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 .
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.
Claim Objections
Claim 22 is objected to because of the following informalities: Claim 22 contains the limitations “primer” and “seconder” which appear to be typos and have been interpreted as “primary” and “secondary.” Appropriate correction is required.
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 14-16, 18, 20-25 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 14-16, 18, and 20-25: The phrases "preferably," “more preferably,” and “most preferably” render the claims indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
Regarding Claim 18: Claim 18 contains various chemical compounds in a language other than English, therefore, it is not clear what compounds are being claimed (see b).
Regarding Claims 21-23: Claims 21-23 appear to further limit the process of claim 20 yet they depend from claim 19, therefore, the scope of the claims is unclear. For purposes of further examination, claims 21-23 are being interpreted as depending from claim 20.
Claim Rejections - 35 USC § 102
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.
Claim(s) 13-14 and 18-25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al. (“An OFF–ON fluorescent probe for Zn2+ based on a GFP-inspired imidazolone derivative attached to a 1,10-phenanthroline moiety” Chem. Commun., 2011, 47, 4361-4363).
Regarding Claims 13-14: Li et al. teaches a compound of the following structure (Scheme 1):
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Such a compound reads on a compound of claimed general formula I wherein Q is NR5R9, W is O, R1 is H, R2 is H, R3 is alkyl, R4 is aryl, R5 and R9 form a hetrocyclic ring with R6.
Regarding Claim 18: Li et al. teaches the compound in a HEPES buffer which comprises an organic acid and will protonate at least a portion of the compound in solution forming a salt (Fig. 1).
Regarding Claim 19: Li et al. teaches the compound as a metal complex with Z+2 (Fig. 1).
Regarding Claim 20: Li et al. teaches the compound is made by reaction of the following compounds reading on general formulas II and III (Scheme 1):
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Regarding Claim 21: Li et al. teaches the reaction taking place in ethanol (C2 alcohol) (Scheme 1).
Regarding Claim 22: Li et al. teaches the reaction taking place in the presence of piperidine (organic base) (Scheme 1).
Regarding Claim 23: Li et al. teaches the reaction is under reflux in a piperidine/ethanol solvent. As such solvents have boiling points between the claimed range, the temperature of the reaction will be maintained within the claimed range.
Regarding Claims 24-25: Li et al. teaches imaging Zn2+ ions in cells by fluorescence microscopy (laser microscopy) (Fig. 4).
Allowable Subject Matter
Claim 17 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 15-16 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER F GODENSCHWAGER whose telephone number is (571)270-3302. The examiner can normally be reached 8:30-5:00, M-F EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER F GODENSCHWAGER/Primary Examiner, Art Unit 1767 March 18, 2026
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