Claims 1-20 are pending in this application.
DETAILED ACTION
Notice of Pre-AIA or AIA Status
1 The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
2 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 16 and 17 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.
Regarding claims 16 and 17, the phrase "a specific " renders the claims indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Correction is required.
The examiner suggests deleting the phrase “a specific” to make the claim in a proper form.
Claim Rejections - 35 USC § 103
3 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.
4 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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bartholomew et al. (US 20200392346 A1) in view of Bioconjugate Chem., 2016, Vol. 27, No. 5, pages 1525-1531.
Bartholomew et al. (US’ 346 A1) teaches polymeric tandem dyes based on the subject multi chromophores are provided that further include an acceptor fluorophore linked to a non-conjugated repeat unit of the polymeric backbone and configured in energy-receiving proximity to a pendant donor chromophore (fluorophore) group (see abstract and page 1, paragraph, 0005) and wherein the donor and the acceptor fluorophores are in energy transfer relationship as claimed in claim 1 (see page 32, paragraph 0325), wherein the donor fluorophore has an absorption maximum in the range of 400 to 600 nm which is covered the claimed range as claimed in claim 2 (see page paragraph, 0492 and figure 5A), and wherein the donor chromophore (fluorophore) groups are substituted with one or more water solubilizing groups (WSG) as claimed in claim 5 (see page 25, paragraph, 0289) and wherein the water solubilizing groups include polyethylene glycol (PEG) as claimed in claims 6-7 (see 26, paragraph, 0295), wherein the acceptor fluorophore that is selected has an emission maximum wavelength ranging from 300 to 900 nm which is covered the claimed range as claimed in claim 9 (see page 32, paragraph, 0330), and wherein the accepter fluorophore is a cyanine dyes, a xanthene dye and a coumarin dye as claimed in claim 10 (see page 32, paragraph, 0328), wherein the number of donor is greater than the number of accepter as claimed in claim 11 (see claim 44), and wherein the donor ranges from 5 to 10 and the number of the acceptor is one as claimed in claims 12-13 (see claim 45), and wherein a binding member linked to the polymeric tandem dye is a biomolecule includes protein, an antibody, antibody fragment or derivative thereof as claimed in claims 14-17 (see page 45, paragraph, 0492 and claim 39), and wherein the polymeric backbone is linked chemo-selective tag as claimed in claim 18 (see claim 27), and wherein the non-conjugated polymeric backbone comprises polypeptide that comprises from 50 mole % or more amino acid residues as claimed in claims 19-20 (see claim 46).
The instant claims differ from the teaching of Bartholomew et al. (US’ 346 A1) by reciting a tandem dye comprising a non-conjugated polymeric backbone and one or more violet excitable donor fluorophores linked to the non-conjugated polymeric backbone as claimed.
A bioconjugate Chemistry in analogous art of tandem dyes formulation, teaches a tandem dye comprising coumarin fluorophore as a donor to transfer energy to an acceptor, wherein the coumarin is violet -excited based donor dye as claimed in claims 1 and 3-4 (see The Bioconjugate Chemistry, page 1526, left column, last paragraph and right column, first paragraph).
Therefore, in view of the teaching of the Bioconjugate Chemistry, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to be motivated to modify the tandem dye of Bartholomew et al. (US’ 346 A1) by utilizing a coumarin as a violet excited donor fluorophore as taught by the bioconjugate Chemistry to arrive at the claimed invention. Such a modification would have been obvious based on the teaching of the Bioconjugate Chemistry that referred to the use of a tandem dye comprising coumarin fluorophore as a violet excited donor that shows tunable photophysical properties and attractive features like quantum yield, extinction coefficient and photostability (see page 1526, left column, the bottom paragraph), and, thus, the person of the ordinary skill in the art would have a motivation to improve the dyeing properties of the tandem dye and would expect such a tandem dye to have similar property to those claimed, absent unexpected results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EISA B ELHILO whose telephone number is (571)272-1315. The examiner can normally be reached Monday-Friday, 7:00 AM to 3:30 PM.
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/EISA B ELHILO/Primary Examiner, Art Unit 1761