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 1-11 in the reply filed on 04/27/2026 is acknowledged.
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 6-11 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 6 indicates Formula II in the claim however, no Formula II is present in Claim 6. Dependent claims are included in this 112 2nd Rejection.
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.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by, “Development of a Highly Selective Ni(II) Chelator in Aqueous Solution,” Inorganic Chemistry, 2022, 61, pp.19492-19501. This reference is referred to as Gupta in the prior art rejection below.
Regarding Claims 1-5, Gupta discloses a chelator comprising: a compound having formula I or a salt thereof for removing transition metal ions and/or lanthanide metal ions from a solution, wherein X1 is N or P and n is 1 or 2 (See Gupta Figure 1; SG-20).
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Regarding Claim 2, Gupta discloses the chelator of claim 1, wherein X1 is N (See Gupta Figure 1 SG-20).
Regarding Claim 3, Gupta discloses the chelator of claim 1, wherein the salt is a sodium salt or a potassium salt (See Gupta Figure 1 SG-20).
Regarding Claim 4, Gupta discloses the chelator of claim 1, wherein n is 1 (See Gupta Figure 1 SG-20).
Regarding Claim 5, Gupta discloses the chelator of claim 1 having formula II or a salt thereof (See Gupta Figure 1 SG-20):
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Claims 6-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by, “Semi-Synthetic Proteins as Metal Ion Capture Agents: Catch and Release of Ni(II) and Cu(II) with Myoglobin Bioconjugates, ACS Sustainable Chem. Eng. 2023, 11, 11305−11312. This prior art rejection is referred to as Gupta2 in the below prior rejection.
Regarding Claim 6, Gupta2 discloses the protein-chelator system for removing transition metal ions and/or lanthanide metal ions from a solution, the protein-chelator system comprising: a chelating moiety having formula I or II or salts thereof conjugated to a protein having at least lysine residue on a surface of the protein, wherein the chelating moiety is conjugated through an amide bond formed from a nitrogen atom in the at least one lysine residue and a carboxylate moiety in the chelating moiety having formula I or III: wherein X1 is N or P; and n is 1 or 2 (See Gupta2 Figure 1 SG-20 and Page 11307 Right Column amide bonds and SG-20 and myoglobin).
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Regarding Claim 7, Gupta2 discloses the protein-chelator system of claim 6, wherein the protein includes a plurality of lysine residues (See Gupta2 Figure 1 SG-20 and Page 11307 Right Column amide bonds and SG-20 and myoglobin).
Regarding Claim 8, Gupta discloses the protein-chelator system of claim 6, wherein the protein includes at least 3 lysine residues (See Gupta2 Figure 1 SG-20 and Page 11307 Right Column amide bonds and SG-20 and myoglobin & Abstract - Myoglobin and Page 11305 Right Column 10 lysine residues).
Regarding Claim 9, Gupta2 discloses the protein-chelator system of claim 6, wherein the protein includes at least 5 lysine residues (See Gupta2 Abstract - Myoglobin and Page 11305 Right Column 10 lysine residues).
Regarding Claim 10, Gupta2 discloses the protein-chelator system of claim 6, wherein the protein is myoglobin (See Gupta2; Title).
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.
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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over “Semi-Synthetic Proteins as Metal Ion Capture Agents: Catch and Release of Ni(II) and Cu(II) with Myoglobin Bioconjugates, ACS Sustainable Chem. Eng. 2023, 11, 11305−11312 (This prior art rejection is referred to as Gupta2 in the below prior rejection) in view of WO90/14881 (This reference is referred to as Akzo in the prior art rejection below) and in further view of, “Protein modification by thiolactone homocysteine chemistry: a multifunctionalized human serum albumin theranostic,” RSC Med Chem. 2020 Apr 2;11(11):1314–1325 (This reference is referred to as Popova in the prior art rejection below).
Regarding Claim 11, Gupta2 discloses the protein-chelator system of claim 6, except wherein the protein is an albumin. Akzo discloses the protein-chelator system wherein the protein albumin is used in a protein-chelator system (See Page 1 lines 1-10).
It would have been obvious to one skilled in the art that the time the invention was effectively filed to try or include albumin from Akzo into the protein-chelator system of Gupta2 because according to Popova, the albumin protein contains up to at least 59 lysine residues as potential modification sites that may be able to undergo amide coupling, and like myoglobin, would make it an attractive candidate for bioconjugation because of the number of lysine residues and its relative half life of 19 days (See Popova Introduction).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BOBBY RAMDHANIE whose telephone number is (571)270-3240. The examiner can normally be reached Monday thru Friday.
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/Bobby Ramdhanie/Supervisory Patent Examiner, Art Unit 1779
