DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 15 April 2026 has been entered.
This Office Action is in response to Applicant’s Amendment and Remarks filed on 16 March 2026 in which claim 15 was canceled, claims 1, 2, 6, 8, 11, 12, 16, 17, 19 and 20 were amended to change the scope and breadth of the claims, and claim 21 was newly added.
Claims 1-6, 8-14 and 16-21 are pending in the current application and are examined on the merits herein.
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 .
Withdrawn Rejections
Applicant’s amendment, filed 16 March 2026, with respect to the rejections of claims 17 and 18 under 35 U.S.C. § 102(a)(1)/(a)(2), as being anticipated by Braun et al., has been fully considered and is persuasive because claim 17 has been amended to recite “wherein the tetrapyrrole serves as …a chromophore”. While Braun et al. teach porphyrin, which is a tetrapyrrole, Braun et al. do not expressly teach a porphyrin which also functions as a chromophore. While porphyrins can also function as a chromophore, not all porphyrins necessarily function as a chromophore. The rejection is hereby withdrawn.
Applicant’s amendment, filed 16 March 2026, with respect to the rejection of claims 1, 3, 6, 9, 11 and 15 under 35 U.S.C. § 103 as being unpatentable over Krayer et al. in view of Chatelain et al.; claims 10 and 14 under 35 U.S.C. § 103 as being unpatentable over Krayer et al. in view of Chatelain et al. and further in view of Yurke et al.; the rejection of claims 4, 5 and 15 under 35 U.S.C. § 103 as being unpatentable over Krayer et al. in view of Chatelain et al., and further in view of Dogutan et al.; the rejection of claim 16 under 35 U.S.C. § 103 as being unpatentable over Krayer et al. in view of Chatelain et al., and further in view of Lindsey et al., has been fully considered and is persuasive.
Claim 1 has been amended to recite:
attaching a first dipyrrole to a first nucleic acid strand;
attaching a second dipyrrole to a second nucleic acid strand;
combining the first and second nucleic acid strands in an aqueous solution, wherein the first and second nucleic acid strands are either (i) complementary strands that hybridize to form a duplex or (ii) non-complementary strands that assemble into a higher order DNA nanostructure; and
catalyzing a coupling reaction between the first and second dipyrroles using a water-compatible catalyst to form a dye molecule covalently linked to the first and second nucleic acid strands as molecular scaffolds, wherein the coupling reaction is regioselective due to the proximity of the first and second tetrapyrrole dipyrroles provided by the first and second nucleic acid strands.
While Krayer et al. teach the self-condensation of dihydropyrrin-acetal which can form a 5-unsubstituted bacteriochlorin, a 5-methoxybacteriochlorin, and tetrahydrocorrin, none of the references of record teach, suggest or provide motivation to attach a first dipyrrole to a first nucleic acid strand, attach a second dipyrrole to a second nucleic acid strain, and catalyzing a coupling reaction between the first and second dipyrroles…to form a dye molecule covalently linking the first and second nucleic acid strands, wherein the coupling reaction is regioselective due to the proximity of the first and second dipyrroles provided by the first and second nucleic acid strands.
The rejections are hereby withdrawn.
New & Modified Objections & Rejections
The following are new ground(s) or modified rejections. Therefore, rejections from the previous Office Action, dated 16 March 2026, have been modified and are listed below.
Claim Objections
Claim 1 is objected to because of the following informalities: The recitation “catalyzing a coupling reaction between the first and second dipyrroles using a water-compatible catalyst to form a dye molecule covalently linked to the first and second nucleic acid strands as molecular scaffolds” could be clearer with the recitation “covalently linking the first and second nucleic acid strands . Appropriate correction is required.
Claim 2 refers to claim 21. This is improper, because they must refer to a preceding claim. See MPEP 608.01(n)(B)(2), claims must refer to a preceding claim, which is in accordance with 37 CFR 1.75(c).
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 1-6, 8-14, 16 and 21 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.
The recitation “wherein the coupling reaction is regioselective due to the proximity of the first and second tetrapyrrole dipyrroles” in claim 1, render the claims herein indefinite. The recitation “tetrapyrrole dipyrroles” refer to two distinct structures, and it is not clear whether the claim is referring to the starting materials or the product.
The recitation “The method of claim 3 wherein said solution further comprises a metal salt that is an acetate, halide, or triflate selected from the group consisting of: Zn…and Cd” in claim 3, renders the claim herein indefinite. The list of alternatives “Zn…and Cd” are not metal salts, but rather the metal of a metal salt. The rejection could be overcome by amending the claim to say “further comprises a metal salt that is an acetate, halide or triflate of a metal selected from the group consisting of: Zn…and Cd”.
