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 .
Applicant’s Response Dated January 23, 2026
In the Response dated January 23, 2026, claim 1 was amended. Claims 1-38 are pending. An action on the merits of claims 1-38 is contained herein.
The rejection of claims 1-5 and 7-38 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been rendered moot in view of applicant’s amendment dated January 23, 2026.
The rejection of claim 6 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is maintained for the reasons of record as set forth in the Office Action dated October 23, 2025.
The provisional rejection of claims 1, 5-16, and 22 on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 17/767,825 (reference application) is maintained for the reasons of record as set forth in the Office Action dated October 23, 2025.
The provisional rejection of claims 2-4, 17-21, and 23-34 on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of copending Application No. 17/767,825 in view of Wada et al. US 2013/0184450 A1 (Wada) and NIPPON ZEON KK JP 60-105692 A (NIPPON) in combination has been withdrawn in view of applicant’s argument(s) regarding deprotection of the protecting group at the 2’ position inside vs outside of the automated synthesizer (see page 14) and predictability of the art (see page 16).
The rejection of claims 1-38 under 35 U.S.C. 103 as being unpatentable over Wada et al. US 2013/0184450 A1 (Wada) and NIPPON ZEON KK JP 60-105692 A (NIPPON) in combination has been withdrawn in view of applicant’s argument(s) regarding deprotection of the protecting group at the 2’ position inside vs outside of the automated synthesizer (see page 14) and predictability of the art (see page 16).
Rejections Set Forth in the Office Action Dated October 23, 2025
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 6 is 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.
No arguments or amendment(s) were set forth by applicant regarding claim 6. Thus, the rejection is maintained for the reasons of record as set forth in the Office Action dated October 23, 2025.
Claims 1, 5-16, and 22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 17/767,825 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 5-16, and 22 are anticipated by claims 1-10 of the reference application.
Applicant's arguments filed January 23, 2026 have been fully considered but they are not persuasive. Applicant asserts that the Office Action does not appear to assert any basis for concluding that any of the pending claims are obvious over the ‘825 application by itself.
The examiner respectfully disagrees. As set forth above and on page 5 of the Office Action dated October 23, 2025, claims 1, 5-16, and 22 are anticipated by claims 1-10 of the reference application. Thus, the rejection is maintained for the reasons of record as set forth in the Office Action dated October 23, 2025.
Conclusion
Claims 1-38 are pending. Claims 1, 5-16, and 22 are rejected. Claims 2-4, 17-21, and 23-38 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. No claims are allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contacts
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK T LEWIS whose telephone number is (571)272-0655. The examiner can normally be reached Monday to Friday, 10 AM to 4 PM EST (Maxi Flex).
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 supervisor, Renee Claytor can be reached at (571) 272-8394. 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.
/PATRICK T LEWIS/Primary Examiner, Art Unit 1691
/PL/
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