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 .
Applicants' arguments, filed December 16, 2025, have been fully considered but they are not deemed to be fully persuasive. The following rejections and/or objections constitute the complete set presently being applied to the instant application.
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.
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) 17, 18, 20, 21 and 23 were rejected under 35 U.S.C. 103 as being unpatentable over Pierre et al. (JACS, 2006; cited on IDS filed August 23, 2023) further in view of Caulder et al. (Angew Chem Int Ed, 1998) and Love et al. (WO 91/05762). This rejection is MAINTAINED for the reasons of record set forth in the Office Action mailed September 16, 2025 and those set forth herein.
Applicants traverse this rejection on the grounds that Pierre fails to teach all the features of amended claim 17 as the claimed spacers are not taught by Pierre and therefore there is no prima facie case of obviousness. The chemical arts are inherently unpredictable especially when there is no expectation of similar properties. Pierre and Love fail to teach all the claimed features and Caulder does not cure the deficiencies of Pierre and Love.
These arguments are unpersuasive. In view of the amendments to claim 17, all claims are now rejected over the combination of Pierre et al., Caulder et al. and Love et al. As discussed on p 9 of the September 16, 2025 Office Action, the structural unit used for forming the M4L6 cluster shown in Scheme 1 of Caulder et al. is the same as the elected species, with helicate formation being disfavored by the use of a napthalene spacer. The rest of the molecule being attached via two amines on separate rings of the napthalene as required by the spacer of claim 17 as presently amended (the seventh structure shown in the first line of the second page of claim 17). Only a reasonable and not an absolute expectation of success is required for a prima facie case of obviousness. Pierre et al. discussed the importance of rigid macromolecules and fast water exchange to prepare heteronuclear complexes that can be used as magnetic resonance imaging (MRI) contrast agents with high relaxtivity (see p 7 – 8 of the September 16, 2025 Office Action). Caulder et al. discusses rigidly fixed axes and rapid exchange of inner and outer ions for the compounds disclosed therein, reasonably suggesting to one of ordinary skill in the art that the complexes of Caulder et al. could function as MRI contrast agents such that it would have been obvious to one of ordinary skill in the art as of the effective filing date of the instant invention to use such a compound in combination with MRI to generate images with the MRI contrast agent.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nissa M Westerberg whose telephone number is (571)270-3532. The examiner can normally be reached M - F 8 am - 4 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Nissa M Westerberg/Primary Examiner, Art Unit 1618