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 5/14/2026 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 claims 1-3, 27, 30, 36, 39, 49, 69, 92, and 113 were 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) and b) as set forth therein wherein the percentage of carbon atoms by weight in the carbon quantum dot is 20% or more.
In section a), a fused polycyclic ring system comprising 6-membered rings and one or more substitutions of Formula A,
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, are required.
In section b), a polycyclic ring system comprising at least 10 fused 6-member rings fused to one or more of Formula B,
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, are required.
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
Once again, 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 113) filed 5/12/2025 is acknowledged. The restriction requirement was deemed proper and 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 pending section b) 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.
Response to Applicant’s Amendment and/or Arguments
The Applicant's arguments and/or amendment filed 5/14/2026 to the rejection of claims 1-3, 11, 21, 24, 27, 30, 36, 39, 49, 69, 92, 103, and 113 made by the Examiner under 35 USC 112 have been fully considered and deemed persuasive-in-part for the reasons set forth below.
112 Second Paragraph Rejections
I. All of the outstanding 112 rejections, except those below, are WITHDRAWN because Applicant amended the rejections to overcome the rejections.
II. The 112 second paragraph rejections below were modified to be consistent with the pending claims.
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. 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 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 b), 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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.
Independent claim 1 encompasses a multitude of structurally distinct 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, in regards to sections a and b, for example, the structures comprise 6-membered rings and any other ring combinations thereof. For section b), you have at least 10 fused 6-membered rings that have at least one
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fused to the structure. For section a), you have an unlimited number of 6-membered rings, include structures with less than 10 fused member as well as an infinite number of rings wherein the ring system has a non-cyclic component,
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, attached thereto. Thus, the claims include a multitude of distinct structures and due to an inability to envision all of the compounds defined by the Markush groups, the claim is deemed to be vague and indefinite.
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 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 is further configured to selectively enter the tumor or cancer cell.
APPLICANT’S ASSERTIONS
In summary, it is asserted that the amendment to the claim addresses the issue.
EXAMINER’S RESPONSE
Applicant incorporated the term ‘further’ before the phrase ‘configured to selectively enter a tumor or cancer cell’ and ‘configured to selectively enter nucleus of a tumor or cancer cell’. Applicant’s amending of the claims is directed to an active step (further configured to...cancer cell’), not the incorporating of a component that is directed to the product (carbon quantum dot). Incorporation of additional structural limitations (e.g., the polycyclic ring system further comprising a halogen or radionuclide) to further limit (specify/identify) the carbon quantum dot. The amendments to claim 49 are still directed to the active steps (making some kind of modification to the carbon quantum dot so that it selectively enters tumor or cancer cells). The amendment to lines 4-9 of claim 49 are directed to the intended use of the carbon quantum do after being configured to target tumor and cancer cells. Specifically, lines 4-9 are directed to specific types of tumors that are targeted.
For the reasons set forth herein, the rejection is still deemed proper.
NEW GROUNDS OF REJECTIONS
112 Second Paragraph Rejections
Claim 113 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 113: The claim is ambiguous because it contains improper Markush terminology. Proper Markush terminology requires a ‘closed’ listing of ingredients. The term ‘comprises’ allows for unnamed ingredients to be present in the listing. In addition on page 39, embodiment 69 discloses that the releasable cargo is (not ‘comprises’) a therapeutic agent. On page 40, embodiment 71 disclose that the releasable cargo is a therapeutic agent, a prophylactic agent, a diagnostic agent, a marking agent, a prognostic agent, and imaging agent, or a combination thereof. Thus, what is in the amended claim is not consistent with the specification.
Comments/Notes
It should be noted that no prior art is cited against section b) of pending claims 1-3, 11, 21, 24, 27, 30, 36, 39, 49, 69, 92, 103, and 113 (all claims in part). In particular, section b) 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 one or more subunits of Formula B,
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.
Due to the fact that pending claim 1 contains unexamined distinct species and other claims contain withdrawn subject matter, it was determined that a written communication is appropriate to allow one to possibly make amendments to the claims.
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.
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.
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
July 23, 2026
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