DETAILED ACTION
In application filed on 06/01/2022, Claims 1 and 4-22 are pending. Claims 1, 4-8 and 21-22 are considered in the current office 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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/01/2022 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 (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 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, 4-5, 7 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over by Ponce (US20060292664A1) in view of D'Vries et al. ("Luminescence, chemical sensing and mechanical properties of crystalline materials based on lanthanide–sulfonate coordination polymers." RSC Advances 6.111 (2016): 110171-110181.).
Regarding Claim 1, Ponce teaches a lanthanide-based, turn-on sensor (referred to as a test surface comprising lanthanide ions, where a complex of the lanthanide ions and aromatic molecules is formed on the test surface [Abstract]), comprising:
an organic analyte (referred to as aromatic molecules [Abstract] or DPA/DP [Para 0032, 0047]); and
a lanthanide compound (referred to as TbCl3 [Para 0047]) that luminesces (See Para 0047…The TbCl3 binds the DPA/DP, which triggers green luminescence; Also See Para 0049… The DPA/DP released upon germination luminesces when complexed with the Tb3+ ions)) in the presence of the organic analyte (referred to as DPA/DP [Para 0043, 0047]) and does not luminesce in the absence of organic analyte (See Para 0053… did not exhibit fluorescence (‘luminescence’) in the absence of organic analyte (See Para 0053… example of imaged Th-DPA/DP complex representing spores on a PDMS test surface containing Tb3+ ions, which were subsequently lysed using plasma cleaning are shown in FIG. 4. Those spores that were not subject to plasma cleaning, and thus did not lyse and release DPA/DP, did not exhibit fluorescence (‘luminescence’) (panel C and D of FIG. 4).)),
wherein the lanthanide-based, turn-on sensor (referred to as a test surface comprising lanthanide ions, where a complex of the lanthanide ions and aromatic molecules is formed on the test surface [Abstract]) is selected from the group consisting of a solid state, suspension, coating and solution (See Para 0035 for a test surface is an adhesive polymer (PDMS, agar, agarose), See Para 0028, 0070…PDMS pieces), thereby teaching “solid state”; Also See Para 0032..a cotton swab teaching “solid state”.
Ponce does not teach that the organic analyte is selected from the group consisting of gossypol and polycyclic aromatic hydrocarbons.
In the analogous art of Lanthanide-coordination polymers (Ln-CPs) constitute relevant compounds for the design of multifunctional materials which are suggested to be promising materials for the elaboration of selective chemical sensors, D'Vries teaches that the organic analyte (referred to as aromatic molecules, principally naphtalene [Abstract]) is selected from the group consisting of gossypol and polycyclic aromatic hydrocarbons (See Abstract…Naphthalene which is a polycyclic aromatic hydrocarbon (PAH), as evidenced by Batterman et al.).
Examiner submits that Batterman et al. teaches that Naphthalene is both a volatile organic compound (VOC) and a polycyclic aromatic hydrocarbon (PAH) and this is evidence that Naphthalene is a polycyclic aromatic hydrocarbon (PAH) (See Introduction).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the organic analyte of Ponce to be selected from the group consisting of gossypol and polycyclic aromatic hydrocarbons, as taught by D'Vries for the benefit of demonstrating the sensing performance of TB towards PAHs (polycyclic aromatic hydrocarbons) including, anthracene and naphthalene, (D'Vries, Page 110179, Sensing studies), allowing for the demonstration of Lanthanide-coordination polymers (Ln-CPs) as promising materials for the elaboration of selective chemical sensors (D'Vries, Abstract).
Regarding Claim 4, the turn-on sensor of Claim 1 is obvious over Ponce in view of D'Vries.
Ponce further teaches that the lanthanide compound (referred to as TbCl3 [Para 0047]) comprises a chemical element selected from the group consisting of lanthanum, cerium, praseodymium, neodymium, promethium, samarium, europium, gadolinium, terbium, dysprosium, holmium, erbium, thulium, ytterbium, lutetium, and chemically similar elements scandium and yttrium, and combinations thereof (See Para 0043… terbium (Tb3+)).
Regarding Claim 5, the turn-on sensor of Claim 1 is obvious over Ponce in view of D'Vries.
Ponce further teaches that the lanthanide-based, turn-on sensor (referred to as a test surface comprising lanthanide ions, where a complex of the lanthanide ions and aromatic molecules is formed on the test surface [Abstract]) is in a form selected from the group consisting of metal-organic framework (MOF), complex, and simple salt (See Abstract…a complex of the lanthanide ions and aromatic molecules, thereby teaching “complex”).
Regarding Claim 7, the turn-on sensor of Claim 1 is obvious over Ponce in view of D'Vries.
Ponce further teaches that the lanthanide compound (referred to as TbCl3 [Para 0047]) is selected from the group consisting of Ln-NH2-TPDC, Ln-N02-TPDC, Ln-NH2-BDC and Ln-2NH2-BDC, and LnX3, where Ln represents Ln3+ cations and X represents an anion (referred to as TbCl3 [Para 0047]; See Para 0006 … terbium Tb+3, where Ln =Tb3+; and X=Cl).
