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 .
Restriction/Election
Requirement for Restriction/Election was mailed 11 March 2026.
Applicant’s Response to Requirement for Restriction/Election was received 08 May 2026.
Applicant’s election with traverse of Group I (Claims 1-16 and 19) in the Response filed 08 May 2026 is acknowledged. Applicant’s arguments in opposition to the requirement for restriction have been fully considered and are persuasive.
The requirement for restriction of 11 March 2026 is withdrawn.
Applicant’s election of SCR-NO, which is depicted in the upper left hand corner of Fig. 4(a) and is the last structure of claim 11, in the Response filed 08 May 2026 is acknowledged. Applicant indicates claims 1-2 and 4-20 read on the elected species. Accordingly, claim 3 is withdrawn. Because Applicant did not distinctly and specifically point out the supposed errors in election of species requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
Claim 1 contains allowable subject matter. Claim 3, previously withdrawn from consideration as a result of an election of species requirement, requires all the limitations of an allowable claim. Pursuant to the procedures set forth in MPEP § 821.04(a), the election of species requirement, as set forth in the Office action mailed on 11 March 2026, is hereby withdrawn and claim 3 is hereby rejoined and fully examined for patentability under 37 CFR 1.104. In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Status of the Claims
The listing of claims filed 08 May 2026 has been examined.
Claims 1-20 are pending.
Claims 17-18 are amended.
Information Disclosure Statement
The Information Disclosure Statement (IDS) filed on 05 December 2023 is acknowledged and has been considered.
Benefit of Earlier Filing Date
The instant application, filed 30 November 2023, claims the benefit of an earlier filing date to U.S. Provisional Patent Application Serial No. 63/385,577, filed 30 November 2022. Acknowledgment is made of Applicant’s claim.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it contains legal phraseology, specifically the term “comprising”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 3 and 8 are objected to because of the following informalities:
Under “Group A”, claim 3 recites, “…and a thienodihydrodibenzazepine; and...” [Emphasis added.] This appears to be a typo. Examiner suggests changing “and” to “or”.
Claim 8 recites “an alkylether grokup” [Emphasis added.]. This appears to be a typo. Examiner suggests changing “grokup” to “group”.
Appropriate correction is requested.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 1, upon which claim 2 depends, recites, “…A1 is a substituted or unsubstituted linear or branched C2-C18 alkyl group, a substituted or unsubstituted linear or branched C2-C18 alkenyl group or a substituted or unsubstituted C3-C10 cycloalkyl group.” Similarly, claim 1 recites, “…A3 is selected from the group consisting of a substituted or unsubstituted linear or branched C2-C18 alkyl group, a substituted or unsubstituted linear or branched C2-C18 alkenyl group, and a substituted or unsubstituted C3-C10 cycloalkyl group.” However, claim 2 recites, “…A1, A2, and A3 are independently selected from the group consisting of… a substituted or unsubstituted C6-C10 aryl group…” Thus, claim 2 improperly broadens the scope of claim 1 by indicating A1 and A3 could also be aryl groups in addition to alkyl, alkenyl, and cycloalkyl groups as recited by claim 1. Examiner suggests amending claim 2 to clarify A1 and A3 don’t include aryl groups.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claims 1, 4-7, and 9-20 are allowed. None of the prior art of record nor a search in the pertinent art area teaches compounds having a structure of Formula I:
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The following is a statement of reasons for the indication of allowable subject matter:
A short-wave infrared (SWIR) dye comprising a counterion and a compound having a structure of Formula I is claimed, as well as composites/compositions comprising said SWIR dye, a method of making said SWIR dye, and a method of imaging a biological sample using said SWIR dye.
The closest prior art is Chatterjee (Chatterjee et al., The Journal of Organic Chemistry 2022 87(17), 11319-11328) and Delcamp (US 2022/0056335 A1; IDS dated 05 December 2023, Cite No. 1). Shown below are compounds disclosed by Chatterjee and Delcamp, respectively, which share some structural similarities to the instantly claimed compounds:
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Chatterjee (Fig. 1, rhodamine B)
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Delcamp (Claim 3)
The instantly claimed compounds differ from Chatterjee and Delcamp in the following respects:
In the instantly claimed compounds, when R1 and R2 are selected from Group C, R1 and R2 are different donors, wherein R1 is selected from a dibenzazepinyl, a thienyldibenzazepine, a bithienyldibenzazepine, a thienodibenzazepine, a dihydrodibenzazepinyl, a thienyldihydrodibenzazepine, a bithienyldihydrodibenzazepine, and a thienodihydrodibenzazepine, and R2 is selected from dibenzazepinyl, a thienyldibenzazepine, a bithienyldibenzazepine, a thienodibenzazepine, a dihydrodibenzazepinyl, a thienyldihydrodibenzazepine, a bithienyldihydrodibenzazepine, a thienodihydrodibenzazepine, 1-(thiophen-2-yl)piperidine, 1-(thieno[3,2-b]thiophen-2-yl)piperidine, 1-([2,2'-bithiophen]-5- yl)piperidine, C2-C12 dialkyl amino, indolizine-3-yl, diphenylamino, and julolidinyl. However, in rhodamine B, the positions corresponding to R1 and R2 are both diethyl amino groups and rhodamine B lacks a dibenzazepine or dibenzazepine derivative.
In the instantly claimed compounds, at least one of R1 or R2 includes a dibenzazepinyl, a thienyldibenzazepine, a bithienyldibenzazepine, a thienodibenzazepine, a dihydrodibenzazepinyl, a thienyldihydrodibenzazepine, a bithienyldihydrodibenzazepine, and a thienodihydrodibenzazepine. However, Delcamp provides no suggestion or motivation to include one of the aforementioned groups at one or both of the positions corresponding to R1 and R2.
Thus, while Chatterjee’s and Delcamp’s compounds share some structural similarities with the instantly claimed compounds having a structure of Formula I, a skilled artisan would not have been motivated to make the aforementioned changes as a whole to the structures which would have resulted in compounds having a structure of Formula I.
Conclusion
Claims 1, 4-7, and 9-20 are allowed.
Claim 2 is rejected.
Claims 3 and 8 are objected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIANNA L BAUER whose telephone number is (571)272-5752. The examiner can normally be reached 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ADAM C MILLIGAN can be reached at (571)270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/B.L.B./Examiner, Art Unit 1623
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
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