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.
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Withdrawn Rejections
In light of the amendments, the 35 U.S.C. 112(d) rejection over claim 12 is hereby withdrawn.
In light of the amendments, the 35 U.S.C. 102 rejection over Chan is hereby withdrawn.
In light of the amendments, the nonstatutory double patenting rejection over Patent No. US8309304B2 is hereby withdrawn.
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.
Claim 12 is 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. This is a new matter rejection.
The amendment of claim 12 recites “A compound having a chemical structure selected from” (emphasis added), which implies that other chemical structures may be incorporated to the claimed Complexes. Applicant has not provided specific passages from the specification to the amended limitations where the chemical complexes are part of a larger compound. Examiner was not able to find support for said limitations.
For the reasons above, the specification fails to provide direction or blaze marks a compound having the claimed Complexes.
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.
Claim 12 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 the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The amended claim 12 recites the limitation of a compound having a chemical structure selected from the complexes is unclear to the metes and bounds of the chemical structures of the claimed complexes. The interpretation of a compound having a chemical structure implies that these complexes may be modified. If these complexes are modified, then what are the final structures of these complexes, as these complexes are well defined in chemical structures. Thus, the claim is unclear what are the chemical compounds having these complexes.
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.
Claims 2-4 are 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 1 recites:
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. However, claim 2 has broaden the limitations of claim 1 by reciting in (f) that dashed lines represent optional covalent linkages between the two ligands, optional fusion of ring moieties from the two ligands, or a combination thereof. Claims 3-4 are rejected as being dependent from claim 1.
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 Milovic et al. (“Combined Use of Platinum(II) Complexes and Palladium(II) Complexes for Selective Cleavage of Peptides and Proteins”, Inorg. Chem. 2003, vol. 42, pgs. 4036-4045).
With respect to claims 1 and 13, Milovic teaches complexes of
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(see abstract and pg. 4037, right col., para. 2), which would read on the compound is a d8 or d10 metal complex or a salt thereof, comprising (a) a Pt(II) or Pd (II) metal atom with a coordination number 4 and one or more ligands are independently with N and O donor atoms wherein when the metal atom has a coordination number 4, the one or more ligands are not
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. Meanwhile, [Pd(H2O)4]2+ would read on “when” the compound has the following structure:
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and L-L4 are the one or more ligands and the dash lines denote the absence of covalent bonds. The instant specification discloses that “ligand and ligands refer to ions or molecules that bind to a central metal atom via one or more donor atoms” (see filed specification dated 02/03/2021, pg. 25, lines 22-25). Thus, hydrogens and carbon groups would read on ions or molecules. Note that these compounds do not apply to the other claimed “when” provisos such as “and when the one or more ligands are phenyl isocyanide groups”.
Meanwhile, the recitations of detecting and/or imaging an analyte is intended use, as the claim is only directed to a compound (i.e., product). Because the prior art’s compounds read all the structural limitations of the claimed compound, the prior art’s compounds are capable of performing the intended use.
In addition, the recitation of wherein 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 produced from the claimed structure of the compound. Again, because the prior art’s compounds read all the structural limitations of the claimed compound, the prior art’s compounds are capable of performing the functional limitations when it is in the presence of the analyte.
With respect to claim 2, Milovic’s compounds would read on M represents Pt(II) or Pd (II) as a metal atom, L1-L4 represent ligands, wherein each ligand provides one donor atom to coordinate to the metal atom, n+/– represents zero, positive or negative, and m is zero.
With respect to claims 3-4, Milovic’s compound of cis[Pt(en)(H2O)2]2+ would read on the compound comprising a derivative of imidazole.
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 compounds read all the structural limitations of the claimed compound, the prior art’s compounds are 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 claim 8, Milovic teaches complexes of:
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, which would read on the metal complex has a planar structure or a partially planar structure.
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 compounds read all the structural limitations of the claimed compound, the prior art’s compounds are capable of performing these functional limitations when binding to the analyte.
With respect to claim 13, the recitations of detecting and/or imaging an analyte wherein the analyte is selected from amyloid, plaque, or both, of a protein or peptide (2) RNA, nucleolus or both is intended use, as the claim is only directed to a compound (i.e., product). Because the prior art’s compounds read all the structural limitations of the claimed compound, the prior art’s compounds are capable of performing the intended use when the analyte is present.
