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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in AU 2022902128 on 7/28/2022. It is noted, however, that applicant has not filed a certified copy of the Australian application as required by 37 CFR 1.55.
Claim Rejections - 35 U.S.C. §§ 101 and 112, Second Paragraph
The following are quotations of 35 U.S.C. §§ 101 and 112, second paragraph, respectively, which form the basis of the claim rejections as set forth under this particular section of the Official Action:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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 1-18 are rejected under 35 U.S.C. § 101 as being drawn to use claims, which are non-statutory process claims, as defined in 35 U.S.C. § 101. See, Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967). In addition, claims 1-18 are also rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Applicants regard as the invention. More specifically, a claim is rendered indefinite when said claim merely recites a use without any active, positive steps delimiting how this use is actually practiced. See MPEP 2175.03(q). As a result, the Applicants are respectfully required to redraft the aforementioned use claims as statutory process claims that delimit active, positive steps on how to use a composition according to the invention as originally filed.
Claims 1-18 are non-statutory and will be grouped when amended to conform to US practice.
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) 18-20 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Ghosh et al. "Multimodal Chelation Platform for Near-Infrared Fluorescence/
Nuclear Imaging", | J. Med. Chem. 2013, 56, 406−416.
Ghosh discloses metal-chelate and NIRF conjugates comprising the following structures:
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294
630
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,
note the chelate is an aminopolycarboxylic acid ligand meeting L, IRDye800CW and fluorescein meet X and the metal included Cu meeting M; the conjugates were used to image prostate cancer. See entire disclosure, especially abstract, scheme 2 and ¶ bridging pages 406-407 and conclusion page 413.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES W ROGERS whose telephone number is (571)272-7838. The examiner can normally be reached 9:30-6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached at 571-272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES W ROGERS/Primary Examiner, Art Unit 1618