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 6/23/26 and 9/15/26 was filed after the mailing date of the previous Office Action on 3/30/26. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3, 7, 14, 16, 19, 31, 34, 40, 47, 54, 57, 70 and 71 is/are rejected under 35 U.S.C. 102a2 as being anticipated by Pitner et al (US 2019/0264102 A1 hereafter Pitner).
Pitner discloses a fluorescent compound comprising at least a first porphyrin and a first hydroporphryin where they are attached to each other [abstract, 0009, 0011], meeting the limitations of claim 1. R1-8 corresponding R1-1 of formula Ia and b, S1-14 corresponding to R21-33 of formula IIa, b, c and d where to R1-8 and S-14 can be can independently chose from be H, alkyl, alkylene, and M is a metal or not present [0006-0007], meeting further limitations of claim 1. The first porphyrin and the first hydroporphyrin are bound via a linker connecting up to 5 or more distinct porphyrin macrocycles [0114]. The first porphyrin has a structure of Formula lb where M is a metal, and is a chlorin or bacteriochlorin [0006], meeting the limitations of claims 2 and 70. The first hydroporphyrin has a structure of Formula llb and Ild [0007-0008], where M is a metal, meeting limitations of claim 5. The porphyrin and hydroporphyrin are bonded to each other via direct bond or through another molecules [0011], meeting limitations of claim 7. The compound is excited in the violet range of visible light, up to 450 nm [0126], meeting the limitations of claim 14. At least an additional porphyrin is added to the compound selected from Formula llb or Ild [0014], meeting the limitations of claim 16, 17, 19 and 71. The compound emits light at a wavelength about red to infrared from 590-750 micron [0010], meeting the limitations of claim 31. The reference discloses Dyads comprising multiple distinct porphyrin compounds where they each exhibit unique wavelength emissions, different from their individual wavelengths when alone [0114-0116], meeting limitation claim 34. The compound is present as a particle [abstract], meeting the limitations of claim 47. The reference disclose kits comprising the compound and where each compound comprise a unique emission wavelength [0014, Figures 14A, B], meeting the limitations of claims 57. These disclosures render the claims anticipated.
Claim Rejections - 35 USC § 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.
Claim(s) 1, 33, 60-62 and 65 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combined disclosures of Pitner et al (US 2019/0264102 A1 hereafter Pitner) in view of Hasan et al (US 2010/0016208 A1 hereafter Hasan).
As discussed above, Pitner discloses a compound comprising at least a first porphyrin and a first hydroporphyrin where they can be a chlorin or a bacteriochlorin. The compound has a brightness assessment at 405 nm [Example 2] however the specific molar absorption was not recorded. The molar absorption of these compounds known in the art a seen in the Hasan patent. Further, The reference further discloses a method of detecting particle using flow cytometry comprising labeling particles with the compound [0154], meeting some of the limitations of claim 60. The reference first recites a method for detecting a cell comprising administering the compound and detecting the compound to view cell surface markers via light microscopy, a sufficient enough light 0 detect the compound [0138], meeting the limitations of claim 61, 62 and 65. However the reference is silent to the specific photoactivation, which is also shown in the Hasan patent.
Hasan discloses photoactivatable antimicrobial agents comprising photosensitizers such as red shifted porphyrins like chlorins and bacteriochlorin [0058]. These compounds can be applied with or with metals [0061]. These photosensitizers have brightness at 400 nm and molar absorption up to 150,000 M-1, cm-1 or a lower intensity of up to 61,000 for a single porphyrin derivative [0090], meeting limitations of claim 33 and 34. These compounds are applied in methods to detect, and treat tissues by administering the compounds to a subject and activating the photosensitizers [0107-0115]. It would have been obvious that these compounds would be useful in the methods of Pitner as they solve the same problem and have the same structure.
One of ordinary skill in the art would have been motivated to combine the prior art with expected result of a stable photosensitizing compound. It would have been obvious to combine the similar porphyrin compounds oof Hasan with the compounds of Pitner as they solve the same problems. It would have also been obvious to apply the similar compounds of Pitner in the methods of Hasan to apply the compounds practically for imaging and treatment of tissues as they have the same components and can solve the same problems. One of ordinary skill in the art would have been motivated to combine the prior art with an expected result of a stable photosensitizer.
Response to Arguments
Applicant's arguments filed 6/23/26 have been fully considered but they are not persuasive. Applicant argues that the prior art does not anticipate or render the claims anticipated.
Applicant argue that the claims, as amended, are not anticipated by Pitner as it does not disclose each and every limitation of the claims. Regarding this argument, Pitner discloses a fluorescent formulation comprising at least a porphyrin and a hydroporphyrin meeting the formula limitation of the claims and bound by a linker [0114] as recited in the claims. The composition can comprise a metal and can be a chlorin or a bacteriochlorin [0006]. The composition is excited in the violet range and forms dyads of multiple distinct porphyrin compounds [0114-0116]. These disclosures render the claims anticipated. Regarding the obviousness rejection, since Pitner continues to anticipate the instant claims, it would have been obvious to combine those disclosures with Hasan.
The compound has a brightness assessment at 405 nm [Example 2] however the specific molar absorption was not recorded. The molar absorption of these compounds known in the art a seen in the Hasan patent. Further, The reference further discloses a method of detecting particle using flow cytometry comprising labeling particles with the compound [0154], meeting some of the limitations of claim 60. The reference first recites a method for detecting a cell comprising administering the compound and detecting the compound to view cell surface markers via light microscopy, a sufficient enough light 0 detect the compound [0138], meeting the limitations of claim 61, 62 and 65. It would have been obvious to combine the similar porphyrin compounds oof Hasan with the compounds of Pitner as they solve the same problems. It would have also been obvious to apply the similar compounds of Pitner in the methods of Hasan to apply the compounds practically for imaging and treatment of tissues as they have the same components and can solve the same problems. One of ordinary skill in the art would have been motivated to combine the prior art with an expected result of a stable photosensitizer. For these reasons, the claim remain rejected.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICAH PAUL YOUNG whose telephone number is (571)272-0608. The examiner can normally be reached Monday through Friday, 9:00 am to 5:30 pm.
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/MICAH PAUL YOUNG/Primary Examiner, Art Unit 1618
