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 .
The amendment of 10/27/25 has been entered. Claims 18 and 27-32 are pending.
Response to Restriction and Species Elections
1. Applicant’s election without traverse of Group III, claim 18 and the species which is Compound A of Example 1, which is embraced by Formula III wherein m=1, n=0, T= NR6, R6= H, R= C1-C6 alkyl (C3 alkyl), Y=alkylene (ethylene), Pg=methacrylate, R1=C1-C6 alkoxy (methoxy), and EWG = cyano, in the reply filed on 4/23/2025 is acknowledged.
Rejections
Claim Rejections - 35 USC § 112
2. 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.
3. Claims 30 and 32 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.
A. 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 30 recites the broad recitation “M is a monovalent cation”, and the claim also recites “such as sodium or potassium”, which is the narrower statement of the range/limitation. The claim is 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.
B. 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 30 recites the broad recitation “aryl”, and the claim also recites “preferably unsubstituted phenyl or phenyl substituted with alkyl or halo”, which is the narrower statement of the range/limitation. The claim is 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.
Regarding paragraphs 3.A. and 3.B above: the claims will be interpreted as reading on the broad recitations.
C. It is not clear what is required by the instant claim 32 because it is an incomplete sentence. It lacks a verb at minimum. It is not clear if the claim intends to limit the compounds to the recited formulas, intends to exclude the recited formulas, or is intended to have some other meaning because it is an incomplete sentence.
Claim 32 is so unclear that it cannot be further examined.
Claim Rejections - 35 USC § 103
4. 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.
5. Claims 18 and 27-31 are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Application Publication No. 2019/0271798 Mahadevan et al.
Regarding claims 18 and 27-30:
Mahadevan, paragraphs [0389] and [0394], describes a compound falling within the scope of the instant claim 30 where the EWG is -CN, m and n are 0, R is methyl, Pg-Y- is the ethylene methacrylamide moiety, and T is -NH-. Note particularly Mahadevan’s Compound H of paragraphs [0389], [0393], and [0394]. Since the species of Mahadevan, paragraphs [0389] and [0394] is one of the instant claim 30, it is necessarily expected to inherently possess the instantly claimed visible light absorption maximum between 430 and 480 nm and a full width half maximum (FWHM) at the visible light absorption maximum of at least 35 nm and up to 150 nanometers, photostability, and a molar extinction coefficient of at least 7740 L.mol-1.cm-1 and the values of the instant claims 27-28. See MPEP 2112. Mahadevan, paragraph [00394], states that Fig. 2 gives the UV-VIS transmission spectrum for their Compound H. Mahadevan, Fig. 2 shows that their Compound H has the instantly claimed visible light absorption maximum between 430 and 480 nm and a full width half maximum (FWHM) at the visible light absorption maximum of at least 35 nm and up to 150 nanometers of the instant claim 18 and the values thereof of the instant claims 27-28. The fact that the UV-VIS transmission spectrum can be taken for Mahadevan’s Compound H shows that the Compound H has a degree of photostability falling within the scope of the instant claim 18. Mahadevan does not specify the molar extinction coefficient for their Compound H. However, it is a compound of the instant claim 30 and possesses the other properties of the instant claim 1 and therefore necessarily and inherently possesses the instantly claimed molar extinction coefficient of the instant claim 18. Mahadevan’s Compound H is a compound of the instant claim 30 and possesses the other properties of the instant claim 1 and therefore necessarily and inherently possesses the instantly claimed photostability of the instant claims 18 and 29. See MPEP 2112.
Regarding claim 31:
Mahadevan’s Compound H discussed above is close to the compound of the instant claim 30 but does not have R7 of the instant claim 31 formula III. Mahadevan’s general formula, which encompasses their Compound H, of paragraphs [0010]-[0017] includes instances in which n is 1 and is C1-C6 alkoxy on any carbon of the right aromatic ring.
