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 .
The response dated 2/2/2026 is acknowledged. Claims 1-8 and 11-18 are pending. Claims 9 and 10 are cancelled. Claims 1-8 and 11-18 are considered on the merits below.
Response to Amendment
Applicant's amendments, filed 2/2/2026, with respect to the objection to the claims and 112b rejections have been fully satisfied and withdrawn.
In response to the applicant's amendments, the grounds of rejection for claims 1-8 and 11-18 are new compared to the previous action, however rely on the same prior art.
Claim Objections
Regarding claims 2 and 6, “amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions)… The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application… (2) When claim text with markings is required. All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of “currently amended,” and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims… The text of any deleted matter must be shown by strike-through…” (MPEP 714(c)(2)). In this case, both claims 2 and 6, have deleted sections improperly notated.
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) 1-8 and 11-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zorlu et al. (Chem. Eur. J. 2020, 26, 11129– 11134, provided on the IDS on 3/17/2023) in view of Carter et al. (Chem. Rev. 2014, 114, 4564−4601, provided on the IDS on 3/17/2023).
Regarding claim 1, Zorlu describes a method for detecting free metal ions in a sample (abstract) comprising:
providing a liquid sample potentially comprising free metal ions (page 11131 “mouse ribs as an example for naturally occurring HAP (calcium ions). The sections were incubated… in HEPES buffer for varying times at room temperature,”),
adding to said sample a fluorescent probe comprising
i. an organic fluorescent core and ii. at least one metal binding functional group selected from a group comprising a phosphonic acid group and an arsonic acid group and being covalently linked to a sp or a sp2-carbon atom or a nitrogen atom of the fluorescent core via a P or As atom (scheme 1 and page 11131 “The sections were incubated with p-H8TPPA, m-H8TPPA and p-H8TPPA -iPr8”); and
measuring fluorescence of said sample ( “Figure 2. The absorbance (A) and fluorescence (B) spectra”).
wherein presence of the metal ions leads to a concentration-dependent decrease in fluorescence emitted by the probe compared to a reference sample, and wherein the reference sample does not comprise the metal ions detected by the probe (page 11131 “the dye binding to HAP is concentration dependent. When the mouse ribs were incubated with 1 mgmL-1 p-H8TPPA in HEPES for differing times from 120 to 10 mins (Figure S18 A–E), there was a clear decrease in fluorescence intensity but even the 10 min short incubation yielded an appreciable fluorescence compared to the negative control (Figure S18E compared to Figure S18 F).” and “negative control” indicates that the reference sample does not comprise the metal ions detected by the probe, and page 11131 “the dye binding to HAP is concentration dependent. When the mouse ribs were incubated with 1 mgmL-1 p-H8TPPA in HEPES for differing times from 120 to 10 mins (Figure S18 A–E), there was a clear decrease in fluorescence intensity but even the 10 min short incubation yielded an appreciable fluorescence compared to the negative control (Figure S18E compared to Figure S18 F).”).
However, Zorlu is silent to wherein the metal ions are ions of a group of metals comprising Cu, Zn, Pb, Hg, Cd, Co and Mn.
Carter describes copper (Cu) metal ion detection (page 4585 “to detect Cu+”). Carter further suggests that there is a link between calcium and copper when performing metal detection (page 4585 “This study established a link between copper mobilization and calcium release”). Additionally, Carter provides motivation to also incorporate copper detection because it is an essential metal for many life forms that can be challenging to detect (pages 4564 and 4584).
Therefore it would have been obvious to one skilled in the art at the time the invention was filed to incorporate the detection of Cu into the method of Zorlu as suggested by Carter because this would allow for detection of an essential bio-metal.
Regarding claim 2, the combination described above describes the method according to claim 1, wherein the organic fluorescent core is selected from the group consisting of tetrapyrrole derivatives, such as porphyrin or phthalocyanine, acridine, BODIPY, cyanine or cyanine derivatives, carbazole, coumarin or coumarin derivatives, xanthene and xanthene derivatives (Zorlu: scheme 1).
Regarding claim 3, the combination described above describes the method according claim 1, to wherein the fluorescent probe comprises two or more metal binding functional groups (Zorlu: page 11130 “the phosphonic acid metal binding unit”).
Regarding claim 4, the combination described above describes the method according to claim 1, wherein the fluorescent probe is selected from a group comprising 5,10,15,20-tetrakis[p-phenylphosphonic acid porphyrin (p-H8TPPA); and 5,10,15,20-tetrakis[m-phenylphosphonic acid] porphyrin (m-H8TPPA) (Zorlu: scheme 1 and page 11131 “The sections were incubated with p-H8TPPA, m-H8TPPA”).
Regarding claim 5, the combination described above describes the method according to claim 1, wherein the measuring fluorescence includes exciting the sample with a light of an excitation wavelength and detecting emitted light at an emission wavelength (Zorlu: figure 2b).
