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 .
Election/Restriction
Applicant’s election without traverse of Group I, claims 1-4, in the reply filed on 17 October 2025 is acknowledged. Claims 5-7, 9, 10, 13, 15, and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Specification
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
The disclosure is objected to because of the following informalities: the appropriate section headings must be added, including BRIEF DESCRIPTION OF THE DRAWINGS (page 31, line 10).
Appropriate correction is required.
Claim Objections
Claims 1, 2, and 4 are objected to because of the following informalities:
Regarding claim 1, the semicolon after each of SO3H and NHCOR6 in the definition of R1 must be replaced by a comma.
Regarding claim 1, a semicolon must be added after the definition of R1.
Regarding claims 1 and 2, hyphens (or other symbol) must not be used as bullet points.
Claim 4 must end with a period.
Appropriate correction is required.
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.
Claims 1-4 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The claims fail to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
Independent claim 1 recites the following limitations: "R1 is selected from the group comprising…"; "R2 is selected from the group comprising…"; and "R6 is selected from the group comprising…" It is unclear whether Applicant intends the recited choices to be optional limitations. The transitional phrase "comprising" is open-ended and does not exclude unrecited elements, unlike the transitional phrase "consisting of." See MPEP 2111.03. It is unclear whether the limitations of the recited groups are a required part of the claimed invention.
Claim 1 recites the choice of "O2CR6" for R1. The intended structure of this choice is completely unclear.
Claim 1 recites the limitation "R3 is a C3-C25 alkyl, linear or branched, saturated or not, cyclic or not." It is completely unclear what is meant by a non-saturated alkyl. The instant specification does not set forth a special definition of "alkyl," while the accepted meaning is a univalent group -CnH2n+1 derived from an alkane by removal of a hydrogen atom from any carbon atom. Accordingly, an alkyl group is saturated. The term "alkyl" is indefinite because the specification does not clearly redefine the term to encompass something that can be non-saturated. Moreover, the specification provides numerous examples of the "C3-C25 alkyl, linear or branched, saturated or not, cyclic or not" (page 4, line 6 to page 6, line 7), including radicals derived from heteroaryl groups (e.g., "- purinyl," page 4, lines 34-35). One of ordinary skill in the art would not interpret a purinyl group to be an example of an alkyl group. In view of the teaching of the specification that examples of "C3-C25 alkyl, linear or branched, saturated or not, cyclic or not" include disparate groups including "purinyl," and in the absence of a clear redefinition of the term "alkyl" by the instant specification, the scope of the term "alkyl" is unclear in view of the specification. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999).
Claim 1 recites the following limitation:
R4 and R5 are selected from the group consisting of:
R4 and R5 are either …,
R4 is … and R5 is …, and
R5 is … and R4 is …;
Contrary to the limitation "R4 and R5 are selected from the group consisting of," what follows is not a group from which R4 and R5 are selected. This is indefinite. Instead, what follows are three alternative definitions of R4 and R5.
Claim 1 recites the limitation "… a C2-C25 alkyl, linear or branched, saturated or not, cyclic or not..." The phrase "saturated or not" to describe "alkyl" is indefinite, as previously set forth. Likewise, the term "alkyl" itself is unclear in view of the specification, as previously set forth. Furthermore, it is unclear what is meant by a "linear or branched" C2 alkyl. Moreover, it is unclear how a C2 alkyl can be cyclic.
Claim 1 recites the following limitation:
R4 and R5 are either together and independently from each other a C2-C6 alkyl, linear or branched, saturated or not, cyclic or not, substituted by at least a hydroxyl group,
The intended meaning of limitation "…are either together and independently from each other a …" cannot be discerned. Is this limitation meant to be "…either…or…"? Such a re-write would also be indefinite, given that R4 and R5 cannot together be a single alkyl group according to the customary meaning of an alkyl group, which is a univalent group derived from an alkane by removal of a hydrogen atom from any carbon atom to form -CnH2n+1. If R4 and R5 together form a single group, that single group must be divalent.
For purposes of applying prior art, the limitation "together" is interpreted as being modified by the limitation "substituted by at least a hydroxyl group." In other words, R4 and R5 together are substituted by at least a hydroxyl group.
Claim 1 recites the limitation "… a C2-C6 alkyl, linear or branched, saturated or not, cyclic or not..." The phrase "saturated or not" to describe "alkyl" is indefinite, as previously set forth. Likewise, the term "alkyl" itself is unclear in view of the specification, as previously set forth.
Claim 1 recites the limitation "… a C1-C6 alkyl, linear or branched, saturated or not, cyclic or not..." The phrase "saturated or not" to describe "alkyl" is indefinite, as previously set forth. Likewise, the term "alkyl" itself is unclear in view of the specification, as previously set forth. Furthermore, it is unclear what is meant by a "linear or branched" C1 or C2 alkyl. Moreover, it is unclear how a C1 or C2 alkyl can be cyclic.
