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 of species in the reply filed on 8 August 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant has elected the species of example 11. The examiner notes that example 11 comprises use of 6,14-dimesityldibenzo[hi,st]ovalene in single-molecule localization microscopy (SMLM). Likewise, Applicant elects the species of method of using a compound in single-molecule localization microscopy (SMLM). Likewise, Applicant elects the species of the polyaromatic hydrocarbon according to general formula 2 (cf. claim 6), where R1 to R8 are hydrogen and both Ar are mesitylene. The examiner notes that this species corresponds to 6,14-dimesityldibenzo[hi,st]ovalene of example 11.
Claims 10, 12, and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. The elected species of compound (6,14-dimesityldibenzo[hi,st]ovalene) does not comprise a hydrophilic group as required by claim 10, a heterocyclic group as required by claim 12, or a residue with a terminal alkyne group as required by claim 14.
Information Disclosure Statement
The information disclosure statement filed 2 July 2021 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the NPL documents CL through CV not been considered.
Specification
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
The disclosure is objected to because of the following informalities: Appropriate section headings, including BRIEF DESCRIPTION OF THE DRAWINGS must be added. If appropriate, the descriptions on pages 35-36 should be copied and/or moved to earlier in the specification. A separate description must be provided for each drawing. For example, a separate description must be provided for each of Figs. 3a, 3b, 3c, and 3d.
Appropriate correction is required.
Claim Interpretation
The term "residue" is interpreted as "a chemical species produced by the removal of one or more atoms from a molecule; a radical."
Regarding the terms "a substituted or unsubstituted polycyclic aromatic hydrocarbon" and "substituted and/or unsubstituted aromatic hydrocarbon rings," the specification provides the following special definitions (page 7, line 25 to page 8, line 11; bolding added)
The term polycyclic aromatic hydrocarbon denotes in accordance with the present invention an organic molecule, which comprises at least two aromatic rings, i.e. at least two cyclic and aromatic rings, in which electrons are delocalized. Hydrocarbon means in this connection an organic molecule, which consists entirely of carbon and hydrogen atoms. Thus, an unsubstituted polycyclic aromatic hydrocarbon means in accordance with the present invention a molecule which consists entirely of carbon and hydrogen atoms, whereas a substituted polycyclic aromatic hydrocarbon is a molecule, in which one or more up to all hydrogen atoms of an unsubstituted polycyclic aromatic hydrocarbon molecule are replaced by any other atom and/or organic group and/or in which one or more of the carbon atoms are replaced by a heteroatom, such as nitrogen, oxygen, phosphorous, sulphur, boron or the like. Likewise to this, an unsubstituted aromatic hydrocarbon ring means an aromatic hydrocarbon ring which consists entirely of carbon and hydrogen atoms, whereas a substituted aromatic hydrocarbon ring is an aromatic hydrocarbon ring, in which one or more up to all hydrogen atoms of an unsubstituted aromatic hydrocarbon ring are replaced by any other atom and/or organic group and/or in which one or more of the carbon atoms are replaced by a heteroatom.
The specification further provides heterocyclic examples of "aromatic hydrocarbon rings" that are not hydrocarbons according to the customary meaning of hydrocarbon (page 10, line 24 to page 11, line 12; bolding added):
The present invention is not particularly limited concerning the type of aromatic hydrocarbon rings. Good results are particularly obtained with five-membered, six-membered and/or seven-membered aromatic rings, which may be each substituted and/or unsubstituted. Suitable examples for aromatic hydrocarbon rings of the compound to be used in the present invention are those selected from the group consisting of unsubstituted pyrrole rings, unsubstituted furan rings, unsubstituted thiophene rings, unsubstituted imidazole rings, unsubstituted pyrazole rings, unsubstituted oxazole rings, unsubstituted isoxazole rings, unsubstituted thiazole rings, unsubstituted isothiazole rings, unsubstituted benzene rings, unsubstituted pyridine rings, unsubstituted triazine rings, unsubstituted thiophene rings, unsubstituted azepine rings, unsubstituted oxepine rings, unsubstituted thiepine rings, substituted pyrrole rings, substituted furan rings, substituted thiophene rings, substituted imidazole rings, substituted pyrazole rings, substituted oxazole rings, substituted isoxazole rings, substituted thiazole rings, substituted isothiazole rings, substituted benzene rings, substituted pyridine rings, substituted triazine rings, substituted thiophene rings, substituted azepine rings, substituted oxepine rings and substituted thiepine rings.
