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 .
Application and Claims Status
In the amendments as filed on 4/20/2026 and 5/11/2026, applicants have amended claims 22 and 28-30; cancelled no claims; and added no new claims. Therefore, claims 22 and 25-42 are currently pending.
Examiner Comments
After speaking with Primary Examiner Moore, Examiner has reconsidered the 112(b) rejection in the Non-Final Office Action mailed 2/17/2026, around the terms “substituted”, “alkyl”, “aryl”, “heteroaryl”, “amino”, “acetamide”, and “amino sulfonyl” in claim 28 as indefinite, was improper (see Non-Final Office Action, filed 2/17/2026, page 6-7). When the specification provides an express definition, that definition governs. In this case, the term is clearly defined in the specification (page 15-16):
As used herein, the term "substituted" is contemplated to include all permissible
substituents of organic compounds. In a broad aspect, the permissible substituents include
acyclic and cyclic, branched and unbranched, carbocyclic and heterocyclic, and aromatic and
nonaromatic substituents of organic compounds. Illustrative substituents include, for
example, those described below. The permissible substituents can be one or more and the
same or different for appropriate organic compounds. For purposes of this disclosure, the
heteroatoms, such as nitrogen, can have hydrogen substituents and/or any permissible
substituents of organic compounds described herein which satisfy the valences of the
heteroatoms. This disclosure is not intended to be limited in any manner by the permissible
substituents of organic compounds. Also, the terms "substitution" or "substituted with"
include the implicit proviso that such substitution is in accordance with permitted valence of
the substituted atom and the substituent, and that the substitution results in a stable
compound, e.g., a compound that does not spontaneously undergo transformation such as by
rearrangement, cyclization, elimination, etc.
The specification unambiguously defines “substituted”, and the rejection conflates breadth with indefiniteness. The term “substituted” has an established meaning in the chemical arts and is expressly defined in the specification, which informs a PHOSITA with reasonable certainty of the claim’s scope. Claim 28, then, is not indefinite with respect to the terms ““substituted”, “alkyl”, “aryl”, “heteroaryl”, “amino”, “acetamide”, and “amino sulfonyl”.
Applicant had amended claim 28 in the claim set filed 4/20/2026 in response to Examiner’s improper 112(b) rejection but this only further created 112(d) issues. In light of the foregoing, Examiner recommends replacing instant claim 28 with the claim 28 filed on 10/24/2025, with the exception that:
in the limitation of R7, the claim is amended to recite “R7 is H…” with the appropriate font size;
the limitation of R8 is removed since no such variable appears among the diagrammed compounds (variable R8 first appears in claim 30).
Claim Objections
The objection to the specification (abstract and drawings) are withdrawn based on Applicant’s amendments.
Claim Rejections - 35 USC § 112(b)
The rejection of claims 22 and 28-30 under AIA 35 U.S.C. 112(b) are withdrawn based on Applicant’s amendments.
Claim Rejections - 35 USC § 112(a)
The rejection of claims 22 and 25-42 under AIA 35 U.S.C. 112(a) (scope of enablement) are withdrawn based on Applicant’s amendments.
The rejection of claims 22 and 25-27, and 34-42 under AIA 35 U.S.C. 112(a) (written description) is maintained based on Applicant’s amendments.
New Claim Rejections - 35 USC § 112(d)
(Necessitated by Claim Amendment)
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.
Claims 29, and 31-33 are 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 29 broadens the scope of claim 28. As an example, claim 29 defines the limitation of R1 as “H, alkyl, or aryl”, where, according to the specification (page 16), “throughout the specification "alkyl" is generally used to refer to both unsubstituted alkyl groups and substituted alkyl groups”. However, claim 28 specifies that, in the limitation of R1, “R1 is H, unsubstituted alkyl, unsubstituted aryl….” (emphasis added). Therefore, claim 29 is broader than the claim from which it depends. Similar issues persist with other limitations in claim 29. This 112(d) rejection could be overcome by consideration of Examiner suggestion (see Examiner’s Comments section of Office Action).
Claims 31-33 broaden the scope of claim 22. Claim 22 specifies that the CgoX activator comprises a phenyl-pyrazole scaffold. However, multiple structures in claims 31-33 could not be construed as comprising a “phenyl-pyrazole scaffold”. For instance, claims 31 and 33 include naphthyl-pyrazole scaffolds. Additionally, claim 32 includes a 1,2,4-triazole, a 1,3,4-oxadiazole, and the tricyclic structure, shown below:
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99
188
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.
Therefore, claims 31-33 broaden the scope from which they depend.
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.
New Claim Rejections - 35 USC § 112(a)
(Necessitated by Claim Amendment)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 22, 25-27, 34-42 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
This is a written description rejection.
The analysis for adequate written description considers the following:
(a) Actual reduction to practice;
(b) Disclosure of drawings or structural chemical formulas;
(c) Sufficient relevant identifying characteristics, such as (i) complete/partial structure, (ii) physical and/or chemical properties, and (iii) functional characteristics when coupled with known or disclosed correlation with structure; and
(d) Representative number of samples.
A lack of adequate written description issue arises if the knowledge and level of skill in the art would not permit one skilled in the art to immediately envisage the product claimed from the disclosed process. See, e.g., Fujikawa v. Wattanasin, 93 F.3d 1559, 1571,39 USPQ2d 1895, 1905 (Fed. Cir. 1996) (a "laundry list" disclosure of every possible moiety does not constitute a written description of every species in a genus because it would not "reasonably lead" those skilled in the art to any particular species); In re Ruschig, 379 F.2d 990, 995, 154 USPQ 118, 123 (CCPA 1967).
An applicant may also show that an invention is complete by disclosure of sufficiently detailed, relevant identifying characteristics which provide evidence that applicant was in possession of the claimed invention, i.e., complete or partial structure, other physical and/or chemical properties, functional characteristics when coupled with a known or disclosed correlation between function and structure, or some combination of such characteristics.
In particular, the specification as original filed fails to provide sufficient written description on the bases of any of the agents demonstrating wherein possession of use of the broad term: phenyl-pyrazole scaffold. The mere fact that Applicant may have discovered one specific type of a phenyl-pyrazole scaffold that can be used in combination with a photosensitizer conjugated to a targeting moiety, is not sufficient to claim the entire genus. The claims lack written description because the genus of “phenyl-pyrazole scaffold” of compounds has substantial variance while the specification lacks sufficient variety of species to reflect the variance within the genus, and because of the lack of common structural attributes of the claimed genus, combined with a correlation between structure and function. The specification does not tell one of ordinary skill what variation is permitted by “phenyl-pyrazole scaffold” and the different types of “phenyl-pyrazole scaffolds” would not be expected to act similarly.
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406.
A "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. The disclosure of only one species encompassed within a genus adequately describes a claim directed to that genus only if the disclosure "indicates that the patentee has invented species sufficient to constitute the gen[us]."
Thus, claims 22, 25-27, 34-42 are rejected is rejected under 35 USC 112(a), (Written Description).
This rejection could be overcome by incorporation of the limitations of claim 28 into claim 22.
Conclusion
Claims 28 and 30 are allowed
Claims 22, 25-27, 29, 31-42 are rejected.
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 LUKE ALAN BORALSKY whose telephone number is (571)272-9746. The examiner can normally be reached Monday - Friday 7:30 am - 5:00 am.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey H Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/L.A.B./Examiner, Art Unit 1624
/SUSANNA MOORE/Primary Examiner, Art Unit 1624
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