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 without traverse of Group I, claims 1, 3, 5, 9, 15, 17-23, 25-28, 31-32, and 40 in the reply filed on 12 June 2026 is acknowledged.
Claim 39 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12 June 2026.
Applicant’s election without traverse of the following species
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in the reply filed on 12 June 2026 is acknowledged.
Claims 15, 17-18 and 25-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected specie, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12 June 2026.
Claim Rejections - 35 USC § 112(b) – 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.
Claim 23 is 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 23 recites that R6 may be a C3-25 alkyl group. However, claim 23 also recites that R6 is substituted with one nitrogen atom, three NH groups, and two oxygen atoms. This would appear to indicate that the group prior to the replacement, R6 would have been require to have comprised at least six carbon atoms, because
1 (N) + 3 (NH) + 2 (O) is equal to 6. As such, it is unclear if a functional group comprising only three, four, or five carbon atoms meets the claimed requirements.
For the purposes of examination under prior art, the examiner will proceed with the understanding that indefinite claim 23 has the same scope as claim 22 upon which it depends.
Claim Rejections - 35 USC § 112(d) – Failure to Limit Parent Claim
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.
Claim 5 is 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. Claim 5 provides a further limitation of R2, R4, and R6. However, this appears to have been already recited by claim 1 upon which claim 5 depends. As such, it does not appear that claim 5 further limits claim 1. 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 Interpretation
Claim 1 recites that each of R2, R4, R6 and R8 are independently hydrogen or C3-25 alkyl. The claim later recites that one or more non-adjacent carbon atoms of the C3-25 alkyl are optionally replaced by O, N, NH, or N(CH3). The examiner understands the chemical group:
-NH-CH2-CH3
to meet this claimed requirement even though it only includes two carbon atoms. This is because such a group is obtained by replacing one of the carbon atoms in a C3 alkyl group with a NH group.
Claim Rejections - 35 USC § 102(a)(1) – Anticipation
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) 1, 3, 5, 9, 19-23, 28, 32, and 40 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Caravan (US 2017/0050989 A1).
Caravan is drawn to molecular imaging probes, as of Caravan, title and abstract. One compound taught by Caravan has the following chemical structure, as of Caravan, page 14, relevant structure reproduced below.
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This appears to read on the claimed invention in the following manner:
Claimed Variable
Prior Art Teaching (prior to complexation with Gd)
n
1
p
0 (as such, R9) is not present
R1, R3, R7
-C(=O)OH
R2, R5, R8
Hydrogen
R5
Hydrogen
R6
Alkyl group in which various carbon atoms are replaced by nitrogen
Also relevant is the following chemical structure from page 20 of Caravan, reproduced below.
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This appears to read on the claimed invention in the same manner as indicated in the above-reproduced table.
As to claim 3, the structure of Caravan would appear to read on the claimed invention wherein R2 and R4 are hydrogen and wherein R6 is
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.
As to claim 5, this claim is rejected for essentially the same reason that claim 1 is rejected.
As to claim 9, R1 is -C(=O)OH and R2 is hydrogen.
As to claim 19, the chemical structure of Caravan would appear to read on structure IB recited by claim 19.
As to claim 20, both of the compounds discussed above would appear to meet the requirements of the last two lines of claim 20.
As to claim 21, the compounds of Caravan would appear to read on the claimed requirement wherein the –(NH-CH2-CH2-NH-NH2) group is considered to be R8 rather than R6. Specifically, the formula of the last two lines of claim 21 is met by the teachings of Caravan.
As to claim 22, the teachings of Caravan meet the requirements of this claim.
As to claim 23, this claim is rejected for the same reason that claim 22 is rejected. See the indefiniteness rejection above.
As to claim 28, Caravan teaches a complexed gallium or indium ion in the above-cited compounds.
As to claim 32, Caravan teaches a pharmaceutically acceptable salt in the abstract.
As to claim 40, Caravan teaches a metal complex as of the above-reproduced chemical structures.
Claim(s) 1, 3, 5, 9, 19-23, 28, and 32 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Akam et al. (Chemical Science, Vol. 11, 2020, pages 224-231).
Akam et al. (hereafter referred to as Akam) is drawn to hydrazine containing MRI probes, as of Akam, page 224, title and abstract. Akam teaches the following on page 225, figure 1a, reproduced below with annotation by the examiner.