The recitation “further comprising coupling of two identical dihydrodipyrrins to afford a symmetric bacteriochlorin product” is present claim 6 and the limitation “The method of claim 6 further comprising modifying the complementary nucleic acid strands with the dihydrodipyrrins and a modifier…” in claim 8, renders the claims herein indefinite. It’s unclear when the steps recited in claims 6 and 8 occur, relative to the steps outlined in claim 1.Since dihydrodipyrrins are a type of dipyrrole, it is unclear if the identical dihydrodipyrrins are the first and second dipyrroles, or if they are two additional dipyrroles.
The recitation “repeating the synthesizing and tethering steps” in claim 12 renders the claim herein indefinite. None of the claims from which claim 12 depends clearly sets forth “synthesizing and tethering steps”. Thus, it is not clear what these steps reference or further limit.
The recitation “wherein the DNA Holliday junction is subjected to a coupling reaction in a presence of a water-compatible Lewis acid” in claim 19 renders the claim herein indefinite. It is unclear if this is intended to be a product-by-process limitation to describe how the Holliday junction is formed, or if it’s an intended use of the network of dry crosslinks.
Claim Rejections: 17-20 A dye crosslink; A network of dye crosslinks
Response to Arguments
Applicant's arguments filed 16 March 2026 have been fully considered but they are not persuasive.
With respect to the rejections under 35 U.S.C. §102(a)(1)/(a)(2), Applicant contends Chatelain et al. do not disclose the porphyrin functions as a crosslink and a dye/chromophore. “In Chatelain et al., the porphyrins are tethered to individual strands and the network forms through hybridization” (see p.9 of Remarks). Applicant further argues that Chatelain does not disclose “coupling tetrapyrrole fragments to form a complete macrocycle”. Applicant argues the porphyrins of Chatelain et al. are pre-formed, and not fragments coupled together.
The above arguments are not found persuasive, because the present claims are product claims, and the method by which they were prepared does not result in a different structure than the prior art.
Furthermore, it is not necessary for Chatelain et al. to recognize the function of the porphyrins, so long as they are structurally the same. It is noted not all porphyrins can function as a chromophore. However, in this case, Chatelain et al. teach the porphyrins function as chromophores.
The term “crosslink” is broadly and reasonably interpreted to include an atom/molecule that connects one long molecular chain with another. In this case, the porphyrin of Chatelain functions as a crosslink because it allows for one DNA strand to be connected with another (as shown in Scheme 1, described in the rejection).
See MPEP 2113, “"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”.
The rejections are hereby maintained.
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.
(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) 17 and 18 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Chatelain et al. (Organic & Biomolecular Chemistry, 2017, vol. 15, pp. 6257-6263, cited in previous Office Action).
Chatelain et al. disclose the self-assembly of porphyrin-DNA hybrids into large flat nanostructures (title). Organic molecules can be introduced into ssDNA during its synthesis or conjugated afterward with functional DNA (p.6257, first para):
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(see scheme 1). The combination of DNA with organic chromophores and in particular porphyrins has been extensively reported for light harvesting purposes and FRET experiments (p.6257, second para). Chatelain et al. teach preparing a DNA nanostructure from two adducts that have complementary strands ( see figure 4). Figure 4 shows a DNA nanostructure having at least two tetrapyrrole adducts:
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504
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.
Chatelain et al. disclose a dye “crosslink” comprising tetrapyrrole, and a nucleic acid strand covalently tethered to each of the tetrapyrrole fragments. Furthermore, the porphyrins are bridged by a “methylene unit”.
Chatelain et al. also disclose a network of dye crosslinks comprising a high order DNA nanostructure comprising oligonucleotides; and at least two tetrapyrroles comprising interstrand and intrastrand dye crosslinks.
The structure of the product disclosed by Chatelain et al. is the same as the structure of the present claims. Thus, the product of Chatelain et al. anticipates claims 17 and 18, regardless of how they were prepared.
See MPEP 2113, “"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”.
Thus, the disclosure of Chatelain et al. anticipates claims 17 and 18 of the present application.
Response to Arguments
Applicant's arguments filed 16 March 2026 have been fully considered but they are not persuasive.
With respect to the rejections under 35 U.S.C. §103, Applicant’s arguments are directed towards the amendment to claim 17, and where claim 19 is directed to a Holliday junction.
Yurke et al. teach forming a Holliday junction, as discussed in the modified rejection below.
With respect to Applicant’s arguments against claim 17, the arguments are not found persuasive. The prior art recognize the porphyrin function as a chromophore. The claim requiring they function as a crosslink does not alter the chemical structure of the product formed or distinguish the structure from the prior art. The present claims are product claims, wherein the process by which they are formed do not necessarily have patentable weight if they do not result in a different structure. Applicant has not provided any explanation for how the structures of the prior art differ from the structure of the present claims.
The rejections are hereby maintained.
Claim(s) 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Yurke et al. (US Patent Application Publication No. 2019/0048036, cited in previous Office Action) in view of Chatelain et al. (cited above) and further in view of Kang et al. (Journal of Physical Chemistry, 2016, vol. 120, pp. 379-395, cited in previous Office Action).
