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 .
Applicant’s election of Group I, claims 1-6 and 9-15 in the reply filed on 06/17/2025 is acknowledged. Applicant’s election of species is also 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)).
The species elected by applicant was found to be free of the art of record. Therefore, another species was elected by the examiner. The species is
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.
Thus, claims 3-5 are withdrawn as they were only searched and examined to the extent that the reads on applicant’s elected species. Accordingly, claims 1-2, 6 and 9-15 are pending and presented for examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/12/2022 and 10/30/2024 was noted and the submission 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 were received on 01/13/2022. These drawings are acknowledged.
Claim Rejections - 35 USC § 112
Claims 1, 2, 6, and 9-15 are rejected on the judicially-created basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). The improper Markush grouping includes species of the claimed invention that do not share both a substantial structural feature and a common use that flows from the substantial structural feature.
A Markush claim contains an “improper Markush grouping” if: (1) the species of the Markush group do not share a single structural similarity,” or (2) the species do not share a common use. Members of a Markush group share a "single structural similarity” when they belong to the same recognized physical or chemical class or to the same recognized physical or chemical class or to the same art-recognized class. Members of a Markush group share a common use when they are disclosed in the specification or known in the art to be functionally equivalent (see Federal Register, Vol. 76, No. 27, Wednesday, February 9, 2011, p. 7166, left and middle columns, bridging paragraph).
The claims are directed to a compound of formula (I):
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, in which R1 is H or an alkyl group comprising from 1 to 10 carbon atoms, optionally substituted with one or more N atoms, and R2 is selected from an alkyl group comprising from 1 to 10 carbon atoms, optionally substituted with one or more N atoms, -(CH2)nR3, -(CH2)nNHR3, and -(CH2)2(COCH2)nR3 in which n is an integer from 1 to 10 and R3 is -NH2, -OH ,-SO2PhCH3, or -COOH, or R2 is -C(O)(CH2)nC(O)R8,-C(O)(CH2)mO(CH2)mC(O)R8,-C(O)(CH2) nCH(CH3)C(O)R8, -S(O)2(CH2)nC(═O)R8,-S+(O.−)(CH2)nC(═O)R8 or -(CH2)nPPh3+Br− in which R8 is -OH or -NHOH, n is an integer from 1 to 8, and m is an integer from 1 to 4; or R1 and R2 form part of a heterocyclic group Y having from 3 to 12 ring members, Ar1 and Ar2 are each, independently, an aromatic group; and X is selected from unsaturated esters, ketones, carboxylic acids, imidazolones, pyridines, oxazolones, oxazolidinones, barbituric acids and thiobarbituric acids; with the proviso that when Ar1is phenyl, and R1 and R2 form part of a heterocyclic group Y having from 3 to 12 ring members, the N of the heterocyclic group is in a para position relative to the acetylene group of the compound of formula I;
It is duly noted that the compounds of formula (I) do not contain a common core but comprise a wide variety of aromatic rings optionally containing one or more heteroatom and carbon atom combinations (linear/branched as well as substituted and unsubstituted all of which are optionally substituted with a heteroatom) that may include pyrrolyl, imidazolyl, pryaxolyl, pyridinyl, pyrimidinyl, indolyl and benzothiadiazolyl groups, for example. In addition, the specification discloses that heterocyclic group may be substituted with an alkyl group, -COCH3, -C(O)(CH2)nC(O)R8,-C(O)(CH2)mO(CH2)mC(O)R8,-C(O)(CH2) nCH(CH3)C(O)R8, -S(O)2(CH2)nC(═O)R8,-S+(O.−)(CH2)nC(═O)R8 or -(CH2)nPPh3+Br− in which R8 is -OH or -NHOH, n is an integer from 1 to 8, and m is an integer from 1 to 4 may be utilized. Thus, there is no common core consistent with the compound of formula (I), since the claims embrace species from various different chemical classes.
