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 .
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-7, drawn to a luminescent nanoparticle comprising a first and second luminescent compound.
Group II, claim 8, drawn to a luminescent labeling material containing the luminescent nanoparticle.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a luminescent nanoparticle comprising a first and second luminescent compound wherein the first luminescent compound is excited by light, transferring energy from that light source as excitation to the second luminescent compound, the second luminescent compound emits light upon that excitation, and a content of the first luminescent compound to a total amount of luminescent nanoparticle is 4-90% by mass, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Takuji et al (JP2011232072A). Takuji teaches a silica nanoparticle (luminescent nanoparticle) containing organic fluorescence dye which contains linking molecules composed by linking of two or more organic fluorescence dye molecules having difference fluorescence wavelength. Takuji describes that a “first organic fluorescent dye part” absorbs light that is transferred to a “second organic fluorescent dye portion” and subsequently emits a different wavelength of light. In all preparation examples, Takuji provides a mass% of the first luminescent compound or dye within the range of 4-90% by mass to the luminescent nanoparticle.
During a telephone conversation with Shintaro Yamada on June 22, 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-7. Affirmation of this election must be made by applicant in replying to this Office action. Claim 8 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP2021-139818 and PCT/JP2022/012359, filed on August 30, 2021 and March 17, 2022, respectively.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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.
Claim 3 is 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 3 general formula (1e) is indefinite for the following reasons (see annotated screenshot for cross-reference):
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The red square points out a “g” in contained within a cyclic ring of general formula (1e). It is unclear what “g” in this context means as no definition is provided. For the purposes of examination, the “g” will be interpreted as a nitrogen atom “N”.
The red rectangle points out a bonding line pointing out in space from the side of a carbon ring. It is unclear what this line represents in the context of the provided chemical structure formula. For the purposes of examination, the bonding line will be interpreted as “miscellaneous” and not pertinent to the chemical structure.
The red circle points out an error in the naphthalene ring structure. For the compound to be a naphthalene ring, the carbon rings must contain alternating double bonds in the structure. For the purposes of examination, the “circled bond” will be interpreted as a double bond between carbons within the ring.
For the aforementioned reasons, claim 3 is thus indefinite as the scope of the general formula (1e) is not clearly defined.
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.
(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.
Claims 1, 5, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takuji et al (JP2011232072A).
Regarding claim 1, Takuji teaches preparation of a silica nanoparticle containing at least two types of organic fluorescent dyes, thus a luminescent nanoparticle. Takuji teaches that when selecting a combination of multiple types of organic fluorescent dyes, the light energy absorbed by a specific organic fluorescent dye is transferred between other types of organic fluorescent dyes by transfer of fluorescence resonance energy, and the light is absorbed. Further, “it is preferable that the photoexcitation energy absorbed by the first organic fluorescent dye is selected so as to move to the second organic fluorescent dye by fluorescence resonance energy transfer and emit fluorescence from the second organic fluorescent dye.”. Therefore, Takuji teaches a first luminescent compound excited by light irradiation which transfers energy to the second compound whereby the second compound emits light in response to absorption of such energy. In provided examples, Takuji prepares silica nanoparticles containing BODIPY-FL, Alexa Fluor 488, HiLyte Fluor488, DyLight 488, or Rhodamine 6G (first luminescent compounds) in mass% that fall within claimed range of 4-90% to the luminescent nanoparticle. Thus, Takuji teaches the claimed “A luminescent nanoparticle comprising a first luminescent compound and a second luminescent compound, wherein the first luminescent compound is excited by light irradiation and has a function of transferring energy due to the excitation to the second luminescent compound, the second luminescent compound has a function of receiving the energy due to the excitation to emit light, and a content of the first luminescent compound to a total amount of the luminescent nanoparticle is in the range of 4 to 90% by mass.”.
Regarding claim 5, Takuji teaches the luminescent nanoparticle of claim 1. In provided examples, Takuji provides TAMRA or Rhodamine 6G as second luminescent compounds which are both xanthene dyes. Thus, Takuji teaches the claimed “The luminescent nanoparticle according to claim 1, wherein the second luminescent compound is a xanthene dye”.
