DETAILED 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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-5, and the species of Formula 2, in the reply filed on 20 August 2025 is acknowledged. Claims 6 and 7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Abstract
Applicant is reminded of the proper content of an abstract of the disclosure.
In chemical patent abstracts for compounds or compositions, the general nature of the compound or composition should be given as well as its use, e.g., “The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics.” Exemplification of a species could be illustrative of members of the class. For processes, the type of reaction, reagents and process conditions should be stated, generally illustrated by a single example unless variations are necessary.
The abstract of the disclosure is objected to because it states "represented by Chemical Formula 1 below" and "[Chemical Formula 1]" without actually illustrating the formula. Instead, the compound should be described in words (e.g., "a two-photon fluorescent probe compound that is a coumarin or an iminocoumarin"). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Specification
The disclosure is objected to because of the following informalities:
In the description of Figs. 19-21 (page 6), the specification refers to plotted data as being red or blue.
Portions of the specification (page 14, line 6; Table 3, page 22) have been indicated to be illegible in the corresponding publication US 2023/0099969 A1 ([0075], [0106]).
In the footnotes of Table 1 (page 21), the superscripted "[S22]" and "[S23]" do not appear to refer to anything.
Appropriate correction is required.
Claim Objections
Claim 3 objected to because of the following informalities: Claim 3 must end with a period. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 1-5 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Independent claim 1 recites the limitation "R2 and R3 … are each independently selected from hydrogen, deuterium, and C1-C7 alkyl, with the proviso that R2 and R3 are optionally bonded together to form a ring or combined with L to form a ring." The combination of the terms "proviso" and "optionally" is indefinite because the word "proviso" is not customarily used to preface an optional condition. Moreover, regardless of the interpretation applied to the indefinite limitation "R2 and R3 are…bonded together to form a ring or combined with L to form a ring" (discussed below), it is unclear how this can be an optional limitation, given that the customary meaning of each of hydrogen, deuterium, and C1-C7 alkyl is a univalent atom or group. Given that if R2 and R3 are each independently selected from hydrogen, deuterium, and C1-C7 alkyl, then R2 and R3 cannot be "bonded together to form a ring or combined with L to form a ring," and therefore the recited "proviso" cannot be an optional limitation.
To advance prosecution, this limitation is henceforth interpreted as "R2 and R3 … are each independently selected from hydrogen, deuterium, and C1-C7 alkyl, or in the alternative, R2 and R3 are bonded together to form a ring or combined with L to form a ring."
Claim 1 recites the limitation "R2 and R3 are…bonded together to form a ring or combined with L to form a ring." It is unclear whether the subject of this limitation ("R2 and R3") refers to both of R2 and R3 or to each of R2 and R3 individually. Grammatically, the subject ought to refer to the same concept for both options of (i) "R2 and R3 are…bonded together to form a ring" and (ii) "R2 and R3 are… combined with L to form a ring," It is unclear how both of R2 and R3 can be combined with L to form a single ring.
To advance prosecution, this limitation is henceforth interpreted as "R2 and R3 are bonded together to form a ring or each of R2 and R3 is combined with L to form a respective ring."
Dependent claims 2-5 are rejected for inheriting the deficiencies of claim 1.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Shin et al. ("Harnessing Intramolecular Rotation To Enhance Two-photon Imaging of Aβ Plaques through Minimizing Background Fluorescence," Angew Chemie Int. Ed., 26 February 2019; IDS).
The co-authors of this paper include seven non-inventors as well as the five joint inventors. This paper by Shin et al. was first published on 26 February 2019, a year before the filing date of the foreign priority application (26 February 2020).
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
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Regarding claims 1-3, Shin et al. disclose a two-photon fluorescent probe compound (abstract) of Formula 2 (IRI-1, Scheme 1, copied above).
Regarding claims 4 and 5, Shin et al. disclose that the two-photon fluorescent probe compound specifically binds to amyloid beta plaques and is part of a composition for detecting amyloid beta (title and abstract).
Claims 1, 4, and 5 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Aguilera-lparraguirre (US 2020/0079762; previously cited).
Applicant cannot rely upon the certified copy of the foreign priority application to overcome the rejection under 35 U.S.C. 102(a)(1) because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
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Regarding claim 1, Aguilera-lparraguirre discloses a compound of Formula 1 ([0256], page 61, copied above), where X is O, R1 is cyano, L is heteroaryl (carbazole), n is 1, R2 and R3 are the same and are bonded together to form a ring (carbazole five-membered ring).
