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 .
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.
Response to Amendment
Applicant’s submission filed 06/28/2024 has been entered.
Response to Arguments
Applicant's submission filed 06/28/2024 has been fully considered. Applicant’s arguments regarding the 103 rejections of record are not persuasive for the reasons set forth at the end of the rejection below. Any previous rejections and/or objections not reiterated herein have been withdrawn.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3 – 6, 11, 12, 14, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Vasalatiy et al. (2008 Bioconjugate Chem. 19: 598-606; “Vasalatiy”) in view of Deri et al. (from IDS; 2013 Nucl. Med. Biol. 40: 3-14; “Deri”).
This rejection has been maintained for the reasons set forth in the office action mailed 02/29/2024 and for the reasons set forth below. Note that the rejection heading has been updated as applicant has cancelled claim 13.
Applicant argues that the chelated-metal for use in PET imaging as in Deri and the paramagnetic metal chelates used in MRI as in Vasalatiy are not art recognized equivalents because they cannot simply be interchanged with an expectation of the same results. There is no evidence of an expectation that using a chelated-metal for PET imaging as in Deri would have worked for the intended purpose of Vasalatiy, i.e., magnetic resonance imaging.
These arguments are not persuasive. First, the rejection is not necessarily based on equivalency, though it is noted both Vasalatiy and Deri are in the same field of endeavor and have the same intended purpose of imaging applications. Second, there need not be bodily incorporation of the teachings of one reference in their entirety with another reference when making an obviousness rejection. Rather, the test for obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In the instant case, the DFO-Bz-NCS-89Zr would provide the advantage of high resolution PET imaging applications.
The declaration under 37 CFR 1.132 filed 06/28/2024 is sufficient to overcome the rejection of the claims based upon Vasalatiy and Deri because the evidence presented is not commensurate in scope with the claimed invention. Note that the independent claim is not limited to whole cells.
Conclusion
No claims are allowed at this time.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Chin whose telephone number is (571)270-3781. The examiner can normally be reached Mon-Thurs, 12-4pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
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/Jennifer Chin/Primary Examiner, Art Unit 1618
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