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 .
Interview Summary, Amendments, Election/Restrictions, and Status of the Claims
2. This action is in response to papers filed 23 June 2026 in which claims 27-30 were canceled, and new claims 44-47were added.
3. It is noted that Applicant’s response filed 23 June 2026 contains two sets of claims: one properly marking claims 44-47 and “new,” and the other copy erroneously labeling claims 44-47 as “previously presented.” Applicant has also submitted an additional copy of the specification.
Applicant is cautioned to file only one set of claims with each response and to properly label the status of each claim.
4. New claims 44-47 depend from claim 1, and thus are included with Group I.
5. Applicant's election without traverse of Group I in the reply filed on 23 June 2026 is acknowledged. However, Applicant’s response has cancelled the non-elected claims.
Claims 1-4, 6-9, 14-16, 18-20, 23-24, and 44-47 are therefore under prosecution.
Information Disclosure Statement
6. The Information Disclosure Statements filed 25 October 2023 and 23 June 2026 are acknowledged and have been considered.
It is noted that the listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification
7. The use terms which are trade names or marks used in commerce (including but not necessarily limited to Cy3) has been noted in this application. They should be capitalized wherever they appear and be accompanied by the generic terminology.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Rejections - 35 USC § 102/103
8. 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.
9. 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.
10. 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.
11. Claims 1-4, 6-9, 14-16, 18, 23-24, and 46 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tsourkas et al. (U.S. Patent Application Publication No. US 2009/0104614 A1, published 23 April 2009).
Regarding claims 1-4 and 9, Tsourkas et al. teach a labeled molecule comprising a nucleotide (e.g., the penultimate A closest to quencher 11 in the stem loop of Figure 1A) connected to a first label moiety 10 and a second reference label 14 via a nucleic acid linker (i.e., claim 9), in the form of the rest of the hairpin depicted in Figure 1A; paragraphs 0097-0110). The labels are both luminescent labels (paragraph 0105 and 0110), and thus are reactants because they react with light to generate luminescence.
It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter which there is reason to believe includes functions that are newly cited or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter shown to be in the prior art does not possess the characteristic relied on” (205 USPQ 594, second column, first full paragraph).
In the instant case, the luminescent labels 10 and 14 are believed to be at least 5 Angstroms apart, both in actual distance (i.e., claim 1) and in terms of the center of mass (i.e., claim 2), in particular in view of the fact that they are attached via, for example, linear alkyl spacers of 10 carbons (i.e., claims 3-4; paragraph 0103). Because one carbon-carbon single is about 1.54 Angstroms, the positioning of the labels are believed to be more than 5 Angstroms apart.
Alternatively, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
The courts have also found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II.
Therefore, the claimed ranges of the distance of the labels (i.e., claims 1-2) and the claimed number of contiguous atoms of the spacer (i.e., claims 3-4) alternatively merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is advised that MPEP 716.01(c) makes clear that “[t]he arguments of counsel cannot take the place of evidence in the record” (In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965)). Thus, Applicant should not merely rely upon counsel’s arguments in place of evidence in the record.
Regarding claims 6-8, the molecule of claim 1 is discussed above. Tsourkas et al. teach the linker (i.e., the hairpin) is at least 10 monomeric units (i.e., nucleotides) and less than 150 nucleotides (i.e., claim 6-7), with at least 5 nucleotides between the labels (Figure 1A and paragraph 0101).
Alternatively, it is reiterated that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists, and that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Therefore, the claimed ranges of the linker lengths alternatively merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record.
Regarding claim 14, the molecule of claim 1 is discussed above. Tsourkas et al. teach the linker comprises a first oligonucleotide strand having the labels attached thereto (i.e., the hairpin) as discussed above in the rejection of claims 1-4. It is noted that while the claim drawn to a “first” oligonucleotide, there is no second oligonucleotide required.
