DETAILED ACTION
The present application is a domestic application filed 09 June 2023, which is a continuation of PCT/KR2021/017728, filed 29 November 2021, and claims foreign priority to KR10-2021-0164046, filed 25 November 2021 and KR10-2020-0171414, filed 09 December 2020.
Claims 1-22 are pending in the current application. Claims 14-22 are withdrawn as being drawn to a non-elected invention, see below. Claims 1-13 are examined on the merits herein.
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 without traverse of Group I, claims 1-13 in the reply filed on 10 April 2026 is acknowledged.
Claims 14-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 10 April 2026.
Applicant’s election without traverse of compound 40 in the reply filed on 10 April 2026 is acknowledged.
While Applicant identified claims 1-13 as encompassing the elected Invention I, only claims 10 and 11 appear to encompass the elected species (see the rejections under 35 USC § 112(b) and (d)).
Compound 40 was searched and is not taught or suggested by the art of record. MPEP 803.02 states that if the examiner determines that the elected species is allowable, the examination of the Markush-type claim will be extended. If prior art is then found that anticipates or renders obvious the Markush-type claim with respect to the nonelected species, the Markush-type claim shall be rejected and claims to the nonelected species held withdrawn from further consideration. The prior art search will not be extended unnecessarily to cover all nonelected species.
A second action on the rejected claims can be made final unless the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP § 706.07(a).
The species was expanded to include:
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, and where anyone of R1-R6 is an electron withdrawing group such as halogens, cyano, substituted or unsubstituted amides, carbamates, sulfhydryl, nitro, carboxyl, carboxylic acid salts, phosphoric acid, phosphates, ketones, aldehydes, esters, acyl chlorides, sulfonic acids, sulfonates and the like.
Claim Objections
Claims 1-13 are objected to because of the following informalities: The chemical structures provided in the present claims are difficult to read. It is respectfully requested that Applicant provide structures where the atom sizes are larger, and the bonds are more readily apparent (for example between N+ and R3). Appropriate correction is required.
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 1-13 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.
The variable A- in claim 1 is not defined, which renders the claim and dependent claims 2-13 herein indefinite.
The Specification states on page 24 “In addition, the quenchers represented by Formulas 1, 2, 5 and 6 may have a structure further including a counter ion. The counter ion, which is an organic or inorganic anion, may be suitably selected in consideration of the solubility and stability of the quenchers”. The Specification then goes on to list examples of counter ions.
Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The recitation “any moiety substituted with the moiety” and “any moiety substituted with the reactive group” are repeated in claim 1, and other claims, and renders the claim and dependent claims 2-13 herein indefinite.
The term “moiety” is not defined in the claims, and appears to include any chemical element, functional group, or structure of any size. One of ordinary skill in the art could not contemplate the unlimited number of compounds encompassed by the term “moiety”.
Similarly, the recitation “a reactive group enabling a covalent bond with a moiety” does not allow one of ordinary skill in the art to identify the myriad number of compounds which could be encompassed or excluded by the claim.
The recitation “alcohol-derived protecting group…” in claim 1 renders the claim herein indefinite. It is not clear what structural features are present or not present in the derived protecting groups.
According to MPEP 2173.02, “A decision on whether a claim is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification”. Here, one of ordinary skill in the art could not determine what structures are encompassed or excluded by the term “moiety” or “derived protecting group” as used in the present claims.
The recitation “trihalomethyl (-CF3, -CCl3, -CBr3, or -CI3)” and “haloformyl (-COCl, -COBr, or -COI)” in claim 1 renders the claims and dependent claims 2-13 herein indefinite. For example, there are six halogens. Thus, it is unclear if trihalomethyl only includes the four in the parenthesis, or if it includes any trihalomethyl. It is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 4 recites the limitation "wherein R1 and R2 are bound with each other to form a substituted or unsubstituted ring”, which renders the claim and dependent claim 7 herein indefinite. There is insufficient antecedent basis for this limitation in the claim. While claim 1 allows for R7 and R8 to form a ring by bonding them together, claim 1 does not include a definition where R1 and R2 can form a ring together.
The recitation “wherein at least one selected from R1 and R2 is bound with adjacent R5 to form a substituted or unsubstituted ring” in claim 5 lacks antecedent basis from claim 1.
The recitation “wherein R3 and R4 are bound with each other to form a substituted or unsubstituted ring” in claim 6 lacks antecedent basis from claim 1.
The recitation “wherein at least one selected from R3 and R4 is bound with adjacent R6 to form a substituted or unsubstituted ring” in claim 8 lacks antecedent basis from claim 1.
The recitation “wherein at least one of R9 to R14 or R15 to R19 is bound with an adjacent substituent to form a substituted or unsubstituted ring” in claim 10 lacks antecedent basis from claim 1, which renders the claim and dependent claim 11 herein indefinite.
The recitation “wherein adjacent substituents of R11 to R14 or R17 to R20 are bound with each other to form a ring” in claim 12 lacks antecedent basis from claim 1, and renders the claim and dependent claim 13 herein indefinite.
