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 in the reply filed on 01/05/2026 is acknowledged.
Specification
The disclosure is objected to because of the following informalities:
Applicant is claiming benefits to Prior applications (see Application Data Sheet) ADS filed 05/23/2023. Howver, the specification is missing the CROSS-REFERENCES TO RELATED APPLICATIONS: See 37 CFR 1.78 and MPEP § 211 et seq.
Appropriate correction is required.
Double Patenting
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 25, 26, 28, 41, 63, 64, 70, 73-75, 82, 88-89, 93, 96,-98, 130-131 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7-9, 12, 38, 41, 43, 47, 49, 51, 55, 59 and 63 of copending Application No.17764874 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim compounds of similar formula, comprising a polymeric structure comprising a chromophore attached to a ribose structure and a composition comprising same, wherein M is, at each occurrence, independently the same or different chromophore, R1 is H, OH, SH, alkyl, alkoxy, alkylether, heteroalkyl, -OP(=Ra)(Rb)Rc, and R2 comprises a polynucleotide. They both claim identical Linker groups and integers.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 25, 26, 28, 41, 63, 64, 70, 73-75, 82, 88-89, 93, 96-98, 130-131 are 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.
Claims 25 is vague and indefinite because the claim defines an R2 and L8 groups but the compound of structure III does not comprise R2 and L8 substituents.
Also, it seems the chemical structure for compound of structure III is incomplete because it is missing the opening bracket and the opening parentheses (see specification page 3, where it shows the compound of Formula III). Clarification is required.
Claim 131 is vague and indefinite because it is unclear what exactly are the metes and bounds for “assay conditions” for producing the mixture and the “detection conditions” for imaging the mixture which will identify the presence of a target analyte. Said conditions are not specifically described in the specification.
Claim 131 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: the preamble states a method for identifying the presence of a target analyte but none of the steps of the method actually perform said reaction. Without any active, positive steps delimiting how the method is actually practiced, it is unclear how the method of claim 131 is performed. While minute details are not required in method claims, at least the basic steps must be recited in a positive, active fashion (See ex parte Erich, 3 UsPQ2dl011, p.1011 (Bd. Pat, Applicant. Int. 1986). Clarification is required.
Note that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. Also see In re Van Geuns, 988 F.2d 1181,26 USPQ2d 1057 (Fed. Cir. 1993). Also see, In re Zetz, 13 USPQ2d 1320,1322. “An essential purpose of patent examination is to fashion claims that are precise, clear, correct and unambiguous.”
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)(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) 25, 26, 28, 41, 63-64, 70, 73-75, 82, 88-89, 93, 96-98, 130-131 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Matray et al. US 20220402963.
The applied reference has a common inventor with the instant application. 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.
Matray et al. discloses compounds identical to formula III. Table 1 shows exemplary structures for the chromophores as well as compositions comprising compounds identical to Formula III and I (see Matray pages 1-4 and claims). The figures 1A-1D, show compositions where polynucleotides may be bound to each side of the fluorophores and/or the quencher moiety. A schematic version of a pair of such constructs is shown in FIG. 1C. The sequences of the polynucleotides on both sides of the fluorophores and the quencher moiety have sufficient complementarity to hybridize, thus bringing the fluorophores and the quencher into proximity (see also [0096]; pages 28-29, claims) (this is viewed to be inclusive of instant claims 64, 73-74,100).
Matray et al. discloses wherein the first sequence, second sequence have length of 10 to 40 nucleotides [0169]; [0235-0238].
Matray et al. discloses that L4 has the structure *-(OCH2CH2)z- (see claim 41).
Matray et al. discloses identical structures for L1a and L1b (see claims 47 and 51).
Matray et al. discloses in claim 7, L2 and L8 are independently optional linkers (which means one or both can be absent (see also Matray et al. claim 49); L3, L5, L6 are, at each occurrence, independently optional alkylene, alkenylene, alkynylene, heteroalkylene, heteroalkenylene or heteroalkynylene linker (this is viewed to be inclusive of instant claim 89).
Matray et al. discloses in claim 7, R4 is, at each occurrence, independently OH, SH, O−, S−, ORd or SRd; R5 is, at each occurrence, independently oxo, thioxo or absent (this is viewed to be inclusive of instant claim 93).
Matray et al. discloses in claims 51 and 55 that L7 comprises triazolyl functional group or a structure identical to instant claim 97.
Matray et al. discloses “In embodiments, n is an integer from 1 to 100, or wherein n is an integer from 1 to 10, or from 2 to 10. For example, 1, 2, 3, 4, 5, 6, 7, 8, 9 or 10. In embodiments, m is an integer from 3 to 6, or wherein m is 3” [0301] (this is viewed to be inclusive of claim 98).
Matray et al. discloses a kit comprising said composition [0098].
Matray et al. discloses methods for identifying the presence of a target nucleotide sequence, comprising: producing a mixture by contacting a sample with the composition, under assay conditions; and imaging the mixture under detection conditions [0332].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEZIA RILEY whose telephone number is (571)272-0786. The examiner can normally be reached 7:30-6:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gary Benzion can be reached at 571-272-0782. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEZIA RILEY/ Primary Examiner, Art Unit 1681 5 February 2026