Regarding Claim 21, the turn-on sensor of Claim 1 is obvious over Ponce in view of D'Vries.
Ponce teaches a gossypol sensor, comprising the luminescence (interpreted as “lanthanide” with respect to the objection)-based, turn-on sensor of claim 1 (See Claim 1 rejection for the luminescence (“lanthanide”)- based, turn-on sensor).
Examiner submits that instant Claim 21 teaches the same sensor recited in Claim 1, as the “gossypol sensor” does not include additional structure.
The claimed “a gossypol sensor” in Claim 21 and the luminescence (interpreted as “lanthanide” with respect to the objection)-based, turn-on sensor of claim 1 are substantially identical in structure or composition and would be expected to have similar function.
Regarding Claim 22, the turn-on sensor of Claim 1 is obvious over Ponce in view of D'Vries.
Ponce further teaches that a polycyclic aromatic hydrocarbon sensor, comprising the luminescence (interpreted as “lanthanide” with respect to the objection)-based, turn-on sensor of claim 1 (See Claim 1 rejection for the luminescence (lanthanide)-based, turn-on sensor).
Examiner submits that instant Claim 22 teaches the same sensor recited in Claim 1, as the “polycyclic aromatic hydrocarbon sensor” does not include additional structure.
The claimed “polycyclic aromatic hydrocarbon sensor” in Claim 21 and the luminescence (interpreted as “lanthanide” with respect to the objection)-based, turn-on sensor of claim 1 are substantially identical in structure or composition and would be expected to have similar function.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ponce (US20060292664A1) in view of D'Vries et al. ("Luminescence, chemical sensing and mechanical properties of crystalline materials based on lanthanide–sulfonate coordination polymers." RSC Advances 6.111 (2016): 110171-110181) as applied to claim 1 above, and further in view of Wang et al. ("A novel lanthanide MOF thin film: The highly performance self-calibrating luminescent sensor for detecting formaldehyde as an illegal preservative in aquatic product." Sensors and Actuators B: Chemical 251 (2017): 667-673.).
Regarding Claim 6, the turn-on sensor of Claim 1 is obvious over Ponce in view of D'Vries.
The combination of Ponce and D'Vries does not teach that the lanthanide-based, turn-on sensor is in a form of a thin film.
In the analogous art of a novel lanthanide MOF thin film, Wang teaches that the lanthanide-based, turn-on sensor (Abstract… luminescent Eu-NDC@HPAN thin film ..The film was utilized as a self-calibrating luminescent sensor) is in a form of a thin film (See Abstract…thin film).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the lanthanide-based, turn-on sensor of Ponce and D'Vries to be in the form of a thin film, as taught by Wang, for the benefit of fabricating a sensor having high selectivity, aquo solution stability, low-cost and convenient detection thereby expanding the sensor’s application in biological systems (Wang, Introduction, Page 668), allowing for successfully detecting formaldehyde as an illegal preservative in aquatic products (Wang, Abstract).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Ponce (US20060292664A1) in view of D'Vries et al. ("Luminescence, chemical sensing and mechanical properties of crystalline materials based on lanthanide–sulfonate coordination polymers." RSC Advances 6.111 (2016): 110171-110181) as applied to claim 1 above, and further in view of "Foucault-Collet et al. ("Lanthanide near infrared imaging in living cells with Yb3+ nano metal organic frameworks." Proceedings of the National Academy of Sciences 110.43 (2013): 17199-17204.)
Regarding Claim 8, the turn-on sensor of Claim 1 is obvious over Ponce in view of D'Vries.
The combination of Ponce and D'Vries does not teach that the lanthanide compound is selected from the group consisting of Yb-NH2-TPDC, Yb-N02-TPDC, Nd-NH2-TPDC, Nd-N02-TPDC, Tb- NH2-BDC and Tb-2NH2-BDC, and YbC13.6H20 and NdCl3-6H20.
In the analogous art of Lanthanide near infrared imaging in living cells with Yb3+ nano metal organic frameworks, Foucault-Collet teaches that the lanthanide compound (See Synthesis of Nano-Yb-PVDC-3 section; Page 17203…. A solution of YbCl3·6H2O; Also See Materials and Methods, Reagents… YbCl3·6H2O (99.998%)) is selected from the group consisting of Yb-NH2-TPDC, Yb-N02-TPDC, Nd-NH2-TPDC, Nd-N02-TPDC, Tb- NH2-BDC and Tb-2NH2-BDC, and YbCl3.6H20 and NdCl3-6H20 (See Synthesis of Nano-Yb-PVDC-3 section; Page 17203…. A solution of YbCl3·6H2O; Also See Materials and Methods, Reagents… YbCl3·6H2O (99.998%)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the lanthanide compound of combination of Ponce and D'Vries to be selected from the group consisting of Yb-NH2-TPDC, Yb-N02-TPDC, Nd-NH2-TPDC, Nd-N02-TPDC, Tb- NH2-BDC and Tb-2NH2-BDC, and YbC13.6H20 and NdCl3-6H20, for the benefit of creating unique near-infrared (NIR)–emitting nanoscale metal-organic frameworks (nano-MOFs) which can be incorporated into living cells for NIR imaging (Foucault-Collet, Page 17199), allowing for the demonstration of the possibility of using NIR lanthanide emission for biological imaging applications in living cells with single-photon excitation (Foucault-Collet, Page 17199).