Claims 1-4, 7-11 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fujita et al. (“Coordination Assemblies from a Pd(II)-Cornered Square Complex”, Accounts of Chemical Research, vol. 38, no. 4, 2005, published 01/15/2005).
Fujita teaches:
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and
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(see Schemes 1 and 2), which would read on the compound is a d8 or d10 metal complex or a salt thereof, comprising (a) Pd (II) metal atom with a coordination number 4 and one or more ligands are independently with C, N and O donor atoms wherein when the metal atom has a coordination number 4, the one or more ligands are not
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The instant specification discloses that “ligand and ligands refer to ions or molecules that bind to a central metal atom via one or more donor atoms” (see filed specification dated 02/03/2021, pg. 25, lines 22-25). Note that these compounds do not apply to the other claimed “when” proviso.
Meanwhile, the recitations of detecting and/or imaging an analyte is intended use, as the claim is only directed to a compound (i.e., product). Because the prior art’s compounds read all the structural limitations of the claimed compound, the prior art’s compounds are capable of performing the intended use.
In addition, the recitation of wherein 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 produced from the claimed structure of the compound. Again, because the prior art’s compounds read all the structural limitations of the claimed compound, the prior art’s compounds are capable of performing the functional limitations when it is in the presence of the analyte.
With respect to claim 2, Fujita’s compounds would read on M represents Pd (II) as a metal atom, L1-L4 represent ligands, wherein each ligand provides one donor atom to coordinate to the metal atom, n+/– represents zero, positive or negative, and m is zero or positive integer.
With respect to claim 3, Fujita’s disclosed compounds on the compound comprising derivatives of imidazole, pyrrole and pyrazine, or pyrrole.
With respect to claim 4, Fujita’s disclosed compounds wherein L1 and L2 are connected by covalent linkages.
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 compounds read all the structural limitations of the claimed compound, the prior art’s compounds are 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 claim 8, Fujita’s disclosed compounds (see above) would read on the metal complex has a planar structure or a partially planar structure.
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 compounds read all the structural limitations of the claimed compound, the prior art’s compounds are capable of performing these functional limitations when binding to the analyte.
With respect to claim 13, the recitations of detecting and/or imaging an analyte wherein the analyte is selected from amyloid, plaque, or both, of a protein or peptide (2) RNA, nucleolus or both is intended use, as the claim is only directed to a compound (i.e., product). Because the prior art’s compounds read all the structural limitations of the claimed compound, the prior art’s compounds are capable of performing the intended use when the analyte is present.
Claims 1-4, 7-11 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Almaraz et al. (“Thiolate Bridging and Metal Exchange in Adducts of a Zinc Finger Model and PtII Complexes: Biomimetic Studies of Protein/Pt/DNA Interactions”, JACS, vol. 130, pgs. 6272-6280, published 04/19/2008).
Almaraz teaches in Scheme 1 the structure of a multimetallic aggregate formation:
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, which would read on the compound is a d8 or d10 metal complex or a salt thereof, comprising (a) Pt (II) metal atom with a coordination number 4 and one or more ligands are independently with S donor atoms wherein when the metal atom has a coordination number 4, the one or more ligands are not
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The instant specification discloses that “ligand and ligands refer to ions or molecules that bind to a central metal atom via one or more donor atoms” (see filed specification dated 02/03/2021, pg. 25, lines 22-25). Note that these compounds do not apply to the other claimed “when” proviso.
Meanwhile, the recitations of detecting and/or imaging an analyte is intended use, as the claim is only directed to a compound (i.e., product). Because the prior art’s compounds read all the structural limitations of the claimed compound, the prior art’s compounds are capable of performing the intended use.
In addition, the recitation of wherein 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 produced from the claimed structure of the compound. Again, because the prior art’s compounds read all the structural limitations of the claimed compound, the prior art’s compounds are capable of performing the functional limitations when it is in the presence of the analyte.
With respect to claim 2, Almaraz compounds would read on M represents Pt (II) as a metal atom, L1-L4 represent ligands, wherein each ligand provides one donor atom to coordinate to the metal atom, n+/– represents zero, positive or negative, and m is zero or positive integer.
With respect to claim 3, Almaraz disclosed compounds on the compound comprising derivatives of imidazole.