Mahadevan, paragraphs [0162], teaches that the compounds of their invention can be selected to provide targeted absorption of UV and/or high energy visible light. Mahadevan, paragraphs [0162], teaches that such targeting may be achieved, for example, through selection of the hetero atom of the core tricyclic structure. Mahadevan, paragraph [0163], teaches that additional tuning of the absorption characteristics for a given X in the compounds of formula I may be provided by adding or varying the substituents R1 and R2 to, for instance, obtain bathochromic or hypsochromic shifts. Mahadevan, paragraph [0163], teaches that electron donating substituents may, for example, cause red shifts to the UV-VIS absorption spectrum while electron withdrawing groups may cause blue shifts. Mahadevan, paragraph [0163], teaches that the magnitude of these shifts may depend on the electron donating or withdrawing ability and the position of the substituent. Mahadevan, paragraph [0163], teaches that an alkoxy substituent may result in a smaller red shift than, for instance, an amino or thioalkyl group at the same carbon center.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to add the alkoxy group of formula III of the instant claim 31 to Compound H of Mahadevan because such a molecule is encompassed by the general formula of Mahadevan, paragraphs [0010]-[0017], and such an alkoxy group would have been expected to provide a smaller red shift to Mahadevan’s Compound H than, for instance, an amino or thioalkyl group at the same carbon center coupled with similar UV-VIS transmission spectrum and other optical and stability properties as those of Mahadevan’s Compound H.
Regarding the instant claims 18 and 27-31:
Mahadevan discloses using compounds which fall within the scope of those of the instant claims in contact lenses at paragraphs [0009], noting the contact lens, [0010], noting the formula I, [0011], noting m being 0 and n being 1, [0012], noting T being NR, [0013], noting X being NR, [0014], [0015], [0016], noting R being C1-C6 alkyl, [0017], noting R2 being C1-C6 alkoxy, and [0018], noting that EWG is preferably cyano.
Note particularly Mahadevan’s Compound H of paragraphs [0389], [0393], and [0394].
Note that Mahadevan includes contact lenses and intraocular lenses as their ophthalmic devices at paragraphs [0046], [0099], and [0170]. Note that Mahadevan includes C2-C6 as preferred linking groups at paragraph [0086]. Note that Mahadevan further describes cyano as the preferred EWG at paragraphs [0088] and [0122]. Mahadevan, paragraphs [0100]-[0109] and [0112], encompasses the instantly claimed elected compound of the instant claim 1 which is referenced by elected claim 18. Mahadevan, paragraph [0119], discloses methacrylate as the more preferrable polymerizable group Pg. Mahadevan, paragraph [0120], discloses ethylene as being an especially preferred linking group Y.
It is noted that Mahadevan, paragraphs [0167], particularly the final formula thereof, and [0168], particularly noting “Other compounds of the invention may be prepared by those skilled in the art using analogous procedures to those shown in Scheme 1 with appropriate substitution of reagents.” This sentence is taken as including X being NR, R being propyl, and the ring on the cyano side including the oxymethyl group of the elected compound because these compounds are included in the more general formulas of Mahadevan. Since the analogous compound to that of Mahadevan, paragraph [00167] containing X being N-Methyl is exemplified by Mahadevan, the ordinary skilled artisan only needs to change the methyl to propyl and to add the oxymethyl group to arrive at the elected compound of the instant claim 18. These substitutions are encompassed by Mahadevan, including at the disclosures of paragraphs [0143] and [0144]-[0149], by choosing the amino R as propyl and R2 as being the oxyalkyl group oxymethyl. Note particularly Mahadevan’s Compound H of paragraphs [0389], [0393], and [0394].
Mahadevan does not exemplify the instantly claimed inventions or disclose them with sufficient specificity to anticipate the instant claim 18.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to include Mahadevan’s exemplified acridin Compound H and the alkoxy containing variant thereof of the instant claim 31, for the reasons discussed in the above obviousness statement regarding the instant claim 31, in the contact lenses and intraocular lenses of Mahadevan because they are encompassed by Mahadevan for such use and the acridin Compound H of Mahadevan and its alkoxy containing variant falling within the scope of the instant claim 31 would have been expected to give their properties to the contact lenses and intraocular lenses of Mahadevan which contain them, including the properties of the instant claims 18 and 27-29 for the reasons stated above. These acridins of Mahadevan are expected to necessarily and inherently have the properties of the instant claim 1 compound required by elected claim 18 because they have the substructure of the instant claim 30 and are therefore expected to have the properties provided by that substructure necessarily and inherently. See MPEP 2112.
There is no showing of any unexpected results stemming from any difference between the instant claims and the cited prior art which is demonstrated in a manner commensurate in scope with the instant claims and which compares to the closest prior art, e.g. Mahadevan. See MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention [R-08.2012].
