DETAILED ACTION
Notice of AIA Status
The instant application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the Leahy-Smith America Invents Act (AIA ).
If the status of the application as subject to AIA or pre-AIA is incorrect, any correction of the statutory basis (e.g., changing from AIA to pre-AIA ) for a rejection under 35 U.S.C. §§ 102 and/or 103 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.
Status of the Claims
The listing of claims filed 8 August 2023 has been examined. Claims 1–13, 15, and 23 are pending. Claims 15 and 23 are amended. Claims 14, 16–22, and 24–36 are canceled.
Benefit of Earlier Filing Date
The instant application was filed 8 August 2023; is a national stage application of PCT/US2022/015786, filed 9 February 2022, and claims the benefit of U.S. Prov. Pat. App. Serial No. 63/147,430, filed 9 February 2021. Acknowledgment is made of Applicant’s claim.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 18 October 2023 is acknowledged and has been considered.
Objections to the Specification
The abstract of the disclosure is objected to because it recites language referring to the purported merits (“novel”), legal phraseology (“comprising”), and phrases that can be implied (“The present application discloses”; “a compound of the disclosure”; “also disclosed”).
Appropriate correction is required.
For guidelines for the preparation of patent abstracts, see MPEP § 608.01(b) (Explaining: The abstract should be in narrative form and avoid legal phraseology (e.g., means, said), terms referring to purported merits of the invention (e.g., new, novel), and phrases that can be implied (e.g., The disclosure concerns, The disclosure defined by this invention,). The language should be clear and concise, and not repeat information given in the title. It should not compare the invention with the prior art. The abstract is generally limited to a single paragraph within the range of 50 to 150 words in length.).
Claim Rejections - 35 U.S.C. § 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.
Claim 23 is rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 23 recites “a disease or disorder that results from the function of a target protein.”
A claim is indefinite when it contains words or phrases whose meaning is unclear. For example, a claim may be indefinite when it recites a subjective term and the specification does not supply an objective standard for measuring the scope of the term. MPEP § 2173.05(b)(IV). A claim term that requires the exercise of subjective judgment without restriction may render the claim indefinite. In re Musgrave, 431 F.2d 882, 893 (CCPA 1970).
The instant application does not provide an objective standard for what is or is not “the function of a target protein.” The “function” is unknown. The term “target” is a subjective term and it is unknown which protein is targeted. Accordingly, the claim is indefinite because the public would not be able to determine the scope of the claim.
Examiner recommends amending the claim to replace “a disease or disorder that results from the function of a target protein” with one or more specific diseases or disorders.
Appropriate correction is required.
Claim Rejections - 35 U.S.C. § 102
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.
(i) Claims 1, 7, 8, and 10 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by JP3690831B2 (“Eisai”).
Eisai discloses the compound below (RN 182742-67-2), which anticipates Formulae I and III when R1 = Cl; R2 = H; R6 = H and R7 = alkyl substituted by heteroaryl. (Eisai, pp.12–13).
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The prior art compound is similar to the compound excluded by the claim proviso, but the amide carbonyl is bound to the phenyl in a position para to the sulfonamide moiety, whereas the corresponding the amide carbonyl in the excluded compound is bound in a position meta to the sulfonamide moiety.
(ii) Claims 1, 7, 8, 10, 15, and 23 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by JP4007743B2 (“Eisai2”) in view of a Machine Translation of Title and Abstract (https://worldwide.espacenet.com/patent/search/family/026390320/publication/JP4007743B2?q=JP4007743) (accessed 21 November 2025).
Eisai2 also discloses RN 182742-67-2.
Eisai2 is titled “Inhibitor of Neo Vascularization.” (Machine Translation).
Eisai2 states the disclosed compounds are used as medicine and administered 1–3 times daily at a dose of 10–6,000 mg. (Id.).
Regarding claim 15, a “pharmaceutical composition” is implied by the Title and Abstract.
Regarding claim 23, the method requires administering a compound of claim 1 to a subject. The phrase “induces degradation of the target protein” refers to an inherent result of the administering step, which any compound of claim 1 should be capable of if Formula I in claim 1 is considered a proper Markush grouping.
Conclusion
Claims 2–6, 9, and 11–13 are allowed.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jason Nolan at (571) 272-2480. The examiner can normally be reached Monday through Friday between 9:00–5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam Milligan, can be reached on 571-270-7674.
The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON M. NOLAN/Patent Examiner, Art Unit 1623
/ADAM C MILLIGAN/Supervisory Patent Examiner, Art Unit 1623