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 .
DETAILED ACTION
Claims 1-13 and 21-27 of C. R. Goldsmith, et.al. US 18/324,555 (05/26/2023) are pending. Claims 22 and 25-27 are withdrawn as directed to non-elected Group (II) or not read on the elected species. Claims 1-13 and 23-24 are under examination on merits and are rejected.
Election/Restrictions
Pursuant to the restriction requirement, Applicant elected Group I (now claims 1-13, 21-24), without traverse, in the reply filed on 02/03/2026. Claims 25-27 drawn to Group (II) are withdrawn from consideration pursuant to 37 CFR 1.142(b). The restriction requirement is made as FINAL.
Pursuant to the election of species requirement, Applicant elected, without traverse, [Mn(H4qp4)], a complex of Mn and 1,8-bis(2,5-dihydroxybenzyl)-1,4,8,11-tetraazacyclotetradecane (H4qp4) as the species of the General Formula I, in the reply filed on 02/03/2026 for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Given Examiner cannot find the structure of [Mn(H4qp4)], rather the specification discloses [Mn(H4qp4)]2+. Specification at page 8, line 24. Examiner called Applicant on 02/24/2026 to request the chemical structure of the elected species [Mn(H4qp4)]. Applicant elected a new species [Mn(H4qp4)]2+ in the Supplemental Response filed on 02/26/2026, which cannot be read by any claim of the elected Group. Applicant filed claim amendment through deletion of the claim 1 limitation of “wherein when the compound is ionic, the compound further comprises a counterion” in the Supplemental Response filed on 02/27/2026, which makes 1,3-10,13, 23-24 read on the elected species.
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The elected species was searched and determined to unpatentable because it is anticipated by Karbalaei as discussed in the 102 rejection below. The search/examination was extended to other compounds as discussed in the 102. Applicant amended claims 2, 11-12, 21 in the reply field on 06/03/2026. Now claim 22 is withdrawn as not read on the elected species. The provisional election of species requirement is in effect. MPEP § 803.02(III)(A).
Withdrawal Claim Rejections - 35 USC § 102
Rejection of claims 1, 3-4, 6, 8,10 and 23-24 under 35 U.S.C. 102(a)(1) as being anticipated by H. Luo, et al., 79.7 Canadian Journal of Chemistry 1105-1109 (2001)(“Luo”) is withdrawn in view of the instant claim 1 has been amended by deleting of the metal copper, therefore, the instant claim 1 cannot be met by Luo and the rejection made in the previous Office action is withdrawn.
Maintained 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.
(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 1-13 and 23-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by S. Karbalaei, et al, 60(12), Inorganic Chemistry, 8368-8379(published on May 27, 2021)(“Karbalaei”). Karbalaei is published more than one year before the effective filing date of the claimed invention with authors differ from the inventors of the instant application. Applicant may consider an exception under 35 U.S.C. 102(b)(1) to remove Karbalaei as prior art, provided the claims are supported by the US63/346,641 (May, 27, 2022).1
As they stand, the instant claims have an effective filing date of more than one year after the May 27, 2021 publication date of Karbalaei, and 35 U.S.C. 102(b)(1)/(2) cannot be invoked. See footnote 1.
Claims 1-13 and the elected species are anticipated because Karbalaei teaches a complex of [Mn(H4qp4)]2+ that is made through mixing 1:1 of H4qp4 and MnCl2 in a 100 mM KCl. Karbalaei at page 8372, Figure 2, B and title of Fig. 2B; right col. line 3 under Figure 2.
Claim 23 is interpreted as “A contrast agent (composition) comprising the compound of claim 1”, which differs from respective claim 1 only in the claim 23 preamble recitation of “ A contrast agent”. The preamble portion “contrast agent” does not impose any structural limitations on the claimed composition and therefore is interpreted merely as a statement of suggested use. See MPEP § 2111.02(II). Further, the claim 23 preamble language “ a contrast agent (composition)” does not constitute a structural limitation. Neither claim 23 nor the specification require that “a contrast agent (composition)” comprise materials or components in addition to the claimed compound of formula I. Thus, under its broadest reasonable interpretation, consistent with the specification, a “a contrast agent (composition)” encompasses a one-component composition (i.e., a composition that consists only of the claimed compound). MPEP § 2111. Claim 23 therefore anticipated.
Claim 24 is also anticipated because the language of the contrast agent is used in an imaging technique selected from the group consisting of magnetic resonance imaging, photoacoustic imaging, thermal imaging, photothermal imaging, and any combination thereof is merely interpreted as intended use given it does not impose any structural limitations on the claimed composition. See MPEP § 2111.02(II).
