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 .
DETAILED ACTION
Claims 1-8 are pending in the instant application.
Election/Restrictions
Applicant's election with traverse of Group I,
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in the reply filed on June 5, 2025 was acknowledged in the previous Office Action. The requirement was deemed proper and therefore made FINAL in the previous Office Action.
Claims 4-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on June 5, 2025.
Rejections and objections made in the previous Office Action that do not appear below have been overcome by Applicant’s amendments to the claims. Therefore, arguments pertaining to these rejections and objections will not be addressed.
As a result of the current amendments to the claims and newly filed claim 8 per the Amendment filed
October 1, 2025, the following rejection applies.
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 1-3, 7 and 8 are rejected under
35 U.S.C. 103 as being unpatentable over Wang et al. {CN 106631979 A}, Wang et al. {Zhongguo Yiyao Gongye Zazhi (2006), 37(9), 584-585} and Jia et al. {CN 104130178 A}, and each in further view of the combination of teachings in Vyas et al. {US 2018/0346728}, Telfer et al. {U.S. Patent 5,262,549} and Kim et al. {Spectrochimica Acta, Part A: Molecular and Biomolecular Spectroscopy (2018), 192, 378-383}.
NOTE: Human Assisted English translations of CN 106631979 A (Wang et al.), Wang et al. (2006), and
CN 104130178 A (Jia et al.) have been provided with this Office Action and will be referred to hereinafter.
Determination of the scope and content of the prior art (MPEP §2141.01)
Applicant currently claims a process for preparing Indocyanine green of formula (1),
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wherein HPLC (High Pressure Liquid Chromatography) is used in the purification process of step d).
Wang et al. (CN 106631979 A) teach a process for preparing Indocyanine green (ICG) by the following process on pages 6-9, 12 and 13 of the provided Human Assisted English translation,
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Wang et al. (2006) teach a process for preparing Indocyanine Green by the following process on pages 1-2 of the Human Assisted English translation,
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Jia et al. teach a process for preparing a medicinal Indocyanine Green by the following process on pages 1 and 8-10 of the provided Human Assisted English translation:
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Both Wang et al. references and the Jia et al. reference disclose the same reactants as instantly claimed (instant claim 1), the same process steps as instantly claimed (instant claim 1), the same base as instantly claimed (i.e., triethylamine – as found in instant claim 2) and the same solvents as instantly claimed (i.e., methanol or ethanol – as found in instant claim 3) in in their processes for preparing Indocyanine green.
Ascertainment of the difference between the prior art and the claimed invention (MPEP §2141.02)
However, neither of the Wang et al. references or the Jia et al. reference teach wherein HPLC is used in the purification process of instant step d) as added to instant independent claim 1 or teach the process of preparing E-N-((2E,4E)-5-(phenyl amino) penta-2,4-dienylidene) aniline hydrochloride of instant formula (3) as claimed in instant dependent claim 7.
Finding of prima facie obviousness--rational and motivation
(MPEP §2142-2143)
However, Vyas et al. {paragraphs [0011]-[0017] on pages 1-2)} teach an improved process for the preparation of Indocyanine green of Formula (I) with a good yield and high purity of not less than 99.0%,
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the process comprising the steps of:
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Vyas et al. {paragraphs [0038]-[0042] on page 4} teach that the reaction progress can be monitored by TLC (Thin Layer Chromatography) or by HPLC {paragraph [0039]}. In Examples 1-3 in paragraphs [0040]-[0042] on page 4 of Vyas et al., HPLC is used to monitor the reaction progress. Vyas et al. also teach that his process is carried out in an alcohol as a solvent such as methanol, ethanol, etc. {paragraph [0021] on page 3} and that the reaction temperature could range from 50 oC to 90 oC {paragraph [0022] on page 3}.
Further, Telfer et al. and Kim et al. each teach a process for preparing E-N-((2E,4E)-5-(phenyl amino) penta-2,4-dienylidene) aniline hydrochloride of instant formula (3) as claimed in instant claim 7. See the process for preparing Compound (X) in Figure 3 and in column 14 of Telfer et al.,
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See also the process of making compound (GAD) in Figure 1 on page 379 of Kim et al.,
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The instant currently amended claimed process is no more than a selective combination of prior art teachings done in a manner obvious to one of ordinary skill in the art since each step of the process appears to be relatively complete in itself and there is no indication of an interaction between steps of such a type that would lead one of ordinary skill in the art to doubt that a substitution of alternative steps known to the art could be made. In re Mostovych, 144 USPQ 38 (C.C.P.A. 1964). The instant currently amended claimed invention would have been suggested to one skilled in the art and therefore, the instant claimed invention would have been obvious to one skilled in the art.
Response to Arguments
Applicant's arguments filed October 1, 2025 have been fully considered.
Applicant argues that Wang (CN 106631979), Wang (2006) and Jia in further view of Telfer and Kim do not teach or suggest the feature of instant step d) of purifying by a purification process using HPLC as found in the currently amended claimed invention. Applicant argues that Wang (CN 106631979), Wang (2006) and Jia do not teach the purity of their Indocyanine Green using HPLC or that their Indocyanine Green has a purity greater than 99.0%.
