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 of Group I and species of 1N-cryptophane-12 (CR1N) and hyperpolarized noble element xenon-129 in the reply filed on January 27, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 3-5 are withdrawn because they do not read on the elected species CR1N. The CR1N does not contain LZ, L’Z’, or L’’Z’’ group.
Drawings
The drawings are objected to because:
In Fig. 1, the Y-axis lacks descriptive label and unit of measurement. Without this label, the technical significance of the data points and the relationship between the variables cannot be understood, failing to provide a clear understanding of the claimed invention.
In Figs. 4, 6, and 7, the X-axis and Y-axis lack descriptive labels and units of measurement. Without these labels, the technical significance of the data points and the relationship between the variables cannot be understood, failing to provide a clear understanding of the claimed invention.
Appropriate correction is required.
Specification
The disclosure is objected to because of the following informalities:
The use of the terms Bruker® Avance™, maXis™, Zetasizer® Ultra, Infinite® M200, Brij® L23, Triton® X-100, 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:
On pages 2-4, 8, 9, 12, and 14, “H,” should read “H;” (“H”s for “Y1, Y2 and Y3” and “Z1, Z2 and Z3”).
Appropriate correction is required.
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1, “H,” should read “H;” (“H”s for “Y1, Y2 and Y3” and “Z1, Z2 and Z3”).
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.
Claims 1, 2, 6, 12, and 13 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 1, 2, 12, and 13, the phrases "in particular" and ”more particularly” (used in multiple locations) are ambiguous and exemplary claim language. Because it is unclear whether the limitations following these phrases are intended to be required feature of the claimed invention, the phrases render the claims indefinite.
Regarding claim 1, the phrase "for example” is exemplary language. Because it is unclear if the subsequent limitations are mandatory elements of the claim, the phrase render the claim indefinite.
The dependent claims fall therewith.
Clarification and/or amendment is required.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 6, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Brotin and Dutasta (Chemical Reviews, 2009; cited on PTO-892) in view of Panagopoulos et al. (The Journal of Organic Chemistry, 2010; cited on PTO-892).
Regarding claims 1, 2, and 6, Brotin discloses the structure of cryptophane-C (page 89, Chart 1). The structure of cryptophane-C is substantially similar to that of Cr1N of instant application, differing only in the presence of nitrogen functionalization. Cr1N includes a nitrogen atom replacing the central carbon of the methylene bridge (X2) in a crown cyclotriveratrylene (CTV) unit, whereas cryptophane-C contains a carbon atom at the X2 position. Regarding claims 12 and 13, Brotin discloses that cryptophanes and their complexes can be used as xenon-based biosensors (page 127, 11. Conclusion). Brotin discloses that the cryptophanes can be complexed with laser-polarized xenon such as 129Xe for NMR (Nuclear Magnetic Resonance) spectroscopy, magnetic resonance imaging (MRI), and other medical diagnostics applications (pages 114-120, 9. Xenon in the Cryptophane Cavity; pages 127-128, 11. Conclusion).
Brotin does not disclose nitrogen functionalized cryptophane structure.
Panagopoulos discloses that CTV modification is desirable because variable CTV derivatives can be used as building blocks for the construction of more complex cryptophanes structures (page 7887, Introduction). Panagopoulos discloses multiple CTV derivatives such as apical methylene aza substituted cyclophanes (page 7888, FIGURES 1 and 2). Panagopoulos also discloses that replacement of the methylene groups with nitrogen atoms provides a convenient site for further functionalization and allows modulation of the electronic charge of the scaffold, thereby enabling tuning of host-guest properties (page 7888, Introduction). Panagopoulos further discloses that the nitrogen atoms may act as ligands for metals, providing a redox-switchable host molecules and versatility useful in MRI contrast agents and radioimmunotherapy agents (page 7888, Introduction; page 7890, In conclusion).
It would have been obvious to a person of ordinary skill in the art before the effective
filing date of the claimed invention to modify the cryptophane-C of Brotin by replacing a carbon atom in the methylene bridge of the structure with a nitrogen atom to improve suitability for biomedical sensing applications. A person of ordinary skill in the art would have been motivated to make these modifications and reasonably would have expected success because Panagopoulos teaches substitution of carbon atom with nitrogen atom in CTV-based structures can modulate physicochemical properties and improve utility in diagnostic systems. Further, a person of ordinary skill in the art would have been motivated to incorporate nitrogen atom into the cryptophane scaffold in order to improve functionality, solubility, and properties relevant to diagnostic and imaging applications. Accordingly, applying the teaching of Panagopoulos to the compound of Brotin constitutes no more than the predictable use of prior art elements according to their established functions, thus rendering instant claims obvious.
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.
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/JONG HWAN BAEK/Examiner, Art Unit 1618
/Michael G. Hartley/ Supervisory Patent Examiner, Art Unit 1618