Response to Applicant’s Arguments
6. The following response is in reply to the applicant’s arguments as they apply to the new grounds of rejection of paragraph 5 above:
In their response of 10/27/25:
The applicant argues “Claim 18 was rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Application Publication No. 2019/0271798 ("Mahadevan"). Applicant respectfully disagrees with the rejection. The present invention is concerned with compounds that exhibit surprising properties not shared across the genus of compounds disclosed in Mahadevan.” There is no showing of any unexpected results stemming from any difference between the instant claims and the cited prior art which is demonstrated in a manner commensurate in scope with the instant claims and which compares to the closest prior art, Mahadevan. See MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention [R-08.2012]. The applicant’s argument “not shared across the genus of compounds disclosed in Mahadevan” is not persuasive because the entire disclosure of a reference is not required to fall within the scope of the applicant’s claimed invention. It is particularly noted that Mahadevan, paragraphs [0389] and [0394], discloses compound H which falls within the scope of the instant claim 30 and is similar to the compounds of the instant claim 31. Mahadevan, paragraph [0394] notes that Fig. 2 gives the UV-VIS transmission spectrum for their Compound H. Note that Mahadevan’s Fig. 2 shows Compound H to have the instantly claimed absorption maximum and full width half maximum at the visible light absorption maximum. Mahadevan does not specify the molar extinction coefficient for their Compound H. Since Mahadevan’s Compound H falls within the scope of the compounds of the instant claim 30 and has the above two properties in common with the instant claims 18, 27, and 28, it is expected that Mahadevan’s Compound H also has the instantly claimed molar extinction coefficient. See MPEP 2112. Mahadevan’s Compound H necessarily possesses some degree of photostability because it exists long enough to have its UV-VIS transmission spectrum measured. Furthermore, it must necessarily inherently have a degree of photostability of the instant claims because it is a compound of the instant claim 30 and the same compounds must have the same properties. See MPEP 2112.
The applicant’s arguments are therefore not persuasive.
The applicant argues “According to MPEP 2144.08 and relevant case law, patentability of a species or
subgenus embraced by a prior art genus must be analyzed based on the facts and
totality of circumstances. Unexpected results and properties can support non-
obviousness. The present invention's compounds demonstrate such unexpected
properties, rendering them patentable over Mahadevan.
Mahadevan discloses a genus of tricyclic compounds capable of absorbing
ultraviolet and high-energy visible light across a wide range of wavelengths.
Mahadevan, Abstract and 1 [0010]. For instance, combinations of the reference's
compounds (B) and (C) "may provide complete or nearly complete absorption between
300 nm and 400 nm with some absorption in the high energy visible region between 400 nm and 450 nm." Mahadevan, I [0408].
The claimed invention is directed to compounds that demonstrate a subgenus of
absorption profile. In particular, compounds of the invention exhibit a visible light
absorption maximum between 430 and 480 nm and a full width half maximum (FWHM)
at the visible light absorption maximum of at least 35 nm and up to 150 nanometers.
See claim 18.
The absorption profile of the invention is special. This is because the profile
closely matches the absorption profile of natural macular pigment, a material that is
known to provide a number of vision benefits. See specification, page 1. Indeed, the
present invention's compounds A and B provide light absorption profiles that are almost
identical to macular pigment. See specification, page 65, lines 4-6 and Fig. 1. Unlike
macular pigment, however, the compounds of the invention can be polymerized into
contact lenses.
The claimed absorption profile is not specifically disclosed in or shared across
the genus of Mahadevan and demonstrates unexpected properties that support
patentability. The present invention therefore constitutes a selection invention over the
cited prior art genus. Applicant respectfully requests withdrawal of the rejection under
35 U.S.C. § 103.” Mahadevan’s Compound H is not a genus. It is a specific species within the scope of the instant claim 30 compound of formula II. The above argument therefore does not apply. Again, the applicant’s argument “not shared across the genus of compounds disclosed in Mahadevan” is not persuasive because the entire disclosure of a reference is not required to fall within the scope of the applicant’s claimed invention.
There is no showing of any unexpected results stemming from any difference between the instant claims and the cited prior art which is demonstrated in a manner commensurate in scope with the instant claims and which compares to the closest prior art, e.g. Mahadevan. See MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention [R-08.2012].
The applicant’s arguments have been fully considered but are not persuasive for the reasons stated above, the reasons stated in the above rejection, and for the full teachings of the above cited prior art as they would have been understood by the ordinary skilled artisan prior to the instantly claimed invention.
The applicant’s arguments are therefore not persuasive regarding the new grounds of rejection above.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number (571)272-1121. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK D NILAND/ Primary Examiner, Art Unit 1762