DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
2. Claims 1-8, 10, 15, 18-22, 26, 33, 35-37 are currently pending. Claims 1-8, 10, 15, 18 have been elected without traverse in the response filed on 09/23/2025. Claims 1-8, 10, 15 and 18 are currently under examination. This office action is the first office action on the merits of the claims.
Election/Restrictions
3. Applicant’s election without traverse of Group I in the reply filed on 09/23/2025 is acknowledged.
Claims 19-22, 26, 33, 35-37 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/23/2025.
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.
4. Claim 6, 10 and 18 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.
Concerning claim 6 the claim recites wherein Z is a bond or -CH2- which renders the claim indefinite as it is not clear if the indication of CH2 means the specific formula of CH2 or if this can be independently optionally substituted with 1 or 2 CH3 groups as indicated in claim 1 from which the claim depends.
Concerning claim 10 The claim recites “an azido compound (R-N3)” which renders the claim indefinite as it is not clear if the indication in parenthesis is a required structure or is merely an example. Moreover The use of the R group is not clear as R is only defined in a optional rule so it is not clue what the broadest the non optional structure of R is.
Moreover the claim in second B indicates THPTA , TBTA and BTTES followed by chemical structures in parenthesis which renders the claim indefinite as it is not clear if the indicated ligands are defined by the chemical structure in parenthesi or if this is just examples of possible ligands that fit within the structure. As such it is not clear what is being referred to by the THPTA , TBTA and BTTES.
Concerning claim 18 the claim recites “TAMRA-N3” which renders the claim indefinite as it is not clear what TAMRA is, as it is not defined in the claims.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
5. Claim 8 and 15 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 8 recites specific compounds of claim which or a salt solvate stereoisomer tautomer or any mixtures thereof. However claim 1 from which claim 8 depends does not indicate a stereoisomer or tautomer of the general chemical compound. As such the indication of stereoisomers and tautomers of the compounds indicates compounds which were not recited in claim 1 and as such claim 8 impermissibly broadens the compound of claim 1 from which claim 8 depends. Concerning claim 15 the claim recites “the chromophore of fluorogenic molecule is covalently linked to an oligonucleotide or poly nucleotide “ which refers to an optional limitation of claim 10 from which it depends. As such altering this optional limitation does not alter the scope of the claim 10 from which it depends as the required scope of the azido compound is still just that it be an azido compound. As such Claim 15 does not alter the scope of claim 10 from which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
6. Claim(s) 1-4, 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heller (US 2014/0088192 A1; listed on the IDS filed on 06/24/2022).
Concerning claim 1 Heller teaches a compound of (paragraph 0023)
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Where each of R5 and R6 is independently selected from H C1-6 alkyl C2-6 alkenyl, C2-6 alkynyl, C2-6 heterocyclyl C6-12 aryl C7-14 alkaryl C3-140 alkheterocylcyl and C1-7 heteroalkyl. In the event that one of R5 or R6 is a C2 or C4-C6 alkynyl and the other is selected from H, C1-6 alkyl, C2-6 alkynyl or C6-10aryl then the compound would correspond to the claimed compound of formula (I) where X is C(=O)NH, C(=O)N(C6-10 aryl), C(=O)N(C2-10 alkenyl or C(=O)N(C1-10alkyl), m1 is 0 and m2 is 0 or 2-4.
Heller does not specifically teach that the compound has the claimed structure of formula I.
It would have been obvious to one of ordinary skill in the art at the time of filling to provide a compound having the claimed structure because Heller teaches a compound that has a structure which overlaps with the claimed structure and so it would be obvious to use the indicated groups for R5 and R6 in combination with one another because Heller teaches that the R5 and R6 groups can independently be groups that provide the claimed structure.
