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 .
CONTINUING DATA
This application is a 371 of PCT/CN2021/125262 10/21/2021
FOREIGN APPLICATIONS
CHINA 202011134947.3 10/21/2020
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 12, 2026 has been entered.
Claims 1, 4-5, 8, 11-14, 17, 20-25, and 27-29 are pending.
Claims 8 and 11-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on October 13, 2025.
The rejection of claims 24-25 under 35 U.S.C. 112(b) is withdrawn because the indefinite language was removed from the claims.
The rejection of claim(s) 1, 13, and 20-23 under 35 U.S.C. 102(a)(1) as being anticipated by Yagodkin is withdrawn because N3 was removed from the definition of R10a, R10b, and R10c. The rejection of claim(s) 5, 16-17, 24-26 and 29 under 35 U.S.C. 103 as being unpatentable over Yagodkin in view of Canard and Graham is withdrawn for the same reason.
The rejection of claim(s) 1, 4-5, 13-14, 16-17, and 20-23, 27-29 under 35 U.S.C. 103 as being unpatentable over Canard in view of Wada is withdrawn because N3 was removed from the definition of R10a, R10b, and R10c. The rejection of claim(s) 24-26 and 29 under 35 U.S.C. 103 as being unpatentable over Canard in view of Wada and further in view of Graham is withdrawn for the same reason.
The following new rejections are made because the examiner has reconsidered the interpretation of Base to include substituted bases.
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)(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) 1, 5, 13-14, 20-22, 24-25, and 27-29 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Xun (US 2024/0209439 A1, priority date April 1, 2021). The priority application in the Xun patent application (CN 202110355785.4) provides support for the disclosure of Xun in the table starting on page 51 of the priority application.
The applied reference has a common inventor and assignee with the instant application. This reference names other inventors, Ming Wang and Shaoquio Zhang. 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.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Xun teaches compounds such as the following on page 513:
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This is a compound of formula (A) where R is the first group listed, X is O, m2 is 0, R9 is the moiety recited in the current claims and R5-R8 are H. One of R10a, R10b, and R10c is -SS-C1 alkyl and the other two are methyl and hydrogen. R’ is triphosphate and Z is O. The compound contains a detectable label, which is the last compound listed in claim 25, and which is linked via a linker which is cleavable. A kit comprising the compound and optionally second, third, and fourth compounds is disclosed [0337]. The kit further comprises a reagent for pretreating the nucleic acid moiety (claim 21).
Base is a base. The broadest reasonable interpretation of “Base” includes substituted bases. The current specification does not define Base otherwise, and the current specification provides examples of compounds having a substituted base.
Double Patenting
Claims 1, 5, 13-14, 20-22, 24-25, and 27-29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of copending Application No. 18/284,054 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application claims compounds such as the following on page 130 of the claims:
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This is a compound of formula (A) where R is the first group listed, X is O, m2 is 0, R9 is the moiety recited in the current claims and R5-R8 are H. One of R10a, R10b, and R10c is -SS-C1 alkyl and the other two are methyl and hydrogen. R’ is triphosphate and Z is O. The compound contains a detectable label, which is the last compound listed in claim 25, and which is linked via a linker which is cleavable. A kit comprising the compound and optionally second, third, and fourth compounds is claimed (claim 20). The kit further comprises a reagent for pretreating the nucleic acid moiety (claim 21). The reference claims anticipate the current claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1, 5, 13-14, 20-22, 24-25, and 27-29 are rejected. Claims 4, 17, 23 are objected to as depending from a rejected base claim.
Claim 8 is withdrawn from consideration. In the interest of compact prosecution, the examiner notes that claim 8 appears to require only a monitoring step and a detecting step, which are mental processes. Claim 8 as written would likely be rejected under 101 if it is later rejoined and examined on the merits.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAYLA D BERRY whose telephone number is (571)272-9572. The examiner can normally be reached 7:00-3:00 CST, M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAYLA D BERRY/ Primary Examiner, Art Unit 1693
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