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 .
Response to Arguments
Applicant's arguments filed 05/06/2026 have been fully considered but they are not persuasive.
-The replacement drawings filed 05/06/2026 are not acceptable because they are still of unacceptable quality. Certain words are not legible and fuzzy in A and B, and, the Reflectance images of C are of insufficient quality.
-The rejections made under 112(d) are maintained because the limitations fail to recite a further step in the method claim. While the language is further limiting in content, it does not further limit a step in the claimed method.
Drawings
The drawings are objected to because the photographs of Figures 1 and 2 are of insufficient quality. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
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 15-19 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.
Regarding claims 2, 4, 5, 8-13, and 15-19, the limitations do not recite a further step in the method.
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) 20 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, monitoring results with eyes, and making a determination that can be done in the mind.
Step 2A2: Yes, fluorescent particles and a camera
Step 2B: No, because the fluorescent particles are generically recited and the camera is recited as a generic camera being used to capture data in a conventional and routine manner.
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) 1-8 and 12-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over “Size Series of Small Indium Arsenide-Zinc Selenide Core-Shell Nanocrystals and Their Application to In Vivo Imaging” by J.P. Zimmer et al. Journal of the American Chemical Society. Vol. 128, Issue 8. Feb. 7, 2006. P.2526-2527 (Zimmer, of record) in view of “Quantum Dots for In Vivo Small-Animal Imaging” by L.A. Bentolila et al. J Nuc Med. 50 (4) p. 493-496 (Bentolila).
Regarding claim 1, Zimmer discloses a method of measuring fluorescence in an animal, the method comprising (a) injecting the animal with one or more fluorescent particles; and (b) capturing the fluorescence exhibited by the animal (p. 2526-2527, Fig. 2 – quantum dots are injected into an animal and fluorescence is captured). Zimmer does not explicitly disclose this is performed during movement of the animal. However, Bentolila teaches tracking quantum dots injected into an animal while the animal is alive (p.494: “intradermal injection in live pigs and mice, NIR QDs allowed image guidance throughout the entire procedure”). 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 live animal tracking of Bentolila to the fluorescence measuring of Zimmer, as to provide robust tracking of live animals.
Regarding claim 2, Zimmer discloses that the fluorescent particle is a quantum dot (p.2526-2527).
Regarding claim 3, Zimmer discloses that the quantum dot emits at an excitation from about 600 nm to about 1000 nm (p.2526).
Regarding claims 4 and 5, Zimmer discloses that the animal is a mammal and a mouse (p.2527: “mouse or rat).
Regarding claim 6, Zimmer discloses that the mouse is injected in at least one of the right/left paw (p.2527: “injected subcutaneously in the paw”, Fig. 2A).
Regarding claims 7 and 14-18, Zimmer discloses that a camera captures the fluorescence (p.2526: “detectors”, “imaging”).
Regarding claim 8, Zimmer discloses that the camera is a near infrared camera (p.2526: “near-infrared (NIR)”).
Regarding claims 12 and 13, Zimmer discloses that the animal is a mammal and a mouse (p.2527: “mouse or rat).
Claim(s) 9-11 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over “Size Series of Small Indium Arsenide-Zinc Selenide Core-Shell Nanocrystals and Their Application to In Vivo Imaging” by J.P. Zimmer et al. Journal of the American Chemical Society. Vol. 128, Issue 8. Feb. 7, 2006. P.2526-2527 (Zimmer, of record) in view of “Quantum Dots for In Vivo Small-Animal Imaging” by L.A. Bentolila et al. J Nuc Med. 50 (4) p. 493-496 (Bentolila), 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, neither Zimmer nor Bentolila 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 Zimmer and Bentolila, as to provide conventionally known models of mice.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
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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