Accordingly, the terms "substituted polycyclic aromatic hydrocarbon" and "substituted aromatic hydrocarbon ring" are broadly interpreted according to their respective special definitions provided by the specification.
Claim Objections
Claims 4, 5, 11, and 13 are objected to because of the following informalities:
Regarding claim 4, in each of i)-iv), the word "are" must be inserted before "independently".
Regarding claims 5 and 13, the word "are" must be inserted before "independently".
Regarding claim 5, the indefinite article "a" must be added before "C1-20 alkoxy group".
Regarding claims 5, 11, and 13, the term "substitued" must be changed to "substituted".
Regarding claims 5, 11, and 13, the term "goup" must be changed to "group".
Appropriate correction is required.
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.
Claims 1-9, 11, 13, and 15 are rejected under 35 U.S.C. 112(b) 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.
Independent claim 1 recites "A method of using a compound in single-molecule localization microscopy (SMLM), in stimulated emission depletion microscopy (STED), in minimal emission fluxes microscopy (MINFLUX) or in structured illumination and localization microscopy (SIMFLUX)…" without positively reciting any step(s) of the method. In other words, the limitations of claim 1 consistent entirely of a claim preamble without a claim body. 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). 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). Dependent claims 3-9, 11, and 13 also do not recite any step(s). Because the methods of claims 1 and 3-9, 11, and 13 lack any active, positive steps (consisting entirely of a claim preamble without a claim body), these claims are indefinite. The examiner suggests that any positively recited step(s) be preceded by an explicit limitation that the method "comprises" the step(s) (or "further comprises" in the case of a dependent claim reciting an additional step).
Dependent claim 2 recites the limitation "wherein the compound is used in the high-resolution microscopy as fluorescent marker, and wherein the compound is used in photoactivated localization microscopy (PALM)…" It is unclear whether these limitations are active, positive steps of the claimed method. Accordingly, because the method of claim 2 (including the limitations of claim 1) does not clearly recite any active, positive steps, the claim is indefinite for the reasons set forth regarding independent claim 1. See MPEP 2173.05(q).
Claim 3 recites the limitation "each of at least six to 91 substituted and/or unsubstituted aromatic hydrocarbon rings." There is insufficient antecedent basis for this limitation because the claim previously recites "six to 91 substituted and/or unsubstituted aromatic hydrocarbon rings."
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation "the at least six substituted and/or unsubstituted aromatic hydrocarbon rings," and the claim also recites "six to 91 substituted and/or unsubstituted aromatic hydrocarbon rings," which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 4 recites the limitation "a substituted and/or unsubstituted aromatic hydrocarbon ring" in each of i)-iv). It is unclear how the same ring can be both substituted and unsubstituted.
Claim 4 recites the limitation "x is in an integer of 5, 6" in i). It is unclear whether the meaning of this limitation is "x is 5 or 6."
Claim 4 recites the limitation "x is in an integer of 5, 6 in the case that Ar1 is…" in i). There is insufficient antecedent basis for the limitation "the case that…" It is unclear whether the limitation "in the case that…" is an optional limitation.
Claim 4 recites the limitation "Ar1 is at least a C7-ring…" The claim previously requires that Ar1 is "a substituted and/or unsubstituted aromatic hydrocarbon ring." In view of both the special definition of "unsubstituted aromatic hydrocarbon ring" (refer to claim interpretation section) as well as the customary meaning of an aromatic hydrocarbon ring, it is unclear how an unsubstituted aromatic hydrocarbon ring can be a C7-ring. Moreover, it is unclear what is meant by "at least a C7-ring."
