Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1 /21/2026 has been entered.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objects are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8 and 14-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The recitation in claim 1 “the particle size” lacks clear antecedent basis as there is no recitation in the claim that the micro-nano structure are particles. It’s unclear if the recitation “the particle size” limits the micro-nano structure to particles, or if it is open to other micro-nano structures, such as nanosheets (specification, page 6, line 17).
Claim Rejections - 35 USC § 103
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.
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 1-8 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Teshome (Proc. of SPIE, 2011; document already in record). Teshome discloses the following compound:
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118
352
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(Table 4), which reads on a micro-nano structure of an isomer of the present formula (I) presented in claims 1-6 where A is
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158
183
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where R5 is methyl and R6 is methyl, which is an isomer of the present structure in the embodiment wherein R5 is ethyl and R6 is hydrogen. Further, R6’ is a hydrocarbyl, R3 and R3’ are H, Y1 is a halogen atom, and R7 is H, and further is an isomer of the present compound II-1 of claim 7. Regarding claims 14-15, the claims are directed to intended uses of Formula (I). As the structure of Teshome is identical to Formula (I), it must be fully capable of carrying out the presently claimed intended uses Formula (I), that is use in the preparation of a phototherapy drug, in the preparation of a drug for diagnosis and/or treatment of cancer, or in the preparation of a drug for the treatment of skin diseases, wherein the phototherapy drug is a photothermal therapeutic drug, a photodynamic therapeutic drug or a photoacoustic therapeutic drug, the cancer is esophageal cancer, non-small cell lung cancer, biliary cancer, head-neck cancer, Barrett esophagus, bladder cancer, colorectal cancer, pancreatic cancer, ovarian cancer, prostate cancer, brain tumor, breast cancer or skin cancer, the skin disease is actinic keratosis, basal cell carcinoma, skin T cell lymphoma, Bowen's disease, squamous cell carcinoma, intraepithelial neoplasia of the vulva and anus, or Paget's disease. The nanostructure may be in the form of nanosheets (section 2.2).
Teshome fails to teach 1 nm to 500 nm.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the particle size of Teshome to improve the efficacy of the microstructure. Teshome provides sufficient guidance to this end as it teaches 350 nm to 550 nm (section 2.2), which overlaps with the present range.
Applicant’s arguments have been fully considered but are not found persuasive. Regarding applicant’s argument that the present amendment to applicant’s formula (I) excludes the compound of Teshome, the examiner’s response is that the compound of Teshome is an isomer of the present compound for the reasons set forth above. Regarding applicant’s argument that the compound of Teshome is not used to form a micro-nano structure, the examiner’s response is that the compound of Teshome is used to nanosheets (a nano-micro structure) as set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL W DICKINSON whose telephone number is (571)270-3499. The examiner can normally be reached on M-F 9 AM to 7:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached on 571-272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PAUL W DICKINSON/Primary Examiner, Art Unit 1618
March 30, 2026
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