With respect to the claimed steric volume center point distances, it is noted that the prior art discloses subject matter which there is reason to believe includes functions that are newly cited or is identical to a product instantly claimed, and that the burden is shifted to the applicants to prove that subject matter shown to be in the prior art does not possess the characteristic relied on
In the instant case, the steric volume center points of the luminescent labels 10 and 14 are believed to be at least 5 Angstroms apart, in particular in view of the fact that they are attached via, for example, linear alkyl spacers of 10 carbons (paragraph 0103). Because one carbon-carbon single is about 1.54 Angstroms, the positioning of the steric volume center points the labels are believed to be more than 5 Angstroms apart.
Alternatively, it is reiterated that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists, and that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Therefore, the claimed ranges of the linker lengths alternatively merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record.
Regarding claim 15, the molecule of claim 14 is discussed above. Tsourkas et al. teach a second oligonucleotide strand (i.e., target strand 13) hybridized to the first labeled strand 1 (i.e., Figures 1A-1B and paragraph 0095).
Regarding claim 16, the molecule of claim 14 is discussed above. In an alternative embodiment, the claimed molecule is in the second (i.e., target 13) strand which is attached to the linker (i.e., the first labeled strand 1) via hybridization (i.e., Figures 1A-1B and paragraph 0095; compare to the right side of Figure 3A of the instant specification).
Regarding claim 18, the molecule of claim 14 is discussed above. Tsourkas et al. teach the attachment sites are more than 5 and less than 50 bases apart on the first strand (Figure 1A).
Alternatively, it is reiterated that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists, and that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Therefore, the claimed range of the separation alternatively merely represents an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record.
Regarding claims 23-24, the molecule of claim 14 is discussed above. Tsourkas et al. teach the first oligonucleotide comprises a stem-loop (i.e., claim 23), and has “an” attachment site “of” the two or more attachment sites; i.e., one attachment site is in the loop (i.e., claim 24; paragraph 0173 and Figure 1A).
Regarding claim 46, the molecule of clam 1 is discussed above. Tsourkas et al. teach label 14 is incorporated into the linker, as label 14 is attached to the T that is part of the linker, and thus is incorporated into the linker (Figure 1A).
Claim Rejections - 35 USC § 103
12. Claim 19 is rejected under 35 U.S.C. 103 as obvious over Tsourkas et al. (U.S. Patent Application Publication No. US 2009/0104614 A1, published 23 April 2009) as applied to claim 14 above, and further in view of Siva et al. (U.S. Patent Application Publication No. US 2010/0129822 A1, published 27 May 2010).
Regarding claim 19, the molecule of claim 14 is discussed above in Section 11.
While Tsourkas et al. one attachment site is in the loop (paragraph 0173 and Figure 1A), which includes positions that are at least two bases from a G or C (i.e., the uppermost A on the left of the loop in Figure 1A). Thus, it would have been obvious that one label could be in the loop away from a G or C.
While Tsourkas et al. teach another attachment site in in the stem portion (Figure 1A), Tsourkas et al. do not teach the stem of the molecular beacon lacks G or C bases.
However, Siva et al. teach molecular beacons having stems composed solely of poly A on one side and poly T on the other, which have the added advantage of allowing effective prevention of nonspecific binding to the probe (Figure 1 and paragraph 0070). Thus, Siva et al. teach the known techniques discussed above.
It is also noted that the courts have held that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP § 2112.01 I.
The courts have held that the rearrangement of parts within a device is obvious when the arrangement does not specifically modify the operation of the device (In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950); see MPEP §2144.04), and that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Therefore, the placement of the labels in specific regions of the nucleotide alternatively merely represents an obvious variant and/or routine rearrangement of the labels of the cited prior art to result in a substantially identical structure.
Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the molecule taught by Tsourkas et al. with the teachings of Siva et al. to arrive at the instantly claimed molecule with a reasonable expectation of success. The ordinary artisan would have been motivated to make the modification because said modification would have resulted in a molecule having the added advantage of allowing effective prevention of nonspecific binding to the probe as explicitly taught by Siva et al. (Figure 1 and paragraph 0070). In addition, it would have been obvious to the ordinary artisan that the known techniques of Siva et al. could have been applied to the molecule taught by Tsourkas et al. with predictable results because the known techniques of Siva et al. predictably result in stems useful for nucleic acid assays.