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As to claim 40 the above-reproduced chemical structures read on the requirements of claim 40, wherein n=1, p=0, R1, R3, R5 and R7 are -C(=O)OH, R2, R4 and R6 are hydrogen, R4 are the above-shown hydrazine containing groups, and M is a gadolinium cation.
As to claim 1, the compound of Akam is understood to read on claim 1 for the same reason that it reads on claim 40. As best understood by the examiner, the “comprising” language in claim 1 does not exclude a chelated metal ion; see MPEP 2111.03(I). This determination is made in view of the fact that claims 29 and 31 depend from claim 1 but also require a chelated metal ion.
As to claim 3, Akam teaches the following functional group
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This is understood to read on the claimed requirements.
As to claim 5, this claim is rejected for essentially the same reason that claim 1 is rejected.
As to claim 9, in the chemical structure of Akam, R1 is -C(=O)OH and R2 is hydrogen.
As to claims 19-20, the structure of Akam reads on the claimed requirements in the case wherein R6 is
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and R8 is hydrogen.
As to claims 19 and 21, the structure of Akam reads on the claimed requirements in the case wherein R6 is hydrogen and R8 is
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.
As to claims 22-23, the structure of Akam reads on the claimed invention wherein R2 is hydrogen and R6 is
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. See also the above indefiniteness rejection of claim 23 and explanation by the examiner as to how claim 23 is interpreted.
As to claim 28, in the structure of Akam, a gadolinium ion is complexed thereto.
As to claim 32, Akam teaches a pharmaceutical composition intended as a contrast agent, as of Akam, title and abstract. Water or aqueous solution in which the compound is present would read on the required excipient, such as the phosphate buffered saline as of Akam, page 225, caption of figure 1.
Note Regarding Reference Date: The instant application appears to have an earliest effective filing date of 13 April 2021 in view of priority to a provisional application. Akam was published on 9 November 2019. As such, Akam is prior art under AIA 35 U.S.C. 102(a)(1). Because Akam was published over a year earlier than the effective filing date of the instant application, the exceptions under AIA 35 U.S.C. 102(b)(1)(A) and 102(b)(1)(B) would not appear to be applicable.
Claim Rejections - 35 USC § 103 – Obviousness
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.
Claim(s) 1, 3, 5, 9, 19-23, 28, 32, and 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Caravan (US 2017/0050989 A1).
Caravan is drawn to molecular imaging probes, as of Caravan, title and abstract. One compound taught by Caravan has the following chemical structure, as of Caravan, page 20, relevant structure reproduced below.
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This appears to read on the claimed invention in the following manner:
Claimed Variable
Prior Art Teaching (prior to complexation with Gd)
n
1
p
0 (as such, R9) is not present
R1, R3, R7
-C(=O)OH
R2, R5, R8
Hydrogen
R5
Hydrogen
R6
Alkyl group in which various carbon atoms are replaced by nitrogen
Also relevant is the following chemical structure from page 20 of Caravan, reproduced below.
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This appears to read on the claimed invention in the same manner as indicated in the above-reproduced table.
As to claim 1, purely en arguendo and for the purposes of this ground of rejection only, the examiner takes the position that Caravan teaches all the claimed requirements, but not in the same embodiment. As such, the examiner understands that the prior art teaches all of the claimed components, the prior art is not anticipatory insofar as these components must be selected from various lists/locations in the prior art reference. It would have been prima facie obvious; however, to have selected the recited components from various lists/locations in the prior art reference and to have combined them together. This is because such a modification would have represented nothing more than the predictable use of prior art components according to their established functions. Combining separate prior art components (from a single prior art reference) according to known methods to yield predictable results is prima facie obvious. See MPEP 2143, Exemplary Rationale A.
As to claim 3, the structure of Caravan would appear to read on the claimed invention wherein R2 and R4 are hydrogen and wherein R6 is
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.
As to claim 5, this claim is rejected for essentially the same reason that claim 1 is rejected.
As to claim 9, R1 is -C(=O)OH and R2 is hydrogen.
As to claim 19, the chemical structure of Caravan would appear to read on structure IB recited by claim 19.
As to claim 20, both of the compounds discussed above would appear to meet the requirements of the last two lines of claim 20.
As to claim 21, the compounds of Caravan would appear to read on the claimed requirement wherein the –(NH-CH2-CH2-NH-NH2) group is considered to be R8 rather than R6. Specifically, the formula of the last two lines of claim 21 is met by the teachings of Caravan.
