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 .
Claims Status
Claims 1-5 are pending in the application.
Claim Rejections - 35 USC § 112
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.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
Claim 1 is 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.
Regarding claim 1, the phrase "(e.g. morpholine)" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase “e.g.” are part of the claimed invention. See MPEP § 2173.05(d).
Claim 1 is 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 recitation of (e.g. morpholine) within parentheses is confusing and unclear as it does not clearly indicate the totality of species that are encompassed.
Claim 1 is 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 recitation of O,S,N,P,Si,C is unclear as to what moieties are bound to the O,S,N,P,Si,C to fulfill their valencies.
Claim 1 is 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 recitation of (C=C) within parentheses is confusing and unclear as it does not clearly indicate the totality of species that are encompassed.
Claim 1 is 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 recitation of “L is a linker moiety, optionally bearing a functional group or reactive group” is unclear and confusing because when L is present a functional group or reactive group is required for the linking moiety to perform its function of linking two things together. Also, the L is a linker moiety is described by functional language and does not provide any structural components.
The dependent claims fall therewith.
Claim Rejections - 35 USC § 102
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 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 and 2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JPH05585A 2000 (see translation and original).
JPH05585A 2000 teaches of the compounds
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(abstract; p3, [0005]; [0013-0017]) wherein X is oxygen
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([0008]) and anticipates the structure
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of the instant claims.
The R1 comprises hydrogen, halogen atom, nitro group, -OR6, etc. ([0005]) that anticipates the R1 of the instant claims is independently hydrogen, halogen, nitro, O-alkyl, etc.
The R2 comprises hydrogen, etc. ([0005]) that anticipates the hydrogen found at the position
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of the instant claims.
The R3 comprises hydrogen, halogen atom, nitro group, -OR6, sulfonamide, etc. ([0005]) that
anticipates the R1 of the instant claims is independently hydrogen, halogen, nitro, O-alkyl, sulfonamide,
etc.
The R4 comprises hydrogen, etc. ([0006]) that anticipates the hydrogen found at the position
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of the instant claims.
The R5 comprises hydrogen, etc. ([0006]) that anticipates the hydrogen found at the position
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of the instant claims.
The hydrogen at location
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anticipates the hydrogen found at the position
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of the instant claims.
The R7 comprises hydrogen, R6, optionally substituted alkenyl group, optionally substituted arylalkyl, etc. ([0006]) wherein R6 comprises an alkyl group, optionally substituted aryl, etc. that anticipates the R2 of the instant claims is independently substituted or unsubstituted C-1-C24 alkyl, substituted or unsubstituted aryl, substituted or unsubstituted alkenyl, etc.
Claim(s) 1 and 2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Steenackers (WO2015/165854A1).
Steenackers (WO2015/165854A1) teaches of the compound
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that was purchased from Spectrum Info ltd. (p35, [0186]; p36, [0187]) that anticipates the structure
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of the instant claims when R2 is unsubstituted C4; R1 is hydrogen and O-alkyl.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Murthy et al. (US 8,628,753B2) in view of Peng et al. (US 2007/0042398A1).
Murthy et al. (US 8,628,753B2) discloses cyanine dyes
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as diagnostic tools to detect a variety of diseases and disorders (column 14, lines 35+; column 24, lines 34+; claim 8) wherein R3 and R4 comprise most preferably C1, C2, C3 or C4 alkyl sulfonate, -SO-3, etc.; and n is an integer from 1-5 (column 15, lines 6-22). The substituents can be at one or more positions of the cyclic end groups (column 4, lines 1-7).
The sulfonate and alkyl sulfonate improve water solubility of the dyes (column 21, lines 1-25).
The R1 and R2 moieties comprises hydrogen, C1-20 alkyl, etc. (column 14, lines 59+).
Murthy et al. does not disclose the individual
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moiety comprising sulfonate or alkyl sulfonates at the R1 positions .
Peng et al. (US 2007/0042398A1) discloses cyanine dyes
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(p9, [0091-0092]) and are prepared by reacting
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benzoindolium salt starting compounds with imine derivatives (p17, ([0097]).
The compounds comprise water solubilizing groups, such as sulfonate, etc. The sulfonate groups
also are advantageous as they provide increased photostability and considerable reduction of
interaction with surrounding dye molecules, e.g., reduce self-aggregation (p8, [0081]).
It would have been obvious to one of ordinary skill in the art that the reference of Murthy et al. comprises
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starting material compounds for the preparation of the cyanine dyes wherein the sulfonate and/or alkyl sulfonate R’ moieties can be located at multiple positions around the benz[c,d]indole moiety, not excluding the R1 positions of
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, and R’’’ comprises C1-20 alkyl moieties with a reasonable expectation of success as Murthy et al. teaches that the sulfonate and/or alkyl sulfonate substituents can be at one or more positions of the cyclic end groups and Peng et al. teaches that the isolated starting benz[c,d]indole moieties are combined with an appropriate imine derivatives to prepare cyanine dyes with the advantages of water solubility, increased photostability and reduce self-aggregation for detecting a variety of diseases and disorders.
Conclusion
No claims are allowed at this time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA JEAN PERREIRA whose telephone number is (571)272-1354. The examiner can normally be reached M9-3, T9-3, W9-3, Th9-2, F9-2.
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/MELISSA J PERREIRA/Examiner, Art Unit 1618
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