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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/29/2025 has been entered.
Status of Claims
Claims 1-27 are pending. Claims 5-6 and 14-27 are drawn to nonelected species and groups of invention. Claims 1-4 and 7-13 are under examination.
Withdrawn Rejections
In light of amendments to claim 12, the objection is hereby withdrawn.
In light of the amendments, the 35 U.S.C. 102 rejection over Yam et al. (US8057989B2) is hereby withdrawn.
In light of the amendments, the 35 U.S.C. 112 rejections are hereby withdrawn.
Claim Rejections - 35 USC § 112
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 12 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. This is a new rejection.
Claim 12 recites the claimed structure of claim 1, but claim 1 specifically recited that L1 and L3 are 1-ethyl-1H-benzo[d]imidazole and L2 is pyridine (unsubstituted). However, claimed structures in claim 12 do not recite the 1-ethyl-1H-benzo[d]imidazole structure, which has an ethyl group or unsubstituted pyridine (L2). Therefore, claim 12 fails to further limit the scope of the claimed invention by broaden the structure of claim 12 to contain other structures.
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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4, 7-11 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kwun-Wa et al. (“Supramolecular Assembly of Isocyanorhodium(I) Complexes: An Interplay of Rhodium(I)···Rhodium(I) Interactions, Hydrophobic− Hydrophobic Interactions, and Host−Guest Chemistry”, J. Am. Chem. Soc. 2015, vol. 137, pgs. 6920-6931, published 05/18/2015, of record 892 dated 11/05/2024).
Claims 1 and 13, Kwun-Wa teaches a series of tetrakis (isocyano)rhodium (I) complexes with different chain lengths of alkyl substituents has been found to exhibit a strong tendency toward solution state aggregation upon altering the concentration, temperature and solvent composition and the data have been analyzed using the aggregation model to elucidate the growth mechanism (see abstract). Kwun-Wa teaches d8 square=planar metal complexes have been well-known to exhibit noncovalent metal-metal interactions arising from the close proximity of the metal centers (see pg. 6920, left col. para. 1). Fig. 1 reproduced below teaches the claimed compound wherein the ligands are not
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The structures of Fig. 1 would read on the alternative recitation of “when” the one or more ligands are phenyl isocyanide groups, the substituents of the phenyl group are selected from H group, heteroalkyl group, and heteroaryl group. Fig. 1 shows 8 different combinations of R1 and R2 groups wherein R1 is either heteroalkyl group (e.g., OCH3) or crown; and R2 is either heteroalkyl group (e.g., OCH3), H, or crown.
Meanwhile, the recitations of detecting and/or imaging an analyte is intended use, as the claim is only directed to a compound. Because the prior art’s compound teaches all the structural limitations of the claimed product compound, the prior art’s compound is capable of performing the intended use.
Additionally, the recitations of the metal complex is capable of binding to the analyte and undergo aggregation and supramolecular self-assembly of the metal complex through non-covalent metal-metal interactions are functional limitations. Again, because the prior art’s compound teaches all the structural limitations of the claimed product compound, the prior art’s compound is capable of performing the functional limitations when in the presence of the analyte.
With respect to claims 2-4 and 8, Fig. 1 reproduced below teaches the claimed compound wherein n is zero or a positive integer, m is zero, and a planar or partially planar structure.
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With respect to claim 7, as stated above, because the structure of the metal complex is the same as claim 1 and the prior art’s compound teaches all the structural limitations of the claimed product compound, the prior art’s compound is capable of performing the functional limitations when binding to the analyte via noncovalent interactions, wherein the noncovalent interactions comprise electrostatic interactions, hydrogen bonding interactions, hydrophobic interactions, or combinations thereof.
With respect to claims 9-11, as stated above, because the structure of the metal complex is the same as claim 1 and the prior art’s compound teaches all the structural limitations of the claimed product compound, the prior art’s compound is capable of performing the functional limitations.
Claims 1-4, 7-11 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chan et al. (“Parallel folding topology-selective label-free detection and monitoring of conformational and topological changes of different G-quadruplex DNAs by emission spectral changes via FRET of mPPE-Ala–Pt(II) complex ensemble”, Chem. Sci. 2016, vol. 7, pgs. 2842-2855, published 01/26/2016, of record 892 dated 11/05/2024).
