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 .
Receipt is acknowledged of Applicant’s Restriction Requirement Response filed on 01/20/2026; and IDS filed on 02/28/2023.
Claims 1-18 are pending in the instant application.
Claims 4-18 are withdrawn from further consideration.
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-3) in the reply filed on 01/20/2026 is acknowledged.
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.
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) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over KIM (US 2012/0035360).
KIM teaches two-photon fluorescent probes (see title), such as the compound (I) (see [0011]; and is provided below), wherein X is O (see [0012]):
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KIM’s nitrogen has a methyl group, while Applicant’s nitrogen has a hydrogen. However, there is case law that holds that compounds that differ in only having H vs Me is not deemed a patentable advance absent evidence of superior and unexpected results. Note In re Wood 199 USPQ 137; In re Lohr 137 USPQ 548; In re Fauque 121 USPQ 425. Thus, it would have been obvious to one skilled in the art at the time the invention was made to modify the closest (i.e. anticipated) compound pointed out above by modifying the nitrogen with hydrogen in place of the methyl.
Note, the prior art’s compound would be capable of the intended use as recited by Applicant, unless proven otherwise.
Telephonic Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAKE MINH VU whose telephone number is (571)272-8148. The examiner can normally be reached Mon-Fri 9:00am-5:30pm.
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/JAKE M VU/Primary Examiner, Art Unit 1618