Regarding claims 1 and 5 and the preamble limitations "two-photon fluorescent probe" and "composition for detecting amyloid beta," it is noted that a preamble is generally not accorded any patentable weight where it merely recites the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). The Courts have held that it is well settled that the recitation of a new intended use, for an old product, does not make a claim to that old product patentable. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (see MPEP § 2114).
Regarding claim 4, Aguilera-lparraguirre does not explicitly teach that the compound specifically binds to amyloid beta plaques. Regarding product claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). For purposes of this rejection, the compound of Aguilera-lparraguirre is interpreted as being inherently capable of specifically binding to amyloid beta plaques, as evidenced by the disclosure of the instant specification that a related iminocoumarin compound of Formula 2 specifically binds to amyloid beta plaques.
Claims 1, 4, and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dorlars (EP 0005172 B1; newly cited).
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Regarding claim 1, Dorlars discloses a compound of Formula 1 (English version of claim 1, copied above), where X is O, R1 is cyano, L is heteroaryl (triazole), n is 1, R2 and R3 are the same or different and hydrogen or C1-C4 alkyl ("R1 and R2 represent … ; amino, mono-and di-(C1-C4-alkyl)-amino").
Regarding claims 1 and 5 and the preamble limitations "two-photon fluorescent probe" and "composition for detecting amyloid beta," it is noted that a preamble is generally not accorded any patentable weight where it merely recites the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). The Courts have held that it is well settled that the recitation of a new intended use, for an old product, does not make a claim to that old product patentable. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (see MPEP § 2114).
Regarding claim 4, Dorlars does not explicitly teach that the compound specifically binds to amyloid beta plaques. Regarding product claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). For purposes of this rejection, the compound of Dorlars is interpreted as being inherently capable of specifically binding to amyloid beta plaques, as evidenced by the disclosure of the instant specification that a related iminocoumarin compound of Formula 2 specifically binds to amyloid beta plaques.
Claim Rejections - 35 USC § 103
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Murakami ("Photoinduced Electron Transfer in Photorobust Coumarins Linked with Electron Donors Affording Long Lifetimes of Triplet Charge-Separated States," ChemPhysChem 2010; newly cited).
Regarding claims 1-3, Murakami discloses donor-substituted coumarin derivatives 2 and 3 (section 2.1, copied below). Compounds 2 and 3 of Murakami are positional isomers of Formulae 5 and 3, respectively. The compounds of Murakami differ from the claimed compounds only in having phenyl substitution at the 6-coumarin ring position rather than the 7-coumarin ring position. Murakami teaches that "photophysical properties of donor-substituted coumarin dyes such as 7-aminocoumarin and its derivatives have been the subject of extensive investigations" (page 2594, first para.). Accordingly, it would have been obvious to one of ordinary skill in the art before the time of filing to modify the donor-substituted coumarin derivatives of Murakami by changing the donor-substitution position from the 6-coumarin ring position to the 7-coumarin ring position in view of their closely related structures and the resulting expectation of similar properties.
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Regarding claims 1 and 5 and the preamble limitations "two-photon fluorescent probe" and "composition for detecting amyloid beta," it is noted that a preamble is generally not accorded any patentable weight where it merely recites the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). The Courts have held that it is well settled that the recitation of a new intended use, for an old product, does not make a claim to that old product patentable. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (see MPEP § 2114).
Regarding claim 4, Murakami does not explicitly teach that the compound specifically binds to amyloid beta plaques. Regarding product claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.). For purposes of this rejection, Compounds 2 and 3 of Murakami as well as compounds of the claimed Formulae 5 and 3 are interpreted as being inherently capable of specifically binding to amyloid beta plaques, as evidenced by the disclosure of the instant specification that a related iminocoumarin compound of Formula 2 specifically binds to amyloid beta plaques.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELLE ADAMS whose telephone number is (571)270-5043. The examiner can normally be reached M, T, Th, and F, 12-4 P.M.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached at (571) 272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHELLE ADAMS/ Examiner, Art Unit 1797
/JENNIFER WECKER/ Primary Examiner, Art Unit 1797