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 .
Response to Amendment
This action is in response to applicants’ amendment of 13 January 2026. The new abstract is acceptable and overcomes the objection to the previous abstract. The amendment to claims 1 and 10 have overcome the 35 USC 112(b) rejections with respect to rejection of claim 10 and the rejection of claims 1-5 and 8-12 with respect to the atoms of the linking group L. The amendments to the claims have overcome the art rejections over the Li et al article and WO 2019/163808. In view of the amendment to claim 1, the objection to the disclosure with respect to the atoms of the linking group L is withdrawn. Upon reconsideration and in view of applicants’ arguments, the objection and the 35 USC 112(b) rejection with respect to the number of atoms in L is withdrawn since “containing” in the phrase “backbone containing 2-4 atoms” allows for the presence of additional atoms in the backbone of L. In view of applicants argument that the 2-4 atoms of L represent the number of atoms between A and D when tracing the shortest path between A and D, the objection to formula a1-a320 has been modified. Applicant's arguments with respect to the remaining objections and 35 USC 112(b) rejections have been fully considered but they are not persuasive.
The amendment to the specification filed on 13 January 2026 does not comply with the requirements of 37 CFR 1.121(b) because the instruction does not unambiguously identifies the location to replace a paragraph with the amended paragraphs. Therefore, the amendments were not entered. Applicants used the paragraph numbering of the published application, not the paragraph numbering of the filed specification.
Page 2 of the applicants’ amendment of 13 January 2026 indicates applicants provided both a clean substitute specification and a marked up substitute specification; but applicants only filed amendments to paragraph [0019] of the published application, which corresponds with paragraphs [0015]-[0024] and the section in paragraph [0014] after the formulas of the filed specification; and paragraph [0032] of the published application, which corresponds with paragraph [0036] of the filed specification. Thus it is unclear applicants did file a substitute specification or not.
Applicants also stated they replaced the table of paragraph [0032] but there is no table presented in the amendment. In addition, neither paragraph [0032] in the filed specification nor in the published application include a table. Thus it is unclear what amendment applicants are referring to.
Specification
The disclosure is objected to because of the following informalities:
The linking group of Figure (6) is not defined, thus it is unclear if it is X, Y, Z, Z-X, X-Y or Z-X-Y. If Y or Z are linking groups as taught in Formulas (4)-(6), it is unclear how X in formulas (4)-(6), Z-X in formula (5) or X-Y in formula (6) relate the Formula (1) since X, Z-X or X-Y are not substituents, are part of the electron-withdrawing and/or electron-donating groups and there is only one linking group taught as being present.
Paragraphs [0022] and [0036] teach the binder on the surface of the nanoparticle among the binder has a hydrophilic group. The phrase “among the binder” appears to be a mistranslation, but it is unclear what applicants are actually teaching.
The formulas a1-a37, a39-a59, a64, a67-a69, a71-a74, a76, a78, a172-a228, a230-310, a313, a314, a316, a317, a319, a320, and a328-a333 do not meet the requirements of Formulas (1)-(6) since the linking group of these formula either has 1 atom in the backbone of L, have more than one electron-withdrawing and/or electron-donating group, and/or have more than 4 atoms in the backbone between A and D that trace the shortest path between A and D (a. Appropriate correction is required.
Response to Arguments
As discussed above, the amendment to the specification was not entered and thus the objection to paragraphs [0022] and [0036] is maintained. Once the amendment to the specification complies with the requirements of 37 CFR 1.121(b), the objection over these paragraphs will be withdrawn.
Applicants’ arguments did not address the objections to formulas , the linking group in formula (6), the function of X in formulas (4)-(5) when Y is the linking group, the function of Z-X in formula (6) when Y is a linking group, and the function of X-Y in formula (6) when Z is a linking group. Accordingly, these objections are maintained.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 2, 6, 7, 14, 16 and 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.
The linking group of Figure (6) of claims 2 and 14 is not defined, thus it is unclear if it is X, Y, Z, Z-X, X-Y or Z-X-Y. If Y or Z are linking groups as taught in Formulas (4)-(6) of claims 2 and 14, it is unclear how X in formulas (4)-(6), Z-X in formula (5) or X-Y in formula (6) relate the Formula (1) since X, Z-X or X-Y are not substituents, are part of the electron-withdrawing and/or electron-donating groups and there is only one linking group taught as being present.
Claims 1, 3, 8-13, 15 and 18-22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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. Evidence that the claims fail to correspond in scope with that which the inventor or a joint inventor, or for pre-AIA applications the applicant regards as the invention can be found in the reply filed 13 January 2026. In that paper, the inventor or a joint inventor, or for pre-AIA applications the applicant has stated the 2-4 atoms of L represent the number of atoms between A and D when tracing the shortest path between A and D, and this statement indicates that the invention is different from what is defined in the claim because this argued limitation is not in claims 1, 3, 8-13, 15 and 18-22.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3, which depends from claim 1, teaches the nanoparticles of claim 1 have delayed luminescence. Line 4 of claim 1 teaches the nanoparticles have delayed luminescence. Thus claim 3 teaches subject matter that is already taught in claim 1. Therefore, claim 3 does not further limit or define the subject matter of claim 1.
Response to Amendment
The arguments with respect to the 35 USC 112(b) rejection do not address the remaining rejection from the previous action. The previous rejection is maintained.
Allowable Subject Matter
Claims 1, 2, and 6-22 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
There is no teaching or suggestion in the cited art of record of luminescent nanoparticles containing a luminescent dye, where the nanoparticles either have long Stokes shift luminescence or have intramolecular exciplex luminescence that emit delayed luminescence and wherein the dye is a compound having a structure represented by the formula A-L-D, A represents an electron-withdrawing group, D represents an electron-accepting group and L is a linking group having a backbone containing 2-4 atoms, which represent the number of atoms between A and D when tracing the shortest path between A and D, and are each independently selected from the group consisting of C, O, N, Si, S, B and P and the linking group may have H or a substituent.
Conclusion
CA 2395311 is cited as of interest since it teaches aqueous solutions of a luminescent dye having intramolecular exciplex luminescence. There is no teaching or suggestion in the reference that the taught dye can be in the form of nanoparticles.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to C. MELISSA KOSLOW whose telephone number is (571)272-1371. The examiner can normally be reached Mon-Tues:7:45-3:45 EST;Thurs-Fri:6:30-2:00EST; and Wed:7:45-2:00EST.
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/C Melissa Koslow/Primary Examiner, Art Unit 1734
cmk
2/19/26