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 .
Detailed Action
Filing Receipt
The filing receipt mailed 01/04/2024 states the that instant application claims benefit of provisional applications 63/373,018 filed 08/19/2022, 63/380,914 filed 04/03/2022, 63/493,926 filed 04/03/2023, and 63/522,640 filed 06/22/2023.
The provisional applications support the instant claims. Therefore, the effective filing date is 08/19/2022.
Information Disclosure Statement
The information disclosure statements received 06/26/2025, 09/16/2025, and 02/27/2026 have been considered.
Applicant’s assertion of IDS size fee is acknowledged.
Species Election
Applications election of the following groups and species is been acknowledged. Applicant has elected Group II, claims 2-18. Applicant has further elected the following compounds and moieties.
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At examiner’s discretion, search and examination has been expanded to include the following moieties:
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and
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Where R1 = C, N, R2 = N, O, and R3 = C, S, P.
Claims 9-14 are hereby withdrawn from consideration being drawn to non-elected species.
Objections
Specification
The specification is objected to because the following figures are illegible:
Figure I-c-5 on p. 103.
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Similar Issues are in figure I-c-3 (p. 102) and I-c-10 (p. 104).
Examiner requests applicant review the specification as the specification has not been completely reviewed for all minor informalities.
Trademark
The use trade names and trademarks used in commerce, has been noted in this application.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Rejections
Claim Rejections - 35 USC § 112(a)
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 2-8, 15, and 17-18 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.
Claim 2 claims a compound of structure I-b’, shown below.
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Claim 3 claims a compound wherein the DIM ring is a any of a cereblon E3 ubiquitin ligase binding moiety, VHL E3 ubiquitin binding moiety, IAP E3 ubiquitin ligase binding moiety, and MDM2 E3 binding moiety.
Claims 4-7 are drawn to compounds wherein DIM E3 ubiquitin ligase binding moiety and that the compound has a structure of I-nn-1, shown below. Claims 5-7 specify compounds of structures shown below.
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Claim 6 is drawn to compounds of formulas I-b-1 through I-b-9. See claim for structures.
Claims 4-7 all contain the following structural motifs:
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,
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.
The instant specification does not disclose any compounds having a structural moiety shown immediately above. Most, if not all, compounds disclosed within the specification have a moiety shown below.
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Further, claim 5 specifies the following:
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.
Of these ring A systems, the instant specification, in Table (starting p. 495), discloses the following:
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,
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,
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[Some ring A structures have been omitted for brevity].
Therefore, only a small amount of the ring A systems claimed have been disclosed in the working examples.
Similarly, in claim 7, applicant claims X4, of Ring M (included below), is a trivalent moieties of the following structures:
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.
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No compounds within the specification disclose trivalent Si, P=O and no compounds disclosed have an R7 as claimed. The same claim also states “each of X1, X6, and X7 is independently a bivalent moiety selected from a covalent bond, -CH2-, -CHCF3, -SO2-, -S(O)-, P(O)R-…”. Full claim language omitted for brevity.
Claim 8 also claims structures which applicant has not shown full possession, specifically I-b-10 below.
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Regarding claim 15 and the limitation L within the claims, claims 2 and 15 state:
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and
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.
The instant specification is does not disclose any compounds wherein L is SiR2, Si(OH)R-, -P(O)OR-, etc. Additionally, no compounds disclosed contain an alkyl chain of length anywhere near 50 carbons.
Considering the above, the full scope of the claims is contemplative at best. In view of the disclosed compounds in table 1 (p. 495-725), applicant has not shown possession of the claims to the full scope of the claims. Considering the significant differences between what has been disclosed and what is contemplated, one of ordinary skill in the art would not reasonably infer that applicant has full possession of the claims as they are currently written.
Dependent claims 17 and 18 are also rejected.
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.
Reference to Table or Figure in Claims
Claim 16 is 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 16 states “The compound of claim 3, wherein said compound is selected from any one of the compounds depicted in Table 1 or a pharmaceutically acceptable salt thereof.”
The MPEP section 2173.05(s) states:
Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table "is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience." Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993) (citations omitted).
Relative Term
Regarding claim 2, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 2 states “DIM is a degradation inducing moiety, such as a ligase binding moiety…”.
Claim Rejections - 35 USC § 112(d)
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.
Claim 16 is 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 16 states “The compound of claim 3 wherein said compound is selected from any one of the compounds depicted in Table 1, or a pharmaceutically acceptable salt thereof.”
Table 1 includes compounds wherein rings W and X are fused together. Example shown below.
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Independent claim 2 requires an Ly between the two rings. At minimum, the W ring system is required to be separated from the X ring system and the two cannot be fused. Therefore, claim 16 is broader than it’s parent claim.
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.
Pertinent Art Not Cited
Wang (Nature Chemical Biology, 17, 567-575, 2021, of the record) discloses similar compounds to the elected species. Wang in Fig. 1d discloses the following:
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.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUISALBERTO GONZALEZ whose telephone number is (571)272-1154. The examiner can normally be reached M-F 8:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey 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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/LUISALBERTO GONZALEZ/Examiner, Art Unit 1624
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