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 4-8 and 10-13 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 4-8 and 10-13 fail to include all the limitations of the claim upon which it depends, because the claims all include limitations directed to R groups forming a ring, which are not recited in claim 1 (see rejections under 35 USC §112(b)). 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 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.
Claim(s) 10 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN111732581, hereinafter the ‘581 Publication (cited in IDS submitted 09 June 2023).
The ‘581 Publication is drawn towards preparing a fluorescent probe for detecting hypochlorous acid/sodium hypochlorite (title).
The ‘581 Publication discloses a compound of formula (1):
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, which reads on a compound of Formula 1, and Q is a compound of formula 4:
R1 and R2: are C2 alkyl or a moiety substituted with H;
R5 and R6: hydrogen;
X is O
R3 and R4: are C2 alkyl a moiety substituted with H;
Q is Formula 4
R15-R17: hydrogen;
R18, R19: bound with each other to form an unsubstituted ring;
R20: a C2 alkyl;
Y is sulfur
Thus, the disclosure of the ‘581 Publication anticipates claims 10 and 11 of the present application.
Claim Rejections - 35 USC § 103
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 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.
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) 1-4, 6, 7 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over CN111732581, hereinafter the ‘581 Publication (cited in IDS submitted 09 June 2023) in view of US2019/0194730 (hereinafter the ‘730 Publication, cited in PTO-892; the US publication equivalence to KR10-2019-0062162, cited in IDS submitted 09 June 2023).
The ‘581 Publication teaches as discussed above.
The ‘581 Publication does not expressly disclose where anyone of R1-R6 are halogens, cyano, substituted or unsubstituted amides, carbamates, sulfhydryl, nitro, carboxyl, carboxylic acid salts, phosphoric acid, phosphates, ketones, aldehydes, esters, acyl chlorides, sulfonic acids, sulfonates and the likes (claim 1).
The ‘730 Publication is concerned with preparing fluorescent probes, and teaches a compound of Formula 1 or Formula 2, where Q is represented by Formula 3 or Formula 4:
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,
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. (Claim 1).
The ‘730 Publication teaches R1-R6 and R are each independently selected from hydrogen, deuterium, electron donating group or electron withdrawing groups; m and n are an integer of 0 to 3; Y is O or S; X is O, S, CR7R8 or SiR7R8 (claim 1). Examples of electron withdrawing group includes halogens, cyano, substituted or unsubstituted amides, carbamates, sulfhydryl, nitro, carboxyl, carboxylic acid salts, phosphoric acid, phosphates, ketones, aldehydes, esters, acyl chlorides, sulfonic acids, sulfonates and the likes (para [0035]).
The ‘730 Publication teaches compound 2:
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, which reads on compound 1, wherein R1 and R2 form a ring together. The ‘730 Publication teaches compound 12, wherein R3 and R4 form a ring together:
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.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute any of the hydrogen atoms with one of the electron withdrawing groups taught by the ‘730 Publication, because in the same field of endeavor of preparing fluorescent probes, the ‘730 Publication, drawn to a similar core chemical compound also teaches structures wherein any one of R1-R6 can be substituted with hydrogen or an electron withdrawing group. Thus, they are recognized as equivalents. One of ordinary skill in the art would have had a reasonable expectation of success in using the modified compound as a fluorescent probe.
Furthermore, it would have been obvious to modify the compounds of the ‘581 Publication so that the positions corresponding to presently claimed R1 and R2 form a ring together, and the positions corresponding to presently claimed R3 and R4 form a ring together because in the same field of endeavor of preparing fluorescent probes, the ‘730 Publication, drawn to a similar core chemical compound also teaches structures wherein the positions corresponding to presently claimed R1 and R2 form a ring together, and the positions corresponding to presently claimed R3 and R4 form a ring together.
Thus, the claimed invention as a whole is prima facie obvious over the combined teaching of the prior art.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18332,421 in view of the CN111732581, hereinafter the ‘581 Publication (cited in IDS submitted 09 June 2023).
The claims of the ‘421 Application are drawn towards a compound of Formula 1 or Formula 2, substituted with Q of formula 3.
The claims of the ‘421 Application differ from the present claims with respect to the definition for Q.
Claim 12 of the ‘421 Application specifies “wherein R14 is bound with R12 via C, N, Se or Si to form a substituted or unsubstituted ring, or with R12 by a single bond to form a substituted or unsubstituted ring”.
The ‘581 Publication teaches as discussed above.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form a ring at the positions corresponding to R12 and R14 of the ‘421 Application to arrive at formula 4 as presently claimed, because in the same field of endeavor of preparing fluorescent probes and drawn to a similar core chemical compound also teaches structures, the ‘581 Publication a fused tricyclic derivative was ideal at the position corresponding to R12 and R14 of the ‘421 Application.
Thus, the claimed invention is obvious over the claims of the ‘421 Application in view of the ‘581 Publication.
This is a provisional nonstatutory double patenting rejection.
Conclusion
In view of the rejections to the pending claims set forth above, no claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BAHAR A CRAIGO whose telephone number is (571)270-1326. The examiner can normally be reached M-F: Noon-8pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at 571-272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BAHAR CRAIGO/
Primary Examiner
Art Unit 1699
Prosecution Insights