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 .
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 final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.
Claims 1-3, 5, 11-13, 15, 32-40 and 45-64 are pending in the application.
This action is in response to applicants' amendment dated October 28, 2025. Claims 1, 51-56, 58-62 and 64 have been amended.
Response to Amendment
Applicant's arguments filed October 28, 2025 have been fully considered with the following effect:
With regards to the 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph rejection, labeled paragraph 4) in the last office action, the applicant’s amendments and remarks have been fully considered but they are not persuasive. The applicants stated that Claims 1 and 56 have each been amended to specify that the MTAP-null cancer is ovarian cancer, lung cancer, esophageal cancer, glioblastoma, melanoma, bile duct cancer, pancreatic cancer, bladder cancer, gallbladder cancer, kidney cancer, “gastrointestinal cancer”, mesothelioma, neuroendocrine cancer or salivary gland cancer. However, independent claim 39 has not been amended to specify the MTAP-null cancer as was done in independent claims 1 and 56, thus the rejection is herein maintained with respect to claim 39 and claims dependent thereof.
Claims 39, 40 and 45-50 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for ovarian cancer, lung cancer, esophageal cancer, glioblastoma melanoma, bile duct cancer, pancreatic cancer, bladder cancer, gallbladder cancer, kidney cancer, mesothelioma, neuroendocrine cancer, or salivary gland cancer, does not reasonably provide enablement for MTAP-null cancer. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims, for reasons of record and stated above.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejections, labeled paragraph 5d) and f) in the last office action, which are hereby withdrawn. However, with regards to the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejections, labeled paragraph 5a), b), c) and e) of the last office action, the applicant’s amendments and remarks have been fully considered but they are not persuasive.
a) The applicants’ failed to comment on the lack of antecedent basis of the species in claim 45 from which claim 46 depends.
Claim 46 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 applicant regards as the invention, for reasons of record and stated above.
b) The applicants’ failed to comment on the lack of antecedent basis of the species in claim 45 from which claim 47 depends.
Claim 47 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 applicant regards as the invention, for reasons of record and stated above.
c) The applicants’ failed to comment on the lack of antecedent basis of the species in claim 45 from which claim 48 depends.
Claim 48 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 applicant regards as the invention, for reasons of record and stated above.
e) The applicants’ failed to comment on the lack of antecedent basis of the species in claim 45 from which claim 50 depends.
Claim 50 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 applicant regards as the invention, for reasons of record and stated above.
In view of the amendment dated October 28, 2025, the following new grounds of rejection apply:
Claim Rejections - 35 USC § 112
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 1-3, 5, 11-13, 15, 32-38, 56 and 57 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. The amendment to claims 1 and 56 where the list of MTAP-null cancers included “gastrointestinal cancer” is not described in the specification with respect to the compounds of Formula I.
Applicant is required to cancel the new matter in the reply to this Office action.
Claim Objections
Claims 51-55 and 58-62 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Allowable Subject Matter
Claims 63 and 64 are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENDA L COLEMAN whose telephone number is (571)272-0665. The examiner can normally be reached Mon-Fri 10-6 (flex).
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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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/BRENDA L COLEMAN/Primary Examiner, Art Unit 1624
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