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.
Election/Restrictions
Applicant's election with traverse in the reply filed on 28 January 2026, is acknowledged. The traversal is on the ground(s) that no Unity objections were raised and no prior art was cited that shows that species of genus formula I would not comprise any special technical feature making a contribution over the prior art.
While the Examiner does not agree with this traversal (for instance, proper justification for the election of species was made following 35 USC 371 practice: see pages 5-6 where Examiner discussed how species of genus formula I are not all regarded as being of a similar nature), the Election of Species Requirement of 28 November 2025, is withdrawn, as all claims are free of the prior art.
Examiner conducted a prior art search on Applicants’ elected species AmBF3-Tz(4) as shown in Figure 1 but did not find any prior art.
Examiner extended the Markush search to the full scope of genus formula I of instant claim 1 but did not find any prior art.
Therefore, the Election of Species Requirement of 28 November 2025, is withdrawn, as all claims are free of the prior art.
All claims have been examined on the merits.
Current Status of 18/269,916
This Office Action is responsive to the amended claims of 28 January 2026.
Claims 1-19 have been examined on the merits. Claims 1, 2, 6, and 11 are original. Claims 3-4, 7-10, and 12-19 are previously presented. Claim 5 is currently amended.
Priority
The effective filing date is 28 December 2020.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 8 September 2025; and 27 June 2023, are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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 10-11, 14-15, and 18 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.
Claim 10 contains the limitation “acid such as HCl” which renders the metes and bounds of claim 10 undefined (hence rendering claim 10 indefinite under 35 USC 112(b)). The artisan does not know if the limitations following “such as” are merely exemplary or are required limitations of the claim. Please delete “such as” to render moot this rejection.
Claim 11 is similarly rejected as indefinite under 35 USC 112(b) since it refers back to claim 10 but does not remedy the rationale underpinning the basis for rejecting claim 10.
Claim 14 recites the limitation "the radiolabeled tracer compounds". There is insufficient antecedent basis for this limitation in the claim.
As drafted, “the radiolabeled tracer compounds” renders the metes and bounds of claim 14 undefined (hence rendering claim 14 indefinite under 35 USC 112(b)). The artisan does not know where antecedent basis can be found for “radiolabeled tracer compound” within claim 1, 5, 9, or 14.
Claim 15 recites the limitation "the 18F-labeled adduct". There is insufficient antecedent basis for this limitation in the claim.
As drafted, the limitation "the 18F-labeled adduct" renders the metes and bounds of claim 15 undefined (hence rendering claim 15 indefinite under 35 USC 112(b)). The artisan does not know where antecedent basis can be found for "the 18F-labeled adduct".
Claim 18 recites the limitation "the radiolabeled tracer compounds and/or the adducts". There is insufficient antecedent basis for this limitation in the claim.
As drafted, the limitation "the radiolabeled tracer compounds and/or the adducts" renders the metes and bounds of claim 18 undefined (hence rendering claim 18 indefinite under 35 USC 112(b)). The artisan does not know where antecedent basis can be found for "the radiolabeled tracer compounds and/or the adducts".
Conclusion
Claims 10-11, 14-15, and 18 are not presently allowable as written.
Claims 1-9, 12-13, 16-17, and 19 are presently allowable as written.
There is no known prior art reference that either teaches or anticipates the tracer compound of genus formula I of instant claim 1.
The reference LINDEN (Linden, Greta, et al. “Bioorthogonal Turn-On BODIPY-Peptide Photosensitizers for Tailored Photodynamic Therapy.” Chemistry Eur. J. (2020), 26, pp. 100014-10023, provided by Applicants - referenced in IDS of 27 June 2023), discloses a tracer compound:
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(see Scheme 1 within page 10016).
However, the exemplary compound from LINDEN, above, is structurally distinct from the instant claim 1 genus formula I in at least two different ways: (1) at least at variables “L” and (2) the terminal ending where a linear (non-cyclic) B(F)3 should be (according to instant claim 1). The LINDEN “L” has a sulfur (S), which is not permitted by the instant “L”. Also, LINDEN does not have the linear-NCH2(B)F3; rather, (B)F3 of LINDEN is part of a ring.
Furthermore, there is no known rationale (and no known prior art reference providing said rationale) to modify the teachings of LINDEN, above, to reach the instant claim 1 genus formula I.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN S KENYON whose telephone number is (571)270-1567. The examiner can normally be reached Monday-Friday 10a-6p.
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, Andrew D Kosar can be reached at (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625
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