With respect to claims 1-4, 8 and 13, Chan teaches square-planar d8 platinum (II) polypyridine complexes have been reported to display a strong tendency towards the formation of highly-ordered structures in the solid state via metal-metal and aromatic ligand pi-pi stacking interactions and to exhibit intriguing spectroscopic properties (see 2843, left col., para. 1). Scheme 1 shows the chemical structure of the water-soluble platinum (II) bzimpy complex 1. The structure of platinum (II) bzimpy complex 1 has been reproduced below which the ligands do not contain
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The structure reads on L2 and L3 are 1-ethyl-1H-benzo[d]imidazole, L2 is pyridine, and L4 is ethynylbenzene and the substituents of the benzene ring of the ethynylbenzene is a heteroalkyl group.
Meanwhile, the recitations of detecting and/or imaging an analyte is intended use as the claim is only directed to a compound. Because the prior art’s compound teaches all the structural limitations of the claimed product compound, the prior art’s compound is capable of performing the intended use.
Additionally, the recitations of the metal complex is capable of binding to the analyte and undergo aggregation and supramolecular self-assembly of the metal complex through non-covalent metal-metal interactions are functional limitations. Again, because the prior art’s compound teaches all the structural limitations of the claimed product compound, the prior art’s compound is capable of performing the functional limitations when in the presence of the analyte.
With respect to claim 7, as stated above, because the structure of the metal complex is the same as claim 1 and the prior art’s compound teaches all the structural limitations of the claimed product compound, the prior art’s compound is capable of performing the functional limitations when binding to the analyte via noncovalent interactions, wherein the noncovalent interactions comprise electrostatic interactions, hydrogen bonding interactions, hydrophobic interactions, or combinations thereof.
With respect to claims 9-11, as stated above, because the structure of the metal complex is the same as claim 1 and the prior art’s compound teaches all the structural limitations of the claimed product compound, the prior art’s compound is capable of performing the functional limitations.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-4 and 7-13 are rejected under 35 U.S.C. 103 as being unpatentable over Chan et al. (“Parallel folding topology-selective label-free detection and monitoring of conformational and topological changes of different G-quadruplex DNAs by emission spectral changes via FRET of mPPE-Ala–Pt(II) complex ensemble”, Chem. Sci. 2016, vol. 7, pgs. 2842-2855, published 01/26/2016, of record) in view of Mathew et al. (“Photophysics in solution and Langmuir–Blodgett film and vapochromic behavior of the Pt(II) 2,6-bis(N-alkylbenzimidazol-2’-yl)pyridine complexes with different alkyl chains and counter anions”, The Royal Society of Chemistry 2010, Dalton Trans., 2010, vol. 39, pgs. 5885-5898, published 05/27/2010, of record 892 dated 11/05/2024) and Vusurovic et al. (“Interactions of Protonated Guanidine and Guanidine Derivatives with Multiply Deprotonated RNA Probed by Electrospray Ionization and Collisionally Activated Dissociation”, ChemistryOpen 2017, vol. 6, pgs. 739-750, published 10/24/2017, of record 892 dated 11/05/2024).
This rejection is based on the elected species in claim 12.
Chan teaches square-planar d8 platinum (II) polypyridine complexes have been reported to display a strong tendency towards the formation of highly-ordered structures in the solid state via metal-metal and aromatic ligand pi-pi stacking interactions and to exhibit intriguing spectroscopic properties (see 2843, left col., para. 1). Scheme 1 show the chemical structure of the water-soluble platinum (II) bzimpy complex 1. Chan further teaches the ability of the ensemble to detect these conformation and topological transitions of G-quadruplex DNAs…which are due to the extra stabilization gained from Pt---Pt and pi-pi interactions in addition to the electrostatic and hydrophobic interactions found in the polymer-metal complex aggregates (see abstract).The structure of platinum (II) bzimpy complex 1 has been reproduced below, which would read on the claimed compound.
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Meanwhile, the recitations of detecting and/or imaging an analyte is intended use as the claim is only directed to a compound. Because the prior art’s compound teaches all the structural limitations of the claimed product compound, the prior art’s compound is capable of performing the intended use.
