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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/5/2026 has been entered.
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 10/29/2024 is acknowledged.
Claim 8-15 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II-III, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/29/2024.
While the Applicant has not elected a species at this time and an election is not required at this stage, when the withdrawn claims are examined, the Applicant will be required to make a species election in accordance with the restriction requirement.
Status of Claims
Withdrawn: 8-15
Examined Herein: 1-7
Priority
Priority to PRO 62/823,411 filed on 3/25/2019 and PCT/US2020/024719 filed on 3/25/2020 is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/24/2021 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings filed on 9/24/2021 are accepted.
Withdrawn Rejections
The rejection of claims 1-6 under 35 U.S.C. 103 over Kozyrev and Srivatsan is hereby withdrawn in view of Applicant’s amendments to claim 1, which replaces the previously claimed compound with a different compound, thereby rendering the rejection moot.
The rejection of claims 1-7 under 35 U.S.C. 103 over Kozyrev, Srivatsan, and Pandey is hereby withdrawn in view of Applicant’s amendments to claim 1, which replaces the previously claimed compound with a different compound, thereby rendering the rejection moot.
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kozyrev (Synthesis, Photophysical and Electrochemistry of Near-IR Absorbing Bacteriochlorins Related to Bacteriochlorophyll a, 10/22/2012, The Journal of Organic Chemistry, 77:10260-10271), in view of Srivatsan (In Vitro Cellular Uptake and Dimerization of Signal Transducer and Activator of Transcription-3 (STAT3) Identify the Photosensitizing and Imaging-Potential of Isomeric Photosensitizers Derived from Chlorophyll-a and Bacteriochlorophyll-a, 8/15/2011, Journal of Medicinal Chemistry, 54:6859-6873).
With respect to claim 1, Kozyrev discloses the following bacteriopyropheophorbide comprising a methyl ester substituent:
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219
262
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[Kozyrev, Page 10263, Compound 14, Scheme 3]
Kozyrev does not disclose the compound comprises the following substituents:
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81
108
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122
156
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109
137
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wherein,
R' is an aryl or heteroaryl group having a halogen group,
X is chosen from O, S, or NH,
n is 1-6,
the dotted carbon is chiral and is R or S, and
the halogen group is I or 124I.
However, with respect to claim 1, Srivatsan discloses the following bacteriopyropheophorbide:
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276
214
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[Srivatsan, Page 6860, Scheme 1]
wherein,
R' is an aryl group having a halogen group,
X is O
n is 1,
and the dotted carbon is chiral and is R or S.
With respect to claim 2, Srivatsan discloses the halogen group is 124I. [Srivatsan, Page 6860, Scheme 1]
With respect to claim 3 and 5, Srivatsan discloses R” is a halogen group. [Srivatsan, Page 6860, Scheme 1]
With respect to claim 4 and 6, Srivatsan discloses the halogen group is 124I. [Srivatsan, Page 6860, Scheme 1]
With respect to claim 7, Srivatsan discloses a composition comprising a 124I-labeled photosensitizer and a pharmaceutically acceptable carrier, 10% ethanol/saline. [Srivatsan, Page 6871, Col. 1, Paragraph 3]
Moreover, Srivatsan discloses a synthetic approach for replacing the methyl ester substituent of a bacteriopyropheophorbide-a compound with 124I-Iodobenzyloxyethyl.
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884
1003
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[Srivatsan, Page 6863, Scheme 3]
Modifying the compound disclosed by Kozyrev by replacing the methyl ester substituent with 124I-Iodobenzyloxyethyl, results in the compound of claim 1-6.
Further modifying the the compound disclosed by Kozyrev by combining the compound with a pharmaceutically acceptable carrier, results in the composition of claim 7.
