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 .
Election/Restrictions
Applicant’s election without traverse of group I in the reply filed on June 9, 2026 is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Drawings
The drawings are objected to because in Figure 2 the lines in the graph correspond to the various labels cannot be determined. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The recitations “aerobic glycolysis detection product”, “aerobic glycolysis detection product is for living cells”, “aerobic glycolysis detection product is for determining aerobic glycolysis by detecting NAD+”, “NAD+ detection product” and “aerobic glycolysis detection product is a quantitative or semi-quantitative aerobic glycolysis detection product” are recitations of the intended used of the claimed inventions. Some of the phrases also occur in the preamble of the claim (e.g., claims 1 and 9).
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. This, taken in conjunction with the body of the claim describing a complete invention with the language recited solely in the preamble not providing any distinct definition of any of the claimed invention’s limitations, means that the recitations related to aerobic glycolysis detection product are afforded little weight when construing the claims. When language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations and the body of the claim describing a complete invention means the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02. The nitrogen-doped carbon fluorescent quantum dots taught in the prior art as required by the body of the claim of the prior art are capable of being used for the intended use resulting in the claims not being patentably distinguished over the prior art despite the lack of an explicit teaching in the prior art related to the claimed intended use.
Claim Objections
Claims 6 and 8 are objected to because of the following informalities: abbreviations are present in these claims that are not completely spelled out the first time they appear in the claims. Appropriate correction is required.
Claim Rejections - 35 USC § 112 – Indefiniteness
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 7 and 8 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 phrase “the aerobic detection product is a reagent, and the reagent, based on a final volume of the reagents” (emphasis added) in claim 7 is unclear. In this phrase, it is not clear to what the phrase “the reagents”. Does this just encompass the aerobic glycolysis detection product that as defined in claim 1 of the nitrogen-doped carbon fluorescent quantum dots? The concentrations required indicate the presence of multiple nitrogen-doped carbon fluorescent quantum dots so is that what “the reagents” refers? Or does this mean that a composition comprising the nitrogen-doped carbon fluorescent quantum dots and one other ingredient, possibly a liquid, that result in more than one distinct reagent is required? It would appear that that material in claim 7 must be in a liquid of some kind in order for the recitation of “volume” and required units of µg/mL and mg/mL to make sense but not materials are specified that could possible form part of “the reagents”.
Claim 8, which depends from claim 8, requires that the product of claim 7 further comprise a buffer (emphasis added). A buffer is known to those of ordinary skill in the art as a solution that maintains the pH (acidity or basicity of the solution) when acids or bases are added (definition 4 of “buffer” from merriam-webster.com, accessed June 25, 2026). This requires a solution containing protons so that the overall solution has a pH and that something is present in the solution that neutralizes any added acids or bases to maintain the pH of the solution. In claim 8, the buffer must be selected from saline, water, DMSO, DMF and PBS and none of these are buffers. Saline and water have a pH but are not buffered. DMSO and DMF are aprotic organic solvents that would not have protons and therefore do not have a pH. The specification indicates that PBS stands for poly(butylene succinate) which is a polymeric material that at many molecular weights would be a solid although could be liquid in some forms. None of the materials listed in the Markush group for the buffer are actual buffers although two could become buffered by the addition of a buffer so the weight to give buffer is not clear.
Given the issues with claim 7, it is not clear if a composition consisting of water, one item from the Markush group of claim 8, and quantum dots in the claimed concentration range, are sufficient to meet the scope of both claims 7 and 8 unclear.
Please clarify.
Claim Rejections - 35 USC § 102
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 – 9 and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shi et al. (Talanta, 2015).
Shi et al. discloses that the introduction of nitrogen atoms into N-doped graphene quantum dots (N-GQDs) produces a fluorescent material with λex = 346 nm and λem = 445 nm and a high quantum yield of 18% (abstract). The low toxicity, high luminescence, robust chemical inertness and easy preparation make fluorescent carbon-based nanomaterials advantageous compared to heavy metal quartum dots (QDs) for application such as sensing and bioimaging, amongst other (p 131). Oxygen rich, N-doped graphene quantum dots (N-OGQDs) were synthesized with sizes mainly in the range of 4 – 25 nm and 74% were 10 – 15 nm in size (p 133, col 2, ¶ 4), falling with the range of claim 4. Elemental analysis showed a nitrogen content of 4.01% (p 134, col 1, ¶ 1), falling within the range of 3. For the sensing application studied, 0.14 mg/mL of N-OGQDs in Tris-HCl buffer solution (pH 8.0, 10 mM) was used (section 2.5), reading on the compositions of claim 7 that comprise water and the buffer Tris. There is no evidence of record that these materials are not capable of being used in the intended manner claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nissa M Westerberg whose telephone number is (571)270-3532. The examiner can normally be reached M - F 8 am - 4 pm.
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/Nissa M Westerberg/Primary Examiner, Art Unit 1618
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