13. Claim 20 is rejected under 35 U.S.C. 103 as obvious over Tsourkas et al. (U.S. Patent Application Publication No. US 2009/0104614 A1, published 23 April 2009) as applied to claim 14 above, and further in view of Urdea et al. (U.S. Patent No. US 5,594,117, issued 14 January 1997).
Regarding claim 20, the molecule of claim 14 is discussed above in Section 11.
Tsourkas et al. do not teach labeling abasic sites.
However, Urdea et al. teach nucleotide molecules labeled at their abasic sites (column 8, lines 25-50), which have the added advantage of allowing cleavage of the label for quantitation of the label and correlation to quantity of the sample (column 5, lines 1-15). Thus, Urdea et al. teach the known techniques discussed above.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the molecule taught by Tsourkas et al. with the teachings of Urdea et al. to arrive at the instantly claimed molecule with a reasonable expectation of success. The ordinary artisan would have been motivated to make the modification because said modification would have resulted in a molecule having the added advantage of allowing cleavage of the label for quantitation of the label and correlation to quantity of the sample as explicitly taught by Urdea et al. (column 5, lines 1-15). In addition, it would have been obvious to the ordinary artisan that the known techniques of Urdea et al. could have been applied to the molecule taught by Tsourkas et al. with predictable results because the known techniques of Urdea et al. predictably result in labeled positions useful for nucleic acid assays.
14. Claims 1, 44-45 and 47 are rejected under 35 U.S.C. 103 as obvious over Tsourkas et al. (U.S. Patent Application Publication No. US 2009/0104614 A1, published 23 April 2009) and, as applied to claim 44, as evidenced by Tyagi et al. (U.S. Patent No. 5,925,517, issued 20 July 1999).
It is noted that this rejection applies to claim 1 to the extent that it is drawn to the embodiments of dependent claims 44-45 and 47.
Regarding claim 44, the molecule of claim 1 is discussed above. Tsourkas et al. explicitly state that the teachings of Tyagi et al. are incorporated by reference therein, and that the probes of Tyagi et al. are modified to obtain the probes of Tsourkas et al. (paragraph 0092). Thus, in an alternative embodiment of claim 1, Tsourkas et al (via Tyagi et al.) teach Figure 2 of Tyagi et al, which shows three nucleic acid strands (i.e., 8, 2a, and 2b). Thus, it would have been obvious to have the labels of Tsourkas et al. arranged on the three nucleic acids strands illustrated in Tyagi et al.
Regarding claim 45, the molecule of claim 1 is discussed above.
Tsourkas et al. teach the reference labels (i.e., 14) include cyanine dyes (e.g., Cy3; Table 2) as labels. Thus, it would have been obvious to have a cyanine dye a at least one of the luminescent labels.
Regarding claim 47, the molecule of claim 45 is discussed above. Tsourkas et al. teach label 14 is incorporated into the linker, as label 14 is attached to the T that is part of the linker, and thus is incorporated into the linker (Figure 1A).
Double Patenting
15. 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
16. Claims 1-4, 6-9, 14-16, 18-20, 23-24, and 45-47 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,655,504 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to molecules comprising a reactant (i.e., nucleotide) with the same spacing, spacers having the same monomeric unit requirements, nucleic acid linkers, second strands, lengths, abasic sites, cyanine dyes, labels in the linkers, etc. Any additional limitations of the ‘504 claims are encompassed by the open claim language “comprising” found in the instant claims.
17. Claim 44 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,655,504 B2 as applied to claims 1 and 45above, and further in view of Tsourkas et al. (U.S. Patent Application Publication No. US 2009/0104614 A1, published 23 April 2009) as evidenced by Tyagi et al. (U.S. Patent No. 5,925,517, issued 20 July 1999).
