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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of the Species of Compound VI (2,6-Pyridinedicarboxylic acid, 4-[[[(4-methylphenyl)sulfonyl]oxy]methyl]-, dimethyl ester; or Dimethyl 4-({[(4-methylphenyl)sulfonyl]oxy}methyl)-2,6-pyridinedicarboxylate), drawn to claims 1, 2, 7, 13, and 14, in the reply filed on 12 February 2026 is acknowledged.
Claims 3-6, 8-12, and 15-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species, there being no allowable generic or linking claim.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The abstract of the disclosure is objected to because it should refer to the specific claimed complexing agent (e.g., as in claim 7). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Allowable Subject Matter
Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 and 2 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Tang NPL (“Synthesis and fluorescence properties of Tb(III) complexes with pyridine-2,6-dicarboxylic acid derivatives”; J. Cent. South Univ. Technol.; 2008; 15:599-605).
Regarding independent claim 1 and claim 2, Tang NPL discloses “4-(hydroxymethyl)-pyridine-2,6-dicarboxylic acid (4-HMPDA)” (Compound 1) dimethyl ester and 4-(chloromethyl)-pyridine-2,6-dicarboxylic acid (Compound 4) dimethyl ester (p.600, Fig. 1; see also “2.2.2 Preparation of dimethyl 4-(chloromethyl) pyridine-2,6-dicarboxylate (Compound 4)”). Thus, Tang NPL anticipates A complexing agent, selected from:
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or an anion or salt thereof.
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 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.
Claims 13 and 14 are rejected under 35 U.S.C. 103 as obvious over Tang NPL as in claim 1.
Regarding claims 13 and 14, Tang NPL discloses “4-(hydroxymethyl)-pyridine-2,6-dicarboxylic acid (4-HMPDA)” (Compound 1) dimethyl ester and 4-(chloromethyl)-pyridine-2,6-dicarboxylic acid (Compound 4) dimethyl ester (p.600) as above.
However, Tang NPL is directed to testing pyridine-2,6-dicarboxylic acid derivatives for complexing with Tb(III) (Abstract), not with lanthanides.
Nevertheless, Tang NPL teaches “Pyridine-2,6-dicarboxylic acid (PDA) derivatives used as sensitizers are better than other ligands. Since lanthanide complexes with PDA derivatives are chiral, they can get more information about structure of biological molecule through measurement of circularly polarized luminescence spectra[6−7], and can be used to tag proteins in time-resolved fluoroimmunoassay (TR-FIA) successfully” (p.599, 1 Introduction).
Tang NPL’s disclosed “4-(hydroxymethyl)-pyridine-2,6-dicarboxylic acid (4-HMPDA)” dimethyl ester and 4-(chloromethyl)-pyridine-2,6-dicarboxylic acid dimethyl ester are PDA derivatives. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Tang NPL to include complexing any of Tang NPL’s PDA derivatives, such as the “4-(hydroxymethyl)-pyridine-2,6-dicarboxylic acid (4-HMPDA)” dimethyl ester and/or 4-(chloromethyl)-pyridine-2,6-dicarboxylic acid dimethyl ester, with lanthanide, with a reasonable expectation of success, in order to “get more information about structure of biological molecule through measurement of circularly polarized luminescence spectra----” and “to tag proteins in time-resolved fluoroimmunoassay,” like with other PDA derivatives, using whichever PDA compounds are readily available (thereby including:
(claim 13) A complex, comprising the complexing agent of claim 1 and a lanthanide ion, wherein the complexing agent chelates the lanthanide ion; and/or
(claim 14) A complex, comprising the complexing agent of claim 2 and a lanthanide ion, wherein the complexing agent chelates the lanthanide ion).
For example, Applicant has provided no criticality to using the claimed compounds in particular, as opposed to any other known PDA derivatives, as taught by Tang NPL.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
The NPL reference to Su (“A Dipicolinic Acid Tag for Rigid Lanthanide Tagging of Proteins and Paramagnetic NMR Spectroscopy”; J. Am. Chem. Soc.; 2008, 130, p.10486-10487) was identified in the STIC Search Report and discloses using a 4-Mercaptomethyl-dipicolinic acid for binding lanthanides. However, 4-Mercaptomethyl-dipicolinic acid is a different structure than the elected Compound VI (2,6-Pyridinedicarboxylic acid, 4-[[[(4-methylphenyl)sulfonyl]oxy]methyl]-, dimethyl ester).
The NPL reference to Gu (“A NEW FACILE SYNTHESIS OF DIMETHYL 4-(2-(2,6-BIS(METHOXYCARBONYL)PYRIDIN-4-YL)VINYL)PYRIDINE-2,6-DICARBOXYLATE”; Macedonian Journal of Chemistry and Chemical Engineering; Vol. 29, No. 2, 2010, p.165-168) discloses “dimethyl 4-(hydroxylmethyl)pyridine-2,6-dicarboxylate (HMDPA)” and “dimethyl 4-(chloromethyl)pyridine-2,6-dicarboxylate (CMDPA)” (p.166). These would be Compounds I and III in the claims. However, this reference does not appear necessary at this time.
The reference to Evangelista (4,772,563) (cited in parent Applications) anticipates non-elected Compound VIII (abstract “4,7-diphenyl-1,10-phenanthroline-2,9-dicarboxylic acid”). However, this reference does not appear necessary at this time.
The reference to Chouthaiwale (2017/0217889) discloses “Dimethyl 4-(hydroxymethyl)-pyridine 2,6-dicarboxylate”; “Dimethyl 4-(chloromethyl)pyridine 2,6-dicarboxylate”; “Dimethyl 4-(iodomethyl)pyridine 2,6-dicarboxylate”; and “Dimethyl 4-(bromomethyl)pyridine 2,6-dicarboxylate” (claim 1). These would be Compounds I, II, IV, and III in the claims. However, this reference does not appear necessary at this time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW SUE-AKO whose telephone number is (571)272-9455. The examiner can normally be reached M-F 9AM-5PM EST.
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/ANDREW SUE-AKO/Primary Examiner, Art Unit 3674
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