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.
Current Status of 18/269,916
This Office Action is responsive to the amended claims of 4 June 2026.
Claims 1-20 have been examined on the merits. Claims 1-2, 6, and 11 are original. Claims 3-5, 7-9, 13, 16-17, and 19 are previously presented. Claims 10, 12, 14-15, and 18 are currently amended. Claim 20 is new.
Priority
The effective filing date is 28 December 2020.
Response to Arguments
The Examiner acknowledges receipt of and has reviewed Applicants’ claim amendments and Reply of 4 June 2026.
Applicants revised the claims striking “such as” thereby rendering moot the indefiniteness rejection of record (made within paragraph 15 of the previous Office Action).
The Applicants struck “radiolabeled” from claim 14 thereby rendering moot the indefiniteness rejection of paragraph 16 (previous Office Action).
Applicants revised claim 15 accordingly thereby rendering moot the indefiniteness rejection of paragraph 17 (previous Office Action).
The Applicants struck “radiolabeled” from claim 18 thereby rendering moot the indefiniteness rejection of paragraph 18 (previous Office Action).
Response to Amendments
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 12-13 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 12 recites the limitation "the adduct" in the line:
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. There is insufficient antecedent basis for the limitation “the adduct” in the claim.
The limitation “the adduct” (both occurrences) in the above-mentioned line of claim 12 renders the metes and bounds of claim 12 undefined (hence rendering claim 12 indefinite under 35 USC 112(b)): the artisan does not know where antecedent basis can be found for “the adduct” since “an adduct” is not first introduced earlier in claims 1 or 12.
One way to render moot this rejection: consider revising the previous line to: -- of the TCO-derivatized targeting moiety to produce an adduct; and radiolabeling the adduct with at least one 18F to obtain an 18F radiolabeled adduct; -- .
Claim 13 is similarly rejected as indefinite under 35 USC 112(b) since it refers back to claim 12 but does not remedy the rationale underpinning the basis for rejecting claim 12.
This rejection can properly be made FINAL due to Applicants’ amendments to claim 12. Resolution of this issue should place the application in condition for allowance.
Conclusion
Claims 12-13 are not presently allowable as written.
Claims 1-11 and 14-20 are presently allowable as written for the rationale stated within paragraphs 20-24 of the Non-Final Office Action mailed 3 March 2026.
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.
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.
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.
/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625
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