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 .
DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/17/2025 has been entered.
Status of Claims
Claims 1,3-4,10-15,17-22,24 and 26-32 are pending in the instant application. Claims 28-32 are new claims of which claims 28, 29, 31, and 32 read on the elected species and invention. Claims 13-15, 17-19, and 30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
An action on the merits of claims 1,3-4,10-12,20-22,24,26-29 and 31-32 is contained herein.
Previous Objections/Rejections
Any rejections or objections stated of record in the office action mailed on 4/18/2025 that are not explicitly addressed herein below, are hereby withdrawn in light of applicant's arguments and/or amendments filed 10/17/2025.
New Rejections
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.
Claims 1,3-4,10-12,20-22,24,26-29 and 31-32 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 pre-AIA the applicant regards as the invention.
In the instant claim 1, Applicant recites “the tissue shape as measured by scleral area analysis”. The language “scleral area analysis” is unclear with respect to the preamble of claim 1 wherein there is no mention of the tissue being the sclera. Thus if the tissue is anything other than the sclera how does this language relate to those tissues? Are Applicants implying that the tissue is limited to the sclera perhaps or something else? Thus the claim and claims dependent on it which do not rectify the issue are considered indefinite. In terms of prior art, the examiner will assume that any tissue is intended within the claim scope until the issue is addressed. Correction is required.
Claim Rejections - 35 USC § 103
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 of this title, 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.
Claims 1,10,11,20-22,26-29 and 31-32 are rejected under 35 U.S.C. 103(a) as being unpatentable over US Patent 9,872,833.
The instant claims may be drawn to a method of altering a chemical property of a tissue comprising irradiation of the following compound (representative of the first formula in claim 1):
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wherein the C18H37 group is C1-C12. Note that R1,2 is selected from alkyl or substituted alkyl with SO3, Y = Q1,2 = H, and Z5,6 = naphthyl.
Patent ‘833 teaches the compound described above with the C18H37 group (see col. 20, ICG-8) wherein the compound is injected to the patient (rat having tumor cells) in a solvent (chloroform/MeOH-PEG mixture) and subsequently irradiated resulting in change of the tissue shape and death of tumor cells (see col 22-23 and Figure 5). The only difference between the prior art procedure and the claimed procedure stems from the C18H37 group and C1-C12 in the dye employed. However the patent teaches that the two are equivalent at col. 8 (see variables R1-3) wherein the unsubstituted alkylene group may range from 1-23 carbon atoms (see n definition at col. 9, li. 32):
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478
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.
Thus the claimed method would have been considered obvious. Note that any differences in solvents, additives, etc. do not tip the scales towards patentability as this would be considered routine optimization by one skilled in the art.
Generally, these differences will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN E MCDOWELL whose telephone number is (571)270-5755. The examiner can normally be reached on 8:30-6 MF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN E MCDOWELL/ Primary Examiner, Art Unit 1624