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
This Office Action is responsive the Response to Election/Restriction filed 05/20/2026.
The preliminary amendment filed 10/15/2024, amended claims 3-6, 8 and 10, and cancelled claim 7.
Claims 1-6 and 8-10 are pending.
Priority
This application claims the following priority:
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Election/Restrictions
Applicant’s election without traverse of Group I, the compound, and the species
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as the compound of the formula of instant claim 1, in the reply filed on 05/20/2026, is acknowledged.
The species is allowable over the prior art. The examination of the Markush claim has been extended. If a Markush grouping as set forth in a claim is proper and election of species has been required, the examiner must continue to search the species of the claim unless the claim has been found to be unpatentable over prior art. MPEP 803.02.
As detailed in the following prior art rejections, the generic claim encompassing the elected species was not found patentable. Therefore, the provisional election of species is given effect, the examination is restricted to the elected species only, and claims not reading on the elected species are held withdrawn. MPEP 803.02; Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (Bd. Pat. App. lnt. 1987).
Should applicant, in response to this rejection of the Markush-type claim, overcome the rejection through amendment, the amended Markush-type claim will be reexamined to the extent necessary to determine patentability of the Markush-type claim. See MPEP 803.02.
Claims 2-4 and 8-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim.
Claims 1 and 5-6 are examined on the merits herein.
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 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.
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.
Claims 1 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over US PG Pub. 2020/0009272 to Pitner, (published 01/09/2020, IDS of 08/22/2025) in view of Jiang (Polarity-tunable and wavelength-tunable bacteriochlorins bearing a single carboxylic acid or NHS ester. Use in a protein bioconjugation model system, published 2015, PTO-892).
Pitner teaches the following photoacoustic imaging contrast agents:
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or metalized versions thereof (pg. 11, claim 30), which meet the limitations of the formula of instant claim 1 when:
R1 and R2 are an ester
R3 and R4 are aryl and arylalkynyl,
R5 is H, and
M is the metal nickel or not present.
Pitner differs from that of the formula of instant claim 1 in that it does not teach R1 and R2 as different.
Pitner teaches its compounds as having the generic formula:
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wherein R7, which is instant R1 and R2 can be independently selected from:
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([0057]-[0059]).
Jiang teaches structurally similar bacteriochlorins and specifically teaches:
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(pg. 404), wherein the positions of instant R1 and R2 are different.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to substitute either the instant R1 or R2 position of
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, with sulfonic acid or carboxylic acid, to arrive at the formula of instant claim 1. One of ordinary skill in the art would have been motivated to make such a substitution, with a reasonable expectation of success, because:
-Pitner teaches that its compounds can be sulfonic acid or carboxylic acid at these positions and teaches that the instant R1 and R2 groups are independent of one another,
-Jiang teaches structurally similar compounds with different groups at the instant R1 and R2 positions,
-Pitner and Jiang both teach their compounds as bacteriochlorins (Pitner, abstract; Jiang, title and abstract) for bioconjugation (Pitner [0020], [0053], and Jiang, title and abstract)
-Jiang specifically teaches its compounds for use in a protein bioconjugation model system (title, abstract), and
-a prima facie case of obvious may be made when chemical compounds have very close structural similarities and similar utilities, MPEP 2144.09.
As such, an ordinary skilled artisan would have been motivated to make such a substitution, to predictably arrive at a structurally similar bacteriochlorin that is effective as a photoacoustic imaging contrast agent that is conjugated to proteins.
Regarding claim 6, Pitner teaches its compounds as photoacoustic imaging agents.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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.
Claims 1 and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 7 of U.S. Patent No. 12,042,548 (IDS of 08/22/2025) in view of US PG Pub. 2020/0009272 to Pitner, (published 01/09/2020, IDS of 08/22/2025) in view of Jiang (Polarity-tunable and wavelength-tunable bacteriochlorins bearing a single carboxylic acid or NHS ester. Use in a protein bioconjugation model system, published 2015, PTO-892).
‘548 claims the following compounds:
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(claims 3, 7).
‘548 differs from that of the formula of instant claim 1 in that it does not claim R1 and R2 as different.
Pitner is applied as discussed above and incorporated herein.
Jiang is applied as discussed above and incorporated herein.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to substitute either the instant R1 or R2 position of the compounds of ‘548, with sulfonic acid or carboxylic acid, to arrive at the formula of instant claim 1. One of ordinary skill in the art would have been motivated to make such a substitution, with a reasonable expectation of success, because:
-‘548 claims its compounds as bacteriochlorin photoacoustic imaging agents (claim 1),
-Pitner and Jiang both teach their compounds as bacteriochlorins (Pitner, abstract; Jiang, title and abstract) for bioconjugation (Pitner [0020], [0053], and Jiang, tile and abstract)
-Pitner teaches that its compounds can be sulfonic acid or carboxylic acid at these positions and teaches that the instant R1 and R2 groups are independent of one another,
-Jiang teaches structurally similar compounds with different groups at the instant R1 and R2 positions,
-Jiang specifically teaches its compounds for use in a protein bioconjugation model system (title, abstract), and
-a prima facie case of obvious may be made when chemical compounds have very close structural similarities and similar utilities, MPEP 2144.09.