Regarding claim 7, Takuji teaches the luminescent nanoparticle of claim 1. In some examples, Takuji prepares molecularly modified silica nanoparticles “A” and “B” which contain an amino group on the surface of the silica nanoparticle. The amino group (aminopropyl) is hydrophilic. Thus, Takuji teaches the claimed “The luminescent nanoparticle according to claim 1, having a hydrophilic group on a surface thereof.”.
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.
Claims 2, 3, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Takuji et al as applied to claim 1 above, and further in view of Hitosugi et al (WO2020075751A1, examiner will reference from Hitosugi et al US PGPub 20210351356 and Sakuragi et al US PGPub 20220003641 for ease of communication as they claim priority to WO2020075751A1).
Regarding claim 2, Takuji teaches the luminescent nanoparticle of claim 1. Takuji does not teach a first luminescent compound that fall within the claimed general formulas (1), (2), or (3). Hitosugi/Sakuragi teach preparation of a luminescent imide derivative represented by several formulas falling within the claimed formulas and for use in analogous applications encapsulated in nanoparticles for light-emitting device purposes or detection of anabolites, pathologies, etc and thus represent obvious alternative compounds to the first luminescent compound provided by Takuji. Both Hitosugi/Sakuragi teach an imide derivative (screenshot comes from Hitosugi US PGPub):
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.The formula disclosed by Hitosugi/Sakuragi is identical to General formula (1) as claimed in structure, R1 identities, and optional ring substituents.Hitosugi/Sakuragi also disclose an imide derivative having a general formula identical to General formula (2) as claimed (screenshot comes from Hitosugi US PGPub):
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. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to substitute the first luminescent compound of Takuji for either disclosed luminescent compounds of Hitosugi/Sakuragi as known alternative luminescent compounds to prepare a luminescent nanoparticle and arrive at the invention as claimed. Thus, Takuji and Hitosugi/Sakuragi teach the claimed “
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”.
Regarding claim 3, Takuji teaches the luminescent nanoparticle of claim 1. Takuji does not teach a first luminescent compound that fall within the claimed general formulas (1c), (1d), or (1e). Hitosugi/Sakuragi teach preparation of a luminescent imide derivative represented by several formulas falling within the claimed formulas and for use in analogous applications encapsulated in nanoparticles for light-emitting device purposes or detection of anabolites, pathologies, etc and thus represent obvious alternative compounds to the first luminescent compound provided by Takuji. Both Hitosugi/Sakuragi teach an imide derivative (screenshot comes from Hitosugi US PGPub):
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which is identical to general formula (1c) as claimed “
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”.Both Hitosugi/Sakuragi also teach an imide derivative (screenshot comes from Hitosugi US PGPub) which falls within general formula (1e) as claimed:
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. This imide derivative contains R2 which can be a substituted aryl group, thus falling within range of aryl groups containing R1 substituents as claimed. R4 of Hitosugi/Sakuragi can be a substituted aryl group as well, thus falling within range of the aryl groups containing R21 substituents (circled in red of screenshot of instant application general formula 1e below). Additionally, R11 of Hitosugi/Sakuragi can be a hydrogen atom, an amino group, an amide group, a carboxy group, or a sulfo group which fall within range of remaining R21 of claimed formula 1e. Amino, amide, carboxy, and sulfo groups are all ionic substituents as they generally exist as ions in solution. Claimed general formula 1e:
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The general formula 8 of Hitosugi/Sakuragi has overlapping structural/formulaic ranges with the claimed formula (1e). Overlapping ranges have been held to present a prima facie case of obviousness over the prior art. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to select from the overlapping substitutions of the range as known desired luminescent compositions for use in luminescent materials to arrive at the invention as claimed. Thus, it would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to substitute the first luminescent compound of Takuji for either disclosed luminescent compounds of Hitosugi/Sakuragi as known alternative luminescent compounds to prepare a luminescent nanoparticle and arrive at the invention as claimed. Therefore, Takuji and Hitosugi/Sakuragi teach the claimed “
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”.
