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 .
Priority
Instant application 18/893,747 filed on 09/23/2024 claims benefit as follows:
CONTINUING DATA:
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Status of the Application
Claims 1-20 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/08/2025 was in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Applicant’s election, with traverse, of Group I in the reply filed on 07/21/2026 is acknowledged.
The traversal is on the ground(s) that it would not create an undue burden on the Office to simultaneously search subject matter of Groups I and II. This is not found persuasive because search for each of the inventions is not co-extensive particularly with regard to the literature search. Burden consists not only of searching multiple databases for foreign references and literature searches. Burden also resides in the examination of independent claim sets for clarity, enablement and double patenting issues. The requirement is still deemed proper and is therefore made FINAL.
Claims 14-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07/21/2026.
Regarding species election, Applicant’s election of
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in the reply filed on 07/21/2026 is acknowledged.
Examination will begin with the elected species. In accordance with the MPEP 803.02, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species, the search of the Markush-type claim will be extended. If prior art is then found that anticipates or renders obvious the non-elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be reexamined. Id. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. Id. In the event prior art is found during reexamination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final. Id.
As per MPEP 803.02, the Examiner will attempt to determine whether the entire scope of the claims is patentable. Applicants' elected species, as shown above, does make a contribution over the prior art. Therefore, according to MPEP 803.02: should the elected species appear allowable; the search of the Markush-type claim will be extended. The search and examination should be continued until either (1) prior art is found that anticipates or renders obvious a species that falls within the scope of a proper Markush grouping that includes the elected species, or (2) it is determined that no prior art rejection of any species that falls within the scope of a proper Markush grouping that includes the elected species can be made. The Examiner need not extend the search beyond a proper Markush grouping.
Species Election
A careful review of the prior art has indicated that elected species is free of the prior art. A claim directed to the elected species in independent form would be free of prior art.
The examiner has moved onto alternative species embodied within the general formula recited in instant claim 1, and subsequent examination is based on this species expansion.
Claims 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07/21/2026.
Claim Objections
Claims 1 and 10 are objected to because of the following informalities:
The structures recited in instant claims 1 and 10 are blurry, making it difficult to distinguish between R2, R3, and R9. Appropriate correction is required.
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 12 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.
In addition, claim 12 recite the compound of claim 11, wherein X is selected […] so long as when X is F, then is Q is selected from the group consisting of […].
There is insufficient antecedent basis for this limitation in the claim because the compounds recited in claim 11 do not permit Q selection.
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.
(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, 2, 4, 5, 6, 7, 8, 9, 10, 11 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 110922783 (published 2020-03-27). Please note that machine translation is provided.
CN 110922783 teaches silicon-based rhodamine derivative (see abstract).
CN 110922783 teaches and claims compound 8 (see claim 16 and page 3 of the original patent or page 11 of the machine translation):
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Compound 8 disclosed by CN 110922783 falls under instant formula:
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wherein Q is
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, R1 is H, R6 is H, R2 is alkyl (Et), R7 is alkyl (Et), Z is COO- and X is F, R3, R4, R5, R8, R9 and R10 are H.
Regarding instant claims 7, 8, 10, 11 and 12, CN 110922783 discloses compound 10 (see claim 16 and page 3 of the original patent or page 11 of the machine translation):
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that falls under instant formula
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wherein Q is
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, Z is COO- and X is F, R3, R4, R5, R8, R9 and R10 are H, R1 substituent and R2 substituent taken together form unsubstituted ring containing 6 atoms and R6 substituent and R7 substituent taken together form unsubstituted ring containing 6 atoms.
Regarding instant claim 10, compound 10 disclosed by CN 110922783 falls under formula:
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wherein R6 substituent and R7 substituent taken together form unsubstituted ring containing 6 atoms.
Regarding instant claims 11 and 12, compound 10 of CN 110922783 falls under the structure recited in instant claim 11 (see instant claim 11, second row, the first compound):
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wherein X is F.
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.
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 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over SCHWARZ (US-20180291265-A1).
SCHWARZ teaches rhodamine-based fluorescent molecules:
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wherein
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For example, SCHWARZ teaches the following compound (see page 24):
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The above compound does not fall under the formulas recited in instant claim 1. It should be noted that instant claim 1 recites:
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In other words, instant claim 1 does not permit a selection wherein X is F when Q is O.