As such, an ordinary skilled artisan would have been motivated to make such a substitution, to predictably arrive at a structurally similar bacteriochlorin that is effective as a photoacoustic imaging contrast agent that is conjugated to proteins.
Regarding claim 6, ‘548 claims its compounds as photoacoustic imaging agents.
Claims 1 and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 5 of U.S. Patent No. 11,904,026 (IDS of 08/22/2025) in view of US PG Pub. 2020/0009272 to Pitner, (published 01/09/2020, IDS of 08/22/2025) in view of Jiang (Polarity-tunable and wavelength-tunable bacteriochlorins bearing a single carboxylic acid or NHS ester. Use in a protein bioconjugation model system, published 2015, PTO-892).
‘026 claims the following compounds:
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(claims 1, 5).
‘026 differs from that of the formula of instant claim 1 in that it does not claim R1 and R2 as different.
Pitner is applied as discussed above and incorporated herein.
Jiang is applied as discussed above and incorporated herein.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to substitute either the instant R1 or R2 position of the compounds of ‘026, with sulfonic acid or carboxylic acid, to arrive at the formula of instant claim 1. One of ordinary skill in the art would have been motivated to make such a substitution, with a reasonable expectation of success, because:
-‘026 claims its compounds as bacteriochlorin photoacoustic imaging agents (claims 1-2),
-Pitner and Jiang both teach their compounds as bacteriochlorins (Pitner, abstract; Jiang, title and abstract) for bioconjugation (Pitner [0020], [0053], and Jiang, tile and abstract)
-Pitner teaches that its compounds can be sulfonic acid or carboxylic acid at these positions and teaches that the instant R1 and R2 groups are independent of one another,
-Jiang teaches structurally similar compounds with different groups at the instant R1 and R2 positions,
-Jiang specifically teaches its compounds for use in a protein bioconjugation model system (title, abstract), and
-a prima facie case of obvious may be made when chemical compounds have very close structural similarities and similar utilities, MPEP 2144.09.
As such, an ordinary skilled artisan would have been motivated to make such a substitution, to predictably arrive at a structurally similar bacteriochlorin that is effective as a photoacoustic imaging contrast agents, that is conjugated to proteins.
Regarding claim 6, ‘026 claims its compounds as photoacoustic imaging agents.
Claims 1 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17, 30, 33, 36 of copending Application No. 17/612,971 (claim set of 02/04/2026) in view of US PG Pub. 2020/0009272 to Pitner, (published 01/09/2020, IDS of 08/22/2025) in view of Jiang (Polarity-tunable and wavelength-tunable bacteriochlorins bearing a single carboxylic acid or NHS ester. Use in a protein bioconjugation model system, published 2015, PTO-892).
‘971 claims the following compounds:
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(claims 17, 30, 33, 36).
‘971 differs from that of the formula of instant claim 1 in that it does not claim R1 and R2 as different.
Pitner is applied as discussed above and incorporated herein.
Jiang is applied as discussed above and incorporated herein.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to substitute either the instant R1 or R2 position of the compounds of ‘971, with sulfonic acid or carboxylic acid, to arrive at the formula of instant claim 1. One of ordinary skill in the art would have been motivated to make such a substitution, with a reasonable expectation of success, because:
-‘971 claims its compounds as bacteriochlorin photoacoustic imaging agents (pg. 1, lines 9-19, ‘971 Specification),
-Pitner and Jiang both teach their compounds as bacteriochlorins (Pitner, abstract; Jiang, title and abstract) for bioconjugation (Pitner [0020], [0053], and Jiang, tile and abstract)
-Pitner teaches that its compounds can be sulfonic acid or carboxylic acid at these positions and teaches that the instant R1 and R2 groups are independent of one another,
-Jiang teaches structurally similar compounds with different groups at the instant R1 and R2 positions,
-Jiang specifically teaches its compounds for use in a protein bioconjugation model system (title, abstract), and
-a prima facie case of obvious may be made when chemical compounds have very close structural similarities and similar utilities, MPEP 2144.09.
As such, an ordinary skilled artisan would have been motivated to make such a substitution, to predictably arrive at a structurally similar bacteriochlorin that is effective as an imaging contrast agent, that is conjugated to proteins.
Regarding claim 6, Pitner teaches such compounds as photoacoustic imaging agents.
This is a provisional nonstatutory double patenting rejection.
Free of the Prior Art
Claim 5 is free of the prior art. Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The closest prior art to claim 5 is US PG Pub. 2020/0009272 to Pitner, (published 01/09/2020, IDS of 08/22/2025) which teaches the following photoacoustic imaging contrast agents:
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or metalized versions thereof (pg. 11, claim 30).
However, Pitner does not teach R1-R4 as depicted in compound 6 of instant claim 5 and it does not teach R1 and R2 as different, which are the distinct features of compound 6.
Conclusion
Claims 1 and 6 are rejected.
Claim 5 is objected to.
Claims 2-4 and 8-10 are withdrawn.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN WELLS whose telephone number is (571)272-7316. The examiner can normally be reached M-F 7:00-4:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James (Jim) Alstrum-Acevedo can be reached on 571-272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAUREN WELLS/Examiner, Art Unit 1622
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