Claim 4 recites the limitation "Ar1 is at least a C7-ring or 7." It is completely unclear what is meant by Ar1 being 7. The claim previously requires that Ar1 is "a substituted and/or unsubstituted aromatic hydrocarbon ring." If the limitation "or 7" is meant to refer to "x is…," this is not clear from the grammar of the claim.
Regarding claims 4, 5, and 13 the modal verb "may" renders the claim indefinite because it is unclear whether the limitations following the term "may be" are optional limitations.
Claim 4 recites the limitation "-Ar1-(Ar2)n-Ar3-, wherein … n is an integer of 4 to 14, wherein the residues Ar1 and Ar3 may be bonded … with each other to form a ring" in iv). Within the chemical formula "-Ar1-(Ar2)n-Ar3-," the customary interpretation of a hyphen is a single bond when between two residues and an open valence position or radical when connected to one valence. Accordingly, the limitation "the residues Ar1 and Ar3 … bonded …with each other to form a ring" is interpreted to mean that the open valence position on Ar1 and the open valence position on Ar3 are connected with each other to form a single bond. Furthermore, the limitation "the residues Ar1 and Ar3 … bonded …with each other to form a ring" is interpreted to mean that the chemical formula "-Ar1-(Ar2)n-Ar3-" does not have any open valence positions (given that that the illustrated open valence position on Ar1 and the illustrated open valence position on Ar3 together form a single bond). Accordingly, when the limitation "the residues Ar1 and Ar3 may be bonded …with each other to form a ring" applies, the compound comprising "-Ar1-(Ar2)n-Ar3-" cannot comprise any substituted and/or unsubstituted aromatic hydrocarbon rings in addition to Ar1, Ar2, and Ar3. Independent claim 1 requires the limitation "wherein each of at least six of the six or more substituted and/or unsubstituted aromatic hydrocarbon rings is fused with at least another one of the at least six substituted and/or unsubstituted aromatic hydrocarbon rings." It is unclear how dependent claim 4 requires this limitation for values of n being 4 or 5 for the limitation "the residues Ar1 and Ar3 may be bonded …with each other to form a ring."
Claim 4 recites the limitation "-Ar1-(Ar2)n-Ar3-, … wherein the residues Ar1 and Ar3 may be … fused with each other to form a ring" in iv). Within the chemical formula "-Ar1-(Ar2)n-Ar3-," the customary interpretation of a hyphen is a single bond when between two residues and an open valence position or radical when connected to one valence. Accordingly, the illustrated open valence position on Ar1 and the illustrated open valence position on Ar3 cannot reasonably be interpreted as referring a fused connection between the residues Ar1 and Ar3. Given that the formula "-Ar1-(Ar2)n-Ar3-" is apparently incompatible with a fused connection between the residues Ar1 and Ar3 to form a ring, the limitation "the residues Ar1 and Ar3 may be … fused with each other to form a ring" is indefinite.
Claims 5 and 13 recite the limitation "the unsubstituted and/or [substituted] C1-20 hydrocarbon residues." There is insufficient antecedent basis for this limitation in the claims.
Claims 5 and 13 recite the limitation "the unsubstituted and/or [substituted] C1-20 hydrocarbon residues may be …. [a] C1-20 alkoxy group, …or a C5-20 heterocyclic [group]." In the absence of a special definition of "hydrocarbon residues," the term "hydrocarbon" is interpreted according to its customary meaning and the teaching of the specification ("Hydrocarbon means in this connection an organic molecule, which consists entirely of carbon and hydrogen atoms"). It is unclear how an alkoxy group or a heterocyclic group can be an unsubstituted or substituted hydrocarbon residue. The customary meaning of a substituted hydrocarbon group is a hydrocarbon group in which one or more hydrogen atoms are replaced by different atoms or groups. (As noted above in the claim interpretation section, this customary interpretation of "hydrocarbon" is not applied to the terms "substituted polycyclic aromatic hydrocarbon" and "substituted aromatic hydrocarbon ring" because of the special definitions provided in the specification for these terms.)
