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 1-2,4-16,19-22 and 27 are pending.
During a preliminary amendment of this application applicants on 1/22/26 elect group I (Claims 1-2,4-6,13-16,19-22 and 27) directed to a tandem dye comprising: a non-conjugated polymeric backbone; one or more green excitable donor fluorophores linked to the non-conjugated polymeric backbone; and one or more acceptor fluorophores linked to the non-conjugated polymeric backbone, wherein the donor and acceptor fluorophores are in energy transfer relationship and a species selection without traverse. Therefore group II comprising claims 7-12 will be withdrawn. The requirement is therefore made FINAL.
Claims 1-2,4-6,13-16,19-22 and 27 are for examination.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 9/12/2023, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the IDS statements.
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 5-6 are rejected under 35 U.S.C. 112(b) 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. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 6recite the broad recitation in lines 12-13 “aryl or heteroaryl ring”, and the claim also recites “e.g., a 5- or 6-membered ring comprising carbon atoms and 0-3 heteroatoms selected from O,S and N)” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required.
Claim 5 is rejected as being indefinite in reciting “, wherein the dipyrromethene-base dye” lacks antecedent basis because claim 1 on which the claim 5 depends do not recite dipyrromethene-base dye.
Claim 6 is rejected as being indefinite in reciting “(e.g. …)”. Because what else besides what recited after e.g. is undefined..
Claim Rejections - 35 USC § 102
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.
Claims 1-2,4-6,13-16,19-22 and 27 are rejected 102(a)(2) as being anticipated by Bartholomew et al. ( application no. 17/699,790, US 2022/0348770A1, priority US63171704, 2021/04/07 ).
Bartholomew et al. disclosed Water-soluble dipyrromethene-based dyes of formula I (see claim 6 of Bartholomew et al.) (reads on claim 6, 21).
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The water-soluble dye is a dipyrromethene-boron dye. Embodiments of the subject water-soluble dipyrromethene-based dyes have a narrow absorption maxima in the yellow green range close to or at the 561 nm ( read on claim 2) laser line, and are suitable for use in tandem dye systems. Embodiments of the subject dyes efficiently transfer energy to an acceptor chromophore while a second dipyrromethene-based dye of the same or different chemical structure is within energy-receiving proximity therewith ( reads on claim 1). (see abstract, para 0044). Bartholomew et al. teach on applicants claims 1-2, 4-6. Bartholomew et al. also teach said tandem dye comprises water soluble groups ( para 0058-0059), therefore Bartholomew et al. teach applicants claims 13-14 and also teach said group is PEG, (teach claims 15-16). Bartholomew et al. also teach tandem dye comprise more donor fluorophores than that of acceptor fluorophores ( see para 0284, teach claims 19-20). Bartholomew et al. also teach tandem dye link via polymeric backbone to peptide ( see para 0289-, 0294-0295, reads on applicants claims 22, 27).
Claims 1,2,5-6, 15-16, 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2020/0002540 also US10844228).
US 2020/0002540 discloses dipyrromethene-boron based fluorophore, biomolecule, and water solubilizing group ([0206-[0414]). : US10844228 disclose at claim 14:
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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.
Claims 1-2,4-6,13-16,19-22 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Bartholomew (US 2020/0048469).
Bartholomew teaches tandem dyes which are water soluble (paragraph 0099) and have absorbance maximums of 550nm to 600 nm (paragraph 0154). Bartholomew teaches the dyes of formula (I) paragraph 0032, wherein
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Y1 and Y2 can be the ++species attached to the B paragraph 0092 where q is 6-20, also see the figures on the right column of page 10, with q=11 or 16, in particular the last formula on the right column of page 10. Q can be 11 or 16 as any value between 6-20 is taught. R2 and R7 can be substituted or unsubstituted aryl (phenyl, paragraph 0035) wherein the substituent is 2-20 polyethylene glycol units and polyethers of (CH2CH2O)pR (paragraph 0129-0131).
Bartholomew does not teach al the claimed embodiments in a single compound but selection from the claimed substituents allows one of ordinary skill in the art to arrive at the claimed compounds.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to select the instantly claimed dyes as Bartholomew teaches these dyes with the same base structure and selection of the claimed substituents allows for the production of water soluble dyes with the absorbance maximums in the 550 to 600 nm range for the benefit of use in a variety of biological applications particularly diagnostic kits with parameters of interest of the dyes such as excitation and emission wavelengths , stokes shifts and fluorescence quantum yield being selected by selection of the claimed substituents. These tandem dyes have the benefit of narrow emission fluorophores. Substitution of the functionally equivalent substituents listed to arrive at the claimed structures and desired water solubility and absorbance maximum can be done through routine experimentation.
Double Patenting Rejection
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. See 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); and 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) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The instant Claims are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over at least claims 1-19 of US PAT10844228. An obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but an examined application claim not is patentably distinct from the reference claim(s) because the examined 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). Although the conflicting claims are not identical, they are not patentably distinct from each other.
The at least claims 1-19 of US PAT 10844228, as for example claim 14
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are directed to The Instant claims also are directed to a tandem dye comprising: a non-conjugated polymeric backbone; one or more green excitable donor fluorophores linked to the non-conjugated polymeric backbone; and one or more acceptor fluorophores linked to the non-conjugated polymeric backbone, wherein the donor and acceptor fluorophores are in energy transfer relationship. The specification that teach tandem dye of that patent can also teach in different embodiment the tandem dye in the instant claims of the instant application. It would have been obvious to one of ordinary skill in the art to select this specific embodiment of the genera of tandem dye that practiced for the claims of that patent to use for the tandem dye of instant claims. Therefore claims of instant application are obvious over at least claims 1-19 US PAT10844228.
US pat 11,702547 and US PAT 12497516 are CON of US10844228. Therefore TDS are required to overcome the ODP rejection over US PAT10844228. US pat 11,702547 and US PAT 12497516.
The instant Claims are provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over at least claims 1-2 of application no. 17/699,790. An obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but an examined application claim not is patentably distinct from the reference claim(s) because the examined 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). Although the conflicting claims are not identical, they are not patentably distinct from each other.
At least claim 1 application no. 17/699,790, as for example claim 1
application no. 17/699,790 teach
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Claims of instant application teach a tandem dye comprising: a non-conjugated polymeric backbone; one or more green excitable donor fluorophores linked to the non-conjugated polymeric backbone; and one or more acceptor fluorophores linked to the non-conjugated polymeric backbone, wherein the donor and acceptor fluorophores are in energy transfer relationship. The specification that teach tandem dye of that patent application can also teach in different embodiment the tandem dye in the instant claims of the instant application. It would have been obvious to one of ordinary skill in the art to select this specific embodiment of the genera of tandem dye that practiced for the claims of that patent to use for the tandem dye of instant claims. Therefore claims of instant application are obvious over at least claims 1-2 US application 17/699790.
Therefore TDS are required to overcome the ODP rejection over US PAT appl no. 17/699790 and any subsequent pat applications raised from US PAT appl no. 17/699790.
Conclusion
Claims 1-2,4-6,13-16,19-22 and 27 are rejected and no claim is allowable.
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Mohammad Meah whose telephone number is 571-272-
1261. The examiner can normally be reached on 8:30-5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
supervisor, Robert Mondesi can be reached on 4089187584. The fax phone number
for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOHAMMAD Y MEAH/Examiner, Art Unit 1652
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