Additionally, the recitations of the metal complex is capable of binding to the analyte and undergo aggregation and supramolecular self-assembly of the metal complex through non-covalent metal-metal interactions are functional limitations. Again, because the prior art’s compound teaches all the structural limitations of the claimed product compound, the prior art’s compound is capable of performing the functional limitations when in the presence of the analyte.
However, Chan does not explicitly teach the elected species in claim 12.
Mathew teaches a systematic photophysical study, i.e., electronic absorption and emission, on platinum (II) 2,6-bis(N-alkylbenzimidazol-2’-yl)pyridine complex with different alkyl chains and different anions were performed in solutions and electronic absorption in solution shows high-energy bands that are assigned to pi-pi* transitions within the ligand and moderately intense metal-to ligand charge transfer (see abstract). Mathew teaches both the alkyl chain length and counter anion affect the vapochromic effect but the length of the alkyl chain shows a negligible effect on the degree of aggregation (see abstract). Mathew teaches synthesizing and investigating the photophysical properties of a series of platinum bzimpy chloride complexes with varied N-alkyl chains and counter ions (see pg. 5886, left col., para. 3 and Scheme 1). Scheme 1 shows the N-alkyl chains are C4H9.
Vusurovic teaches interactions of ribonucleic acid (RNA) with guanidine and guanidine derivatives are important features in RNA-protein and RNA-drug binding and investigated noncovalently bound complexes of an 8-nucleotide RNA and six different ligands, all of which have a guanidium moiety (see abstract and Table 1). Vusurovic teaches the strength of noncovalent bonds between RNA or DNA and basic ligands can even exceed those of covalent bonds (see pg. 739, right col., para. 1). Vusurovic teaches in agreement with previous studies of guanidinium derivatives binding to DNA (see pg. 740, right col., para. 2). Vusurovic teaches guanidine (Gnd) revealed that salt bridges and hydrogen bonds provide the largest contribution to complex stability (see pg. 748, Conclusions).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the platinum(II) bzimpy complex of Chan with guanidine as taught by Vusurovic and with a reasonable expectation of success because Chan teaches stabilization gained from Pt---Pt and pi-pi interactions through positive amine groups as a ligand for DNAs and Vusurovic teaches that guanidinium structures bind to DNA and guanidine revealed that salt bridges and hydrogen bonds provide the largest contribution to complex stability. Therefore, it would have been obvious to have used guanidine as the positive charge in the platinum(II) bzimpy complex because guanidine are important features for nucleotide binding, as taught by Vusurovic. Additionally, it would have been obvious to have used longer N-alkyl chains because Mathew teaches that C4H9 N-alkyl chains are synthesized and investigated for photophysical properties in platinum bzimpy chloride complexes.
The person would have a reasonable expectation of success in modifying the platinum(II) bzimpy complex of Chan with longer N-alkyl chains and guanidine because it has been well understood by Mathew to alter the platinum (II) 2,6-bis(N-alkylbenzimidazol-2’-yl)pyridine for photophysical properties.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 7-11 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 and 34-42 of U.S. Patent No. US8309304B2 (‘304) (of record).
Patent No. ‘304 recites a composition for detecting or characterizing nucleic acid enzymatic cleavage comprising a charged d.sup.8 or d.sup.10 metal complex, wherein the charged d.sup.8 or d.sup.10 metal complex electrostatically binds to a multiple-charged biomolecule to induce aggregation and self-assembly of the metal complex through metal-metal interactions, .pi. . . . .pi. interactions, or a combination of both interactions and wherein the metal complex comprises at least one transition metal, at least one carbon donor ligand, and at least one corresponding coordinating ligand, wherein the carbon donor ligand has
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Claim 10 of Patent ‘304 recites platinum (Pt), gold (Au), palladium (Pd), rhodium (Rh), iridium (Ir), or silver (Ag). Claim 16 of Patent ‘304 recites wherein the nitrogen donor ligand is pyridine, bipyridine, terpyridine, polypyridine, arylpyridine, diarylpyridine, arylbipyridine, phenanthroline, diazine, triazine, phthalocyanine, imine, diimine, triimine, or porphyrin. Claim 19 of Patent ‘304 recites the metal complex has a planar structure or a partially planar structure, and at least one corresponding coordinating ligand is capable of .pi. . . . .pi. stacking interactions. The Patent does not explicitly recite a coordination number 2, 3 or 4. However, it would have been obvious that the metal atom of the Patent would have produced metal atom with a coordination number 2, 3 or 4 because it recites a charged d8 or d10.
