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 .
Claim Status
Claims 1-25 are pending.
Priority
The application was filed on 9/8/2023 and claims the benefit of priority to:
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See filing receipt dated 1/29/2024.
Drawings/Specification
The drawings are objected to because are blurry and difficult to read.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The disclosure is objected to because of the following informalities:
the specification is objected to because it appears to contain greyscale which is difficult to read, see [0023-0024, 0029, and 0032-0038]; and
the schemes/structures on the following pages are blurry and difficult to read: Scheme 3 on p. 24; Structure 6a on p. 33; and Structure 6b on p. 34.
Appropriate correction is required.
Claim Objections
Claims 1, 3-14, 16-20, and 22-25 are objected to because of the following informalities:
Claims 1, 3-5, 14, 16-18, 20, and 22-24 are objected to because the structures within the claims are blurry and difficult to read.
Claims 1, 3-5, 14, 16-18, 20, and 22-24 are further objected to because the Markush group language with respect to the R variables is improper. The word “and” should be inserted between the penultimate and final option in each group.
Claims 1, 3-5, 14, 16-18, 20, and 22-24 are further objected to because the following limitations within the definition of variable R4 are missing the symbol denoting the point of attachment (~~) which is shown in all other drawn-out options in the claim:
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. Standardized notation should be maintained throughout the claims. It is also noted that the point of attachment notation is not used with respect to R5 in any of the claims.
Line 2 of claim 6 contains a grammatical error “useful for as a”. One of “for” or “as” should be deleted.
Claims 6-13 all contain the limitation “claims 1”. This limitation should be amended to recite “claim 1”.
Claim 9 recites “a diagnostic kit for targeting lysosomal, mitrochondrial, or nucleus”. This phrase contains grammatical errors. “Lysosomal” and “mitochondrial” are adjectives which should modify a noun (which appears to be missing) and “nucleus” is a noun, but is an alternative to the other two options. The same or similar phrasing is also present in claims 13, 19, and 25 and also requires correction.
Claim 10 recites “a pH-probe for diagnostic purpose”. This phrase contains grammatical errors. The Examiner suggests amending the limitation to recite “a diagnostic pH probe” or “a pH-probe for diagnosing”.
Appropriate correction is required.
Applicant is advised that should claim 7 be found allowable, claim 14 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof.
Applicant is advised that should claim 9 be found allowable, claim 19 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof.
Applicant is advised that should claim 12 be found allowable, claim 20 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof.
Applicant is advised that should claim 13 be found allowable, claim 25 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof.
The scope of formula (I) in claims 1, 14, and 20 is identical.
When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112(b)
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 1-25 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.
In claim 1, the definition of variable R4 contains the following structure:
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. This limitation is indefinite because variable “R” is undefined. The indefinite structure is also present in claims 3-5, 14, 16-18, 20, and 22-24. The deficiency is not cured in any dependent claims.
Claim Rejections - 35 USC § 112(d)
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.
Claims 2, 4, 15, 17, 21 and 23 are 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 failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 2 and 4 recite that R2 and R3 are methyl. These are not options in independent claim 1, from which both claims depend, therefore this is an improper broadening of the scope of R2 and R3.
Claims 15 and 17 recite that R2 and R3 are methyl. These are not options in independent claim 14, from which both claims depend, therefore this is an improper broadening of the scope of R2 and R3.
Claims 21 and 23 recite that R2 and R3 are methyl. These are not options in independent claim 20, from which both claims depend, therefore this is an improper broadening of the scope of R2 and R3.
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.
Claim Rejections - 35 USC § 102
In the interest of compact prosecution, the compounds of claims 2, 4, 15, 17, 21 and 23, wherein R2 and R3 are methyl in Formula (I), are addressed with the following rejection.
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 2, 4, 15, 17, 21 and 23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ichihashi (US2018/0134952, published on 5/17/2018).
On page 54, Ichihashi teaches the following compound of formula G-111:
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. This compound corresponds to a compound of instant formula (I) wherein R4 is -NO2; R5 is -CO2Et; and R2 and R3 are methyl. Regarding the limitations “diagnostic kit” in claims 15 and 17 and “pH activable fluorescent probe” in claims 21 and 23, according to the specification as filed, the compound alone can fulfill both of these functional limitations. Also see MPEP 2131.
Subject Matter free from the Prior Art
The inventions of claims 1, 3, 5-14, 16, 18-20, 22, and 24-25 appear to be free from the prior art. The closest prior art compounds to the claimed compounds are those disclosed in:
Kang (US 5274113, published on 12/28/1993);
Chang (US 2014/0359794, published on 12/4/2014);
Xie (CN103214505A, published on 7/24/2013);
Gayathri (“Study on Liposomal Encapsulation of New Bodipy Sensitizers for Photodynamic Therapy” ACS Med Chem Lett, 2018, p. 323-327); and
Hiruta (“Near IR Emitting Red-Shifting Ratiometric Fluorophores Based on Borondipyrromethene” Org. Lett, 2015, p. 3022-3025).
Kang teaches the following derivatives of dipyrrometheneboron difluoride dyes that have an absorption maximum at wavelengths longer than about 525nm, and are chemically reactive with nucleic acids, proteins, carbohydrates, and other biologically derived or synthetic chemical materials of the following structure:
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. See abstract and claims. A multitude of species are described in Table 2 on col. 5-12. None of the compounds teach or suggest the claimed compounds. None of the compounds of Kang teach a Ph-4-R4 group at R4 of Kang, compounds wherein instant R2 and R3 (variables R2 and R6 of Kang) are both one of the groups claimed, and/or instant R5 (variables R2 and R6 of Kang) is one of the groups claimed.
Chang teaches fluorescent compounds of formula (I) with specificity to neural stem cells:
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. See abstract. Tables 1-2 on p. 14-26 teach species of the compounds. None of the compounds of Chang teach instant R2 and R3 (variables are both one of the groups claimed and/or instant R5 (variables R2 and R6 of Kang) is one of the groups claimed.
Xie teaches the following pyrromethene-boron difluoride fluorescent derivative:
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See abstract and claims. Xie does not teach a compound wherein R2 and R3 are one of the claimed groups and/or wherein R5 is one of the claimed groups.
Gayathri teaches Bodipy sensitizers for photodynamic therapy of the following formulae:
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. See abstract and Fig. 1 on p. 324. Gayathri does not teach a compound wherein R2 and R3 are one of the claimed groups and/or wherein R5 is one of the claimed groups.
Hiruta teaches near IR emitting red-shifting ratiometric fluorophores of the following formula:
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. See abstract and scheme 1 on p. 3022. Hiruta does not teach a compound wherein R2 and R3 are one of the claimed groups and/or wherein R5 is one of the claimed groups.
Nor is there motivation to modify any of the disclosed references to arrive at the claimed compounds.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMY C BONAPARTE whose telephone number is (571)272-7307. The examiner can normally be reached 11-7.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMY C BONAPARTE/Primary Examiner, Art Unit 1692