With respect to claim 4, Almaraz disclosed compounds wherein L1 and L2 are connected by covalent linkages.
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 compounds read all the structural limitations of the claimed compound, the prior art’s compounds are 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 claim 8, Almaraz disclosed compounds (see above) would read on the metal complex has a planar structure or a partially planar structure.
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 compounds read all the structural limitations of the claimed compound, the prior art’s compounds are capable of performing these functional limitations when binding to the analyte.
With respect to claim 13, the recitations of detecting and/or imaging an analyte wherein the analyte is selected from amyloid, plaque, or both, of a protein or peptide (2) RNA, nucleolus or both is intended use, as the claim is only directed to a compound (i.e., product). Because the prior art’s compounds read all the structural limitations of the claimed compound, the prior art’s compounds are capable of performing the intended use when the analyte is present.
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, see 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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:
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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 heteroalkyl group,. Fig. 1 shows R1 and R2 groups are heteroalkyl group (e.g., OCH3).
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.
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 reads all the structural limitations of the claimed compound, the prior art’s compound is capable of performing the intended use.
Additionally, the recitation 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. Because the prior art’s compound read all the structural limitations of the claimed 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 1-3 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 05/01/2026 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 over Kwun-Wa, Applicant argues that an alkyl substituent is attached to a parent or core structure through a carbon atom its α-carbon atom. In contrast, an alkoxy group is formed from a specific combination of alkyl and oxygen and the combined group (alkoxy) is attached to a parent or core structure through the oxygen atom and not an α-carbon atom, thereby forming a distinct functional class separated from alkyl substituents.
The arguments are not found persuasive for the following reasons. Claim 1 recites in the compound that contains the dashed that the substituents are substituted or unsubstituted heteroalky group. As evidenced, Huang (US20250085300A1) indicates that heteroalkyl is methoxy or ethoxy. Thus, the alkoxy group of Kwun-Wa would read on the claimed compound. Thus, the rejection is of Kwun-Wa is maintained.
With respect to the 103 rejection, Applicant argues, page 31, that the claims must be considered as a whole and every limitation in the claim must be considered. Applicant further argues, pages 32-33, that Chan is specifically designed to undergo disaggregation of molecular assemblies upon binding to an analyte and Chan concludes that binding of G-quadruplex gave rise to deaggregation of its ensembles. In contrast, the present claims are directed to metal complexes structurally configured to bind an analyte and undergo aggregation and supramolecular self-assembly through noncovalent metal-metal interaction. Thus the proposed modification would therefore invert the operative mechanism of Chan. Applicant further argues, page 34, that nothing in Mathew and Vusurovic suggests, and no evidence exists, that a person of ordinary skill in the art would modify Chan’s metal complex in an attempt to achieve the claimed subject matter. Applicant argues, page 36, that a proper evaluation of the claimed compounds must account for the structural configuration enabling aggregation and supramolecular self-assembly. Applicant argues, page 36, that Chan does not disclose or suggest that stabilization arising from Pt-Pt and pi-pi interactions is attributable to the presence of a positively charged amine group. Applicant argues, page 36, that Vusurovic is in the gas phase. Thus, Chan and Vusurovic address different chemical environments and different stabilization mechanisms. Applicant argues, page 38, that guanidinium and ammonium are so chemically and electronically distinct functional groups.
The arguments are not persuasive for the following reasons. Although Chan recognizes aggregation and deaggregation for its detection. The Pt complex (1) is for a strong and specific interactions between c-myc. Thus, the compound is used for aggregation with the analyte (i.e., G-Quadruplex DNA) (see Scheme 2). The deaggregation is between Pt complex 1 and mPPE-Ala (not analyte). Thus, Chan embraces its Pt complex (1) to aggregate with the analyte and releasing mPPE-Ala polymer. Meanwhile, As stated above, it would have been obvious 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. In particular, Chan’s P(t) complex 1 contains a positive charge at ammonium group and guanidinium also contains a positive charge. 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.
With respect to nonstatutory double patenting rejections, Applicant argues page 40 that Patent ‘290 does 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.
Conclusion
No claim is allowed.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
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/N.P.N/Examiner, Art Unit 1678
/SHAFIQUL HAQ/Primary Examiner, Art Unit 1678
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