Dependent claim 11 recites the limitation "wherein the compound comprises a unit with the general formula (3) or the compound has the general formula (3)…each of residues Ar is a cyclic group. It is unclear how claim 11 requires all the limitations of claim 1, from which claim 10 depends, including the limitation "wherein the compound is a substituted or unsubstituted polycyclic aromatic hydrocarbon comprising six or more substituted and/or unsubstituted aromatic hydrocarbon rings, wherein each of at least six of the six or more substituted and/or unsubstituted aromatic hydrocarbon rings is fused with at least another one of the at least six substituted and/or unsubstituted aromatic hydrocarbon rings." Even in view of the broad special definitions provided by the specification for the terms "substituted polycyclic aromatic hydrocarbon" and "substituted aromatic hydrocarbon ring" (refer to claim interpretation section) these groups appear to require aromaticity. Accordingly, the broadly recited "cyclic group" of claim 11 does not appear to require all of the limitations of claim 1.
Claim 13 is indefinite because it apparently uses both "general formula (33)" and "general formula (23)" to refer to the same formula. This rejection can be overcome by changing "general formula (33)" to "general formula (23)".
Dependent claim 15 recites the limitation "The method in accordance with claim 1 for high resolution evaluations of biological systems… and for monitoring and detecting nano-structure fabrication." Accordingly, claim 15 merely recites an intended use of the method of claim 1. Because the method of claim 15 (including the limitations of claim 1) does not clearly recite any active, positive steps, the claim is indefinite for the reasons set forth regarding independent claim 1. See MPEP 2173.05(q).
Regarding claim 15, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 15 recites the limitation "the detection." There is insufficient antecedent basis for this limitation in the claim.
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 1-9, 11, 13, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Coles ("Strong Exciton−Photon Coupling in a Nanographene Filled Microcavity," Nano Lett.; August 22, 2017).
Regarding indefinite claim 1, Coles discloses a method of using a mesitylene derivative (DBOV-Mes) of dibenzo[hi,st]ovalene [DBOV] (abstract, Fig. 1), which is Applicant's elected species of compound (see portion of Fig. 1a copied below).
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Regarding the limitation "A method of using a compound in single-molecule localization microscopy (SMLM), in stimulated emission depletion microscopy (STED), in minimal emission fluxes microscopy (MINFLUX) or in structured illumination and localization microscopy (SIMFLUX), …" this preamble limitation is interpreted as a mere statement of purpose or intended use. See MPEP 2111.02, II. As noted above in the rejections under 35 USC 112(b), the claim merely recites a use in the claim preamble without any active, positive steps delimiting how this use is actually practiced. In other words, the limitations of claim 1 consistent entirely of a claim preamble without a claim body.
Because claim 1 fails to positively recite a step that involves single-molecule localization microscopy (SMLM), in stimulated emission depletion microscopy (STED), in minimal emission fluxes microscopy (MINFLUX) or in structured illumination and localization microscopy (SIMFLUX), the claim is broadly interpreted as being anticipated by Cole's method of using DBOV-Mes.
Regarding claim 2, as set forth above in the rejections under 35 USC 112(b), it is unclear whether the following limitations are active, positive steps of the claimed method: "wherein the compound is used in the high-resolution microscopy as fluorescent marker, and wherein the compound is used in photoactivated localization microscopy (PALM)…" Neither claim 1 nor claim 2 clearly sets forth a step of the recited method. Accordingly, the limitations of claim 2 are broadly interpreted as being further statements of purpose or intended use of the claim preamble, and the claim is broadly interpreted as being anticipated by Cole's method of using DBOV-Mes. See MPEP 2111.02, II.
Regarding claims 3-9, 11, and 13, DBOV-Mes as disclosed by Coles satisfies the structural limitations regarding the compound of these dependent claims. Like claim 1, dependent claims 3-9, 11, and 13 do not positively recite a method step.
Regarding claim 15, the limitation "The method in accordance with claim 1 for high resolution evaluations of biological systems… and for monitoring and detecting nano-structure fabrication" is reciting purposes or intended uses of the method of claim 1. Because the method of claim 15 does not clearly recite any active, positive steps, the claim is broadly interpreted as being anticipated by Coles’ method of using DBOV-Mes. See MPEP 2111.02, II.