As to claim 22, the teachings of Caravan meet the requirements of this claim.
As to claim 23, this claim is rejected for the same reason that claim 22 is rejected. See the indefiniteness rejection above.
As to claim 28, Caravan teaches a complexed gallium or indium ion in the above-cited compounds.
As to claim 32, Caravan teaches a pharmaceutically acceptable salt in the abstract.
As to claim 40, Caravan teaches a metal complex as of the above-reproduced chemical structures.
Claim(s) 1, 3, 5, 9, 19-23, 27-28, 31-32, and 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akam et al. (Chemical Science, Vol. 11, 2020, pages 224-231).
Akam et al. (hereafter referred to as Akam) is drawn to hydrazine containing MRI probes, as of Akam, page 224, title and abstract. Akam teaches the following on page 225, figure 1a, reproduced below with annotation by the examiner.
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As to claim 40 the above-reproduced chemical structures read on the requirements of claim 40, wherein n=1, p=0, R1, R3, R5 and R7 are -C(=O)OH, R2, R4 and R6 are hydrogen, R4 are the above-shown hydrazine containing groups, and M is a gadolinium cation.
As to claim 1, the compound of Akam is understood to read on claim 1 for the same reason that it reads on claim 40. As best understood by the examiner, claim 1 does not exclude a chelated metal ion; this determination is made in view of the fact that claims 29 and 31 depend from claim 1 but also require a chelated metal ion.
As to claims 1 and 40, purely en arguendo and in regard to this ground of rejection only, the examiner takes the position that Akam teaches all of the claimed requirements but not in the same embodiment. As such, while the prior art teaches all of the claimed components, the prior art is not anticipatory insofar as these components must be selected from various lists/locations in the prior art reference. It would have been prima facie obvious; however, to have selected the recited components from various lists/locations in the prior art reference and to have combined them together. This is because such a modification would have represented nothing more than the predictable use of prior art components according to their established functions. Combining separate prior art components (from a single prior art reference) according to known methods to yield predictable results is prima facie obvious. See MPEP 2143, Exemplary Rationale A.
As to claim 3, Akam teaches the following functional group
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This is understood to read on the claimed requirements.
As to claim 5, this claim is rejected for essentially the same reason that claim 1 is rejected.
As to claim 9, in the chemical structure of Akam, R1 is -C(=O)OH and R2 is hydrogen.
As to claims 19-20, the structure of Akam reads on the claimed requirements in the case wherein R6 is
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and R8 is hydrogen.
As to claims 19 and 21, the structure of Akam reads on the claimed requirements in the case wherein R6 is hydrogen and R8 is
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.
As to claims 22-23, the structure of Akam reads on the claimed invention wherein R2 is hydrogen and R6 is
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. See also the above indefiniteness rejection of claim 23 and explanation by the examiner as to how claim 23 is interpreted.
As to claim 27, the examiner has set forth the following chart to highlight the differences between Akam and the claimed invention.
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As such, Akam differs from the claimed compound because in the claimed compound, there are two of the following functional groups
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whereas in Akam, there is only one of the above-indicated functional groups. Nevertheless, the skilled artisan would have been motivated to have modified Akam by adding a second of the above-indicated functional group. This is because Akam teaches that the above-indicate functional group is used for reacting with aldehydes to have detected lung fibrinogenesis, as of Akam, page 224, abstract. As such, the skilled artisan would have been motivated to have modified the chemical structure of Akam to have included two of the above-indicated hydrazine containing functional groups in order to have predictably improved reaction with aldehydes to detect lung fibrinogenesis with a reasonable expectation of success.
As to claim 28, in the structure of Akam, a gadolinium ion is complexed thereto.
As to claim 31, this claim is rejected for essentially the same reason that claim 27 is rejected.
As to claim 32, Akam teaches a pharmaceutical composition intended as a contrast agent, as of Akam, title and abstract. Water or aqueous solution in which the compound is present would read on the required excipient, such as the phosphate buffered saline as of Akam, page 225, caption of figure 1.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ISAAC SHOMER whose telephone number is (571)270-7671. The examiner can normally be reached 7:30 AM to 5:00 PM Monday Through Friday.
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, Sahana Kaup can be reached at (571)272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ISAAC . SHOMER
Primary Examiner
Art Unit 1612
/ISAAC SHOMER/ Primary Examiner, Art Unit 1612
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