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 1-22 are pending in the present application file.
Response to Amendment
The amendments filed August 26, 2026 have been acknowledged and entered in the present application file.
Response to Arguments
Applicant’s amendments submitted August 26, 2026, have overcome all previous objections and rejections from the Office Action mailed June 02, 2026. Therefore, Applicant’s arguments from August 26, 2026 will not be addressed.
Claim Objections
Claim 9 is objected to because of the following informalities:
In claim 9, line 4, “diemthoxytrityl” should read “dimethyloxytrityl”,
In claim 9, line 4, “methoxyemthyl” should read “methoxylmethyl”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-2, 4, 6-7 and 9 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.
Claim 1 recites the following proviso to exclude electron-withdrawing groups from the definition of compounds of Formula 1 or 2:
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The recitation of the variable R within certain parenthetical phrases renders the claim indefinite as there is no definition for R in claim 1 or the claims otherwise. It is not clear if the limitations represented in parenthesis are exemplary embodiments are part of the claimed invention. One of skill in the art would not be reasonable appraised of the scope of groups excluded from the definitions of Formula 1 or 2, and further the scope of compounds encompassed by the present claims.
Claims 2, 4, 6-7 and 9, which are dependent upon claim 1, do not clarify the indefinite subject matter, and are similarly rejected. Applicant may amend the claims to remove any phrases in parenthesis to overcome this aspect of the rejection.
Claim 7 recites the limitation “wherein the ring is substituted”, in line 1 of claim 7. There is insufficient antecedent basis for this limitation in the claim. The compound of Formula 1 or 2 of claim 1, contains several rings which may be substituted and further the compound of claim 6, which claim 7 is dependent upon, contains an additional ring formed by the connection of R3 and R4. One of ordinary skill in the art would not be clear which ring or combination of rings are meant to be substituted in the scope of present claim 7.
Applicant may amend claim 7 to specify the particular ring that is to be substituted by the recited list of moieties to overcome this aspect of the rejection.
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.
Claims 1-2 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,686,261 (Zhang et al.).
Zhang teaches Compound 9 as 4-((p-chloromethylbenzoyl)amino)tetramethylrosamine chloride salt having the structure shown below. See example 9; col 18.
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Compound 9 corresponds to a compound of Formula 1 where A is a chloride anion, Q is Formula 3, wherein R9 to R12 are each independently hydrogen, R13 is hydrogen, R14 are each 4-(Chloromethyl)benzoyl, R1 to R4 are each C1 alkyl, m is 0, n is 0, and X is O. See present claims 1-2, 7 (corresponds to a compound of Formula 1 where ring is substituted by hydrogen) and 9 (benzoyl protecting group).
Claims 1-2, 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2015/0276751 A1 (Kanai et al.).
Kanai discloses a reagent for imaging an advancing intracellular acetylation, for example, an acetylation that is advanced by the action of acetyl-CoA in the mitochondria, at high sensitivity and high efficiency, which comprises a combination of a rhodamine derivative that is substantially non-fluorescent before being acetylated, and emits strong fluorescence after being acetylated, and an acylation catalyst and/or an acylation reaction-promoting agent (see abstract). In Example 1, Kanai teaches ) N-(9-(4-Acetamidophenyl)-6-(dimethylamino)-3H-xanthen-3-ylidene)-N-methylmethanaminium acetate in step 4 as the species shown below.
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This compound corresponds compound of Formula 1 where A is an trifluoroacetate anion, Q is Formula 3, wherein R9 to R12 are each independently hydrogen, R13 is hydrogen, R14 is a carboxyl moieties (acetate), R1 to R4 are each C2 alkyl, m is 0, n is 0, and X is O. See present claims 1-2, 7 (corresponds to a compound of Formula 1 where ring is substituted by hydrogen) and 9 (acetate protecting group).
Conclusion
Claims 3, 5, 8 and 10-22 are withdrawn.
Claims 1-2, 4, 6-7 and 9 are rejected.
THIS ACTION IS MADE FINAL. 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 QUINCY A MCKOY whose telephone number is (703)756-4598. The examiner can normally be reached Monday - Thursday 8:00 - 6:00.
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/QUINCY A. MCKOY/
Patent Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626