SCHWARZ does not teach a compound falling under instant formulas in one single embodiment.
However, SCHWARZ teaches overlapping genus (formula (I)).
Applying KSR prong (B) - Simple substitution of one known element for another to obtain predictable results - it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute O (Z101 position) in the above compound disclosed by SCHWARTZ with NH or Si(R)2 with a reasonable expectation of success because SCHWARZ teaches formula (I) wherein Z101 is NH, O, Si(R)2 or C(R)2. One of ordinary skill would have been motivated to prepare alternative fluorescent molecules falling under the genus disclosed by SCHWARZ.
Further, regarding instant claims 3 and 13 starting from the compound disclosed by SCHWARTZ:
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Applying KSR prong (B) - Simple substitution of one known element for another to obtain predictable results - it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute F atom (marked above, at the position corresponding to the instant X variable) in the compound disclosed by SCHWARTZ with
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because SCHWARTZ discloses compounds bearing
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in the corresponding position.
For example, SCHWARTZ discloses the following compound (see page 24):
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Further, it should be noted that SCHWARTZ discloses formula (I):
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One of ordinary skill would have been motivated to prepare alternative fluorescent molecules falling under the formula(I) of SCHWARZ.
It should be noted that compounds wherein Q is O and X is
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fall under the structures recited in instant claims 11-13.
“[I]t is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect, even when the possible selections number 1200 or in the thousands. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985).” In the instant case, SCHWARTZ teaches the variables recited in instant claims. As such, it would be obvious to select the claimed
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from the genus embodied within Schwartz, arriving at the presently claimed compounds with a reasonable expectation of success.
Further, the lead compound cases do not stand for the proposition that identification of a single lead compound is necessary in every obviousness rejection of a chemical compound. For example, one might envision a suggestion in the prior art to formulate a compound having certain structurally defined moieties, or moieties with certain properties. If a person of ordinary skill would have known how to synthesize such a compound, and the structural and/or functional result could reasonably have been predicted, then a prima facie case of obviousness of the claimed chemical compound might exist even without identification of a particular lead compound. Thus, Office personnel should recognize that in certain situations, it may be proper to reject a claimed chemical compound as obvious even without identifying a single lead compound.” (MPEP 2143 I, Example 10, last paragraph).
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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 1-13 rejected on the ground of nonstatutory double patenting as being unpatentable over claim1-35 of U.S. Patent No. 12,344,594-B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because claims of U.S. Patent No. 12,344,594 recite:
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[…]
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[…]
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Further, claims of U.S. Patent No. 12,344,594 recite:
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Regarding instant claim 10, it should be noted that the above compound falls under the instant formula:
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wherein Q is C(alkyl)2, R7, R8, R9 and R10 are alkyl (CH3).
Furthermore, regarding instant claims 11-13, the claims of U.S. Patent No. 12,344,594 recite:
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The instant claim 11 recites:
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The above compound recited in claim 35 of U.S. Patent No. 12,344,594 differs from the first structure recited in instant claim 11 only in the position corresponding to the Q variable.
However, claims of U.S. Patent No. 12,344,594 recite general formula wherein Si(alkyl)2 may be selected as Q (see claim 1). Further, claims of U.S. Patent No. 12,344,594 recite compounds bearing Si(CH3)2 (see claim 10). For example, claim 10 of U.S. Patent No. 12,344,594 recites:
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Therefore, applying KSR prong (B) - Simple substitution of one known element for another to obtain predictable results - it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute O atom in the compound recited in claim 35 of U.S. Patent No. 12,344,594 with Si(CH3)2 with a reasonable expectation of success because claims of U.S. Patent No. 12,344,594 recite compounds wherein Q is Si(CH3)2. One of ordinary skill would have been motivated to prepare alternative molecules falling under the genus recited in claim 1 of U.S. Patent No. 12,344,594.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IZABELA SCHMIDT whose telephone number is (703)756-4787. The examiner can normally be reached Monday - Friday from 9 am to 5 pm.
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, Clinton A Brooks can be reached at (571)270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/I.S./Examiner, Art Unit 1621
/GEORGE W KOSTURKO/Primary Examiner, Art Unit 1621
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