Regarding claim 6, Takuji teaches the luminescent nanoparticle of claim 1 but is silent on use of a binder. As described in the rejections of claims 2-3 above, Hitosugi/Sakuragi teach an analogous luminescent nanoparticle containing a luminescent compound which is provided in the form of a thin film through use of a dispersant (paragraphs [0109-0114]). The dispersant is a resin (paragraph [0110] of Hitosugi) which are binders and aid in the stability of the provided composition. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to provide the luminescent nanoparticle of Takuji in a resin, as informed by Hitosugi/Sakuragi, to improve stability of the nanoparticle composition. Thus, Takuji and Hitosugi/Sakuragi teach the claimed “The luminescent nanoparticle according to claim 1, further comprising a binder.”.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Takuji et al as applied to claim 1 above, and further in view of Martin et al (WO2018065502A1).
Takuji teaches the luminescent nanoparticle of claim 1. Takuji does not teach a first luminescent compound that fall within the claimed general formulas (1c), (1d), or (1e). Martin teaches an analogous luminescent dye/composition which can function as a first luminescent compound in the nanoparticle of Takuji. Martin teaches luminescent perylene-based derivatives. Martin teaches a specific example (example I pg 86 and dye 2 example II pg 88) which falls within the scope of claimed general formula (1d):
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. Thus, it would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to substitute the first luminescent compound of Takuji for either disclosed luminescent compounds of Martin as known alternative luminescent compounds to prepare a luminescent nanoparticle and arrive at the invention as claimed. Therefore, Takuji and Martin teach the claimed “
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”.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Takuji et al as applied to claim 1 above, and further in view of Falber (US PGPub 20160211453).
Takuji teaches the luminescent nanoparticle of claim 1. Takuji does not specify a range of acceptable molar ratios between the first and second luminescent compounds, but provides them in a 1:1 molar ratio for all disclosed preparations. Falber similarly teaches a mixed luminescent composition containing a first luminescent compound (referred to as a donor, paragraphs [0061-64]) that absorbs light, subsequently emits a different wavelength of light wherein the emitted light is absorbed by a second luminescent compound (referred to as an acceptor, paragraphs [0049-60]) that then emits light of another wavelength. In paragraph [0069], Falber discloses acceptable molar ratios of the donor (first luminescent) to the acceptor (second luminescent) are 2:1, 3:1, 4:1, 5:1, 6:1, 7:1, 8:1, 9:1, 10:1, 11:1, 12:1, 13:1, 14:1, 15:1, 16:1, 17:1, 18:1, 19:1, 20:1, 21:1, 22:1, 23:1, 24:1, 25:1, 26:1, 27:1, 28:1, 29:1, 30:1, or higher. In paragraphs [0340-343], Falber describes why increasing the ratio, as represented through oligomeric units whereby trimers are ~3:1 and pentamers would be ~5:1, is desirable by maximizing FRET processes and minimizing light reabsorption. FRET is known in the art to function as a combination of a donor and an acceptor molecule as described by the composition of Falber and general process mimicked in the composition of Takuji. Thus principles of light mediation in FRET as desired by Falber would be expected to have similar qualities in general light energy pairings as disclosed by Takuji. It would have been prima facie obvious to one of ordinary skill in the art, as of the effective filing date, to utilize the molar ratios disclosed by Falber in the composition of Takuji to improve its efficiency and minimize light reabsorption and arrive at the invention as claimed. Thus, Takuji and Falber teach the claimed “The luminescent nanoparticle according to claim 1, wherein a molar ratio of the second luminescent compound to the first luminescent compound is in the range of 1:2 to 1:200”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kohl et al (NPL "Towards Highly Fluorescent...") describe relevant perylene dyes relevant to claims 2-3 of instant application. Qu et al (NPL "Dendronized Perylene Diimide...") teach perylene based dyes relevant to claims 2-3 of instant application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Noa W. F. Grooms whose telephone number is (571)272-9981. The examiner can normally be reached M-F 7:30-3:30PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NWFG/Examiner, Art Unit 1759
/MELVIN C. MAYES/Supervisory Patent Examiner, Art Unit 1759
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