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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/23/24 is being considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of claims 1-10 in the reply filed on 1/4/24 is acknowledged.
Claims 11-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 1/4/24.
Claim Status
Claims 1-10 are pending and are examined. Claims 11-13 are withdrawn and are not examined.
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 1-10 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.
Regarding Claim 1, the limitation “pharmaceutically acceptable salt” is unclear and indefinite. Is this expression intended to be the same as “pharmaceutical-grade”? Please clarify what constitutes “pharmaceutically acceptable”.
Further, the term “or” is unclear and indefinite. The limitation "or a pharmaceutically acceptable salt..." is ambiguous as to whether the compound of Formula I is required since the "or" would imply it is an alternative. Please clarify.
Claims 2-10 are rejected by virtue of being dependent on a rejected base claim.
Additional Reference
The reference of Lee (Lee, A. et al. “Development of a Highly Responsive Organofluorine Temperature Sensor for 19F Magnetic Resonance Applications.” Anal Chem. 2022 Feb 22;94(9):3782–3790.) is not prior art since the publication date is after the provisional filing date 1/5/23.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Desai (US Patent 5,362,478).
Regarding Claim 1, Desai teaches a compound of Formula I:
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597
388
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87
5
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or a pharmaceutically acceptable salt, stereoisomer, mixture of stereoisomers, tautomer, or isotopic analog thereof, wherein: R' and R2 are independently selected from -(C3-C6 alkyldiyl)-(CF2)p-CF3, where p is 1 to 10; x, y, and z are independently selected from 0, 1, and 2; and m and n are independently selected from 0 and 1, where if n is 1, then m is 1 (Besides linear, branched-chain and cyclic fluorine-containing compounds as noted above, fluorinated crown ethers (such as, for example, perfluoro 12-crown-4, perfluoro 15-crown-5, perfluoro 18-crown-6, and the like) are also contemplated for use in the practice of the present invention. See Col. 5, lines 48-53. Essentially any polymer, natural or synthetic, bearing sulfhydryl groups or disulfide bonds within its structure may be utilized for the preparation of a disulfide crosslinked shell about particles of fluorine-containing composition, The sulfhydryl groups or disulfide linkages may be preexisting within the polymer structure or they may be introduced by suitable chemical modification. Col. 7, lines 60-67).
Regarding Claim 2, Desai teaches the compound of claim I wherein C3-C6 alkyldiyl is -CH2CH2CH2- (Col. 4, lines 50-55).
Regarding Claim 3, Desai teaches the compound of claim 1 wherein p is 1 (Col. 4, lines 49-56).
Regarding Claim 4, Desai teaches the compound of claim 1 wherein R and R2 are each -CH2CH2CH2CF2CF3 (Col. 4, lines 49-64).
Regarding Claim 5, Desai teaches the compound of claim 1, wherein x, y, and z are each 0 (Col. 4, lines 49-64).
Regarding Claim 6, Lee teaches the compound of claim 1, wherein x is 0, y is 2, and z is 0 (Col. 4, lines 49-64).
Regarding Claim 7, Lee teaches the compound of claim I wherein m is 1 and n is 1 (Col. 4, lines 49-64).
Regarding Claim 8, Lee teaches the compound of claim 1 wherein m is 1 and n is 0 (Col. 4, lines 49-64).
Regarding Claim 9, Lee teaches the compound of claim 1 wherein m is 0 and n is 0 (Col. 4, lines 49-64).
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mandal (“Temperature Sensors.” 2015).
Regarding Claim 1, Mandal teaches a compound of Formula I:
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597
388
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87
5
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Greyscale
or a pharmaceutically acceptable salt, stereoisomer, mixture of stereoisomers, tautomer, or isotopic analog thereof, wherein: R' and R2 are independently selected from -(C3-C6 alkyldiyl)-(CF2)p-CF3, where p is 1 to 10; x, y, and z are independently selected from 0, 1, and 2; and m and n are independently selected from 0 and 1, where if n is 1, then m is 1 (we have developed a perfluoro-sulfane-based compound that showed a nearly 2-fold increase in temperature responsiveness compared to the current standard 19F MRI temperature sensor (perfluoro-tributylamine) (See express summary).
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gouverneur (US Pub 2024/0383827).
Regarding Claim 1, Mandal teaches a compound of Formula I:
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597
388
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Greyscale
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87
5
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Greyscale
or a pharmaceutically acceptable salt, stereoisomer, mixture of stereoisomers, tautomer, or isotopic analog thereof, wherein: R' and R2 are independently selected from -(C3-C6 alkyldiyl)-(CF2)p-CF3, where p is 1 to 10; x, y, and z are independently selected from 0, 1, and 2; and m and n are independently selected from 0 and 1, where if n is 1, then m is 1 ([0221] (Bromofluoromethyl)(4-(tert-butyl)phenyl)sulfane).
Allowable Subject Matter
Claim 10 is allowed.
Reasons for Allowance
The following is an examiner’s statement of reasons for allowance:
The prior art is silent to a compound selected from the group consisting of: (perfluoro-1,4-phenylene)bis((4,4,5,5,5-pentafluoropentyl)sulfane); 1,2,4,5-tetrafluoro-3,6-bis((4,4,5,5,5-pentafluoropentyl)sulfonyl)benzene; (perfluoro-[1,1'-biphenyl]-4,4'-diyl)bis((4,4,5,5,5-pentafluoropentyl)sulfane); 2,2',3,3',5,5',6,6'-octafluoro-4,4'-bis((4,4,5,5,5-pentafluoropentyl)sulfonyl)-1,1'-biphenyl; bis(2,3,5,6-tetrafluoro-4-((4,4,5,5,5-pentafluoropentyl)thio)phenyl)sulfane; (sulfonylbis(2,3,5,6-tetrafluoro-4, l -phenylene))bis((4,4,5,5,5-pentafluoropentyl)sulfane); and (sulfonylbis(2,3,5,6-tetrafluoro-4, l-phenylene))bis((3,3,4,4,5,5,6,6,7,7,8,8,9,9,10,10,10- heptadecafluorodecyl)sulfane).
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACQUELINE BRAZIN whose telephone number is (571)270-1457. The examiner can normally be reached M-F 8-5.
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/JB/
/CHARLES CAPOZZI/Supervisory Patent Examiner, Art Unit 1798
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