Applicant’s Argument
Applicant argues the 102 rejection on the ground that Karbalaei is published one year or less than US63/346,641 (May, 27, 2022), and Karbalaei was made by the inventors of the instant application because inventors of the instant application are also authors of Karbalaei. Remarks at page 8, Response to 102(a)(1) over Karbalaei.
These argument has been fully considered but not persuasive. As discussed in the above footnote, the effective filing date of examined claims 1-13 and 23-24 is the non-provisional filing date May 26, 2023 because these claims are not fully supported by the US63/346,641 (May, 27, 2022). Thus, the instant claims have an effective filing date of more than one year after the May 27, 2021 publication date of Karbalaei, and 35 U.S.C. 102(b)(1)/(2) cannot be invoked. The claims must first be amended such that they are supported by the US63/346,641 (May, 27, 2022) so that the one year time period of U.S.C. 102(b)(1)/(2) is satisfied.
Furthermore, Applicant has not provided the required declaration. Regarding prior art exceptions under AIA 35 U.S.C. 102(b)(1) and (2), the Office has provided a mechanism in 37 CFR 1.130 for filing an affidavit or declaration to establish that a disclosure made no earlier than one year before the effective filing date of the claimed invention is not prior art under 35 U.S.C. 102(a) due to an exception in 35 U.S.C. 102(b). MPEP717. Herein, Applicant does not file an affidavit or declaration shows sufficient facts, in weight and character, to establish that
(1) the disclosure was made by the inventor or a joint inventor, or
(2) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.
therefore, the rejection cannot be withdrawn and is maintained. MPEP 717.01 (a)(1).
New 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.
(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 1-4,6,8,11 and 23-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by N. Sengottuvelan, et al, 77(6), Bulletin of the Chemical Society of Japan, 1153-1159 (2004)(“Sengottuvelan”).
Sengottuvelan teaches a compound NiL2 that has a chemical structure as indicated below. Sengottuvelan at page 1156, Scheme 2, ML2 and page 1155, left col. synthesis of [NiL2](PF6)2.
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The Sengottuvelan compound NiL2 maps the General Formula I in claim 1-4,6,8 and 11 as:
M is nickel,
Each of L1-L4 is an alkylene group that is a divalent linking group,
Each of X2 and X3 is NCH3, wherein, R1 is methyl,
Each of X1 and X4 is NR1 , wherein, R1 is
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that maps the Formula A in claim 1 as R2 is H, one of R3 is methyl that is an alky and another R3 is
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that is a carbonyl, n is 1, x is 1 and y is 2.
Which meets each and every limitation of claim 1-4,6,8 and 11, therefore, claims 1-4,6,8 and 11 are anticipated.
Claims 23-24 are also anticipated for the same reason as given above in the rejection with Karbalaei.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK S. HOU whose telephone number is (571)272-1802. The examiner can normally be reached 6:30 am-2:30 pm Eastern on Monday to 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, Scarlett Goon can be reached at (571)2705241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANK S. HOU/Examiner, Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 The effective filing date of a claimed invention is determined on a claim-by-claim basis. MPEP § 2152.01. The instant application claims priority to US63/346,641 (May, 27, 2022). However, claims 1-13 and 23-24 are not entitled to the filing date of US 63/346,641 (May, 27, 2022) because the instant claims are not fully supported per § 112(a). As here, where the application properly claims benefit under 35 U.S.C. 119(e) to a provisional application, the effective filing date of the claimed invention is the filing date of the provisional application for any claims which are fully supported under the first paragraph of 35 U.S.C. 112 by the provisional application. MPEP § 2139.01.
The instant claims are much broader than the disclosure of US 63/346,641. For example, US 63/346,641 at least does not support the clamed General Formula I with respect to the structure, variable definitions, or the metals instantly claimed. In but one example, US63/346,641 can only support instant claim 1 formula I variables X1 to X4 as N; however, claim 1 recites that variables X1 to X4 can be O, S, or NR1. It is noted that ipsis verbis disclosure is not necessary to satisfy the written description requirement; if a skilled artisan would have understood the inventor to be in possession of the claimed invention at the time of filing, even if every nuance of the claims is not explicitly described in the specification, then the adequate description requirement is met. MPEP § 2163(II)(A)(3)(a). Here there is no way to piece together the narrower disclosure of US 63/346,641 so as to arrive at the instant claims.
Therefore, the effective filing date of the being examined claims 1-13 and 23-24 is the non-provisional filing date May 26, 2023.
Prosecution Insights