Claims 1-7, 11, 13, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Godin ("Single-nanotube tracking reveals the nanoscale organization of the extracellular space in the live brain," Nature Nanotechnology; 21 November 2016) as evidenced by Gao ("Toward the suppression of cellular toxicity from single-walled carbon nanotubes." Biomater. Sci. 2016).
Regarding claim 1, Godin discloses a method of using single-walled carbon nanotubes (SWCNTs) coated with phospholipid-polyethylene glycol (PL-PEG) (first two para. of Methods) in single-molecule localization microscopy ("Single-molecule tracking of luminescent SWCNTs in live ECS brain tissue," Fig. 1 caption; "we extracted in each movie frame i the localization of the nanotube centre-of-mass (xi, yi) in the imaging plane with subwavelength precision (∼40 nm)," page 239, right col.; "Using a similar approach to single-molecule localization microscopy…" page 214, last para.; Fig. 3).
The examiner takes official notice that a single-walled carbon nanotube is a cylinder made from a single sheet of graphene. Accordingly, a single-walled carbon nanotube is a compound that is "a substituted or unsubstituted polycyclic aromatic hydrocarbon comprising six or more substituted and/or unsubstituted aromatic hydrocarbon rings, wherein each of at least six of the six or more substituted and/or unsubstituted aromatic hydrocarbon rings is fused with at least another one of the at least six substituted and/or unsubstituted aromatic hydrocarbon rings."
The PL-PEG-coated SWCNTs used by Godin were prepared by two techniques using either PL-PEG or PL-PEG-NH2 (first two para. of Methods). Godin cites Gao (reference 22) for coating SWCNTs with PL-PEG (page 238, right col.). Gao provides further evidence of the structures of PL-PEG-coated SWCNTs (Fig. 3 copied below).
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As evidenced by Gao, Godin's coating method using PL-PEG results in noncovalent modification of SWCNTs ("Phospholipid–polyethylene glycol (PL–PEG) deserves a particular focus since it has become a widely used non-covalent suspension agent for bio-applications of SWCNTs both in vitro and in vivo. The hydrophobic PL chains attach to the surface of nanotubes, with the hydrophilic PEG chains increasing the solubility and stability of nanotubes in a high salt and serum containing environment" in 4.2. Non-covalent encapsulation, page 237, right col., first para.).
As evidenced by Gao, Godin's coating method using PL-PEG-NH2 results in covalent modification of SWCNTs ("PEG-modified SWCNTs are commonly used and are usually produced by an amidation reaction of –COOH groups of oxidized nanotubes with –NH2 groups of PEG" in 4.1. Covalent modification, page 236, right col., first para.).
Accordingly, the claimed compound corresponds to either an unsubstituted hydrocarbon forming a cylinder of a hexagonal lattice of fused six-membered aromatic rings (in the case of the non-covalent attachment of PL-PEG to SWCNT) or a substituted hydrocarbon forming a cylinder of a hexagonal lattice of fused six-membered aromatic rings (in the case of the covalent attachment of PL-PEG-NH2 to SWCNT).
Regarding claim 2, Godin discloses that the compound is used in the high-resolution microscopy as fluorescent marker ("detect the SWCNT-emitted fluorescence" in "Wide-field fluorescence microscopy set-up" of first page of Methods), and wherein the compound is used in photoactivated localization microscopy ("photoluminescence," Fig. 1; "Single-SWCNT photoluminescence imaging was performed with an inverted microscope," in "Wide-field fluorescence microscopy set-up" of first page of Methods).
Regarding claim 3, a SWCNT of Godin, because it is a cylinder of a single sheet of graphene, comprises six to 91 aromatic hydrocarbon rings fused to each other. It is noted that the transitional term "comprising" is inclusive or open-ended and does not exclude additional, unrecited elements. See MPEP 2111.03. Accordingly, the scope of the compound of claim 3 is permitted to have greater than 91 aromatic hydrocarbon rings.