Regarding claim 6, the combination described above describes the method according to claim 1, wherein the ions are divalent (Zorlu: page 11131 “HAP (divalent calcium ions)” and Carter: page 4588 “Table7. Fluorescent Probes for Fe2+” and page 4591 “Table8. Fluorescent Sensors for Ni2+, Mg2+, and Co2+”).
Regarding claim 7, the combination described above describes the method according to the claim 1, wherein the method includes determining a concentration of metal ions in said sample (Zorlu: page 11131 “the dye binding to HAP is concentration dependent. When the mouse ribs were incubated with 1 mgmL-1 p-H8TPPA in HEPES for differing times from 120 to 10 mins (Figure S18 A–E), there was a clear decrease in fluorescence intensity but even the 10 min short incubation yielded an appreciable fluorescence compared to the negative control (Figure S18E compared to Figure S18 F).”).
Regarding claim 8, the combination described above describes the method according to claim 1, wherein the metal ions are Cu ions and the fluorescent probe is one of p-H8TPPA and m-H8TPPA (Zorlu: abstract and Carter: page 4585 “to detect Cu+”).
Regarding claim 11, the combination described above describes the method according to claim 1, wherein the step of providing a liquid sample includes providing a biological sample, selected from the group consisting of a bodily fluid, a tissue sample or a sample comprising cells (Zorlu: page 11131 “mouse ribs” comprises cells).
Regarding claim 12, the combination described above describes the method according to claim 1,wherein the step of providing a liquid sample includes providing a sample comprising cells and the fluorescent probe in the adding step is cell permeable (Zorlu: page 11132 “p-H8TPPA provides two more positives -cell permeability and cellular retention- desirable for imaging Applications”).
Regarding claim 13, the combination described above describes the method according to the claim 12, wherein the measuring step includes measuring the fluorescence in association with a step microscopically analyzing the cells (Zorlu: figure 1 and page 11131 “fluorescence microscopy”).
Regarding claim 14, the combination described above describes the method according to claim 1, further including calculating a concentration of free metals based on the mass action law involving calibration based on addition of a chelator and/or metal ions (Zorlu: page 11131 “This indicates that the dye binding to HAP is concentration dependent. When the mouse ribs were incubated with 1 mgmL-1 p-H8TPPA in HEPES for differing times from 120 to 10 mins (Figure S18 A–E), there was a clear decrease in fluorescence intensity but even the 10 min short incubation yielded an appreciable fluorescence compared to the negative control (Figure S18E compared to Figure S18 F).” Examiner’s note: the applicant defines “mass action law” in [0161] as “The mass action law (or law of mass action) is the proposition that the rate of a chemical reaction is directly proportional to the product of the activities or concentrations of the reactants. It explains and predicts behaviors of solutions in dynamic equilibrium. Specifically, it implies that for a chemical reaction mixture that is in equilibrium, the ratio between the concentration of reactants and products is constant. Thus as indication by page 11131 the concentration of the metal in HAP is proportional to the dye binding).
Regarding claim 15, the combination described above describes the method according to claim 1, including using the method in clinical diagnostics for determining available levels of free metal ions in a patient sample (Zorlu: abstract “Due to the lower reported toxicity of (p-H8TPPA), these probes could find applications in monitoring bone resorption or adsorption, or imaging vascular or soft tissue calcifications for breast cancer diagnosis etc.”).
Regarding claim 16, The method of claim 8, wherein Cu ions comprise Cu2+ ions (Carter: page 4567 “panel of sensors was then used to differentiate eight metal ions that are typically implicated in fluorescence quenching, including Hg2+, Cu2+, Co2+, Ni2+, Pb2+, Ag+, Cr3+, and Fe3+.” And page 4584 “activity of Cu2+,”).
Regarding claim 17, the combination described above describes the method according to claim 9, wherein the metal ions are one of divalent and non-divalent (Zorlu: page 11131 “HAP (divalent calcium ions)”).
Regarding claim 18, the combination described above describes the method according to the claim 13, wherein the step of microscopically analyzing the cells includes confocal fluorescent microscopy (Carter: page 4588 “a novel ex situ confocal microscopy technique, Petrat et al. measured the concentration of labile iron in hepatocytes to be approximately 2.5−9.8 μM”).
Response to Arguments
Applicant's arguments filed 2/2/2026 have been fully considered but they are not persuasive.
The applicant argues that the claims provide unexpected results not provided in the prior art.
In response to the applicants argument that the claims provide unexpected results not provided in the prior art, “Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range” (MPEP 716.02(d)). It does not appear for the specification or the figures that all the metal ions of the claims (i.e. “metal ions are ions of a metal selected from the group consisting of Cu, Zn, Pb, Hg, Cd, Co and Mn”), have the unexpected results argued.
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.
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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/LYLE ALEXANDER/Supervisory Patent Examiner, Art Unit 1797
/EMILY R. BERKELEY/
Examiner
Art Unit 1796
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