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 .
According to paper filed on Oct. 29, 2025, the applicants have elected group I for further prosecution. The applicants have also elected compound of formula (6) as specific species within group I. The applicants have canceled claim 7 and furthermore, have amended claims 1-3.
Claims 1-6, 8-13 and 15 are pending in the application. Claims 11-13 are withdrawn from further consideration as being directed to non-elected invention.
The elected species is allowable over the prior art. Therefore, search has now been extended to additional species.
Claim Rejections - 35 USC § 112
5. 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 3 and 10 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 3, the values of variables R1-R5, R’1-R’5 and X are not defined.
In claim 3, variables R6, R’7 and L3 are mentioned. However, these variables are not present in the formula of claim 3.
Claim 10 recites the limitation "nucleic acid comprising sequence ID No. 8" in claim 1. There is insufficient antecedent basis for this limitation in the claim.
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.
9. 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.
10. Claims 1-2, 4, 6 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kruss (J. Am. Chem. Soc., cited on applicant’s form 1449).
Kruss functionalized and suspended fluorescent single-walled nanotubes (SWCNT’s) with a library of different polymers (n=30) containing phospholipids, nucleic acids and amphiphilic polymers to study how neurotransmitters modulate the resulting band gap, near-infrared fluorescence of the SWCNT (see abstract and conclusion). The SWCNT compound P3 (see figure 2 on page 716) disclosed by Kruss meets all the limitations of instant claims except that nucleic acid comprises sequence ID No. 1 or 2. However, Kruss teaches combination of compound P3 with a nucleic acid for fluorescence. Therefore, it would have been obvious to one skilled in the art to prepare instant combination for increasing fluorescence with reasonable expectation of success unless applicants provide unexpected results of superior activity of combining compound with nucleic acid comprising sequence ID No. 1 or 2.
IMPROPER MARKUSH GROUP
11. Claims 1-6, 8-9 and 15 are rejected on the basis that it contains an Improper Markush grouping of alternatives. See In re Harnisch, 631 F2d 716,721-22 (CCPA 1980) and Ex parte Hozumi, 3USPQ 2d 1059, 1060 (Bd. Pat. App. & int. 1984). A Markush group is proper if the alternatives defined by the Markush group share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if alternatives are all members of the same recognized physical or chemical class of the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above. The members of the Markush grouping may be considered to share a “single structural similarity” and common use when the alternatives share both a substantial structure feature and a common use that flows from the substantial structural feature, see MPEP @ 2117.
The Markush grouping of is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons:
In the instant compounds of formula I, specific values of variables Fd1, Fd2, A, L1, L2 are critical for the common core of these compounds.
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARANJIT AULAKH whose telephone number is (571)272-0678. The examiner can normally be reached Monday-Friday 7:00-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton A Brooks can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARANJIT AULAKH/ Primary Examiner, Art Unit 1621