Meanwhile, the recitations of detecting and/or imaging an analyte is intended use as the claim is only directed to a compound. Because the prior art’s compound teaches all the structural limitations of the claimed product compound, the prior art’s compound is capable of performing the intended use.
Additionally, the recitations of the metal complex is capable of binding to the analyte and undergo aggregation and supramolecular self-assembly of the metal complex through non-covalent metal-metal interactions are functional limitations. Again, because the prior art’s compound teaches all the structural limitations of the claimed product compound, the prior art’s compound is capable of performing the functional limitations when in the presence of the analyte.
Claims 1-4, 7-11 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 6-13 of U.S. Patent No. US10865290B2 (‘290) (of record).
Patent ‘290 recites a supramolecular polymer comprising a plurality of first small-molecule components, wherein the first small-molecule components have a planar or linear geometry, wherein the first small molecule components are solvophobic, and wherein the first small-molecule components are associated with one another non-covalently based on interactions comprising metal-metal interactions, π-π interactions electrostatic attractions, hydrogen-bonding interactions, solvophobic-solvophobic interactions, or a combination thereof; and a polymer component, wherein the polymer component is solvophilic, and wherein the polymer component is in a non-covalent interaction with some or all of the first small-molecule components, wherein the supramolecular polymer has a nanostructure, wherein the nanostructure is in a form comprising nanofibers, nanorods, nano-belts, nano-ribbons, or nano-wires, and wherein the supramolecular polymer has active ends, wherein the active ends are capable of being propagated or elongated by addition of a plurality of second small-molecule components, wherein the second small-molecule components have a planar or linear geometry, wherein the second small molecule components are solvophobic, wherein the second small-molecule components are associated with one another non-covalently based on interactions comprising metal-metal interactions, π-π interactions, electrostatic attractions, hydrogen-bonding interactions, solvophobic-solvophobic interactions, or a combination thereof, and wherein the second small-molecule components can be the same as or different from the first small-molecule components. Claims 3 and 7-8 of Patent ‘290 recites the Pt(II) and the structure of the instant claim 2.
The Patent does not explicitly recite a coordination number 2, 3 or 4. However, claim 3 of the Patent recites the formula that contains 4 coordination ligands and claim 8 recites that R13 is a carbon. Therefore, it would have been obvious that the first small-molecule comprising the metal complex capable of coordinating 4 ligands, as recited in claim 3 of the Patent.
Meanwhile, the recitations of detecting and/or imaging an analyte is intended use as the claim is only directed to a compound. Because the prior art’s compound teaches all the structural limitations of the claimed product compound, the prior art’s compound is capable of performing the intended use.
Additionally, the recitations of the metal complex is capable of binding to the analyte and undergo aggregation and supramolecular self-assembly of the metal complex through non-covalent metal-metal interactions are functional limitations. Again, because the prior art’s compound teaches all the structural limitations of the claimed product compound, the prior art’s compound is capable of performing the functional limitations when in the presence of the analyte.
Claims 1-4 and 7-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-9 of U.S. Patent No. US10865290B2 (‘290) in view of Vusurovic et al. (“Interactions of Protonated Guanidine and Guanidine Derivatives with Multiply Deprotonated RNA Probed by Electrospray Ionization and Collisionally Activated Dissociation”, ChemistryOpen 2017, vol. 6, pgs. 739-750, published 10/24/2017).
Patent ‘290 recites:
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However, Patent ‘290 does not recite the elected species of claim 12. Vusurovic has been discussed in the above rejection.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the platinum(II) bzimpy complex as recited by the Patent with guanidine as taught by Vusurovic and with a reasonable expectation of success because Vusurovic teaches that guanidinium structures bind to DNA and guanidine revealed that salt bridges and hydrogen bonds provide the largest contribution to complex stability. Therefore, it would have been obvious to have used guanidine as the positive charge in the platinum(II) bzimpy complex because guanidine are important features for nucleotide binding, as taught by Vusurovic.
