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 .
Priority
The instant application is the national stage entry of PCT/JP2023/029358 filed 10 August 2023. Acknowledgement is made of the Applicant’s claims of foreign priority to application JP2022-128538 filed 10 August 2022.
Status of the Claims
Claims 1-2 and 19-36 are pending.
Claims 1-2 and 19-36 are rejected.
Claim Objections
Claim 29 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 27. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claims 19-20 and 32 are 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 claims 19 and 32, the Applicant recites a range of molecular weight for the claimed copolymer but does not provide a unit. For examination purposes, the units are interpreted as being Daltons.
In claim 20, the Markush refers to a possible “N-R7” group but does not further define the meaning of R7.
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.
Claims 1-2 and 19-36 are rejected under 35 U.S.C. 102a1 as being anticipated by Xiao et al. (Bioactive Materials 19 (2023) 538-549).
Xiao teaches a polymer compound, p(DOTA-Gd-co-pOEG)-b-p(Bz-co-BzTPBP) as shown below (pg 540, Scheme 1).
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The above compound is a copolymer comprising a chelating agent (DOTA), which complexes Gd metal, covalently bonded to a copolymer made up of different monomeric units (pg 540, Scheme 1). The repeating units, from left to right after the chain comprising the DOTA, read on units A, B, and C of the instant claims wherein in unit A, X1 is O, m is 9, and R4 is methyl; in unit B, X2 is N, n is 3, and R5 is a substituted C6 aryl; in unit C, X2 is N and R6 is a linker group to the TPBP moiety (pg 540, Scheme 1). The aforementioned polymer is formed by RAFT polymerization of the monomeric units (pg 540-541, sec 2.5-2.7). The copolymer has a molecular weight of 12.9 kDa (12,900 Da).
Regarding instant claims 23-31, these claims recite intended uses of the claimed composition in the preamble of the claim. These limitations do not result in a structural difference over the prior art and are thus given minimal patentable weight (see MPEP 2111.02 (II)). That being said, the copolymer of Xiao is used as a probe for fluorescent (FI) and magnetic resonance imaging (MRI), which reads on contrast agents, imaging agents, and pharmaceutical agents (abstract).
Claims 1-2, 20-31, and 33-36 are rejected under 35 U.S.C. 102a1 as being anticipated by Jackson et al. (Biomacromolecules 2016, 17, 3902−3910).
Jackson teaches a polymer compound, N(Gd3+DO3A) as shown below (pg 3905, Scheme 1).
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The above compound is a copolymer comprising a chelating agent (DOTA), which complexes Gd metal, covalently bonded to a copolymer made up of different monomeric units (pg 3905, Scheme 1). The repeating units, from right to left, read on units A, B, and C of the instant claims wherein in unit A, X1 is O, m is 4-5, and R4 is methyl; in unit B, X2 is O, n is 3, and R5 is methyl; in unit C, X2 is O and R6 is a linker group (pg 3905, Scheme 1). The aforementioned polymer is formed by RAFT polymerization of the monomeric units (pg 3905, ¶2).
Regarding instant claims 23-31, these claims recite intended uses of the claimed composition in the preamble of the claim. These limitations do not result in a structural difference over the prior art and are thus given minimal patentable weight (see MPEP 2111.02 (II)). That being said, the copolymer of Jackson is used as a contrast agent for magnetic resonance imaging (MRI), which reads on contrast agents, imaging agents, and pharmaceutical agents (abstract).
Claims 1-2 and 19-36 are rejected under 35 U.S.C. 102a1 as being anticipated by Marsden et al. (Biomacromolecules 2016, 17, 3902−3910).
Marsden teaches a polymer compound, p(OEGMEM) as shown below (pg 4125, Fig 1).
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The above compound is a copolymer made up of different monomeric units (pg 4125, Fig 1). The repeating units, from right to left, read on units A, B, and C of the instant claims wherein in unit A, X1 is O, m is 9, and R4 is methyl; in unit B, X2 is O, n is 1, and R5 is hydrogen; in unit C, X2 is O and R6 is a linker group (pg 4125, Fig 1). The aforementioned polymer is formed by RAFT polymerization of the monomeric units (pg 4125, ¶4). The copolymer p(OEGMEM) has a molecular weight of 20,500 g/mol (20,500 Da) (pg 4128, ¶2).
After polymerization, the copolymer is covalently bonded to a chelating agent, DOTA, which complexes Gd metal and is bound via a methacrylate linker (pg 4130, Fig 5).
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Regarding instant claims 23-31, these claims recite intended uses of the claimed composition in the preamble of the claim. These limitations do not result in a structural difference over the prior art and are thus given minimal patentable weight (see MPEP 2111.02 (II)). That being said, the copolymer of Jackson is used as a contrast agent for magnetic resonance imaging (MRI), which reads on contrast agents, imaging agents, and pharmaceutical agents (abstract).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW S ROSENTHAL whose telephone number is (571)272-6276. The examiner can normally be reached M-F 8-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW S ROSENTHAL/ Primary Examiner, Art Unit 1613
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