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 .
DETAILED ACTION
Claims 1, 2 and 4-6 are pending in the instant application.
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 29, 2026 has been entered.
Election/Restrictions
Applicant’s election of the species of
Fluorescent dye 15, disclosed on page 28 of the instant specification (reproduced below),
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,
in the reply filed on July 11, 2025 was acknowledged in a previous Office Action. The requirement was deemed proper and therefore made FINAL in a previous Office Action.
Applicant’s claimed compound genera have a number of variables and their permutations and combinations results in a vast number of compounds that are generically claimed. Therefore, the instant claimed invention has been examined according to MPEP §803.02.
The instant claims have been examined to the extent that they are readable on the elected species of Fluorescent dye 15. Since no prior art was found on the elected species, the examination was expanded within the claimed invention until prior art was found, in which case, the examination stopped and prior art has been applied against the claims. Note, MPEP §803.02. The subject matter of the expanded search thus far, inclusive of the elected species of Fluorescent dye 15, is as follows:
a compound of instant General Formula (1) or instant General Formula (2) or instant General Formula (3),
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544
642
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536
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,
wherein
Q represents the residue of the fluorescent dye
phthalocyanine;
Y represents the metal Al (Aluminum) or Co (Cobalt);
and
all other variables are as defined.
As a result of the current amendments to the claims per the Amendment filed January 29, 2026, the search and examination has been expanded beyond that which is indicated above. The full scope of the current claims has now been searched and examined.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on February 9, 2026 was filed after the mailing date of the final Office Action on
December 16, 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Rejections made in the previous Office Action that do not appear below have been overcome by Applicant’s amendments to the claims. Therefore, arguments pertaining to these rejections will not be addressed.
As a result of the current amendments to the claims per the Amendment filed January 29, 2026, the following rejections apply.
Claim Interpretation
Independent claim 1 is directed to a fluorescent labeling agent comprising a fluorescent dye represented by General Formula (2). No other ingredient is recited in independent claim 1. Therefore, the interpretation of independent claim 1 is that the claim is directed to a compound of General Formula (2).
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 and 4-6 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.
Independent claims 1 and 5 are unclear when variables M1, M2, M3, M4, M5 and/or M6 represent a monovalent cation. No counterion is stated in claims 1 and 5 when any of these variables represent a monovalent cation. The claimed product should be neutral, not a charged radical. See claim 6 for same. Therefore, claims 1, 5 and 6 are indefinite.
Claims dependent on claims 1 and 5 which do not resolve the problem in claims 1 and 5 are also found indefinite.
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.
Claims 1, 2 and 4-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/691,445 {US 2024/0376378} (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending Application No. 18/691,445 generically claims colorants for fluorescent labeling (see claim 1), wherein the colorant for fluorescent labeling is a phthalocyanine (see claim 2), and in which the colorant for fluorescent labeling can be represented by General Formula (1),
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(see claim 3). The specification of copending Application No. 18/691,445 (pages 33-37) discloses many compounds that are embraced by its General Formula (1). The specification of copending Application No. 18/691,445 specifically discloses, for example, Colorant for fluorescent labeling 10 in [Table 1-2] on page 35,
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, which is the elected species in the instant application.
The indiscriminate selection of “some” among “many” is prima facie obvious, In re Lemin, 141 USPQ 814 (C.C.P.A. 1964). The motivation to make the claimed compounds derives from the expectation that structurally similar compounds would possess similar activity (e.g., a colorant for fluorescent labeling).
One skilled in the art would thus be motivated to prepare products embraced by the copending application to arrive at the instant claimed products with the expectation of obtaining additional beneficial products which would be useful as a colorant for fluorescent labeling. The instant claimed invention would have been suggested to one skilled in the art and therefore, the instant claimed invention would have been obvious to one skilled in the art.
The instant application and copending Application No. 18/691,445 share at least one common inventor {i.e., Ryutaro Yamamoto}. Further, the instant application and copending Application No. 18/691,445 are not related to each other and thus, no 35 USC 121 shield exists here. See MPEP 804.01. Therefore, the claims in copending Application No. 18/691,445 render obvious the instant claimed invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments filed January 29, 2026 have been fully considered. Applicant again argues that the provisional nonstatutory double patenting rejection should be withdrawn based on the earlier effective filing date of the instant application and after overcoming the other remaining rejections.
In response, the provisional nonstatutory double patenting rejection is not the only remaining rejection in the instant application. See below anticipation rejection. Therefore, the provisional nonstatutory double patenting rejection is 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 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.
Claims 1, 2, 4 and 5 are rejected under
35 U.S.C. 102(a)(1) as being anticipated by Tamano et al. {JP 05-124354 A}. A machine generated English translation of the JP document has been provided with this Office Action.
Tamano et al. disclose, for instance, Phthalocyanine Compound [D] in paragraph [0025] on pages 4-5 of the English translation,
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{ a compound of instant General Formula (2) or instant General Formula (3),
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,
wherein
X1, X2, X4, X5, X6, X8, X9, X10, X12, X13, X14 and X16 each represents a
hydrogen atom;
X3, X7, X11 and X15 each represents unsubstituted alkyl (i.e., t-butyl);
X17 represents -Z-R1-R2-R3;
Z represents a direct bond;
R1 represents -OC(=O)-;
R2 represents a substituted alkylene group
(i.e., methylene substituted with oxo);
R3 represents -NR7R8
where R7 represents unsubstituted alkyl group (i.e., ethyl), and
R8 represents unsubstituted alkyl group (i.e., ethyl);
Y represents the trivalent metal Gallium; and
k represents 1}.
Tamano et al. disclose at least one phthalocyanine dye containing compound that is embraced by the instant currently amended claimed invention as shown above. Therefore, Tamano et al. anticipate the instant currently amended claimed invention.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to:
Laura L. Stockton
(571) 272-0710.
The examiner can normally be reached on Monday-Friday from 8:30 am to 6 pm, Eastern Standard Time.
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 acting supervisor,
James Alstrum-Acevedo can be reached on 571/272-0699. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LAURA L STOCKTON/ Primary Examiner, Art Unit 1626 Work Group 1620
Technology Center 1600
February 10, 2026
Book XXVIII, page 221