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 .
Receipt is acknowledged of Applicant’s Amendment filed on 11/24/2025; and IDS filed on 09/03/2025.
Claim 1 has been amended.
Claim 19 has been added.
Claims 1-15, 18-19 are pending in the instant application.
Claims 10-15 have been previously withdrawn from consideration.
Note, rejections and objections not reiterated from previous office actions are hereby withdrawn. The following rejections or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 102
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 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 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by ZHANG et al (Bioconjugatable, PEGylated hydroporphyrins for photochemistry and photomedicine. Narrow-band, near-infrared-emitting bacteriochlorins. NewJ.Chem., 2016, 40, 7750-7767).
ZHANG teaches PEGylating hydroporphyrin (see title), which includes chlorophylls, such as compounds (see pg. 7751, Chart 2):
PNG
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204
188
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wherein the R groups with PEGs can be (see pg. 7751 at Chart 2-F; and pg. 7752, Chart 3)):
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132
213
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221
243
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which reads on m= 4 or 8.
Additional disclosures include: the PEG units impart water solubility (see abstract), wherein the longer PEG has better water-solubility than the shorter PEG (see pg. 7755, 2nd col) for applications, such as fluorescent markers in clinical diagnostics (see pg. 7751, 1st col).
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.
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.
Claim(s) 1, 2, 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over ZHANG et al (Bioconjugatable, PEGylated hydroporphyrins for photochemistry and photomedicine. Narrow-band, near-infrared-emitting bacteriochlorins. NewJ.Chem., 2016, 40, 7750-7767).
As discussed above, ZHANG teaches Applicant’s invention.
The reference does not specifically teach using a longer PEG unit, such as m=12-24, as claimed by Applicant. The length of a PEG unit in a PEGylated compound is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and reasonably would expect success. It would have been customary for an artisan of ordinary skill to determine the optimal PEG length in order to best achieve the desired results, such as the water solubility of the compound. Thus, absent some demonstration of unexpected results from the claimed parameters, this optimization of PEG length, such as m = 12-24, would have been obvious at the time of Applicant's invention.
Claim(s) 1-3, 6-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KEE et al (Effects of Substituents on Synthetic Analogs of Chlorophylls. Part 1: Synthesis, Vibrational Properties and Excited-state Decay Characteristics. Photochemistry and Photobiology, 2007, 83: 1110–1124) in view of ZHANG et al (Bioconjugatable, PEGylated hydroporphyrins for photochemistry and photomedicine. Narrow-band, near-infrared-emitting bacteriochlorins. NewJ.Chem., 2016, 40, 7750-7767).
KEE teaches chlorophyll (see title) compound (see pg. 1112):
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153
166
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Wherein the chlorophylls have fluorescence properties and have a wide variety of applications (see abstract).
KEE does not teach PEGylating the compound, wherein m = 4 or more.
ZHANG teaches PEGylating hydroporphyrin (see title), which includes chlorophylls, such as compounds (see pg. 7751, Chart 2):
PNG
media_image1.png
204
188
media_image1.png
Greyscale
wherein the R groups with PEGs can be (see pg. 7751 at Chart 2-F; and pg. 7752, Chart 3)):
PNG
media_image2.png
132
213
media_image2.png
Greyscale
PNG
media_image3.png
221
243
media_image3.png
Greyscale
which reads on m= 4 or 8.
Additional disclosures include: the PEG units impart water solubility (see abstract), wherein the longer PEG has better water-solubility than the shorter PEG (see pg. 7755, 2nd col) for applications, such as fluorescent markers in clinical diagnostics (see pg. 7751, 1st col).
It would have been obvious to the person of ordinary skill in the art at the time the invention was made to incorporate PEGylating the compound, wherein m = 4 or more.
The person of ordinary skill in the art would have been motivated to make those modifications, because it would increase water solubility for diagnostic applications, and reasonably would have expected success because both references dealt in the same field of endeavor, such as hydroporphyrins.
The references do not specifically teach using a longer PEG unit, such as m=12-24, as claimed by Applicant. The length of a PEG unit in a PEGylated compound is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and reasonably would expect success. It would have been customary for an artisan of ordinary skill to determine the optimal PEG length in order to best achieve the desired results, such as the water solubility of the compound. Thus, absent some demonstration of unexpected results from the claimed parameters, this optimization of PEG length, such as m = 12-24, would have been obvious at the time of Applicant's invention.
Allowable Subject Matter
Claims 4-5, 9, 18-19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
Telephonic Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAKE MINH VU whose telephone number is (571)272-8148. The examiner can normally be reached Mon-Fri 9:00am-5:30pm.
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/JAKE M VU/Primary Examiner, Art Unit 1618