and the claims also recite “e.g. an NHS ester” and “e.g., a NHSS ester” which are the narrower statements of the range/limitation. The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 15, the phrase "or the like" renders the claim indefinite because the claim includes elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim unascertainable. See MPEP § 2173.05(d).
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) 1-7 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Hoang et al (US 2007/0298516 A1, published December 27th, 2007, as cited on the IDS).
Hoang teaches the following compound (page 7, paragraph [0102]):
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Regarding claim 1, this compound is embraced by the instant heterobifunctional linker, wherein the compound above comprises a peptide-reactive activated functional group, an activated amine-reactive bifunctional group (NHS ester) and a photocaged reactive group comprising a photocaged hydroxylamine wherein the peptide-reactive activated functional group does not comprise an azide.
Regarding claim 2, the compound above comprises an NHS ester.
Regarding claim 3, Hoang teaches that the compound above is adapted to be uncaged to provide the reactive group, following exposure to electromagnetic radiation having a predetermined wavelength to provide a reactive hydroxylamine (paragraph [0074]).
Regarding claim 4, the compound above comprises an optionally substituted nitrobenzyl moiety.
Regarding claim 5, this compound is embraced by the formula wherein R1 is a nitrobenzyl moiety, R2 is hydrogen and R3 is an NHS ester.
Regarding claim 6, R1 is of the instantly claimed structure, wherein R4-R7 are hydrogen, R8 is methyl and R9 is hydrogen.
Regarding claim 7, R3 is of the instantly claimed structure.
It is also noted, in interest of compact prosecution, that while instant claim 8 is not under examination, as the claim is withdrawn from the restriction requirement, the compound above is the compound of instant claim 8.
Allowable Subject Matter
Claim 17 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.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anna Grace Kuckla whose telephone number is (703)756-5610. The examiner can normally be reached Monday-Friday 7:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton A Brooks can be reached at (571)270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.G.K./Examiner, Art Unit 1626
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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