Response to Arguments
Applicant's arguments filed on 10/17/2025, with respect to the objection on Claims 1 and 21-22 have been fully considered and persuasive.
Applicant submits that Claim 1, lines 3-4, are amended to recite "a lanthanide compound that luminesces in a presence of the organic analyte and does not luminesce in an absence of the organic analyte", in accordance with the Examiner's interpretation on page 3 of the Office Action. Furthermore, claims 21 and 22 are amended to recite "the lanthanide-based, turn-on sensor", in accordance with the Examiner's recommendation on page 3 of the Office Action.
Examiner submits that the objection of Claims 1 and 21-22 are withdrawn.
Applicant's arguments filed on 10/17/2025, with respect to the 35 U.S.C. §102 rejections on claims 1-2, 4-5, 7 and 21-22 has been fully considered and not persuasive.
Regarding amended Claim 1, Applicant has amended to recite a lanthanide-based, turn-on sensor that includes an organic analyte selected from the group consisting of a polycyclic aromatic hydrocarbon and gossypol; and a lanthanide compound that luminesces in a presence of the organic analyte and does not luminesce in an absence of the organic analyte, wherein the lanthanide-based, turn-on sensor is selected from the group consisting of a solid state, suspension, coating and solution…Whereas independent claim 1 as amended requires a lanthanide-based, turn-on sensor that includes an organic analyte selected from a polycyclic aromatic hydrocarbon and gossypol; and a lanthanide compound that luminesces in a presence of the organic analyte and does not luminesce in an absence of the organic analyte. Applicant submits there is no mention in Ponce of a system or method for detecting a polycyclic aromatic hydrocarbon or gossypol.
Thus, claim 1 as amended is neither taught nor suggested by Ponce.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Examiner asserts that the combination of Ponce and D'Vries teaches amended Claim 1 limitations.
In the rejection of amended Claim 1, the Ponce reference was not used to teach the turn-on sensor that includes an organic analyte selected from the group consisting of a polycyclic aromatic hydrocarbon and gossypol. However, the D'Vries reference teaches that it is known in the art to have the organic analyte to be selected from the group consisting of gossypol and polycyclic aromatic hydrocarbons.
Consequently, Examiner submits the D'Vries reference was used to teach deficiencies of Ponce that are known in the art. The rejection is maintained.
Applicant's arguments filed on 10/17/2025, with respect to the 35 U.S.C. §103 rejections on claim 3 has been fully considered and persuasive.
Applicant submits that the rejection is moot with respect to cancelled Claim 3.
Examiner found this argument persuasive.
Applicant's arguments filed on 10/17/2025, with respect to the 35 U.S.C. §103 rejections on claim 6 has been fully considered and not persuasive.
Applicant submits that Claim 6 depends upon independent claim 1. At least for the aforementioned reasons, claim 1 is patentable over Ponce. Furthermore, there is nothing in Wang et al. to overcome or cure the shortcomings and deficiencies in Ponce with respect to claim 1. Accordingly, claim 6 is also patentable at least for reason of its dependency upon a patentable base claim, i.e., claim 1.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Examiner asserts that the combination of Ponce, D'Vries and Wang teaches Claim 6 limitations, in light of dependency on Claim 1.
Consequently, Examiner submits the Wang reference was used to teach deficiencies of Ponce and D'Vries that are known in the art. The rejection is maintained.
Applicant's arguments filed on 10/17/2025, with respect to the 35 U.S.C. §103 rejections on claim 8 has been fully considered and not persuasive.
Applicant submits that Claim 8 depends upon independent claim 1. At least for the aforementioned reasons, claim 1 is patentable over Ponce. Furthermore, there is nothing in Foucault-Collet et al. to overcome or cure the shortcomings and deficiencies in Ponce with respect to claim 1. Accordingly, claim 8 is also patentable at least for reason of its dependency upon a patentable base claim, i.e., claim 1.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Examiner asserts that the combination of Ponce, D'Vries and Foucault-Collet teaches Claim 8 limitations, in light of dependency on Claim 1.
Consequently, Examiner submits the Foucault-Collet reference was used to teach deficiencies of Ponce and D'Vries that are known in the art. The rejection is maintained.
Conclusion
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 extension fee 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OYELEYE ALEXANDER ALABI whose telephone number is (571)272-1678. The examiner can normally be reached on M-F 7:30am-5:30pm.
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/OYELEYE ALEXANDER ALABI/Examiner, Art Unit 1797
/JENNIFER WECKER/Primary Examiner, Art Unit 1797