Regarding claim 44, the molecule of claim 1 is discussed above.
The ‘504 claims do not require three strands.
However, these limitations are taught by Tsourkas et al. and Tyagi et al. as discussed above,. Tsourkas et al. also teach the molecules have the added advantage of allowing quantitative detection of nucleic acid targets (paragraph 0021). Thus, Tsourkas et al. teach the know techniques discussed above.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the molecule of the ‘504 claims with the teachings of Tsourkas et al. to arrive at the instantly claimed molecule with a reasonable expectation of success. The ordinary artisan would have been motivated to make the modification because said modification would have resulted in a molecule having the added advantage of allowing quantitative detection of nucleic acid targets as explicitly taught by Tsourkas et al. (paragraph 0021). In addition, it would have been obvious to the ordinary artisan that the known techniques of Tsourkas et al. could have been applied to the ‘504 claims with predictable results because the known techniques of Tsourkas et al. predictably result in probes useful for nucleic acid assays.
18. Claims 1-4, 6-8, 14-16, 18, 23-24, and 44-47 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 11,613,772 in view of Tsourkas et al. (U.S. Patent Application Publication No. US 2009/0104614 A1, published 23 April 2009) and, as applied to claim 44, as evidenced by Tyagi et al. (U.S. Patent No. 5,925,517, issued 20 July 1999).
Both sets of claims are drawn to molecules (i.e., nucleoside polyphosphates) comprising multiple luminescent labels. Any additional limitations of the ‘772 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘772 claims do not require the linker or distances of the instant claims.
However, Tsourkas et al. teach the claimed limitations as discussed above, and that the nucleotides have the added advantage of improved quantification of RNA (paragraph 0029). Thus, Tsourkas et al. teach the known techniques discussed above.
It would therefore have been obvious to a person of ordinary skill in the art to have modified the ‘772 claims with the teachings of Tsourkas et al. to arrive at the instantly claimed molecule with a reasonable expectation of success. The ordinary artisan would have been motivated to make the modification because said modification would have resulted in a molecule having the added advantage of allowing improved quantitation of RNA as explicitly taught by Tsourkas et al. (paragraph 0027). In addition, it would have been obvious to the ordinary artisan that the known techniques of Tsourkas et al. could have been applied to the ‘772 claims with predictable results because the known techniques of Tsourkas et al. predictably result in labeled nucleotides useful for nucleic acid assays.
19. Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 11,613,772 in view of Tsourkas et al. (U.S. Patent Application Publication No. US 2009/0104614 A1, published 23 April 2009) as applied to claim 14 above, and further in view of Siva et al. (U.S. Patent Application Publication No. US 2010/0129822 A1, published 27 May 2010) based on the citations and rationale provided above.
20. Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 11,613,772 in view of Tsourkas et al. (U.S. Patent Application Publication No. US 2009/0104614 A1, published 23 April 2009) as applied to claim 14 above, and further in view of Urdea et al. (U.S. Patent No. US 5,594,117, issued 14 January 1997) based on the citations and rationale provided above.
21. Claims 1-4, 6-8, 14-16, 18, 23-24, and 44-47 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,312,377 in view of Tsourkas et al. (U.S. Patent Application Publication No. US 2009/0104614 A1, published 23 April 2009) and, as applied to claim 44, as evidenced by Tyagi et al. (U.S. Patent No. 5,925,517, issued 20 July 1999).
Both sets of claims are drawn to molecules (i.e., nucleoside polyphosphates) comprising multiple luminescent labels. Any additional limitations of the ‘377 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘377 claims do not require the linker or distances of the instant claims.
However, Tsourkas et al. teach the claimed limitations, as well as the rationale for modification, as discussed above. The ‘377 claims are therefore rejected based on the citations and rationale provided above.
22. Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,312,377 in view of Tsourkas et al. (U.S. Patent Application Publication No. US 2009/0104614 A1, published 23 April 2009) as applied to claim 14 above, and further in view of Siva et al. (U.S. Patent Application Publication No. US 2010/0129822 A1, published 27 May 2010) based on the citations and rationale provided above.
23. Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,312,377 in view of Tsourkas et al. (U.S. Patent Application Publication No. US 2009/0104614 A1, published 23 April 2009) as applied to claim 14 above, and further in view of Urdea et al. (U.S. Patent No. US 5,594,117, issued 14 January 1997) based on the citations and rationale provided above.
24. Claims 1-4, 6-8, 14-16, 18, 23-24, and 44-47 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,577,607 in view of Tsourkas et al. (U.S. Patent Application Publication No. US 2009/0104614 A1, published 23 April 2009) and, as applied to claim 44, as evidenced by Tyagi et al. (U.S. Patent No. 5,925,517, issued 20 July 1999).
Both sets of claims are drawn to molecules (i.e., nucleoside polyphosphates) comprising multiple luminescent labels. Any additional limitations of the ‘607 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘607 claims do not require the linker or distances of the instant claims.
However, Tsourkas et al. teach the claimed limitations, as well as the rationale for modification, as discussed above. The ‘607 claims are therefore rejected based on the citations and rationale provided above.
25. Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,577,607 in view of Tsourkas et al. (U.S. Patent Application Publication No. US 2009/0104614 A1, published 23 April 2009) as applied to claim 14 above, and further in view of Siva et al. (U.S. Patent Application Publication No. US 2010/0129822 A1, published 27 May 2010) based on the citations and rationale provided above.
26. Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,577,607 in view of Tsourkas et al. (U.S. Patent Application Publication No. US 2009/0104614 A1, published 23 April 2009) as applied to claim 14 above, and further in view of Urdea et al. (U.S. Patent No. US 5,594,117, issued 14 January 1997) based on the citations and rationale provided above.
27. Claims 1-4, 6-8, 14-16, 18, 23-24, and 44-47 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-6, 9, 12, 36, 158, 171, 176, 180, and 200-205 of copending Application No. 18/491,693 in view of Tsourkas et al. (U.S. Patent Application Publication No. US 2009/0104614 A1, published 23 April 2009) and, as applied to claim 44, as evidenced by Tyagi et al. (U.S. Patent No. 5,925,517, issued 20 July 1999).
Both sets of claims are drawn to molecules (i.e., nucleoside polyphosphates) comprising multiple luminescent labels. Any additional limitations of the ‘693 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘693 claims do not require the linker or distances of the instant claims.
However, Tsourkas et al. teach the claimed limitations, as well as the rationale for modification, as discussed above. The ‘696 claims are therefore rejected based on the citations and rationale provided above.
This is a provisional nonstatutory double patenting rejection.
28. Claim 19 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-6, 9, 12, 36, 158, 171, 176, 180, and 200-205 of copending Application No. 18/491,693 in view of Tsourkas et al. (U.S. Patent Application Publication No. US 2009/0104614 A1, published 23 April 2009) as applied to claim 14 above, and further in view of Siva et al. (U.S. Patent Application Publication No. US 2010/0129822 A1, published 27 May 2010) based on the citations and rationale provided above.
This is a provisional nonstatutory double patenting rejection.
29. Claim 20 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-6, 9, 12, 36, 158, 171, 176, 180, and 200-205 of copending Application No. 18/491,693 in view of Tsourkas et al. (U.S. Patent Application Publication No. US 2009/0104614 A1, published 23 April 2009) as applied to claim 14 above, and further in view of Urdea et al. (U.S. Patent No. US 5,594,117, issued 14 January 1997) based on the citations and rationale provided above.
This is a provisional nonstatutory double patenting rejection.
Conclusion
30. No claim is allowed.
31. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert T. Crow whose telephone number is (571)272-1113. The examiner can normally be reached M-F 8:00-4:30.
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/Robert T. Crow/Primary Examiner, Art Unit 1683
Robert T. Crow
Primary Examiner
Art Unit 1683
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