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 .
Amendments
Applicants amendments to the claims filed 7/27/2026 have been entered. Any objection\rejections from the previous office action filed 3/3/2026 not addressed below has been withdrawn.
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.
Claim(s) 1-2,7,11 and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bleicher et al. (US 2006/0276494), cited previously, in view of Blom et al. “[18F]/19F exchange in fluorine containing compounds for potential use in 18F-labelling strategies”, J. Label Compd. Radiopharm 2009, 52 504–511, for the reasons set forth in the previous action filed 3/3/2026.
Response to Arguments
Applicant's arguments filed 7/27/2026 have been fully considered but they are not persuasive.
Applicants assert Blom teaches monofluorinated compounds are poor candidates for labeling, thus one of ordinary skill would have no motivation or reasonable expectation of success in modifying the monofluorinated intermediate of Bleicher.
Applicants only point to one specific paragraph in which monofluorinated compounds were not labeled at room temperature. However, in the very next paragraph, Bloom notes that at 150oC monofluorinated compounds 4,6 and 7 isotopic exchange of fluorine increased dramatically. See page 506 2nd full ¶. Simply because applicants can pick one set of reaction conditions where monofluorinated compounds did not undergo isotoptic exchange would not dissuade one of ordinary skill in the art from trying the other method which used higher temperature and was successful.
Applicants assert a POSA would not have a reasonable expectation of success that incorporation of 18F label would lead to a compound capable of PET imagining. Applicants assert there are other factors that determine if a compound is effective for PET imaging besides 18F label.
Simply because there are other factors to consider for PET imaging would not necessarily dissuade one of ordinary skill from isotopically labeling the compounds of Bleicher and trying to image with PET. Applicants offer no evidence that the compounds of Bleicher wouldn’t be capable of being imaged once labeled with 18F. An unsupported argument cannot be considered persuasive. Obviousness does not require absolute predictability of success. In re 0 'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988).
Conclusion
THIS ACTION IS MADE FINAL. 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 JAMES W ROGERS whose telephone number is (571)272-7838. The examiner can normally be reached 9:30-6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached at 571-272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES W ROGERS/Primary Examiner, Art Unit 1618