Meanwhile, the recitations of detecting and/or imaging an analyte is intended use as the claim is only directed to a compound. Because the prior art’s compound teaches all the structural limitations of the claimed product compound, the prior art’s compound is capable of performing the intended use.
Additionally, the recitations of the metal complex is capable of binding to the analyte and undergo aggregation and supramolecular self-assembly of the metal complex through non-covalent metal-metal interactions are functional limitations. Again, because the prior art’s compound teaches all the structural limitations of the claimed product compound, the prior art’s compound is capable of performing the functional limitations when in the presence of the analyte.
Response to Arguments
Applicant's arguments filed 09/29/2025 have been fully considered but they are not persuasive with respect to 102, 103, and nonstatutory double patenting rejections.
With respect to the 102 rejection, Applicant argues on page 29 that the claims have been amended to recite functional language and cited from MPEP that functional language must be evaluated and considered. Applicant argues that a person would construe that it is perfectly appropriate to specify a feature of a compound by its capability. Accordingly, the person would conclude that the specified feature expressly defines compounds that have the structures specified by the claims and for which binding of the metal complex to the analyte induces aggregation and supramolecular self-assembly of the metal complex. Applicant argues that Kwan-Wa, and Chan are rendered moot, and none of these references discloses the structures in the amended claims such that specified the capability is disclosed by the references.
The arguments are not found persuasive for the following reasons. Individually, with respect to the 102 rejections (see above), Kwan-Wa and Chan’s structures would read on the claimed compounds (see above). Meanwhile, functional language in the claims have been evaluated and considered. The recitations of the metal complex is capable of binding to the analyte and undergo aggregation and supramolecular self-assembly of the metal complex through non-covalent metal-metal interactions are functional limitations. Again, because the prior art’s compound teaches all the structural limitations of the claimed product compound, the prior art’s compound is capable of performing the functional limitations when in the presence of the analyte. Meanwhile, the recitations of detecting and/or imaging an analyte is intended use, as the claims do not contain the analyte. If a claimed compound has functional languages and the prior art referenced a compound that would read on all the limitations of the claimed structure, then the prior art reference would be capable of performing the claimed function language or else the claimed structures do not meet the function, as claimed.
With respect to the 103 rejection, Applicant argues on page 32 that Chan discloses Chan concludes that binding of G-quadruplex (the analyte tested in its studies), gave rise to deaggregation of its ensembles. In contrast the claimed metal complex is configured to bind to the analyte, wherein binding of the metal complex to the analyte induces aggregation and supramolecular self-assembly. Therefore, the person would not have a reasonable expectation of success in achieving the claimed subject matter.
The arguments are not found persuasive for the following reasons. There would be a reasonable expectation of success with Chan in view of Mathew and Vusurovic under the 103 rejection because Chan’s structures would alone or in combination of Mathew and Vusurovic read on the claimed function because the analyte as claimed is generic and does not confined to G-guadruplex. Again, because the prior art references teach all the structural limitations of the claimed product compound, the combination of the prior art references is capable of performing the functional limitations when in the presence of other analyte. Meanwhile, the recitations of detecting and/or imaging an analyte is intended use, as the claims do not contain the analyte. If a claimed compound has functional languages and the prior art referenced a compound that would read on all the limitations of the claimed structure, then the prior art reference would be capable of performing the claimed function languages or else the claimed structures do not meet the function, as claimed.
With respect to nonstatutory double patenting rejections, Applicant argues page 33 that Patents 8057989, 8309304 and 10865290 do not teach the functional language of the instant claims.
The arguments are not found persuasive because the instant claims are directed to a product compound. As stated above, because the prior art’s compound teaches all the structural limitations of the claimed product compound, the prior art’s compound is capable of performing the functional limitations when in the presence of the analyte.
Note that the nonstatutory double patenting rejection over Patent No. 8057989 had been withdrawn in the previous office action in view of the previous amendments.
Conclusion
No claim is allowed.
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/N.P.N/Examiner, Art Unit 1678
/SHAFIQUL HAQ/Primary Examiner, Art Unit 1678