It would be obvious to one of ordinary skill in the art to modify the compound disclosed by Kozyrev by replacing the methyl ester substituent with 124I-iodobenzyloxyethyl and have a reasonable expectation of success. Kozyrev discloses a bacteriopyropheophorbide comprising a methyl ester substituent. Srivatsan discloses a bacteriopyropheophorbide that comprises a methyl ester substituent and a bacteriopyropheophorbide that comprises a 124I-iodobenzyloxyethyl substituent. Srivatsan further discloses the bacteriopyropheophorbide that comprises a methyl ester substituent may be converted into a bacteriopyropheophorbide comprising a 124I-iodobenzyloxyethyl substituent by replacing the methyl ester substituent with a 124I-iodobenzyloxyethyl substituent. So, the disclosure of Srivatsan establishes that a bacteriopyropheophorbide comprising a methyl ester substituent may be replaced with a 124I-iodobenzyloxyethyl substituent. Thus, the combined teachings of Kozyrev and Srivatsan suggest that the bacteriopyropheophorbide comprising a methyl ester substituent disclosed by Kozyrev may be replaced with a 124I-iodobenzyloxyethyl substituent. Therefore, it is reasonable to expect the compound disclosed by Kozyrev may be modified by replacing the methyl ester substituent of the with a 124I-iodobenzyloxyethyl substituent. One would have been motivated to do so because it is prima facie obvious to combine references when some advantage or expected beneficial result would have been produced by their combination. MPEP 2144(II) In the instant case, Srivatsan discloses 124I-iodobenzyloxyethyl pyropheophorbide-a was found to be an effective PET/PDT imaging agent. [Srivatsan, Page 6861, Col. 1, Paragraph 2] Therefore, one would have been motivated by the expectation that the aforementioned modification would enable the compound disclosed by Kozyrev to be employed as an effective PET/PDT imaging agent.
It would be obvious to one of ordinary skill in the art to further modify the compound disclosed by Kozyrev and Srivatsan by combining the compound with a pharmaceutically acceptable carrier and have a reasonable expectation of success. Kozyrev and Srivatsan disclose a 124I-labeled photosensitizer. Srivatsan discloses a composition comprising a 124I-labeled photosensitizer and a pharmaceutically acceptable carrier, 10% ethanol/saline. Thus, the combined teachings of Kozyrev and Srivatsan suggest the 124I-labeled photosensitizer disclosed by Kozyrev and Srivatsan may be present in a composition comprising a pharmaceutically acceptable carrier. Therefore, it is reasonable to expect the compound disclosed by Kozyrev and Srivatsan may be further modified by combining the compound with a pharmaceutically acceptable carrier. One would have been motivated to do so because it is prima facie obvious to combine references when some advantage or expected beneficial result would have been produced by their combination. MPEP 2144(II) In the instant case, Srivatsan discloses dissolving the 124I-labeled photosensitizer in 10% ethanol/saline solution enables the photosensitizer to be used for in vivo experiments. [Srivatsan, Page 6871, Col. 1, Paragraph 3] Therefore, a POSITA would have been motivated by the expectation that combining the compound disclosed by Kozyrev and Srivatsan with a pharmaceutically acceptable carrier would enable the compound to be used for in vivo experiments.
Response to Arguments
Applicant’s arguments with respect to claims 1-7 under 35 U.S.C. § 103 over Kozyrev, in view of Srivatsan have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In the Remarks of 1/5/2026, Applicant asserts “Further, the Examiner has failed to show how one having ordinary skill in the art would modify the compound of Kozyrev to arrive at the instant compound beyond saying you would just substitute the substituent. That is, the references, and by extension the Office Action, fail to provide any synthetic instruction on how to transform the substituent of Kozyrev (the aldehyde) with a substituent of Srivatsan (the chiral ether). Thus, it appears as though the Office Action is merely selecting substituents from different references via hindsight to yield a compound of the present disclosure, without informing or showing how to make such a chemical transformation or if such a chemical transformation could be possible on different substrates.” [Remarks 1/5/2026, Page 10, Paragraph 2]
Applicant is reminded that conclusive proof of efficacy is not required to show a reasonable expectation of success. The reasonable expectation of success requirement refers to "the likelihood of success" in combining or modifying prior art disclosures to meet the limitations of the claimed invention. In other words, the Office must show combining or modifying prior art disclosures can likely be carried out successfully. This burden does not mean the Office needs to show how combining or modifying prior art disclosures are to be carried out or provide the Applicant with data or synthetic instruction to satisfy this burden. MPEP 2143.02(I-II)
Moreover, unpredictability in chemical arts is not sufficient to establish nonobviousness. Thus, Office personnel should not withdraw any rejection solely on the basis that the invention lies in a technological area ordinarily considered to be unpredictable. MPEP 2145(X)(E) To that end, substituting one substituent for another is generally considered routine in chemical arts.
Declaration
The declaration under 37 CFR 1.132 filed 5/14/2025 is acknowledged but moot because the new ground of rejection does not rely on Pandey (U.S. Pat. Pub. No. 2020/0078459). Thus, the issue of whether Pandey is a citable reference against the instant application is immaterial to the instant rejection.
Conclusion
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/K.A.C./Examiner, Art Unit 1618
/Michael G. Hartley/Supervisory Patent Examiner, Art Unit 1618