Claim 1 recites the limitation "or a salt or a solvate thereof" immediately after the definition of R6. It is unclear what is modified by this definition. Although the grammar suggests that this limitation modifies the previous phrase ("R6 is selected in the group comprising hydrogen atom and a C1-C6 alkyl, linear or branched, saturated or not, cyclic or not"), this interpretation does not make any sense.
Regarding claim 1, the term "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the term are part of the claimed invention.
Claims 2-4 are rejected for depending from claim 1.
Regarding claim 2, the definitions of R4 and R5 are indefinite for the reasons set forth regarding claim 1. Moreover, the following phrases are non-standard and unclear: "alkyl linear saturated" and "saturated substituted by…" Moreover, a "saturated" alkyl group is unclear because according to the customary meaning of the term, an alkyl group must be saturated. As previously set forth, the term "alkyl" itself is unclear in view of the specification.
Claim 3 recites the limitation "wherein R4 and R5 are together and independently from each other..." The meaning of "together" within this limitation is completely unclear.
Claim 3 recites the limitation "wherein R4 and R5 are together and independently from each other or …" This limitation is grammatically incorrect and the meaning of the word "or" is unclear.
Claim 3 recites the limitation "wherein n and m are together and independently from each other an integer from 1 to 4." The meaning of "together" within this limitation is completely unclear.
Claim 4 recites the limitation "The fluorescent compound according to claim 1 of the following formula." There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation "of the following formula:…" However, what follows this limitation is plural formulae.
Claim Rejections - 35 USC § 102
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.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Barrio (US 2002/0022002; newly cited).
Regarding claims 1-3, Barrio discloses a fluorescent compound ([0047]) of Formula I (abstract, [0006]-[0009]; claim 22).
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Formula I of Barrio corresponds to the claimed formula I or I-a, where A is N; R1 and R2 are each a hydrogen atom; R3 is a non-cyclic linear or branched C3-C6 alkyl according to the customary meaning of "alkyl" (R1 is -C(O)-alkyl: abstract, [0007]; claim 22; where alkyl is propyl, isopropyl, butyl, isobutyl, t-butyl, pentyl, or hexyl, [0042]); and R4 and R5 is each
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, where n is 1 (R2 and R3 is each alkylenyl-R10 where R10 is -OH: abstract, [0009]; claim 22; where alkylenyl is ethylenyl (—CH2CH2—), [0042]).
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.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Petric ("Dicyanovinylnaphthalenes for neuroimaging of amyloids and relationships of electronic structures and geometries to binding affinities," Proc. Natl. Acad. Sci. U.S.A. 2012; previously cited),
Regarding claims 1 and 2, Petric discloses compound 9a (Fig. 1), which is a fluorescent compound (abstract; page 16493, first sentence):
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Compound 9a of Petric corresponds to a fluorescent compound of formula I or I-a, where A is N; R1 and R2 are each a hydrogen atom; R3 is a non-cyclic branched C4 alkyl according to the customary meaning of "alkyl"; R4 is a C2 alkyl substituted by a hydroxyl group, according to the customary meaning of "alkyl"; and R5 is a C1 alkyl according to the customary meaning of "alkyl."
For purposes of applying prior art, the limitation "together" is interpreted as being modified by the limitation "substituted by at least a hydroxyl group." In other words, R4 and R5 together are substituted by at least a hydroxyl group. Compound 9a of Petric satisfies this requirement.
Compound 9a of Petric differs from the fluorescent compound of formula I or I-a in that R5 of Compound 9a is a C1 alkyl rather than a C2 alkyl. The claimed ethyl substituent is a homologue of the disclosed methyl substituent. Homologues are a class of compounds differing only by a methylene linkage and possessing similar structure. Accordingly, it would have been obvious to one of ordinary skill in the art to replace the methyl substituent of Compound 9a of Petric with a homologue such as ethyl in view of their closely related structures and the resulting expectation of similar properties.
Allowable Subject Matter
Claim 4 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) and the objection set forth in this Office action. If put in independent form, claim 4 must not include redundant or broader limitations recited in claim 1.
The prior art of record does not disclose a fluorescent compound selected from the formulae of claim 4, or a salt or a solvate thereof. In comparison to Formula (15) of claim 4, the closest prior art of Barrio (US 2002/0022002) does not disclose the claimed R3.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELLE ADAMS whose telephone number is (571)270-5043. The examiner can normally be reached M, T, Th, and F, 12-4 P.M.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached at (571) 272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHELLE ADAMS/ Examiner, Art Unit 1797
/JENNIFER WECKER/ Primary Examiner, Art Unit 1797