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
Applicant’s arguments, filed 12/4/2025, have been fully considered but they are not deemed to be (fully) persuasive. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objects are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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 8 is 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. Claim 8 recites the probe according to claim 1, “wherein the cancer is…” There is insufficient antecedent basis for this term as claim 1 does not recite “cancer.” Although claim 1 recites “tumors,” tumors are not necessarily cancer. A tumor is simply an abnormal growth or mass of tissue formed by,,extra cells, which can be either benign (non-cancerous) or malignant (cancerous)
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 3-11 are rejected under 35 U.S.C. 102(a1) and (a2) as being anticipated by WO 2016041558 to Kjaer (IDS filed 6/21/2022). Kjaer teaches a probe having a structure adopting to applciant’s formula X-Y-Z and pharmaceutically salts thereof wherein X is Indo-cyanine green (ICG) (a fluorescent agent; a photodynamic agent capable of absorbing light that is transformed into heat upon irradiation with an external source of light and capable of being detected either directly or indirectly in an optical imaging procedure) (page 2, lines 20-24; page 3, line 1 to page 4, line 24), Y represents a spacer or is absent, and Z is a uPAR targeting peptide (page 2, lines 16-18) ), for use in treatment of cancer subject to irradiation with an external laser source that actives X (page 2, lines 20-24; page 3, line 1 to page 4, line 24), an embodiment of which is
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Wherein two glutamic acids (Glu-Gly) are used as a linker between AE105 and ICG (abstract; page 3, lines 1-6). Kjaer further teaches an embodiment of the conjugate (ICG-Glu-Glu-AE105):
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which reads on the present claims (abstract; page 3, line 1 to page 4, line 24).
The examiner notes the limitations in present claims 1 and 8-11 “for use as a medicament subject to irradiation with an external laser source that activates X and/or for use in treatment of cancer subject to irradiation with an external laser source that activates X (claim 1), “wherein the cancer is selected from…” (claim 8), “for use in the treatment of cancer… “ (claim 9), “for use in the treatment of cancer…” (claim 10), and “wherein the probe is administered to a subject…” (claim 11) are intended uses of the claimed invention. The recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the present case, the probe described by Kjaer Is identical to the probe presently claimed, and would therefore be fully capable of being used in the presently recited intended uses.
Applicant’s arguments have been fully considered but are not found persuasive. Regarding applicant’s argument that although Kjaer teaches the same compounds as the present invention, it does not appreciate that those compounds can be used to generate heat to kill subcutaneous tumors, the examiner’s response is that the claims are directed to a product, and not to a method of treating tumors. A composition cannot separated from its properties. As the compounds of Kjaer are the same as the present invention, they would be fully capable of being used for the intended uses recited by applicant.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL W DICKINSON whose telephone number is (571)270-3499. The examiner can normally be reached on M-F 9 AM to 7:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached on 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 an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PAUL W DICKINSON/Primary Examiner, Art Unit 1618
February 7, 2026
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