DETAILED ACTION
Notice of 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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/22/2026 has been entered.
Response to Arguments
Applicant's arguments filed 07/22/2026 have been fully considered but they are not persuasive | moot in view of the new grounds of rejection. The previous 112d rejections are maintained because the dependent claims, while further limit the claim, they do not further limit a step in the method.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim(s) 21-26 is/are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 21, there is absent a sufficient description of how to measure gait based upon the captured fluorescence.
Regarding claim 22, there is absent a sufficient description of how to measure halting gait based upon the captured fluorescence.
Regarding claim 23, there is absent a sufficient description of how to measure a tremor based upon the capture fluorescence.
Regarding claim 24, there is absent a sufficient description of how to measure dyskinesia based upon the capture fluorescence.
Regarding claim 25, there is absent a sufficient description of how to measure a tic based upon the capture fluorescence.
Regarding claim 26, there is absent a sufficient description of how to measure for chorea based upon the capture fluorescence.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim(s) 2, 4, 5, 8-13, and 19 is/are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim(s) 1-6, 8-13, 19, and 21-27 is/are rejected under 35 U.S.C. 101 because they amount to an abstract idea related to: MPEP 2106 - Patent Subject Matter Eligibility requires the following test in section III. Summary of Analysis and Flowchart:
Step 1: Is the claim to a process, machine, manufacture or composition of
matter?
Step 2A1: Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Step 2A2: Does the claim recite additional elements that integrate the judicial exception into a practical application?
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
With regards to the Applicant’s claims, the Examiner addresses each of the corresponding points outlined above:
Step 1: Yes, a process
Step 2A1: Yes, an abstract idea of capturing images with a conventional camera
Step 2A2: Yes, fluorescent particles and a conventional camera
Step 2B: No, because the fluorescent particles are generically recited and the camera is recited as a conventional camera being used to capture data in a conventional and routine manner.
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.
Claim(s) 1-6, 8, 12, and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hong (US 2015/0297086).
Regarding claim 1, Hong discloses a method of measuring fluorescence ([0057]: “fluorescence emission”) in an animal ([0057]: “small animal imaging”), the method comprising (a) injecting the animal with one or more fluorescent particles ([0057]: “QDs of ~10% injected dose”); and (b) capturing, with a camera ([0057]: “video rate”), the fluorescence exhibited by the animal during movement of the animal, wherein the fluorescence is captured in a plurality of frames over time ([0057]: “Clearance” implies movement of the animal’s circulatory system; [0095]: “video-rate imaging”).
Regarding claim 2, Hong discloses that the one more fluorescent particles are quantum dots ([0057]: “QDs of ~10% injected dose”).
Regarding claim 3, Hong discloses that the quantum dots emit at an excitation wavelength ranging from about 600-1000 nm ([0057]: “1000-1700 nm”).
Regarding claims 4, 5, 12, and 13, Hong discloses a mammalian mouse (Abstract: mouse).
Regarding claim 6, Hong discloses that the mouse is injected in at least the tail of the mouse ([0114]: “injected into the tail vein of a nude mouse”).
Regarding claim 8, Hong discloses that the camera is a near infrared camera (Title, Abstract, [0055], [0060]: “NIR”).
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 may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hong (US 2015/0297086).
Regarding claim 27, Hong does not explicitly disclose that the plurality of frames is 1000 frames. However, Hong teaches a high temporal resolution of up to 5-10 frames per second (Abstract), thus over the course of a couple of minutes, the frame rate will be over 1000 frames over a length of time. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to apply a high number of frames, as to provide a higher resolution video.
Claim(s) 9-11 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hong (US 2015/0297086), as applied to claims 1 and 2 above, in view of “Mouse models of neurodegenerative disease: preclinical imaging and neurovascular component” by S. Albanese et al. Brain Imag. Behav. 12:1160-1196, 2018 (Albanese, of record).
Regarding claims 9-11 and 19, Hong does not explicitly disclose that the animal is diseased with a neurodegenerative disease such as Parkinson’s or Huntington’s. However, Albanese teaches mouse models of neurodegenerative disease which include Parkinson’s and Huntington’s (p.1175-1183). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to apply the mouse models of Albanese to the procedure of Hong, as to provide conventionally known models of mice.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jason Ip whose telephone number is (571) 270-5387. The examiner can normally be reached Monday - Friday 9a-5p PST.
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/JASON M IP/
Primary Examiner, Art Unit 3793
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