Regarding claim 4, a SWCNT of Godin, because it is a cylinder of a single sheet of graphene, comprises the unit "-Ar1(Ar2)x-. It is noted that the transitional term "comprising" is inclusive or open-ended and does not exclude additional, unrecited elements. See MPEP 2111.03. Accordingly, the scope of the compound of claim 3 is permitted to have greater than 6 aromatic hydrocarbon rings.
Regarding claim 5, a SWCNT of Godin, because it is a cylinder of a single sheet of graphene, comprises a unit with the general formula (1), wherein in general formula (1) two adjacent residues R are linked with each other to form C6-aromatic group.
Regarding claims 6 and 7, a SWCNT of Godin, because it is a cylinder of a single sheet of graphene, comprises a unit with the general formula (2), wherein in general formula (2), two of adjacent residues of R1 to R8 and Ar are linked with each other to form an aromatic or cyclic group.
Regarding claim 11, a SWCNT of Godin, because it is a cylinder of a single sheet of graphene, comprises a unit with the general formula (3), wherein two adjacent residues Ra and Rb are linked with each other to form an aromatic group.
Regarding claim 13, a SWCNT of Godin, because it is a cylinder of a single sheet of graphene, comprises a unit with the general formula (23), wherein in general formula (23) two adjacent residues R are linked with each other to form C6-aromatic group.
Regarding claim 15, Godin discloses that the method of claim 1 is "for high resolution evaluations of biological systems" (abstract, Fig. 1). Regarding the limitation "for the detection of material imperfections… and for monitoring and detecting nano-structure fabrication," this is reciting purposes or intended uses of the method of claim 1. Because the method of claim 15 does not clearly recite any active, positive steps, the claim is broadly interpreted as being anticipated by Godin's method. See MPEP 2111.02, II.
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 1-7, 11, 13, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 11,958,796. Although the claims at issue are not identical, they are not patentably distinct from each other.
Patented claim 13 anticipates and is narrower than instant claim 1 in reciting a method comprising coupling the compound of patented claim 1 with a target molecule and performing stimulated emission depletion microscopy (STED) single-molecule localization microscopy (SMLM).
Regarding instant claim 2, patented claim 1 discloses fluorescence photo-activation localization microscopy (FPALM) with the compound of patented claim 1 and therefore discloses that the compound is used in the high-resolution microscopy as fluorescent marker.
Regarding instant claims 3 and 4, the compound of patented claim 1 anticipates the compound recited in the instant claims.
Regarding instant claims 5-7, 11, and 13, the compound of patented claim 1 does not explicitly require that the "hydrophilic group" is selected from the options of R1 to R8 and Ar recited in the instant claims. It is noted, however, that US 11,958,796 provides a broad special definition of "hydrophilic group" (col. 5, lines 12-16). Given the extremely broad scope of groups encompassed by the "hydrophilic group" of the compound of patented claim 1, and given the broad scope of the substitution permitted by the scope of instant claims 5-7, 11, and 13, it would have been obvious to one of ordinary skill in the art before the time of filing that the "hydrophilic group" of patented claim 1 is selected from the choices of substitution recited in instant claims 5-7, 11, and 13.
Instant claim 15 merely recites an intended use of the method of instant claim 1 ("The method in accordance with claim 1 for high resolution evaluations of biological systems… and for monitoring and detecting nano-structure fabrication"). Because the method of claim 15 (including the limitations of claim 1) does not clearly recite any active, positive steps, the claim broadly interpreted to be anticipated by patented claim 13.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ghadiali (US 2017/0370847) discloses using super-resolution microscopy methods, including single-molecule localization microscopy (SMLM ([0045]), in analyzing a sample labeled with a fluorescent polymeric dye (abstract, [0007]), wherein the fluorescent polymeric dye comprises an aryl group ([0114], [0117], [0134]) that is ovalene ([0029]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELLE ADAMS whose telephone number is (571)270-5043. The examiner can normally be reached M, T, Th, and F, 12-4 P.M.
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/MICHELLE ADAMS/ Examiner, Art Unit 1797
/JENNIFER WECKER/ Primary Examiner, Art Unit 1797