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 .
This office action is in response to applicant’s amendments filed on February 27, 2026. Claims 1-2,12-13,15,18-19,22-23,25-26,30,31,33 and 179-183 are pending. Claims 3-11,14,16,17,20,21,24,27-29,32 and 34-178 have been cancelled. Claims 1,13,15 and 18 have been amended. Claims 182-183 are new.
The rejection of claims 1,2,12,13,15,18,19,22,23,25,26,30,31,33 and 178-181 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of applicant’s amendments to the claims.
The rejection of claims 13,15,18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of applicant’s amendments to the claims.
Claims 1,2,12,13,15,18,19,23,25 stand rejected under 35 U.S.C. 103 as being unpatentable over Bartholomew (US 2020/0048469) for the reasons set forth below.
The rejection of claims 22 under 35 U.S.C. 103 as being unpatentable over Bartholomew (US 2020/0048469) is withdrawn.
Terminal Disclaimer
The terminal disclaimer filed on February 27, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of application 17/876349 has been reviewed and is accepted. The terminal disclaimer has been recorded. The double patenting rejection has been withdrawn.
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.
Claim 182 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 182 recites the broad recitation “aryl or heteroaryl ring”, and the claim also recites (e.g., a 5- or 6- membered ring comprising carbon atoms and 0-3 heteroatoms selected from O, S and N) which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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 1,2,12,13,15,18,19,22,23,25 and 178-183 are rejected under 35 U.S.C. 103 as being unpatentable over Bartholomew (US 2020/0048469).
Bartholomew teaches tandem dyes which are water soluble (paragraph 0099) and have absorbance maximums of 550nm to 600 nm (paragraph 0154). Bartholomew teaches the dyes of formula (I) paragraph 0032, wherein
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Y1 and Y2 can be the species attached to the B paragraph 0092 where q is 6-20, also see the figures on the right column of page 10, with q=11 or 16, in particular the last formula on the right column of page 10. q can be 11 or 16 as any value between 6-20 is taught. R2 and R7 can be substituted or unsubstituted aryl (phenyl, paragraph 0035) wherein the substituent is 2-20 polyethylene glycol units and polyethers of (CH2CH2O)pR (paragraph 0129-0131). R2 can be a WSG which can be halogen (chlorine is one of the 4 halogens; paragraph 0129) or , Z1 can be carboxylic acid, paragraph 0074, paragraph 0068, formula (VIIa). R2 can be arylene substituted with aryl or aryl substituted with cyano (paragraphs 0035, 0360). R1 can be alkyl substituted with carboxyl (paragraph 0035, 0360). R3 and R4 can make a 5- or 6-membered fused heterocycle (paragraph 0036). Substituents can be substituted aryls (paragraph 0360), allowing for alkylene with a substituted aryl group.
Bartholomew teaches compounds of paragraph 0092
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In which q is 6-20 (entirely in applicant’s 6-24 range of claim 12, wherein the R5 group can be selected from aryl, substituted aryl which embody 2 of 15 choices of R5 in paragraph 0035. Further R2 can be a halogen water solubilizing group and R3-R4 can be the claimed aryl or heteroaryl groups particularly a fused 6 membered aryl ring (paragraphs 0036, 0129).
Bartholomew also teaches compounds of paragraph 0092,
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in which the phenyl group attaches to the alkenyl group may be substituted since substituents can be substituted aryls (paragraph 0360), allowing for alkylene with a substituted aryl group and Bartholomew teaches the functional equivalence of q values of 6-20. This structure only requires only a single methyl substitution and a change from 16 to 11 OPEG groups to meet claim 18 dye the last formula in the first row. The alkenyl group substituted by phenyl and the adjacent R3 group can be substituted for a R2-R3 5-memebered ring alkyl substituted carbocycle with (paragraph 0036).
Bartholomew does not teach al the claimed embodiments in a single compound but selection from the claimed substituents allows one of ordinary skill in the art to arrive at the claimed compounds.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to select the instantly claimed dyes as Bartholomew teaches these dyes with the same base structure and selection of the claimed substituents allows for the production of water soluble dyes with the absorbance maximums in the 550 to 600 nm range for the benefit of use in a variety of biological applications particularly diagnostic kits with parameters of interest of the dyes such as excitation and emission wavelengths , stokes shifts and fluorescence quantum yield being selected by selection of the claimed substituents. These tandem dyes have the benefit of narrow emission fluorophores. Substitution of the functionally equivalent substituents listed to arrive at the claimed structures and desired water solubility and absorbance maximum can be done through routine experimentation. The dyes of Bartholomew broadly teach the claimed compounds and only require small substitutions of the exemplified structures to arrive at the claimed compounds.
Allowable Subject Matter
Claims 22,26,30,31 and 33 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. The prior art would require too much picking and choosing from substituents to arrive at these structures.
Response to Arguments
Applicant's arguments filed regarding Bartholomew have been fully considered but they are not persuasive. The examiner argues applicant’s claim 1 also includes an extremely large number of possible species. The examiner highlights the structures from Bartholomew paragraph 0092 and in the rejection shows how only one or two substitutions are needed to arrive at applicant’s dyes. Since the claimed dyes shard significant overlap with the exemplified compounds of Bartholomew and require only a few substitutions, the size of possibilities is not considered so large as to be unobvious. Bartholomew teaches overlapping chemical compounds with overlapping absorption maxima for the same utility as tandem dyes with narrow emission spectra which is also the utility of applicant. Selecting the claimed substituents to arrive at the desired absorption at 561 nm is obvious as this could be achieved through routine experimentation to produce similar tandem dyes with narrow emission spectrums. Bartholomew clearly teaches producing dyes with absorption maxima in the range of 550-600nm. Substituting a 11 PEG group for a 16 group is obvious as Bartholomew teaches PEG units where q is 6-20. Substituting an art recognized equivalent 11 PEG unit for a 16 unit is obvious as they are both taught as effective substituents in preparing the dyes. Bartholomew is not limited to the exemplified compounds but rather contains the structures that can be arrived at from selecting from the substituents disclosed.
The examiner argues that the broad disclosure of Bartholomew allows for one of ordinary skill in the art to arrive at applicant’s claimed water-soluble dipyrromethene based dyes which absorb in the green range at 561 nm. Selecting from the disclosed substituents to arrive at the claimed dyes is obvious absent a showing of unexpected results for any particular substituent or dye species. Applicant has not provided any unexpected results in the form of experimental data commensurate in scope with the claims and in comparison to the prior art of Bartholomew, therefore the claimed substituent selection is obvious.
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 AMINA S KHAN whose telephone number is (571)272-5573. 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, Angela Brown-Pettigrew can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMINA S KHAN/Primary Examiner, Art Unit 1761
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