Yurke et al. teach the preparation of DNA nanostructures to contain chromophores which can be used for quantum computing (abstract, title). An exciton may transfer from one chromophore to another without the loss of energy when they are nano-spaced apart (para [0005]). The chromophores are attached to a nucleotide architecture to make exciton wires (para [0015]). Yurke et al. teach an exciton wire composition for quantum computing comprising at least two chromophores; and at least one nucleotide oligomer, wherein said at least two chromophores is bound to said at least one nucleotide oligomer (claim 1). The at least one nucleotide oligomer is one or more of RNA, DNA, LNA, PNA and/or UNA (claim 4). The nucleotide oligomer self-assembles (claim 6). Yurke et al. also teach a nucleotide brick molecular canvas for quantum computing comprising at least one nucleotide brick; and at least two chromophores (claim 10). The chromophore is covalently bound to the bricks, or covalently bound to a linker nucleotide oligomer (claims 16 and 17). Chromophores are difficult to arrange in the required configuration (para [0012]). Attaching a chromophore to a nucleotide architecture allows the chromophores to be spaced close enough to allow an exciton to be transferred from one chromophore to another without energy loss (para [0014]). The nucleotide architecture can be linear, 2D or 3D (para [0017]). The nucleotide can be double stranded. Nucleotide nanotechnology is advantageous because Watson-Crick pairing allows nucleotides to self-assemble into final and predictable nanostructures (para [0046]). Any method can be used including nucleotide scaffolds (para [0047]). Any chromophore that emits an exciton when excited can be used (para [0061]). Yurke et al. teach the orientation of the two or more chromophore dipoles effect the absorbance and emission spectra (para [0066]). When the dipoles are parallel an “H-dimer” forms, due to having a higher excited energy state, compared to the monomer. When the dipoles are in a head-to-head orientation, a “J-dimer” forms, due to having a lower excited energy state compared to the monomer. When the dipoles are at an oblique angle, a mixed “J/H-dimer forms, and has a higher and lower excited energy state”. The absorbance and emission spectra for two or more chromophores bound to a nucleotide architecture can be fine-tuned depending on the dimer type (para [0069]). Yurke et al. teach preparing a Holliday junction, having chromophores bonded to an immobile four-arm junction (example 4). The rigid architecture securely fixes the chromophore in place, thereby stabilizing it. Yurke et al. teach one skilled in the art could select either a rigid or flexible system, or a combination thereof, to better form quantum wires and circuits of the desired shapes and absorbance spectra.
While Yurke et al. teach any dye can be used as a chromophore, Yurke et al. do not expressly disclose a dye comprising a tetrapyrrole fragment (claims 17 and 18). Yurke et al. do not expressly disclose the tetrapyrrole comprises bacteriochlorin (claims 19 and 20).
Chatelain et al. teach as discussed above.
Kang et al. teach preparing dyads having two identical hydroporphyrins (chlorin or bacteriochlorin) connected by a linker (abstract). The structures allowed for strong electronic communication between constituent chromophores, making them potentially useful in solar-energy conversion and photomedicine (abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute a dye of Yurke et al. with a porphyrin, because Yurke et al. teach any dye material can be used as a chromophore in the formation of a DNA nanostructure useful as a wire for quantum computing, and porphyrins are taught and recognized by Chatelain et al. as an alternative chromophore that can be strategically assembled into DNA nanostructures for light harvesting purposes and FRET experiments. See MPEP 2144.06 (II), Substituting equivalents known for the same purpose.
Furthermore, it would have been obvious to use bacteriochlorin as a reduced form of porphyrin, because Kang et al. prepared 3D structures having two linked bacteriochlorin, and found the structures allowed for strong electronic communication between constituent chromophores, making them potentially useful in solar-energy conversion and photomedicine.
With respect to the orientation of the chromophores, the ordinary artisan would have known from the teaching of Yurke et al., that the chromophores can be parallel to each other, which results in a higher excited energy state when compared to the monomers alone. Furthermore, the ordinary artisan would have been motivated to orient them as a Holliday junction, because it provides a rigid system stabilizing the chromophore in place.
The ordinary artisan would have had a reasonable expectation of success because Chatelain et al. exemplify preparing a high order DNA nanostructure having covalent attachments to tetrapyrroles.
The recitation “wherein the DNA Holliday junction is subjected to a coupling reaction in a presence of a water-compatible Lewis acid” in claim 19 is a product-by-process limitation or an intended use, neither of which has patentable weight.
See MPEP 2113, “"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”.
Thus, the claimed invention as a whole is prima facie obvious over the combined teaching of the prior art.
Conclusion
In view of the rejections to the pending claims set forth above, no claim is allowed.
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/BAHAR CRAIGO/
Primary Examiner
Art Unit 1699
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