DETAILED ACTION
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 .
The Amendment filed 11/7/2025 has been received, entered into the record, and carefully considered. The following information provided in the amendment affects the instant application by:
Claims 1, 4, 21, 23, 30, 31, and 44 have been amended.
No claims have been added.
Claims 3, 6, 7, 10, 12, 13, 19, 22, 24, 35, and 36 have been canceled.
Remarks drawn to rejections of Office Action mailed 8/12/25 include:
112 1st paragraph rejection: which have been overcome by applicant’s amendments and have been withdrawn.
112 2nd paragraph rejections: which have been overcome by applicant’s amendments and have been withdrawn.
Claim objections: which have been overcome by applicant’s amendments and have been withdrawn.
Provisional Double Patenting Rejection over 17/338,590: which has been maintained for reasons of record.
An action on the merits of claims 1-2, 4-5, 8-9, 11, 14-18, 20-21, 23, 25-34, and 37-53 is contained herein below. The text of those sections of Title 35, US Code which are not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 2, 4, 5, 8, 9, 11, 14-18, 20-21, 23, 25-27, 29-34, and 37-53 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 as amended is drawn to:
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This amendment provides some uncertainty as to whether the alternatively defined groups listed after the amended line must also have at least one of R2, R3, R6, R7, R8, R9, R10, and R11 comprising a carboxyl group. Since the compounds made comprise this carboxyl group and it appears to be necessary to function in attaching to the various nucleotides, the examiners believe this amended language:
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applies to the alternatively defined groups as well.
All claims which depend from an indefinite claim are also indefinite. Ex parte Cordova, 10 U.S.P.Q. 2d 1949, 1952 (P.T.O. Bd. App. 1989).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
The provisional rejection of claims 1-2, 4-5, 8-9, 11, 14-18, 20-21, 23, 25-34, and 37-53 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 4 of copending Application No. 17/338,590 (reference application) is maintained for reasons of record. Although the claims at issue are not identical, they are not patentably distinct from each other because the dyes used in ‘590 would anticipate the present compounds. See claim 4 of ‘590 which uses the compound
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. This species would anticipate the present compounds which also embrace the compound:
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which is claimed in claim 28 herein. It is well settled that a species anticipates a genus, and since ‘590 discloses the same compounds claimed herein, the species would anticipate the present compounds claimed. Likewise, the use of the same to label polynucleotides in ‘590 is substantially overlapping with the present methos of using the same compounds for the same purpose.
Applicant's arguments filed 11/7/2025 have been fully considered but they are not persuasive. Applicants argue that the ‘590 application and the present application are directed to patentably distinct subject matter where this application is drawn to fluorescent dye compounds and ‘590 is drawn to sequencing systems for sequencing nucleic acids. Applicants argue that the present dyes are not limited to the specific sequencing methods of ‘590. The examiner agrees with applicants in what ‘590 is drawn to and the present application is drawn to – but this does not negate the fact that ‘590 would anticipate the present claims since the compounds used therein are claimed herein as well. For example, if one application was drawn to treating headaches with aspirin, that would anticipate aspirin itself as the compound is disclosed. This is the same scenario herein – the methods of use of ‘590 use the present compounds, and thus would anticipate the same.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 TRAVISS C MCINTOSH III whose telephone number is (571)272-0657. The examiner can normally be reached Monday-Friday 9AM-5:30PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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TRAVISS C. MCINTOSH III
Primary Examiner
Art Unit 1693
/TRAVISS C MCINTOSH III/Primary Examiner, Art Unit 1693