DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Applicant's election with traverse of Group I, and species of compound rhodamine 4’ isomer with
PNG
media_image1.png
98
150
media_image1.png
Greyscale
in the reply filed on March 22, 2026 is acknowledged. The traversal is on the ground(s) that the claims include all features of claim 1 and such features constitute the special technical feature that make a contribution over the prior art. This is not found persuasive because of the reasons provided of record, and further because of the grounds of rejection provided in this office action.
The requirement is still deemed proper and is therefore made FINAL.
Note: Applicant has stated that the elected species of rhodamine 4’ isomer of formula A is readable on claims 1-12, 23 and 24. It is noted that claims 6-11 are directed to derivatives which comprise a rhodamine 4’ isomer and a reactive group or ligand, and claim 12 is drawn to a conjugate comprising a rhodamine 4’ isomer coupled to a peptide, protein, nucleotide, nucleic acid sequence, carbohydrate, polyphosphate and these claims do not read on the elected rhodamine 4’ isomer. Claim 2 is directed to compounds for which one or more of R7 and R8 and R9 and R10 form a ring and this claim does not read on the elected species. Claim 23 is directed to compound wherein the heteroarom of X is O or S, and thus do not read on the elected species having X of C(CH3)2.
3. Examination followed guidelines provided by MPEP 803.02. The elected species appeared to be novel and nonobvious over the prior art. Therefore, the search and examination was extended. Prior art was found that anticipates the Markush claims with respect to a nonelected species. Therefore, the claims were rejected and claims to nonelected species were withdrawn from further consideration. The claims were searched to the extent of the elected species, the full scope of claim 5, and further to the nonelected species shown below.
4. Claims 2 and 6-24 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected subject matter. Applicant timely traversed the restriction (election) requirement in the reply filed on March 22, 2026.
Status of Claims
5. Claims 1-24 are pending. Claims 1 and 3-5 read on the elected species (rhodamine 4’-isomer of formula A wherein
PNG
media_image1.png
98
150
media_image1.png
Greyscale
) and are elected. Claim 1 is independent. Claims 2 and 6-24 are nonelected and withdrawn.
Priority
6. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
7. The information disclosure statements (IDS) submitted on March 27, 2023 were in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The statements were considered. Signed copies of form 1449 are enclosed herewith.
Claim Objections
8. Claim 5 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim Interpretation
9. Applicants do not define the structural parameters of Z, either in the claims or in the specification. As such, it is interpreted that Z can be any structure for the examination described in this office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
10. Claims 1, 3 and 4 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicants provide limitations for variable Z in terms of function to be achieved:
PNG
media_image2.png
252
604
media_image2.png
Greyscale
. Neither the specification nor the claim provide any further guidance as to what structural features are required to meet this functional limitation. In the state of the art, zwitterionic functional properties are not predictable based on structural variations. See for example reference of Christiansen et al. which discloses that the prediction of ion association properties in zwitterions, for example, is poor. The skilled artisan would not be apprised based on the lack of structure correlation disclosure in the specification, and the unpredictability of function based on structural changes, that the inventors has possession of the claimed invention as it relates to variable Z. Furthermore, the examples in the specification contain Z = H, CO2H and CONH(alkyl). This is not a representative number of species to support the claimed genus. Christiansen et al. show that modifications of lesser extent structurally, for example hydration and charged ion association such as sodium or chlorine, impacts properties associated with zwitterion. Applicants are here claiming Z can be any structure which produces the property of inducing a neighboring group effect via steric, ionic or bonding interactions. For these reasons, it has been determined that the claims do not comply with the written description requirement.
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.
11. Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kolmakov et al. The reference has a publication date of 2015 which antedates the present claims having an effective filing date of February 11, 2021 and priority claim to foreign application dated February 12, 2020.
The reference teaches compound such as
PNG
media_image3.png
106
118
media_image3.png
Greyscale
(page 13347) which corresponds to the present claims in the following manner: Z=R11=R12=F; R1-6=R13=H; X=Si(R14=R15=Me); R7-R10=Me.
12. Claim(s) 1, 3 and 4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by RN 489437-94-7. The reference has a publication date of 2015 which antedates the present claims having an effective filing date of February 11, 2021 and priority claim to foreign application dated February 12, 2020.
The reference teaches
PNG
media_image4.png
168
228
media_image4.png
Greyscale
which corresponds to the present claims in the following manner: Z=R1-R6=R11-R13=H; R7-R10=Me; X=C(R14=R15=Me).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUN JAE YOO whose telephone number is (571)272-9074. The examiner can normally be reached Mon-Fri 8-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SUN JAE YOO/Primary Examiner, Art Unit 1621
Prosecution Insights