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 .
Election/Restrictions
Applicant’s election without traverse of Group I (e.g. claims 1-17); and
Species A: drawn to the species of Formula (I): where B is thymine; R1 is H; R2 is H; OR3 wherein R3 is a triphosphate; and each of R4a, R4b and R4c is H in the reply filed on December 02, 2025 is acknowledged.
The Examiner respectfully notes the elected species reads on claims 1-2, 4, 8, 12-13 and 15-17.
Claims 3, 5-7, 9-11 and 14; and are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species and invention respectively, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 02, 2025.
Information Disclosure Statement
The Information Disclosure Statements (IDS) filed on 09/06/2023 and 12/08/2025 have been considered by the Examiner inasmuch as foreign documents have been submitted into the file wrapper in English.
Claim Status
The claim set filed December 02, 2025 has been entered. Claims 21 and 25-28 are canceled. Claim 29 is new. Claims 3, 5-7, 9-11, 14, 18-20, 22-24 and 29 are withdrawn from further consideration as being drawn to either a nonelected species or a nonelected invention respectively as discussed in greater detail in the Election/Restrictions section above.
Thus, claims 1-2, 4, 8, 12-13 and 15-17 are examined on the merits herein.
Claim Objections
Claim 15 is objected to because of the following informalities:
Claim 15, line 2, recites the limitation “a linker”, although the Examiner respectfully notes in claim 16, which depends from claim 15, it recites “L” within the “B” limitation. Therefore, the Examiner reasonably interprets the “L” limitation recited within claim 16 is the “linker” recited in claim 15.
Thus, to promote clarity the Examiner respectfully suggests inserting the phrase “(L)” immediately after the phrase “a linker” as discussed above.
Appropriate correction is required.
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.
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.
Claims 1-2, 4, 8, 12-13 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (Published 26 October 2017, WO-2017185026-A1, also known as Complete Genomics Inc (Published 26 October 2017, WO 17/185026) in the IDS filed 09/06/2023).
Regarding claims 1-2, 4, 8, 12-13 and 15-17, Li teaches deoxyribose nucleoside analogues having a 3’-O reversible blocking group and a nucleobase, see pg. 17, paragraph [0047].
Li exemplifies such nucleoside analogues include those of Formula (I) represented by the structure,
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, where Li teaches R1 is the 3’-O reversible blocking group; R2 is or includes a nucleobase; and R3 is a cleavable linking moiety comprising at least three phosphates, see pg. 17, paragraph [0048].
The Examiner respectfully notes Formula I comprises a deoxyribose core and therefore fulfills the structural limitation where R1 is H and R2 is H as elected by Applicant in the species election discussed above; and as recited in claim 4 and claim 8 respectively.
Li teaches the nucleoside analogue is a nucleoside triphosphate (i.e. R3 consists of three consecutive phosphates) (e.g. OR3 is a triphosphate as elected by Applicant in the species election discussed above and corresponding to the recitation in claim 12; and the nucleotide and where -OR3 is triphosphate as recited in claim 17); see pg. 48, paragraph [0048]; and wherein the triphosphate structure is exemplified as evidenced by Li within Formula II on pg. 22, paragraph [0058].
Li teaches R2 can be a base selected from and including thymine (T) (e.g. B is thymine as elected by Applicant in the species election discussed above and corresponding to the fifth nucleobase recited in claim 13), see paragraph [0048], pg. 18.
Li teaches the reversible blocking group can be represented by Structure A,
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, where in Structure A, Ra, Rb, and Rc are each individually selected from the group consisting of and including hydrogen (e.g. R4a, R4b and R4c is H as elected by Applicant in the species election discussed above; and as recited in claims 1-2). Li also teaches in Structure A,
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can represent a double bond, and the
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indicates where the moiety is connected to the remainer of the molecule. See pg. 18, paragraph [0050].
Li teaches the nucleoside analogues of Formula I can be labeled with a detectable label (e.g. a fluorescent label) at the R2 position, see pg. 21, paragraph [0056].
Li exemplifies the nucleoside analogue of Formula I labeled with a detectable label as a compound of Formula IA, see pg. 21, paragraph [0057]; having the structure,
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, where R4 is a nucleobase, L is a linker, and D contains a detectable label (e.g. a fluorescent label), see pg. 22, Formula IA.
The Examiner notes the teachings of formula IA correspond to wherein B comprises a nucleobase covalently bound to a detectable label through a linker, as recited in claim 15; and when B is thymine as taught by Li above, the thymine is covalently bound to a detectable label through a linker which corresponds to the third recited structure in claim 16.
Although, Li does not exemplify the elected compound within the Election/Restrictions section above. However, Li does teach a nucleoside triphosphate comprising the limitations corresponding to B is thymine; R1 is H; R2 is H; OR3 wherein R3 is a triphosphate; and each of R4a, R4b and R4c is H as discussed above.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the invention’s effective filing date to have select any of the disclosed options taught within Formula I or Formula IA of Li as discussed above; and thus arrive at the elected species of Formula I of claim 1 as discussed above because Li teaches all of the limitations required within the elected species of formula I of claim 1 are possible choices within the nucleoside analogues of Formula I or Formula IA of Li as discussed above.
Thus, it would have been prima facie obvious to one of ordinary skill in the art before the invention was filed to have chosen from the limitations taught within Formula I or Formula IA of Li and thus arrive at the elected species of Formula I of instant claim 1 as within the scope of the artisan as combining prior art elements according to known compounds to yield predictable results.
One of ordinary skill in the art would have been motivated to have chosen from the limitations taught within Formula I or Formula IA of Li in order to arrive at a deoxyribose nucleoside analogue having a 3’-O reversible blocking group and a nucleobase as taught by Li above. One of ordinary skill in the art would have had a reasonable expectation of success to have chosen from the limitations within Formula I or Formula IA of Li and thus arrive at the elected species of Formula I of instant claim 1 as discussed above, because Li teaches all of the limitations required within the elected species of formula I of instant claim 1 are all possible choices within the nucleoside analogues of Formula I or Formula IA of Li as discussed above.
Thus, the claimed invention as a whole would have been prima facie obvious over the combined teachings of the prior art.
Conclusion
No claims are allowed in this action.
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/JARET J CREWS/Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691