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
Response to Amendment
The amendment filed 6/17/2026 has been entered. Newly amended Claims 1-2, 4-6, and 8-22 are pending in the application. Applicant’s amendments to the Claims have overcome every objection and rejection previously set forth in the Non-Final Office Action mailed 3/23/2026.
Claim 1 is allowable. Claims 2, 5-6, 8, 10, 12-13, 15-17, and 22, previously withdrawn from consideration as a result of an election of species requirement, require all the limitations of an allowable claim. Claim 2, 5-6, 8, 10, 12-13, 15-17, and 22 are hereby rejoined and fully examined for patentability under 37 CFR 1.104. In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied and constitute the complete set presently being applied to the instant application.
Response to Applicant’s Arguments
Regarding applicant’s arguments over Griffiths, TCEP is not a cyclic activating reagent at all and the rejection is withdrawn for this reason.
Regarding applicant’s arguments over Wang, Wang describes an addition reaction of thiol with the cyclic iodonium salt in the presence of a Pd catalyst. Applicant’s amended Claim 1 requires a substitution reaction. Applicant argues that a SNAr labeling step is required, however, this is not true of Claim 1 as amended. Applicant further describes the Pd requirement for activation of the radical precursor, and no such step is precluded from the claimed methods. Applicant argues the methods of Wang cannot be applied to long peptides and proteins but does not mention oligopeptides which are shorter. One of skill in the art would expect the methods of Wang to result in successful oligopeptide synthesis at least because Wang testifies to the mild conditions and lack of reactivity with unprotected functional groups (Page 2157):
Protecting groups commonly employed in peptide synthesis, such as Boc (19a), trityl (19 f), tert-butyl (19g), Pbf (19i), and Fmoc (19j) groups were allowed, a testament to the mildness of our conditions. Substrates with unprotected hydroxyl (19d,e), or amides (19h) underwent this process smoothly. Indole (19b) and phenol (19c) groups that are prone to oxidation were tolerated by our conditions and could be incorporated without protection. The methyl sulfide in 19l stayed intact throughout the reaction. Lastly, a tripeptide derivative (19m) was also prepared efficiently, which bodes well for the use of our method in even more complex settings.
Applicant’s arguments are persuasive insofar as Wang requires an activating agent that results in a reaction akin to an addition reaction whereas the claimed methods require a substitution. The iodide does not act as a leaving group but remains bonded to the biphenyl activating group. On this basis, the rejection over Wang is withdrawn. Unclaimed elements regarding efficiency, specific reaction mechanisms, the presence of catalysts, and particular reactants like “silyl enol ethers” which are not specifically included or precluded from Claim 1 are not of consideration when determining the scope and arguments with respect to Claim 1.
Claim Objections
Claims 2, 6, 10, 13, 15, 17, and 22 are objected to because of the following informalities:
Claims 2 and 22 recite “the polypeptide and protein” which should be amended to “oligopeptide, polypeptide, or protein” to comport with the language of the rest of the claims.
Claims 6, 10, 15, and 17 recite “one of compounds” instead of “one of the compounds”.
Claim 13 should recite “alkyl or aryl” instead of “alkyl and aryl”.
Appropriate correction is required.
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.
Claims 2, 5, 10-12, and 21-22 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 regards as the invention.
Claim 2 recites “halogenoid” without further limitation. Halogenoid is not a recognized term in the art and applicant’s specification does not offer a limiting definition of the term. Page 6 describes potential embodiments of halogenoids, but the description uses non-limiting language like “as an embodiment” and “includes”. Therefore, the metes and bounds of the term and Claim 2 are indefinite.
Claim 5 describes A as a carbon atom or a nitrogen atom. However, carbon is tetravalent and only three bonds are depicted in the structure of Claim 5. It is recommended applicant amend “a carbon atom” to instead read “a -CH=” or some term that clearly reflects the tetravalent nature of a carbon atom.
Claim 10 defines Z as silyl or acyl wherein the silyl or silyl is “at least one of” followed by several distinct functional groups. It is unclear how a single Z variable can be both two distinct functional groups at the same time instead of just one of said groups. Claim 12 is rejected by virtue of dependency.
Claim 10 fails to define R1 and R2 in the last structure. The only requirement is that at least one of them are is an electron-withdrawing group, which does not clearly establish the metes and bounds when one R group is not said electron-withdrawing group. Claim 12 is rejected by virtue of dependency.
Claim 11: the macromolecular groups include several complex structures not provided for in Claim 9, upon which Claim 11 depends. Claim 9 is restricted to aryl or aliphatic alkynes or aryl, alkyl, alkenyl, or alkynyl olefins, wherein aryl is substituted or the aliphatic groups may have carbons substituted for other atoms (Spec: Page 4). However, such a definition does not encompass embodied elements of macromolecular groups like drugs which are taught on Page 15 of the Specification to include mertansine derivative DM1:
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which is neither aryl nor aliphatic by virtue of the unsaturated rings present. It is therefore unclear if such drugs or other macromolecular groups or even functional groups as claimed are intended to fall within the scope of the claim or be excluded entirely.
Claim 12 recites “but not limited to” no less than twice. The claim language is indefinite because it is unclear whether the list that follows constitutes a limitation or is merely exemplary. This is true in both instances.
Claim 21 recites “the photocatalyst”. No photocatalyst is recited in Claim 21 or Claim 1 upon which Claim 21 depends. Therefore, the phrase and article “the” lacks antecedent basis.
Claim 22 is rejected because, although purporting to be a method claim, recites no clear method step as required. Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. For example, a claim which read: "[a] process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon" was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). See MPEP 2173.05(q).
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 11 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 11: the macromolecular groups include several complex structures not provided for in Claim 9, upon which Claim 11 depends. Claim 9 is restricted to aryl or aliphatic alkynes or aryl, alkyl, alkenyl, or alkynyl olefins, wherein aryl is substituted or the aliphatic groups may have carbons substituted for other atoms (Spec: Page 4). However, such a definition does not encompass embodied elements of macromolecular groups like drugs which are taught on Page 15 of the Specification to include mertansine derivative DM1:
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which is neither aryl nor aliphatic by virtue of the unsaturated rings present. It appears that such drugs and other macromolecular groups and even functional groups as claimed improperly broaden the scope of Claim 9, which does not provide for such elements on the olefin or alkyne.
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.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Richard G. Peckham whose telephone number is (703)756-4621. The examiner can normally be reached 7:30am - 4:30pm.
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/RICHARD GRANT PECKHAM/Examiner, Art Unit 1627
/Kortney L. Klinkel/Supervisory Patent Examiner, Art Unit 1627
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