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 .
Election/Restrictions
Applicant’s election without traverse of Group I: Claims 1-17 in the reply filed on 11 DECEMBER 2025 is acknowledged.
Claims 18-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected system, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11 DECEMBER 2025.
Status of Claims
In the election on 11 DECEMBER 2025, Applicant has elected without traverse of Group I: Claims 1-17 in the reply filed on 11 DECEMBER 2025.
Claims 1-17 are considered on the merits below.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
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.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract without significantly more.
The instant invention recites: A method of imaging a fluorescent polymerization product comprising a photo-uncaging reaction, wherein the photo-uncaging reaction produces a plurality of un-caged monomers, each un-caged monomer comprising a reactive group, and a fluorophore group; a fluorogenic polymerization, wherein the fluorogenic polymerization comprises reaction of at least a portion of the plurality of the un-caged monomers to form one or more fluorescent polymerization product(s), and wherein each of the uncaged monomers reacts with a catalyst or a polymer chain disposed on a substrate; and obtaining one or more fluorescence image(s), each fluorescent image comprising one or more of the fluorescent polymerization product(s), wherein a change or changes in the fluorescence image(s) is/are indicative of one or more feature(s) of the reacted un-caged monomer and/or the catalyst or the substrate.
The claim recites a judicial exception and identify the abstract idea/law of nature/natural phenomenon. The third step of obtaining and the wherein a change or changes in fluorescent images are indicative of…recites the determining on the basis of said comparison. This is similar to a look up table, would be considered an evaluation (mental step) and therefore an abstract idea.
Does the claim as a whole integrates the recited judicial exception into a practical application of the exception; No. After step obtaining nothing else is done. There does not appear to have any additional steps which are significantly more than the abstract idea.
In addition, the limitation of the obtaining and the wherein a change or changes in fluorescent images are indicative of…; is a judicial exception, (an abstract idea that falls within the mathematical concept and mental process groupings in the 2019 PEG, and a law of nature). This claim identifies the recited exception as an abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because does not appear to have ‘significantly’ more; all steps in the method are well understood routine and conventional (WURC). In the method, the method is recited such that the steps are performed at a high level of generality such that it amount to insignificant presolution activity, e.g. mere data gathering is necessary to use to detect any sort of changes. Since it is claimed at a high level of generality, there is no meaningful limitation claimed, such as a particular or unconventional machine or transformation of a particular article.
The claim is ineligible.
The dependent claims do not solve the issues of above and are included in the rejection below.
In Claims 7, 10 and 15-17 , which recite method steps are steps which are not significantly more and known in the prior art.
Other dependent claims do not solve the issues of above.
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 10, 13, and 15 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.
The term “sufficient” in claim 10 is a relative term which renders the claim indefinite. The term “sufficient” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
It is unclear what is considered to be “sufficient”. It is interpreted by the Examiner that “sufficient” can be any amount of time.
Claim 10 recites the limitation "the fluorogenic reaction" There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites ‘further comprising…bleaching the fluorophore’. It is unclear to the Examiner when this bleaching step occurs. Does it occur after the photo-uncaging reaction? Any time after or after / during the obtaining images as define din Claim 14? For examination purposes, the bleaching step can occur at any time.
Claim 15 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 term “desired” in claim 15 is a relative term which renders the claim indefinite. The term “desired” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
It is unclear what is considered to be “desired”. It is interpreted by the Examiner that “desired” can be any amount of time.
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.
Claims 1-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KOBAYASHI, J. Am. Chem. Soc. 2012, 134, 27, 11153–11160.
Applicant’s invention is directed towards a method.
Regarding Claim 1, the KOBAYASHI discloses a method of imaging a fluorescent polymerization product, abstract, page 11153, 11156-11157, ‘Photoactivation Experiments in Cuvette’, comprising :
a photo-uncaging reaction, wherein the photo-uncaging reaction produces a plurality of un-caged monomers, Figure 1a, 1d, 2a, each un-caged monomer comprising a reactive group, and a fluorophore group, Figure 1a, 1d, 2a, 2b;
a fluorogenic polymerization, wherein the fluorogenic polymerization comprises reaction of at least a portion of the plurality of the un-caged monomers to form one or more fluorescent polymerization product(s), Figure 1a, 1d, 2a, 2b, page 11157, ‘Synthesis of Caged BODIPY-SNAP Ligand …’; and wherein each of the uncaged monomers reacts with a catalyst or a polymer chain disposed on a substrate, page 11157, ‘Synthesis of Caged BODIPY-SNAP Ligand …’; and obtaining one or more fluorescence image(s), each fluorescent image comprising one or more of the fluorescent polymerization product(s), Figure 1c-e, 3, page 11157, ‘Optical Highlighting of …’, wherein a change or changes in the fluorescence image(s) is/are indicative of one or more feature(s) of the reacted un-caged monomer and/or the catalyst or the substrate, Figure 1c-e, page 11156, ‘Photoactivation Experiments in Cuvette’.
