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 Claims 2, 11-12, 21-22 and 25-27 are withdrawn as directed to non-elected Group (II) or not read on the elected species. Claims 1,3-10,13 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 Claims 25-27 drawn to Group (II) are withdrawn from consideration pursuant to 37 CFR 1.142(b).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 1022 rejection below. The search/examination was extended to other compounds as discussed in the 102. Claims 2,11-12 and 21-22 are withdrawn as not read on the elected species. The provisional election of species requirement is in effect. MPEP § 803.02(III)(A).
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.
35 USC § 102 over Karbalaei
Claims 1,3-10,13 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 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.
Claims 1,3-10,13 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).
35 USC § 102 over Luo
Claims 1, 3-4, 6, 8,10 and 23-24 are rejected 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”).
Luo teaches a novel difunctionalized tetraaza macrocycle, 1,8-bis(2-hydroxybenzyl)- 1,4,8,11-tetraazacyclotetradecane (abbreviated H2bcyclamb or 3 ) that has a structure as indicated below. Luo at page 1107, left col. Scheme 2.
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Luo also teaches a complex [Cu(H2bcyclamb)](OAc)2·1/3H2O prepared from the Luo H2bcyclamb and Cu(OAc)2·H2O.
The Luo complex [Cu(H2bcyclamb)](OAc)2·1/3H2O comprises [Cu(H2bcyclamb)]2+ that has a structure as indicated below. Luo at page 1107, Fig. 1.
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Which maps the general formula I in claims 1, 3-4, 6,8 and 10 as:
M is Cu;
Each of X1 and X4 is a NR1, wherein the R1 is
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that maps the Formula A as R2 is H, n is 1, R3 is H, x is 1 and y is 4;
Each of X2 and X3 is a NR1 wherein R1 is H;
L1 and L3 is -CH2CH2CH2-; and
L2 and L4 is -CH2CH2-.
Luo complex [Cu(H2bcyclamb)](OAc)2·1/3H2O meets each and every limitations of claims 1, 3-4, 6, 8 and 10, therefore, claims 1,3-6, 8 and 10 are anticipated.
Claims 23-24 are also anticipated for the same reason as given above.
Conclusion
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.
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/FRANK S. HOU/Examiner, Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692