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 .
Claims 1, 6-11, 15, and 17-21 are pending in the instant application. Claims 1, 6, 15, and 17-21 are rejected. Claims 7-11 are objected.
Information Disclosure Statements
The information disclosure statements filed on January 17, 2025, August 8, 2025 and September 16, 2025 have been considered and a signed copies of form 1449 are enclosed herewith.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1, 6-11, 15, and 17-21, and the compound I-5 in the response filed on August 8, 2025 is acknowledged. Upon further search and consideration, the election of species requirement has been withdrawn (i.e., the full scope of the subject matter of claims 1, 6-11, 15, and 17-21 has been searched and examined in its entirety). The restriction requirement (between the inventions) is still deemed proper and is hereby made final.
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 1, 6, 15, and 17-21 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.
Specifically, claim 1 is drawn to a compound whose structural make-up is not clear. Organic molecules can be explicitly recited by art recognized chemical names or molecular formulae. Using functional language (i.e., defining DIM as “a ligase binding moiety (LBM)” or a “lysine mimetic”) renders the scope of the claim vague and indefinite. Also, it is unclear to the examiner how a hydrogen atom can be considered a “degradation inducing moiety” and this renders the claims indefinite.
Note that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Also see, In re Zletz, 13 USPQ2d 1320, 1322. “An essential purpose of patent examination is to fashion claims that are precise, clear, correct and unambiguous.”
The rejection can be overcome, for example, by amending claim 1 to include the formulae for DIM disclosed in Table A (see pages 186-190 of the specification).
Specifically, claim 19 refers to a table in the specification (i.e., Table 1). Claims must, under modern claim practice, stand alone to define an invention, and incorporation into claims by express reference to the specification is not permitted. Ex parte Fressola, 27 USPQ 2d 1608 (1993). This rejection can be overcome by amending claim 19 to include the structures found in the table referenced.
Claim Objections
Claims 7-11 are objected to for depending on a previously rejected claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTIN ANN VAJDA whose telephone number is (571)270-5232. The examiner can normally be reached Mon-Fri 6:00-4:00.
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/KRISTIN A VAJDA/Primary Examiner, Art Unit 1622