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 .
Claims 1-17, filed 12/23/2025, are acknowledged. Claims 1-17 are pending and considered on the merits below. Another non-final is being issued.
Response to Amendment
Applicant's amendments, filed 12/23/2025, with respect to the previous 112(b) have been fully satisfied and withdrawn.
In response to the applicant's amendments, the grounds of rejection for claims 1-17 are new compared to the previous action.
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.
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 1-17 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.
Regarding claim 1, the limitation in line 10 “m is a integer of 0-5” is indefinite because it is unclear the scope of the claim when m is 0. This claim indicates that R3 can be a variety of substituents, including H, thus if m is 0 there would be nothing attached to the carbons. For examination purposes the examiner interprets if m is 0, then all the substituents are H.
Further regarding claim 1, the limitation “provided that A is not a hydrogen when R2 is represented by the following formula
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” is indefinite because it is unclear which of the R5 parameters are being including. This is because “(ii) R5 is an alkyl group containing 1 to 5 carbon atoms, and n is an integer of 0 to 5” (line 24) when n is 0, results in the same compound as “(ii) [R4 is] an alkyl group containing 1 to 5 carbon atoms” (line 15). This issues similarly applies to the parameters listed in “(iv) R5 is….” And “(iii) [R4 is]…” and “(iii) R5 is…” and “(i) [R4 is]”. For examination purposes the examiner interprets that “n” is 1 to 5 when the R2 group is
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. This particularly applies to claim 9 as well, and for examination purposes the examiner interprets that “n” is 1 to 5 for all compounds.
Dependent claims follow the same reasoning.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1, 2, and 15-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ohmiya et al. (Chemistry Letters, Volume 22, Issue 12, December 1993, Pages 2149–2152).
Regarding claims 1 and 2, Ohmiya describes a compound represented by the following formula [I], or a salt thereof, or a hydrate or solvate thereof (Scheme 2):
[Formula I]
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in formula [I] (Scheme 2
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compound
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),
R1 is -CH2-A;
where A is a hydrogen atom or a group represented by the following formula:
[Formula 2]
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(R3 is hydroxy; m is 1),
wherein R3 is a hydrogen atom, a hydroxyl group, a fluorine atom, an alkyl group containing 1 to 5 carbon atoms, a methoxy group, or a trifluoromethyl group, and m is an integer of 0 to 5, OR
R2 is a group represented by the following formula:
[Formula 4]
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wherein R4 is (i) -O-(CH2)n-R6 (where R6 is a hydroxyl group, a methoxy group, a methyl group, a trifluoromethyl group or an azido group, and n is an integer of 1 to 5), (ii) an alkyl group containing 1 to 5 carbon atoms, or (iii) any one of the groups represented by the following formulae:
[Formula 5]
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.
Regarding claim 15, Ohmiya describes a luminescent substrate for proteins or peptides, which comprises the compound according to any one of claims 1, or a salt thereof, or a hydrate or solvate thereof (title “bioluminescence activity”).
Regarding claim 16, Ohmiya describes a method for protein or peptide analysis, which comprises administering the compound according to any one of claim 1, or a salt thereof, or a hydrate or solvate thereof, in vivo or adding the same in vitro to thereby detect a desired protein or peptide (page 2151 paragraph 1 describes in vitro methods).
Regarding claim 17, Ohmiya describes a method for protein or peptide analysis, which comprises administering the luminescent substrate according to claim 15 in vivo or adding the same in vitro to thereby detect a desired protein or peptide (page 2151 paragraph 1 describes in vitro methods).
Claim(s) 1, 6, and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hirano et al. (Photochem. Photobiol. Sci., 2008, 7, 197–207).
Regarding claims 1 and 6, Hirano describes a compound represented by the following formula [I], or a salt thereof, or a hydrate or solvate thereof (scheme 3 “1Ha”):
[Formula I]
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in formula [I] (
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),
R1 is -CH2-A;
where A is a hydrogen atom (A is hydrogen), and
R2 is a group represented by the following formula:
[Formula 4]
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wherein R4 is (i) -O-(CH2)n-R6 (where R6 is a hydroxyl group, a methoxy group, a methyl group, a trifluoromethyl group or an azido group, and n is an integer of 1 to 5), (ii) an alkyl group containing 1 to 5 carbon atoms, or (iii) any one of the groups represented by the following formulae:
[Formula 5]
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.
Regarding claim 15, Rao describes a luminescent substrate for proteins or peptides, which comprises the compound according to any one of claims 1, or a salt thereof, or a hydrate or solvate thereof (title “bioluminescence supported by the chemiluminescence”).
Additional Art
This prior art made is of record particularly regarding claims 1 and 6:
Kondo et al. (Tetrahedron Letters 46 (2005) 7701 - 7704)
Takahash et al. (Tetrahedron Letters 47 (2006) 6057- 6061)
Teranishi (Luminescence 2007; 22: 147–156)
Hirano et al. (Bioluminescence and Chemiluminescence. July 2007, 11-14)
Allowable Subject Matter
Claim 3, 4, 5, and 7-14 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.
The following is a statement of reasons for the indication of allowable subject matter:
References above describe most of the limitations of independent claim 1, however fail to teach or suggest the specific compounds required by the claims.
None of the prior art discovered describes all the limitations alone or in combination, thus the prior art fails to teach or suggest all the limitations of claims 3, 4, 5, and 7-14.
Response to Arguments
Applicant’s arguments with respect to the claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMILY R BERKELEY whose telephone number is (571)272-9831. The examiner can normally be reached M-Th 9-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Robinson can be reached at 571-272-7129. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EMILY R. BERKELEY/
Examiner
Art Unit 1796
/ELIZABETH A ROBINSON/Supervisory Patent Examiner, Art Unit 1796