Concerning claim 2 Heller teaches a compound of (paragraph 0023)
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Where each of R5 and R6 is independently selected from H C1-6 alkyl C2-6 alkenyl, C2-6 alkynyl, C2-6 heterocyclyl C6-12 aryl C7-14 alkaryl C3-140 alkheterocylcyl and C1-7 heteroalkyl. In the event that one of R5 or R6 is a C2 or C4-C6 alkynyl and the other is selected from H, or C1 alkyl then the compound would correspond to the claimed compound of formula (I) where X is C(=O)NH or C(=O)N(CH3), m1 is 0 and m2 is 0 or 2-4.
Heller does not specifically teach that the compound has the claimed structure of formula I.
It would have been obvious to one of ordinary skill in the art at the time of filling to provide a compound having the claimed structure because Heller teaches a compound that has a structure which overlaps with the claimed structure and so it would be obvious to use the indicated groups for R5 and R6 in combination with one another because Heller teaches that the R5 and R6 groups can independently be groups that provide the claimed structure.
Concerning claim 3 Heller teaches the compound of claim 1 as is stated above. The claim as is currently drafted does not require that Y is present in the formula of the compound. As such the limitation of claim 3 is interpreted such that if y is present at least one Y must have one of the indicated formulas. However since Y is not present in the compound of Heller, m1 for the compound of heller will be zero and the formula of the compound of Heller will meet the claimed limitations.
Concerning claim 4 Heller teaches a compound of (paragraph 0023)
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Where each of R5 and R6 is independently selected from H C1-6 alkyl C2-6 alkenyl, C2-6 alkynyl, C2-6 heterocyclyl C6-12 aryl C7-14 alkaryl C3-140 alkheterocylcyl and C1-7 heteroalkyl. In the event that one of R5 or R6 is a C2 or C4-C6 alkynyl and the other is selected from H then the compound would correspond to the claimed compound of formula (I) where X is C(=O)NH, m1 is 0 and m2 is 0 or 2-4. This would result in the L of the formula having the claimed structure.
Heller does not specifically teach that the compound has the claimed structure of formula I.
It would have been obvious to one of ordinary skill in the art at the time of filling to provide a compound having the claimed structure because Heller teaches a compound that has a structure which overlaps with the claimed structure and so it would be obvious to use the indicated groups for R5 and R6 in combination with one another because Heller teaches that the R5 and R6 groups can independently be groups that provide the claimed structure.
Concerning claim 6 Heller teaches a compound of (paragraph 0023)
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Where each of R5 and R6 is independently selected from H C1-6 alkyl C2-6 alkenyl, C2-6 alkynyl, C2-6 heterocyclyl C6-12 aryl C7-14 alkaryl C3-140 alkheterocylcyl and C1-7 heteroalkyl. In the event that one of R5 or R6 is a C2 alkynyl and the other is selected from H, C1-6 alkyl, C2-6 alkynyl or C6-10aryl then the compound would correspond to the claimed compound of formula (I) where X is C(=O)NH, C(=O)N(C6-10 aryl), C(=O)N(C2-10 alkenyl or C(=O)N(C1-10alkyl), Z is a bond,m1 is 0 and m2 is 0 or 2-4.
Heller does not specifically teach that the compound has the claimed structure of formula I.
It would have been obvious to one of ordinary skill in the art at the time of filling to provide a compound having the claimed structure because Heller teaches a compound that has a structure which overlaps with the claimed structure and so it would be obvious to use the indicated groups for R5 and R6 in combination with one another because Heller teaches that the R5 and R6 groups can independently be groups that provide the claimed structure.
Allowable Subject Matter
7. Claims 5, and 7 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.
Claims 8, 10, 15, 18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: None of the prior art of record fairly teach or suggest the particularly claimed compound structure of the composition including the compound a copper (II)salt a copper (I) ligand and an azido compound. .
Conclusion
8. Claims 1-4, 6, 8, 15 and 18 are rejected. Claims 5, 7-8, 10, 15 are allowable over the prior art of record but claims 5 and 7 are objected to as being dependent from a rejected base claim and claims 8, 10 15,and 18 are rejected over 112.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID L MILLER whose telephone number is (571)270-1297. The examiner can normally be reached M-F 9:30-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID L MILLER/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763