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 .
Acknowledgments and Claim Status
The Examiner acknowledges receipt of the amendment filed 5/12/2025 wherein claims 4-6, 8-10, 12-20, 22, 23, 25, 26, 28, 29, 31-35, 37, 38, 40-48, 50-54, 56-68, 70-80, 82, 83, 85, 86, 88, 90, 91, 95-102, 104-109, and 111 were canceled and claim 113 was amended. In addition, the Examiner acknowledges the amendment filed 10/23/2025 which is a duplicate of that filed 5/12/2025. Still, the Examiner acknowledges receipt of the amendment filed 5/2/2022 wherein the specification was amended.
Note(s): Claims 1-3, 7, 11, 21, 24, 27, 30, 36, 39, 49, 55, 69, 81, 84, 87, 89, 92-94, 103, 110, 112, and 113 are pending.
Priority
This application is a 371 of PCT/CN2019/115263 filed 11/4/2019.
Note(s): The earliest effective filing date is 11/4/2019 as the invention is fully disclosed in the PCT application.
Claim Interpretation
Independent claim 1 is directed to carbon quantum dots that fall within categories a, b, c, d, and/or e wherein the percentage of carbon atoms by weight in the carbon quantum dot is 20% or more.
Claim 55 is directed to a method of preparing a polycyclic compound or particle as set for therein.
Claim 81 is directed to a method of sensing, marking, or imaging a targeting cel, tissue, or organ in a subject.
Claim 93 is directed to a method of treating or preventing a disease or condition in a subject.
Claim 110 is directed to a method of detecting and/or isolating a tumor or cancer cell.
Applicant’s Election
Applicant's election without traverse of Group I (pending claims 1-3, 7, 11, 21, 24, 27, 30, 36, 39, 49, 69, 92, 103, and newly added 113 filed 5/12/2025 is acknowledged. The restriction requirement is still deemed proper and is therefore made FINAL.
Note(s): It is duly noted that the response to the election of species in the reply filed 5/12/2025 was not fully responsive. Thus, a notice of non-compliance was mailed. Applicant submitted a second response to the election of species portion of the restriction requirement on 10/23/2025.
In the reply filed 10/23/2025, Applicant elected the following species for initial examination. In some of the categories (e.g., R1, precursor, and releasable cargo), one did not elect a single component. Thus, the first component appearing in the groups was considered to be the component of interest for the elected species. Also, while Applicant asserts that the elected species falls within section b of claim 1 (lines 6-12), the species actually falls within section c of claim 1 which requires at least 10 fused 6-membered rings wherein the ring system is fused to at least one subunit of Formula B,
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. Specifically, Applicant elected the species
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comprising Formula B,
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wherein R1 is methyl; there are two precursors (an alpha amino carboxylic compound) and a C1 alcohol (methanol); gene of interest is GAPDH; the LAT1 components has two subunits, 4F2hc/CD98 heavy subunit and CD98 light subunit; a releasable cargo component that is a therapeutic agent (topotecan hydrochloride). Claims 1-3, 11, 21, 24, 27, 30, 36, 39, 49, 69, 92, 103, and 113 read on the elected species. Initially, Applicant’s elected species was searched. Since no prior art was found to reject the species, the search was expanded over the full scope of section c of independent claim 1. The search was not further extended over independent claim 1 because the claim encompasses distinct species that are non-obvious variants of one another as detailed below.
Withdrawn Claims
Claims 7, 55, 81, 84, 87, 89, 93, 94, 110, and 112 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention/species.
Information Disclosure Statement
The information disclosure statements filed 5/15/2025 and 6/5/2025 were considered.
112 Second Paragraph Rejections
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 1-3, 11, 21, 24, 27, 30, 36, 39, 49, 69, 92, 103, and 113 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.
Claims 1-3, 11, 21, 24, 27, 30, 36, 39, 49, 69, 92, 103, and 113: Independent claim 1 is ambiguous for the following reasons: (1) according to MPEP 2173.05(h), while a Markush grouping may include a large number of alternatives, and not necessarily be indefinite under, in certain circumstances, a Markush group may be so expansive that a skilled artisan cannot determine the metes and bounds of the claimed invention.
In pending claim 1, Section a, the invention is directed to compounds comprising a core structure comprising any fused polycyclic array of 6-membered rings which are independently aromatic or unsaturated and wherein the polycyclic array of 6-membered rings is substituted with at least one C1-C3 alkyl group that is substituted with at least a carboxyl group and an amino group.
In pending claim 1, Section b, the invention is directed to compounds comprising a fused polycyclic ring system comprising 6-membered rings independently aromatic or unsaturated wherein the polycyclic ring system is substituted with at least one group of Formula A,
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.
In pending claim 1, Section c, the invention is directed to polycyclic aromatic or partially aromatic ring systems comprising at least 10 fused 6-membered rings wherein the polycyclic aromatic or partially aromatic ring system is fused to at least one subunit of Formula B,
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.