Additional Disclosures Included are: Claim 2: wherein the method of claim 1, wherein the substrate is a particle, a planar substrate, or a non-planar substrate, Figure 2a, page 11157, ‘Synthesis of Caged BODIPY-SNAP Ligand…’. ; Claim 3: wherein the method of claim 1, wherein at least a portion of or all the un-caged monomers further comprise a side-chain group, wherein the fluorophore group is covalently bound to the monomer, Figure 2a, b, page 11157, ‘Synthesis of Caged BODIPY-SNAP Ligand…’. . ; Claim 4: wherein the method of claim 3, wherein the side-chain group does not substantially interfere with the fluorogenic polymerization, Figure 1a, 2a. ; Claim 5: wherein the method of claim 1, wherein the plurality of uncaged monomers comprises at least two different uncaged monomers, Figure 1a, 2a. ; Claim 6: wherein the method of claim 5, wherein the at least two different uncaged monomers are different in terms of fluorescence emission, Figure 1a, c. ; Claim 7: wherein the method of claim 1, the method further comprising, prior to the photo- uncaging reaction, providing a mixture comprising a plurality of caged monomers, each caged monomer comprising a reactive group, a fluorophore group, and a photocleavable caging group, Figure 1a, page 11153-11154, ‘Molecular Design of Caged BODIPY’. ; Claim 8: wherein the method of claim 6, wherein all the caged monomers present in the mixture comprise a fluorophore group, Figure 3b, page 11156. ; Claim 9: wherein the method of claim 8, wherein the un-caged monomer(s) is/are present at a concentration of less than about 10-9 M, Figure 3b. ; Claim 10: wherein the method of claim 1, the method further comprising, after the fluorogenic reaction and prior to the obtaining the fluorescence image(s), waiting a period of time sufficient for substantially all the unreacted uncaged monomers to diffuse or be removed from proximity to the reacted uncaged monomer(s), Figure 1b, page 11156,-11157, ‘Photoactivation Experiments in Cuvette’. ; Claim 11: wherein the method of claim 1, wherein at least a portion of or all the fluorescence image(s) is/are single-molecule localization microscopy image(s), page 11158, ‘Discussion’. ; Claim 12: wherein the method of claim 1, wherein two or more fluorescence images are obtained using different wavelengths, Figure 1 and 2, 350 nm, page 11155, ‘Synthesis and Spectroscopic Properties…’, Figure 4, 405 nm, page 11158, ‘Optical Highlighting of Targeting …’.; Claim 13: wherein the method of claim 1, the method further comprising substantially or completely bleaching the fluorophore, page 11156-11157, ‘Photoactivation Experiments in Cuvette’. ; Claim 14: wherein the method according to claim 13, wherein the obtaining the one or more fluorescent image(s) results in bleaching of substantially all or all the fluorophore(s), page 11156-11157, ‘Photoactivation Experiments in Cuvette’. ; Claim 15: wherein the method of claim 1, the method further comprising repeating the photo- uncaging reaction, the fluorogenic polymerization, or the obtaining one or more fluorescence image(s), or any combination thereof a desired number of times, page 11156-11157, ‘Photoactivation Experiments in Cuvette’. ; Claim 16: wherein the method of claim 1, the method further comprising photocleaving the fluorophore group(s) from substantially all or all the product of the reaction of the un-caged monomer(s) and the catalyst(s), the polymer chain(s), or both, page 11156-11157, ‘Photoactivation Experiments in Cuvette’. ; and Claim 17: wherein the method of claim 1, wherein the method is used to determine a polymer sequence, reaction kinetics, reaction dynamics, catalysis cooperativity between spatially distinct sites, or molecular adsorption onto a surface, abstract, page 11158, ‘Discussion’.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE T MUI whose telephone number is (571)270-3243. The examiner can normally be reached M-Th 5:30 -15:30 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, LYLE ALEXANDER can be reached at (571) 272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
CTM
/CHRISTINE T MUI/Primary Examiner, Art Unit 1797