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 .
Acknowledgements and Claim Status
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 6/30/2026 has been entered.
The Examiner acknowledges receipt of the updated application data sheet filed 6/12/2026.
Note(s): Claims 21-25, 27-33, and 35 are pending.
Priority
This application is a CON of 16/570,228 filed 9/13/2019 (now US Patent No. 11,679,168); 16/570,228 claims priority to PRO 62/842,173 filed 5/02/2019; and 16/570,228 claims benefit to PRO 62/731,469 filed 9/14/2018.
Note(s): The earliest effective filing date is 9/13/2019 as the pending invention is fully disclosed in Serial No. 16/570,228. Support for the pending invention was not found in either of the provisional (PRO) documents. If Applicant is in disagreement with the Examiner’s position, it is respectfully requested that page and line numbers for the respective document(s) be provided wherein support may be found.
Claim Interpretation
Independent claim 21 is directed to a compound comprising
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wherein the variables are defined therein.
Claim 34 is directed to specific compounds as set forth therein.
112 Second Paragraph Rejections
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 21-25, 27-33, and 35 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.
Clams 21-25 and 27-33: Independent claim 21 is ambiguous because it appears to contain active steps in a product claim. According to MPEP 2173.05(p), a single claim directed to both a product and method steps for using such product is indefinite. In particular, the claim is indefinite because while the claim initially sets forth a product comprising Formula I that contains a peptide (R2), the claim limitation is not directed to the product, but rather to actions involving the product which creates confusion as to when direct infringement occurs. Specifically, it is unclear whether infringement occurs when one has a product comprising the compound of Formula I or when the peptide is cleaved from the scaffold by caspase-3 or caspase-7 and/or when the peptide is cleave from the scaffold by granzyme-B, a beta galactosidase cleave moiety or methionine. Since claims 22-25, 27-33, and 35 depend on independent 21 for clarity, those claims are also vague and indefinite.
For clarity of independent claim 21, it is respectfully suggested that the variable R2 be written as follows:
“R2 is a peptide amino acid sequence selected from DEVD, IEFD, and IEPD”.
Claim 35: The claim is ambiguous because some of the bonds, ions, subscripts and atoms are difficult to read. Applicant is respectfully requested to submit readable copies of the structures.
Comments/Notes
It should be noted that no prior art is cited against the instant invention. However, Applicant must address and overcome the 112 paragraph rejections above. In particular, the claims are distinguished over the prior art of record because the prior art neither anticipates nor renders obvious a compound comprising
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as set forth in independent claims 21 and 35.
Due to the fact that readable structures are required for independent claim 35, it was determined that a written communication was the best mode of obtaining readable structures. Hence, a telephone call was not made to make the corrections by an Examiner’s amendment.
Conclusion
Claims 21-25, 27-33, and 35 are rejected.
Future Correspondences
Any inquiry concerning this communication or earlier communications from the examiner should be directed to D L Jones whose telephone number is (571)272-0617. The examiner can normally be reached M-F.
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, Michael G. Hartley can be reached at (571)272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D. L. Jones/
Primary Patent Examiner
Art Unit 1618
July 9, 2026
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