DETAILED ACTION
Response to Amendment
The Amendment filed 9 July 2026 has been entered. Claims 1, 7, 13, 19 remain pending in the application. Claims 3, 8, 10-12, 15-17, and 20-23 are withdrawn as being drawn to non-elected Species. The Non-Final Office Action was mailed 28 April 2026.
Specification
The abstract of the disclosure is objected to because it should include the structure(s) of the specific claimed complexing agent(s). 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
Claims 7 and 19 are 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 § 102/103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 13 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Evangelista (4,772,563) (cited previously in Conclusion).
Regarding independent claim 1, Evangelista discloses “1,10-phenanthroline-2,9-dicarboxylic acid and novel derivatives thereof such as 4,7-diphenyl-1,10-phenanthroline-2,9-dicarboxylic acid and 4,5,9,14-tetraaza-(1,2,3,4)-dibenzanthracene-3,5-dicarboxylic acid can be coupled to proteins through coupling groups to form conjugates which form highly fluorescent chelates in the presence of lanthanide salts” (abstract) wherein “one preferred class of compounds in accordance with the invention comprises 1,10-phenanthroline-2,9-dicarboxylic acid compounds selected from the group consisting of compounds of the formula
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wherein each X is the same or different and is --SO3- M+, a functional group which couples covalently with proteins, a group readily convertible to such functional group, or is
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wherein X is a functional group which couples covalently with protein or a group readily convertible to such functional group, and trihalomethyl forms salts, esters and acid halides thereof which are readily hydrolyzed to form the acid of formula (II)” (Col. 4, lines 26-58). Evangelista further depicts “The bis-diazonium and bis-isothocyanato derivatives of DPPDA can be prepared through nitration of DPPDA to form dinitro DPPDA, hydrogenation of the dinitro DPPDA to diamino DPPDA and then diazotization of the diamino DPPDA with nitrous acid or reaction with thiophosgene to form the diazonium compound or the isothiocyanato compound, in accordance with the following reaction scheme” (Col. 18, lines 12-19) which depicts dinitro DPPDA and diamino DPPDA to be, respectively:
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.
Although Evangelista does not depict which structure(s) (ortho-, para-, or meta- products) are formed, the nitration (and subsequent hydrogenation of the dinitro to diamino) presumably form at least some quantity of the para- products, because alkyl group substituents on an aromatic ring tend to favor ortho- and para- products over meta- products. Accordingly, Evangelista inherently or implicitly discloses the para- product of dinitro DPPDA and diamino DPPDA, i.e. A complexing agent, selected from: …
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,
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, …
or an anion or salt thereof.
Evangelista further discloses “For example, the preferred sulfonyl chloride derivative of DPPDA hydrolyzes in the presence of water to yield DPPDA disulfonate which in the presence of europium ions forms a chelate” (Col. 7, line 66-Col. 8, line 2). As above, although Evangelista does not state that this includes the para- products, Evangelista presumably discloses this form specifically because alkyl group substituents on an aromatic ring tend to favor ortho- and para- products over meta- products. Accordingly, Evangelista also inherently or implicitly discloses the para- product of disulfonate DPPDA, i.e. A complexing agent, selected from: …
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… or an anion or salt thereof.
Alternatively, even if it were somehow found that Evangelista fails to disclose the para- products of the above dinitro DPPDA, diamino DPPDA, or disulfonate DPPDA, 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 Evangelista to include para-dinitro DPPDA, para-diamino DPPDA, and/or para-disulfonate DPPDA, with a reasonable expectation of success, in order to provide a specific derivative of 1,10-phenanthroline-2,9-dicarboxylic acid which would be expected to be capable of being “coupled to proteins through coupling groups to form conjugates which form highly fluorescent chelates in the presence of lanthanide salts” and which has “a group readily convertible to such functional group.”
Regarding claim 13, Evangelista discloses “one preferred class of markers in accordance with the invention comprises derivatives of 1,10-phenanthroline-2,9-dicarboxylic acid (i.e. PDCA, the compound of formula (II) in which X is H). We have found that PDCA is a ligand which forms chelates with lanthanides, for example trivalent europium salts, which are highly fluorescent in aqueous solution without requiring the use of any Lewis base synergist. Without wishing to be bound by any theory, it is suggested that the phenanthroline diacid compounds function as tetradentate ligands with lanthanides such as europium, terbium and samarium” (Col. 9, lines 9-20). Accordingly, Evangelista discloses A complex, comprising the complexing agent of claim 1 and a lanthanide ion, wherein the complexing agent chelates the lanthanide ion.
Alternatively, even if it were somehow found that Evangelista fails to disclose complexing the para- products of the dinitro DPPDA, diamino DPPDA, or disulfonate DPPDA with a lanthanide ion, 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 Evangelista to include para-dinitro DPPDA, para-diamino DPPDA, and/or para-disulfonate DPPDA complexed with a lanthanide ion, with a reasonable expectation of success, in order to provide specific “derivatives of 1,10-phenanthroline-2,9-dicarboxylic acid” which would be expected to be capable of being “coupled to proteins through coupling groups to form conjugates which form highly fluorescent chelates in the presence of lanthanide salts.” For example, based on Evangelista’s disclosure, the critical structure for chelating with lanthanides is the PDCA base structure, and thus the additional structures on the derivatives would not be expected to interfere with such chelation.
Response to Arguments
Applicant’s arguments filed 9 July 2026 with respect to claims rejected under 35 USC § 102 over Tang NPL have been fully considered and are persuasive based on the Amendments. Therefore, the rejection has been withdrawn. However, based on Applicant’s Amendment to the claims, a new ground(s) of rejection is made over Evangelista, and the arguments do not apply to the combination being used in the current rejection.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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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