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 II and species of complex 99a of formula in the reply filed on January 14, 2026 is acknowledged. In a telephone call with Seth J. Niemi on February 5, 2026, an election of the species of enzyme substrate as the molecule of interest species election requirement was made. No prior art was found in the search for the elected species. The search and examination was expanded to the full scope of claim 4 and no prior art was found.
Allowable Subject Matter
Claims 4-9, 19-35, and 37 are allowed.
The following is an examiner’s statement of reasons for allowance: A compound of formula (II) or (III) of instant claim is novel. The closest prior art of record Wong et al. (US 2019 0127393; cited on PTO-892), Walter et al. (Chemistry A European Journal, 2018; cited on PTO-892), and Lamarque et al. (WO 2018 229408; cited on IDS filed April 27, 2023) does not teach the specific compound features such as a mandatory R4 group (-(CH2)m-NR6R7 ) in a group of formula (IV) of instant claim 1 and at least one group of formula (IV) is required in compounds of formulas (II) and (III). The prior art does not provide a motivation to modify its compounds towards those claimed by the addition of such a group. Therefore, the compounds of the instant claim are not rendered obvious by the prior art.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Specification
The disclosure is objected to because of the following informalities:
The use of the terms BODIPY™, pHrodo™, AcidiFluor™, Herceptin™, Waters™, and Xbridge™ which are a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Appropriate correction is required.
The disclosure is objected to because of the following informalities:
In the second structure on page 11, the phosphorus and oxygen indicated by the gray arrow do not have the proper valency and it appears that bond(s) may be missing.
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Appropriate correction is required.
Claim Rejections - 35 USC § 112 Indefiniteness
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.
Claim 16 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.
In the first structure of claim 16, the phosphorus and oxygen indicated by the gray arrow do not have the proper valency and it appears that bond(s) may be missing. Because the claim does not clearly define whether the P-O bond is required, optional, or absent, the claim fails to inform a person of ordinary skill in the art of the metes and bounds of the invention with reasonable certainty.
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Upon correction of the above rejection, the claims may be reconsidered for allowance.
Clarification and/or amendment is required.
Claim 36 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.
Claim 36 recites the limitation "the enzyme substrate". The claim lacks an antecedent basis for this limitation. Claim 35 recites “an enzyme substrate.” It is suggested that claim 36 be dependent on claim 35 to correct this issue.
Upon correction of the above rejection, the claims may be reconsidered for allowance.
Clarification and/or amendment is required.
Claim Rejections - 35 USC § 112 Improper Independency
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for not referencing to a claim previously set forth.
Claim 16 improperly depends from claim 23, which is a subsequently numbered claim. A dependent claim must refer to an earlier numbered claim. See 37 CFR 1.75(c) and MPEP § 608.01(n).
Correction is required to place the claim in proper dependent form. Appropriate correction may include renumbering the claim and/or amending the dependency so that each dependent claim refers only to a preceding claim.
Upon correction of the above rejection, the claim may be reconsidered for allowance.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONG HWAN BAEK whose telephone number is (571)272-0670. The examiner can normally be reached Mon - Thu, 9 am - 3 pm ET.
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, Michael G 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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/JONG HWAN BAEK/Examiner, Art Unit 1618
/Nissa M Westerberg/ Primary Examiner, Art Unit 1618