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 .
Response to Amendment
This action is in response to applicants’ amendment of 20 February 2026. The amendments to the claims have overcome the objection to claim 28; the 35 USC 112(b) rejections over claims 4, 14 and 16; and the art rejections. Applicant's arguments with respect to the remaining rejections and the objection to the disclosure have been fully considered but they are not persuasive. The objection and rejection over the definition for variable X- has been clarified that is issue is that the composition of the anion represented by this variable is not defined
Election/Restrictions
Claim 1 directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(B), claims 45, 46 and 51, directed to the process of making or using an allowable product, previously withdrawn from consideration as a result of a restriction requirement, are hereby rejoined and fully examined for patentability under 37 CFR 1.104. Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on 14 May 2025 is hereby withdrawn.
Claim 1 is allowable. The restriction requirement between species A-C, as set forth in the Office action mailed on 14 May 2025, has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of 14 May 2025 is withdrawn. Claims 31, 32, 34-36 and 38, directed to species B and C, are no longer withdrawn from consideration because the claims require all the limitations of an allowable claim. These claims are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The disclosure is objected to because of the following informalities: The composition of the anion represented by the variable X- for formulas (9) and (17) is not defined. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 9, 18 and 27 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 9 and 27 are indefinite since the composition of monoatomic anion X- is not defined.
In the fluorescence/luminescence art, the terms “absorption peak” and “excitation maximum” are used interchangeable. Claim 18 teaches that the composition of claim 1, when measured at a concentration of about 2.1x1011 to about 3.2x1011 nanoparticles per mL, have an absorption peak, or excitation maximum, of about 340-360 nm. This claim also teaches the composition of claim 1 wherein the first fluorescent moiety comprises fluorescein, when measured at a concentration of about 2.1x1011 nanoparticles per mL, have an absorption peak, or excitation maximum, of about 480-500 nm and the composition of claim 1 wherein the first fluorescent moiety comprises cyanine 5.5, when measured at a concentration of about 2.5x1011 nanoparticles per mL, have an absorption peak, or excitation maximum, of about 662-682 nm. These absorption peak, or excitation maximum ranges for species of claim 1 are outside the range taught for the composition of claim 1, as set forth in lines 8-10 of claim 18. For this reason, claim 18 is indefinite.
Response to Amendment
Applicants’ arguments with respect to the above objection and rejections have been considered but are not convincing. Applicants argue the rejection and objection as to the definition for X- is improper since one of ordinary skill in the art known that X is an anion. The rejection and objection is not that it is unknown what is meant by X. It is clear as argued that it is an ion. The object and rejection is that that the composition of the anion represented by X is not defined. The specification and the claims do not teach what anions (i.e. the specific organic and/or inorganic anions, such as halides, tetraphenyl borate, tetrafluoroborate, etc.) can be used as X in the disclosed and claimed formulas. This objection and rejection as to the definition of X- are maintained.
With respect to the rejection over claim 18, the rewriting of this claim in independent form does not address nor overcome the rejection. The argument that the presence of “comprising” when defining the composition allows for more than one fluorophore moiety to be present and thus the composition may have more than one excitation maximum range or absorption peak. Pargraph [0183] which provided support for the subject matter of this claim teach that it is the nanoparticles that have the claimed excitation maximum or absorption peak. There is nothing in this paragraph nor in the following paragraphs that indicate that the claimed composition has an excitation maximum range or absorption peak in both the range taught in line 10 of the claim and in the range taught for the fluorescein or cyanine 5.5, as argued. The rejection is maintained.
Allowable Subject Matter
Claims 1-4, 8, 10, 14, 16, 23, 25, 26, 28, 29, 31, 32, 34-36, 38, 45, 46, 51 and 102 are allowable.
Claims 9, 18 and 27 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 16, 14 and 18 are allowable for the reasons given in the previous action. Claim 102 is directed to the composition comprising the allowable amount of cyanine, as taught in claim 14. There is no teaching or suggestion in the cited art of record of a composition containing the amounts of the first fluorophor set forth in claim 1.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to C. MELISSA KOSLOW whose telephone number is (571)272-1371. The examiner can normally be reached Mon-Tues:7:45-3:45 EST;Thurs-Fri:6:30-2:00EST; and Wed:7:45-2:00EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C Melissa Koslow/Primary Examiner, Art Unit 1734
cmk
3/17/26