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 .
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 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) 20 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 20, the claim recites, “to determine if the animal suffers from a neurodegenerative disorder”. The Specification describes this step in a generic and prospective way and thus it is unclear as to whether the Applicant had possession of the claimed invention at the time of filing.
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 § 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) 1-8 and 12-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “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).
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).
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 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) 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), 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).
Regarding claims 9-11 and 19, Zimmer 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 Zimmer, 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