In response, Wang (CN 106631979) uses TLC to monitor his process for preparing Indocyanine Green {paragraphs [0034], [0036] and [0038]}. However, Vyas et al. {paragraphs [0038]-[0042] on page 4} teach that the reaction progress for preparing his improved Indocyanine Green with a good yield and high purity of not less than 99.0% can be monitored by TLC (Thin Layer Chromatography) or by HPLC {paragraph [0039]}. In Examples 1-3 in paragraphs [0040]-[0042] on page 4 of Vyas et al., HPLC is used to monitor the reaction progress. Therefore, Applicant’s arguments are not persuasive because it is known in the art that HPLC can used to monitor the reaction progress in a process for preparing Indocyanine Green.
Applicant argues that Wang (CN 106631979), Wang (2006) and Jia in further view of Telfer and Kim do not teach or suggest the feature of using a base as recited in instant step c) or suitable solvents as recited in instant step d).
In response, each of Wang (CN 106631979), Wang (2006) and Jia teach the presence of a base in the process step of reacting
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to produce Indocyanine Green {i.e., instant process step c)} and each of Wang (CN 106631979), Wang (2006) and Jia use suitable solvents as found in instant purification step d). Note the specific bases listed in instant dependent claim 2 (especially triethylamine) and the suitable solvents listed in instant dependent claim 3 (especially methanol and ethanol). See in Wang (CN 106631979) process step (3.1) where the base triethylamine is used in the process when reacting Compound 5 with Compound 3,
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See in Wang (2006) the process where the base triethylamine is used in the process for reacting Compound 5 with Compound 3 (page 2)
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See in Jia the process following wherein the base triethylamine and the solvents ethanol and methanol are used:
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Therefore, Applicant’s arguments are not persuasive.
Applicant argues that Wang (CN 106631979), Wang (2006) and Jia in further view of Telfer and Kim do not teach or suggest the feature found in instant claim 7 regarding the process for preparing E-N-((2E,4E)-5-(phenyl amino) penta-2,4-dienylidene) aniline hydrochloride of instant formula (3). Applicant argues the reaction parameters (such as specific reaction temperatures, specific solvents, etc.) described in the instant specification to distinguish his claimed process from the applied prior art. Applicant further argues that there is no proper motivation to combine the disclosures of Wang (CN 106631979), Wang (2006), Jia, Telfer and Kim.
All of Applicant’s arguments have been considered but have not been found persuasive. Applicant argues the reaction parameters (such as specific reaction temperatures, specific solvents, etc.) described in the instant specification to distinguish his claimed process from the applied prior art.
In response, these reaction parameters argued by Applicant are not found as claim limitations in the instant currently amended claims. Therefore, Applicant’s argument is not persuasive.
Further, Applicant has argued the cited prior art separately instead of the combination of the teachings in the prior art. The test for combining references is not what individual references themselves suggest but rather what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art. In re McLaughlin, 170 USPQ 209 (1971). While a deficiency in a reference may overcome a rejection under 35 U.S.C. § 103, a reference is not overcome by pointing out that a reference lacks a teaching for which other references are relied. In re Lyons, 150 U.S.P.Q. 741, 746 (C.C.P.A. 1966). Additionally, 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).
In response to Applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the Examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, each of Wang (CN 106631979), Wang (2006), Jia and Vyas teach processes for preparing Indocyanine Green. Vyas et al. teach an improved process for the preparation of Indocyanine green of Formula (I) with a good yield and high purity of not less than 99.0% using HPLC or TLC to monitor the process whereas Wang (CN 106631979) uses TLC. Both Telfer and Kim were cited to show that it is well known to one of ordinary skill in the synthesis art the process for preparing E-N-((2E,4E)-5-(phenyl amino) penta-2,4-dienylidene) aniline hydrochloride of instant formula (3) as found in instant dependent claim 7. The compound of instant formula (3) is used in the process of Wang (CN 106631979) as Compound 4 {see paragraph [0031] on page 11}. The compound of instant formula (3) is used in the process of Wang (2006) as Compound 4 {see Figure 1 on page 2}. The compound of instant formula (3) is used in the process of Jia {see the process step in paragraph [0032] on page 11}. The compound of instant formula (3) is used in the process of Vyas {page 3, paragraph [0028], column 2}. Applicant’s arguments are not persuasive in that there is sufficient and proper motivation to combine the above cited prior art. For all the reasons given above, the rejection is deemed proper and therefore, the rejection is maintained.
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.
This application contains claims 4-6 drawn to an invention nonelected with traverse in the reply filed on June 5, 2025. A complete reply to the final rejection must include cancellation of nonelected claims or other appropriate action (37 CFR 1.144) See MPEP §821.01.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to:
Laura L. Stockton
(571) 272-0710.
The examiner can normally be reached on Monday-Friday from 8:30 am to 6 pm, Eastern Standard Time.
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 acting supervisor,
James Alstrum-Acevedo can be reached on 571/272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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.
/LAURA L STOCKTON/ Primary Examiner, Art Unit 1626 Work Group 1620
Technology Center 1600
December 19, 2025
Book XXV, page 89
Prosecution Insights