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
Status of Claims
Claims 1-12 are pending.
Priority
Instant application 1468249, filed 9/15/2023 claims benefit as follows:
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The priority document is in the English language, so the effective filing date of 03/15/2021 is granted.
Information Disclosure Statement
All references from the IDS received 5/02/2024, 02/17/2025, 02/20/2025, and 02/20/2026 have been considered unless marked with a strikethrough.
Restriction Election
In the response received 06/03/2026, Applicant elects without traverse Group I, claims 1-5, and 12. With respect to the specie election, Applicant elects MF70 without traverse. Shown for convenience immediately below:
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Pursuant to MPEP 803.02, the Examiner will start with the elected specie. If the elected specie is not identified in the art then the Examiner will expand his search.
The elected specie was not identified in the art. Examiner expanded his search to the compound based on compound 6 of Li et al. in scheme 1. Claim 4 and 5 are withdrawn as not reading on the expanded specie.
Claim Rejection – 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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) 1-3, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over the article to Li et al. (‘Li’, Sensors and Actuators B 196 (2014) 546-554, made of record on the IDS) in view of the article to Chebotarev et al. (‘Cheb’, Chebotarev et al. Russian Journal of General Chemistry, 2017, 87(2), 196-203).
Li teaches compounds as fluorescent probes for rapid detection of cysteine over homocysteine and glutathione.
In particular Li teaches scheme 1 and compound 6. Further, Li suggests that structural variation is allowed at the phenol ring showing that structural variety based on either the phenol-benzaldehyde or the quinolinic-phenol-benzaldehyde (3) both function.
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Li fails to teach a substituted phenol such that compound 6 does not have R1 and R2 groups relative to the instant claims. Li teaches -H groups for R1 and R2 in compound 6, whereas the claims require at least methyl groups for example.
Cheb teaches that modifying the structure of the phenol in a probe does not impact the performance as a probe such that activity is lost. For example, Cheb teaches that R1 and R2 can be -H or -Me, or both Me in the case of (5). There may be variety in absorbance spectrum, but the substitution does not undermine the function.
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In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395).
Applying KSR prong (B), one could substitute structurally similar -Me groups for -H in the R2 and R3 positions of the instant claims and thus modify the structures of Li with the substituents of Cheb and one would expect such small structural changes lead to probes that maintain at least some chemical probe activity.
Thus, all of the elements of claims were known to one of ordinary skill in the art at the time the invention was made and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of invention. Therefore, the claimed invention, as a whole, would have been obvious to one of ordinary skill in that art at the time the invention was made.
With respect to claim 12, Li teaches isolation of the compound and dissolving in DMSO which would be in a container. With respect to a ‘manual’ and printed matter, according to MPEP 2112.01:
Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004) (Claim at issue was a kit requiring instructions and a buffer agent. The Federal Circuit held that the claim was anticipated by a prior art reference that taught a kit that included instructions and a buffer agent, even though the content of the instructions differed, explaining "[i]f we were to adopt [applicant’s] position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product."). See also In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983) ( "Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability….[T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate." ); In re Miller, 418 F.2d 1392, 1396 (CCPA 1969) (finding a new and nonobvious relationship between a measuring cup and writing showing how to "half" a recipe); In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art); In re Xiao, 462 Fed. App'x 947, 950-51 (Fed. Cir. 2011) (non-precedential) (affirming an obviousness rejection of claims directed to a tumbler lock that used letters instead of numbers and had a wild-card label instead of one of the letters); In re Bryan, 323 Fed. App'x 898, 901 (Fed. Cir. 2009) (non-precedential) (printed matter on game cards bears no new and nonobvious functional relationship to game board).
The court has extended the rationale in the printed matter cases, in which, for example, written instructions are added to a known product, to method claims in which "an instruction limitation" (i.e., a limitation "informing" someone about the existence of an inherent property of that method) is added to a method known in the art. King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279, 95 USPQ2d 1833, 1842 (2010). Similar to the inquiry for products with printed matter thereon, for such method cases the relevant inquiry is whether a new and nonobvious functional relationship with the known method exists. In King Pharma, the court found that the relevant determination is whether the "instruction limitation" has a "new and unobvious functional relationship" with the known method of administering the drug with food. Id. The court held that the relationship was non-functional because "[i]nforming a patient about the benefits of a drug in no way transforms the process of taking the drug with food." Id. That is, the actual method of taking a drug with food is the same regardless of whether the patient is informed of the benefits. Id. "In other words, the ‘informing’ limitation ‘in no way depends on the method, and the method does not depend on the ‘informing’ limitation.’" Id. (citing In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)); see also In re Kao, 639 F.3d 1057, 1072-73, 98 USPQ2d 1799, 1811-12 (Fed. Cir. 2011).
Claim Rejection – 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.
Claim 5 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 5 requires n to be 1 or 2, however, the method would not be able to produce a compound of formula I where n is 1 in claim 1. Claim 5 requires an olefin starting material, whereas to make a compound of claim 1 with n of 1, one would need to react the benzaldehyde with the Acc group to arrive at an n of 1 in claim 1. Thus, the steps of claim cannot produce the full scope of claim 1.
Conclusion
No claims allowed. Although withdrawn, claim 4 has the sulfonic groups drawn improperly in the claims. Correcting this now could expedite prosecution.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLINTON A BROOKS whose telephone number is (571)270-7682. The examiner can normally be reached M-F 8-5 with flex.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Michener can be reached at 571-272-1424. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