In pending claim 1, Section d, the invention is directed to carbon quantum dots that are configured to selected enter cells that express a large neutral amino acid transporters.
In pending claim 1, Section e, the invention is directed to carbon quantum dots that are configured to selectively enter a tumor or cancer cell.
Thus, independent claim 1 encompasses a multitude of carbon quantum dot structures defined by multiple Markush groups and subgroups thereof. As a result, pending claim 1 encompasses a massive number of distinct alternative members such that one skilled in the art cannot determine the metes and bounds of the claim. For example, it is unclear what specific substances Applicant is referencing that selectively enter a cell that expresses a large neutral amino acid transport or subunit thereof. In addition, it is unclear what specific carbon quantum structures Applicant is referencing that are configured to selectively enter a tumor or cancer cell. Still in regards to sections a and b, for example, the structures comprise 6-membered rings and any other rings thereof. Thus, due to an inability to envision all of the compounds defined by the Markush groups, the claim is deemed to be vague and indefinite.
(2) Claim 1 is also ambiguous because in lines 5 and 12, the term ‘or’ appears at the end of the sections; however, in lines 22 and 24, the term ‘and/or’ appear. Thus, it is unclear exactly what combinations Applicant is pairing.
(3) In addition, claim 1 is ambiguous because of the phrase ‘preferably 40% or more’ (see line 27). Specifically, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation ‘percentage of carbon atoms by weight ins said carbon quantum dot is 20% or more’ (line 26-27), and the claim also recites ‘preferably 40% or more’ (line 27) which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Since claims 2, 3, 11, 21, 24, 27, 30, 36, 39, 49, 69, 92, 103, and 113 depend upon independent claim 1 for clarity, those claims are also vague and indefinite.
Claim 30: The claim is ambiguous because it is unclear what specific substances Applicant is referencing that preferentially internalizes a branched chain amino acid and/or an aromatic amino acid.
Claims 30, 36, 39, 69, and 113: Regarding claims 30 (line 3), 36 (lines 3 and 5), 39 (lines 3-4 and 5-6), 69 (lines 2-3), and 113 (lines 2-3), the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 39: The claim is ambiguous because it is a product claims that also incorporates active steps. According to MPEP 2173.05(p), a single claim directed to both a product and method steps for using such product is indefinite. In particular, the claim is indefinite because while the claim initially sets forth a product, the claim limitation is not directed to the product, but rather to actions involving the product which creates confusion as to when direct infringement occurs. Specifically, it is unclear whether infringement occurs when one has a product comprising carbon quantum dot components (see claim 1) or when photoacoustic imaging or near infrared fluorescence imaging is conduct on tissue or for tumor or cancer imaging.
Claim 49: The claim is ambiguous because it is a product claims that also incorporates active steps. According to MPEP 2173.05(p), a single claim directed to both a product and method steps for using such product is indefinite. In particular, the claim is indefinite because while the claim initially sets forth a product, the claim limitation is not directed to the product, but rather to actions involving the product which creates confusion as to when direct infringement occurs. Specifically, it is unclear whether infringement occurs when one has a product comprising carbon quantum dot components (see claim 1) or when the quantum dot selectively enters the tumor or cancer cell.
Claim 92: The phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 113: The claim is ambiguous because it is a product claims that also incorporates active steps. According to MPEP 2173.05(p), a single claim directed to both a product and method steps for using such product is indefinite. In particular, the claim is indefinite because while the claim initially sets forth a product, the claim limitation is not directed to the product, but rather to actions involving the product which creates confusion as to when direct infringement occurs. Specifically, it is unclear whether infringement occurs when one has a product comprising carbon quantum dot components (see claim 1) or when the quantum dots detect or isolate a circulating tumor or cancer.
Comments/Notes
It is duly noted that in claim 92 which is a product claim, the intended used of the composition is disclosed. The product is intended to be used for treating cancer. Applicant is respectfully reminded that patentability of a product is based on the components of the product itself, not the intended use of the product which is generally disclosed in a method claim.
It should be noted that no prior art is cited against section c of pending claim 1. In particular, section c is distinguished over the prior art of record because the prior art neither anticipates nor renders obvious a carbon quantum dot comprising at least 10 fused 6-membered polycyclic aromatic or partially aromatic ring systems fused to at least one subunit of Formula B.
Conclusion
Claims 1-3, 11, 21, 24, 27, 30, 36, 39, 49, 69, 92, 103, and 113 are rejected. Claims 7, 55, 81, 84, 87, 89, 93, 94, 110, and 112 are withdrawn.
Future Correspondences
Any inquiry concerning this communication or earlier communications from the examiner should be directed to D L Jones whose telephone number is (571)272-0617. The examiner can normally be reached M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael G. 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.
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/D. L. Jones/
Primary Patent Examiner
Art Unit 1618
February 12, 2026