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 .
Election/Restrictions
A first Requirement for Restriction/Election was mailed on 11/26/2024.
Applicant’s election of Group II (method of sequencing claims 147-158) and species in the reply filed on 03/26/2025 was acknowledged and a second Requirement for Restriction/Election was mailed on 08/22/2025
In their response, filed on 11/20/2025, applicant has canceled claims 139-158, and added new claims 159-178 which are consonant with Group I as listed in the first Restriction requirement mailed on 11/26/2024.
Because an Office action on the merits has not been made on the elected invention, and while applicant, as a matter of right, may not shift from claiming one invention to claiming another, the examiner is not precluded from permitting a shift. The examiner is most likely to do so where the shift results in no additional burden, and particularly where the shift reduces work by simplifying the issues (MPEP § 819).
Therefore, Applicant’s election of Group I drawn to a nucleotide analogue, now claims 159-178 and species in the reply filed on 11/20/2025 was acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
No prior art was found for the elected species. The examination has been extended to nucleotides wherein the label can comprise both an anchor and a dye linked to each other consecutively.
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) 159-160 and 170 is/are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Ju et al. US 20180274024.
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
With regards to claim 159, Ju et al. discloses a nucleotide having a structure similar to the instant nucleotide comprising a BASE linked to a label that can comprise both an anchor and a dye. Said label is linked to the BASE via a cleavable linker. Ju et al. discloses a nucleotide comprising a 3’-O blocking group of formula 3’O-CH2-SS-R, where R can be t-butyl (see for example Figures 1B, 2, 3A-3C, 7).
With regards to claim 160, Ju et al. discloses that the BASE can be thymine [0167]. And that the label can comprise a cluster of dye, including Cy5 and TCO (see Figures 9A-10).
With regards to claim 170, Ju et al. discloses “the detectable label is a fluorescent dye capable of exchanging energy with another fluorescent dye (e.g., fluorescence resonance energy transfer (FRET) chromophores)” [0110]. This is viewed as “wherein the nucleotide analogue binds to a quencher”.
Claims 161-169, 171-178 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEZIA RILEY whose telephone number is (571)272-0786. The examiner can normally be reached 7:30-6:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gary Benzion can be reached at 571-272-0782. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEZIA RILEY/ Primary Examiner, Art Unit 1681 12 December 2025
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