Applicant attention is directed to the third paragraph of MPEP 803.02 which discloses:
“Since the decisions in In re Weber, 580 F.2d 455, 198 USPQ 328 (CCPA 1978) and In re Haas, 580 F.2d 461, 198 USPQ 334 (CCPA 1978), it is improper for the Office to refuse to examine that which Applicants regard as their invention, unless the subject matter in a claim lacks unity of invention. In re Harnisch, 631 F.2d 716, 206 USPQ 300 (CCPA 1980); and Ex parte Hozumi, 3 USPQ2d 1059 (Bd. Pat. App. & Int. 1984). Broadly, unity of invention exists where compounds included within a Markush group (1) share a common utility, and (2) share a substantial structural feature essential to that utility.”
In the instant case, if it is asserted that the claims share a common utility, relates generally to fluorescent and their use of biological of independent claim 1, the genus does not share a substantial structural feature essential to the utility which is a feature that is essential to the activity/function of the claimed species. The only component that is probably consistent from one compound to the other is a diarylacetylene, exemplified by a diphenylacetylene structure. As a result, such a grouping would be repugnant to scientific classification because the carbon-carbon bond alone is not responsible for the utility of the entire molecule. In addition, the wide variety of rings optionally containing one or more heteroatom connected directly or indirectly to the carbon-carbon bond does not allow the genus to have an art recognized classification. Hence, the Markush grouping is improper.
In response to this rejection, Applicant should either amend the claim(s) to recite only individual species or grouping of species that share a substantial structural feature as well as a common use that flows from the substantial structural feature, or present a sufficient showing that the species recited in the alternative of the claims(s) in fact share a substantial structural feature as well as a common use that flows from the substantial structural feature. This is a rejection on the merits and may be appealed to the Board of Patent Appeals and Interferences in accordance with 35 U.S.C. §134 and 37 CFR 41.31(a)(1) (emphasis provided).
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
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 1-2, 6, and 9-15 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.
In claim 1, the scope of the substituents for variable Ar1 and Ar2 in compound of formula (I) is considered indefinite. There is an infinite number of possible molecules that fall within the scope of the compound of formula (I). These structures have a huge array of variable chemical and physical properties. There are certainly potential structures that would meet the structural criteria of the formula but would not be suitable as fluorescent compounds. As a result, claim 1 does not clearly set forth the metes and bounds of patent protection desired.
Claim 9 and 10 are ambiguous because claims refer to formula I, but there is no formula or structure in the claims, thus it indefinite. Applicants are suggested to include the formula I into the claims.
Claims 2, 6 and 9-15 dependent upon claim 1, and are therefore similarly indefinite.
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.
Claim(s) 1, 2, 6 and 9-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Whiting et al. (WO 2018/029473).
Whiting discloses a composition comprising one or more of retinoid compounds in the generation of reactive oxygen species for use in photodynamic therapy (abstract). In one embodiment, discloses
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reads on instant compound of formula (I) (page 14). The light activated compounds are especially suitable for the manufacture of a medicament for use in photodynamic therapy (PDT). In one embodiment, discloses chaperones covalently bound to the compound that can be used for selective targeting of a specific subset of cells. Suitable chaperones include pharmaceutical compound or biologics, such as antibodies, cytokines, chemokines, hormones and other selective binding agents, such as transport proteins, polyglycosides or drug delivery systems, including cyclodextrins etc (page 20, line 10-16). Additional disclosure includes a composition comprising one or more of the compounds in combination with one or more pharmaceutically acceptable excipients for use in the generation of reactive oxygen species. Thus, the Examiner considers each of the forgoing teachings as clearly anticipating the instantly claimed invention.
Conclusion
No claims are allowed at this time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAGADISHWAR RAO SAMALA whose telephone number is (571)272-9927. The examiner can normally be reached Monday-Friday 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hartley G Michael can be reached at 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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/J.R.S/Examiner, Art Unit 1618
/Michael G. Hartley/Supervisory Patent Examiner, Art Unit 1618