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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1, 3-4, 13-14, 33-34, 38, 40, 43, 46, 53, in the reply filed on 07/16/2026 is acknowledged. The traversal is on the ground(s) that there is no serious burden in searching Groups I and IV together. This is not found persuasive because burden is not a consideration in examining 371 national stage applications.
The requirement is still deemed proper and is therefore made FINAL.
Election of species of SEQ ID NO: 16, Formula I and N-acyl sulfonamide is acknowledged.
Claims 44, 46, 51, 53, 57, 69-71 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group or species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07/16/2026.
Claim Rejections - 35 USC § 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.
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 13 and 38 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.
Claims 13 and 38 contain the trademark/trade names PROTAC and LYTAC. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade names are used to identify/describe E3 ligase ligand and CI-M6PR ligand and, accordingly, the identification/descriptions are indefinite.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 3-4, 13-14, 33-34, 38, 40, 43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tamura et al (Nature Communications, 2018, 9: 1870, pages 1-12, cited from IDS) and in further view of Levy et al (US 2013/0123478, May 2013).
Tamura teach labeling of a protein using ligand directed N-acyl sulfonamide chemistry (see Abstract, Figure 1b). The ligand selectively binds specific protein (see first column on page 2). Such approach involves binding of the ligand conjugated through N-acyl sulfonamide (electrophilic leaving group) to a probe (“handle” of instant claims) to the target protein and transfer of the probe from the ligand to label the protein:
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Further Tamura exemplify the approach by using a ligand conjugated to N-acyl sulfonamide (NASA) residue through ethylene glycol and alkyl bonds, such residue further conjugated to biotin probe using alkyl bonds (see Figure 3a), the same structure as in instant Formula I but with ligand in place of aptamer:
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Tamura teach that such compositions can be used as pharmaceuticals (see Abstract), therefore inherently teaching pharmaceutical compositions of the compounds. Tamura teach that such compositions can be used as target protein inhibitors (see top paragraph on page 3).
Tamura do not teach aptamer of instant SEQ ID NO: 16 in the compositions.
Levy teach an aptamer specifically targeting protein tyrosine kinase 7, which is overexpressed in leukemia cells, of SEQ ID NO: 8, fully identical to instant SEQ ID NO: 16 (see paragraphs [0071, 0083]).
It would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use aptamer taught by Levy in place of ligand in the compositions taught by Tamura, arriving at instant invention. One of the ordinary skill in the art would be motivated to do so, because Tamura uses ligands selective for specific protein in the compositions and Levy teach an aptamer selective for specific cancer cell protein, therefore including such aptamer in place of the ligand of Tamura will create a composition capable of cancer cell targeting and labeling or inhibition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EKATERINA POLIAKOVA whose telephone number is (571)270-5257. The examiner can normally be reached Mon-Fri 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dunston can be reached at (571)272-2916. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EKATERINA POLIAKOVA-GEORGANTAS/Primary Examiner, Art Unit 1637
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