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 .
Status of Claims
The amendments and arguments filed 28 January 2026 are acknowledged and have been fully considered. Claims 1-14 are currently pending. Claim 1 is amended; no claims are cancelled; claims 6-9 and 11-14 are withdrawn; no claims are new.
Claims 1-5 and 10 are examined on the merits herein.
Objections/Rejections Withdrawn
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied, and constitute the complete set presently being applied to the instant application.
Expansion of Election of Species Requirement
As indicated in the previous action, Applicant’s elected species of photosensitizer of Formula (I) wherein R is
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reads upon claims 1-5 and 10. The elected species has been searched and is deemed to be free of the prior art and non-obvious. Accordingly, the search has been expanded as called for under current Office Markush practice – a compound-by-compound search – to include a single additional species (MPEP 803.02), That species is a compound of Formula (I) wherein R is
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which reads on claims 1-5 and 10. A rejection to those claims follows.
Claim Rejections - 35 USC § 103
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, 3, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Dong et al. (Chem Phys Chem, 2020, Vol. 21, 1388-1401; of record) in view of Marfin et al. (New J. Chem., 2020, Vol. 44, 19046; of record).
Claim 1 is drawn to a photosensitizer having the following structural formula:
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Dong et al. teach BODIPY based photosensitizers having strong red light absorption (Abstract), including a Styryl-BDP (Pg. 1389 scheme 1) having the structure: [AltContent: arrow]
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, differing from the instantly claimed compound only in having a phenyl group in the place of an anthryl group at the site indicated by the arrow.
Marfin et al. also teach BODIBY based compounds with varying aromatic moieties, including phenyl and anthryl (Abstract). Marfin et al. further teach that replacement of a phenyl group at the 8 position with an anthryl group shifts the absorption and emission peaks of the compound (Fig. 1 and Table 1 on pg. 19047).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the compound of Dong et al. by substituting an anthryl group at the 8 position as taught by Marfin et al. It would have been obvious to substitute one aryl group suitable for BODIPY based dyes for another to obtain the predictable result of a BODIPY dye with shifted absorption and emission spectra, with a reasonable expectation of success.
As such, claim 1 is rejected as prima facie obvious.
Claim 3 is drawn to an antitumor drug comprising the photosensitizer according to claim 1.
Claim 5 is drawn to the antitumor drug of claim 3 as an antitumor drug for photodynamic therapy.
Claims 3 and 5 are intended use claims and do not impose further structural limitation on the compound of claim 1. As the compound of Dong et al. and Marfin et al. meets all of the limitations of claim 1, it reads on claims 3 and 5.
As such, claims 3 and 5 are also rejected as prima facie obvious.
Claims 2, 4, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Dong et al. and Marfin et al. as applied to claims 1, 3, and 5 above, and further in view of Chen et al. (Materials Science & Engineering C, 2020, Vol. 11, 110762 cited on Applicant’s IDS filed 7 June 2023).
The teachings of Dong et al. and Marfin et al. have been set forth above.
Claim 2 is drawn to nano photosensitizer particles formed by the photosensitizer of claim 1 and DSPE-PEG2000 by self-assembly.
Dong et al. and Marfin et al. do not teach nanoparticles.
Chen et al. teach nanoparticles comprising a fluorescent BODIPY probe and DSPE-PEG2000 for long term in vivo fluorescent tumor imagining(Abstract). Chen et al. further teach nanoparticles being self-assembled (Section 2.4 on pg. 2).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Dong et al., Marfin et al., and Chen et al. to arrive at the instantly claimed invention. It would have been obvious to substitute one fluorescent BODIBY dye for another in the particles of Chen et al. to obtain the predictable result of a fluorescent probe for tumor imaging, with a reasonable expectation of success.
As such, claim 2 is rejected as prima facie obvious.
Claim 4 is drawn to an antitumor drug comprising the nano photosensitizer particles of claim 2.
Claim 10 is drawn to the antitumor drug of claim 4 for photodynamic therapy.
Claims 4 and 10 are intended use claims and do not impose further structural limitation on the compound of claim 1. As the composition Dong et al., Marfin et al., and Chen et al. meets all of the limitations of claim 2, it reads on claims 4 and 10.
As such, claims 4 and 10 are also rejected as prima facie obvious.
Response to Arguments
Applicant’s argument that amended claim 1 is not obvious in view of Dong et al. and Marfin et al. is not persuasive as discussed in the rejection of claims under 35 U.S.C. 103 above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Paul Hoerner whose telephone number is (571)270-0259. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm eastern.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/PAUL HOERNER/Examiner, Art Unit 1611
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