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 .
DETAILED ACTION
Claims 1-5 and 7-10 are pending in the instant application.
Election/Restrictions
Applicant’s election of Group I,
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and the species of Compound (3), disclosed in paragraph [0105] on page 49 of the instant specification (reproduced below),
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in the reply filed on May 6, 2025 was acknowledged in the previous Office Action. 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 § 818.03(a)).
The requirement was deemed proper and therefore made FINAL in the previous Office Action.
Claims 9 and 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 6, 2025.
Applicant has requested rejoinder of claims 9 and 10 on page 14 of the Remarks section filed on
July 22, 2025. However, rejoinder of claims 9 and 10 is not applicable because claims 9 and 10 do not include all of the limitations of the compounds claimed in claim 1 since claims 9 and 10 are directed to a different product. Further, the currently amended claimed compounds of elected Group I are not allowable.
Rejections and objections made in the previous Office Action that do not appear below have been overcome by Applicant’s amendments to the claims. Therefore, arguments pertaining to these rejections and objections will not be addressed.
As a result of the current amendments to the claims per the Amendment filed July 22, 2025, the following objections and rejection now apply.
Claim Objections
Claims 1, 4 and 8 are objected to because of the following informalities:
in claim 1, under the definition of L12, “represent” should have been changed to “represents”;
in claim 1, 3rd line from the end of the claim, “and” should have been deleted;
in claim 4, line 5 of the claim, “wherein” should have been added before the definition of L12; and
in claim 8, line 2 of the claim, “and” should have been deleted.
Claim Interpretation
Upon review of the current amended claims and the instant specification, the following interpretation has been made when considering prior art.
The currently amended compounds of instant Formula (1) and Formula (2) in the claims can be substituted with substituents in addition to those substituents recited in the claims. See page 7 and page 39 of the instant specification (reproduced in-part below).
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The comparative showing in the instant specification on pages 41 and 58 has again been considered as a result of the current amendments to the claims.
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It has been determined that Applicant did not compare his claimed compounds with the structurally closest prior art compounds. See Compounds 3, 4, 7 and 8 in Yue et al. {U.S. Patent 8,889,886}. Applicant relying upon comparative showing to rebut prima facie case must compare his claimed invention with the closest prior art. In re Holladay, 199 USPQ 516 (C.C.P.A. 1978). See MPEP §716.02(e).
Additionally, the comparative showing in the instant specification is not commensurate in scope with the instant claimed invention. In re Greenfield, 197 U.S.P.Q. 227 (1978) and In re Lindner, 173 U.S.P.Q. 356 (1972). Also see MPEP §716.02(d). To establish unexpected, beneficial and superior results of the instant claimed compounds over the closest prior art compounds, Applicant should compare by testing a sufficient number of exemplified prior art compounds with the compounds of the instant claimed invention. For all the reasons given above, the comparative showing in the instant specification is not persuasive.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-5, 7 and 8 are rejected under
35 U.S.C. 103 as being unpatentable over Yue et al. {U.S. Patent 8,889,886}.
Determination of the scope and content of the prior art (MPEP §2141.01)
Applicant currently claims compounds of instant Formula (1) and Formula (2),
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Yue et al. teach compounds of the formula (column 25, lines 10-15),
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which are structurally similar to the instant claimed compounds. See Compounds 3, 4, 7 and 8 in the Figures; column 5, lines 55-58; column 7, lines 12-18; column 11, lines 27-38; column 13, lines 3-20; and columns 25-26.
Ascertainment of the difference between the prior art and the claimed invention (MPEP §2141.02)
The difference between the compounds of Yue et al. and the compounds instantly claimed is that the instant claimed compounds are generically described in Yue et al. For instance, the difference between Compounds 3, 4, 7 and 8 in Yue et al. and the instant currently claimed compounds is that of a straight chain sulfoalkyl group as found in the compounds of Yue et al.,
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{Figure 1(c)},
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{Figure 1(d)},
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{Figure 1(e)},
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{Figure 1(e)},
versus a branched sulfoalkyl group as currently claimed in the definitions of variables R2, R4 and L11 in instant currently amended claim 1. However, Yue et al. teach that the term “alkyl”, by itself or as part of a substituent, includes a straight chain or a branched chain hydrocarbon radical (column 11, lines 27-38),
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One skilled in the art would envision that the “alkyl” of the sulfoalkyl group can be a straight chain as found in Compounds 3, 4, 7 and 8 of Yue et al. or a branched chain because such is taught by Yue et al.
Finding of prima facie obviousness--rational and motivation
(MPEP §2142-2143)
The indiscriminate selection of “some” among “many” is prima facie obvious, In re Lemin, 141 USPQ 814 (C.C.P.A. 1964). The motivation to make the claimed compounds derives from the expectation that structurally similar compounds would possess similar activity (e.g., a cyanine dye). Further, replacing a straight chain sulfoalkyl group as found in specific compounds disclosed in Yue et al. with a branched sulfoalkyl group as instantly claimed is an obvious modification to those skilled in the art.
It would have been obvious for a person of ordinary skill in the art, before the effective filing date of the instant claimed invention, to prepare products embraced by Yue et al. A person of ordinary skill in the art would have been motivated to prepare products embraced by Yue et al. to arrive at the instant claimed products with the expectation of obtaining additional beneficial products which would be useful as a cyanine dye. The instant claimed invention would have been suggested to one skilled in the art and therefore, the instant claimed invention would have been obvious to one skilled in the art.
Allowable Subject Matter
The elected species of Compound (3), disclosed in paragraph [0105] on page 49 of the instant specification, is allowable over the prior art of record.
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.
This application contains claims 9 and 10 are drawn to an invention nonelected without traverse in the reply filed on May 6, 2025. Rejoinder is not applicable to the subject matter claimed in claims 9 and 10. A complete reply to the final rejection must include cancellation of nonelected claims or other appropriate action (37 CFR 1.144) See MPEP §821.01.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to:
Laura L. Stockton
(571) 272-0710.
The examiner can normally be reached on Monday-Friday from 8:30 am to 6 pm, Eastern Standard Time.
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,
Joseph K. McKane can be reached on 571/272-0699. 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.
/LAURA L STOCKTON/ Primary Examiner, Art Unit 1626 Work Group 1620
Technology Center 1600
September 15, 2025
Book XXVII, page 89