DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Applicant’s election without traverse of Group I, and species of
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in the reply filed on February 26, 2026 is acknowledged.
3. Examination followed guidelines provided by MPEP 803.02. The elected species appeared to be novel and nonobvious. Therefore, the search and examination was extended. Prior art was found that anticipates nonelected species. The Markush claims were rejected and claims to nonelected species were withdrawn from further consideration. The claims were searched to the extent of the elected species and the nonelected species shown below.
4. Claims 2, 3, 6-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter. Election was made without traverse in the reply filed on February 26, 2026.
Status of Claims
5. Claims 1-20 are pending. Claims 1, 4 and 5 read on the elected species and are elected. Claim 1 is independent. Claims 2, 3 and 6-20 are withdrawn.
Information Disclosure Statement
6. The information disclosure statements (dated June 25, 2025 and January 9, 2025 and July 9, 2024 and June 3, 2024 and February 29, 2024) were in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The statements were considered. Signed copies of form 1449 are enclosed herewith.
Claim Rejections - 35 USC § 112
7. Claims 1, 4 and 5 rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of Formula II is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: the common structural feature in the Markush formula (II) is a carbon atom and a O-P-O group. The compounds are highly variable in chemical and physical properties including molecular weights, degree of conjugation, and presence of additional substituent groups. Varying the structures to the extent can lead to significant changes in function by influencing fluorescence properties including loss of fluorescence. See Zbancioc et al., entire document, including for example pages 18, 20, 24, 34, etc.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
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.
8. Claims 1, 4 and 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.
The claims have reference to a compound of structure (I) which is not defined. See definition of R2 and proviso. The structural metes and bounds of the claims cannot be ascertained since structure (I) is not defined. For the purpose of examination, this limitation was not further interpreted. Appropriate correction is required.
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.
9. Claim(s) 1 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by RN 1801696-51-4 (
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). The compound has a date of 2015 which antedates the present claims having an effective filing date of February 26, 2016. Priority claim to provisional application dated February 26, 2015 cannot be granted because the claimed genus is not supported by that document. See for example definition of M1. The compound corresponds to the present claims in the following manner: L1=L9=alkyl or bond; L10=polyalkylenether; z=1; L11=linker; Q=amino; L3=L7=absent; R1=R3=H; M1 contains 3 aryl rings.
10. Claim(s) 1 and 4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by RN 146-14-5 (
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). The compound has a date of 1984 which antedates the present claims having an effective filing date of February 26, 2016. Priority claim to provisional application dated February 26, 2015 cannot be granted because the claimed genus is not supported by that document. See for example definition of M1. The compound corresponds to the present claims in the following manner: R3=OH; L3=bond; L1=L7=alkylene; n=1; R5=oxo; R4=OH; R2=L9(L10)zL11Q wherein z=1 and L9=L11=bond and L10=phosphor and Q=NH2; M1 contains 3 aryl rings.
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.
11. Claims 1, 4 and 5 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 and 20-23 of U.S. Patent No. 11,827,661. Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons provided below.
The claims are drawn to compounds of formula
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including definition of the variables. The genus claimed in the patent is within the scope of the present claims and anticipate the present claims.
Conclusion
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/SUN JAE YOO/Primary Examiner, Art Unit 1621
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