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 and species Compound 4 in the reply filed on 03/17/2026 is acknowledged.
No prior art was found for the species compound 4. The examination has been extended to the next species wherein the photoreactive moieties comprises the formula (Ia) compound 2. Claims 1, 2, 7-16 read on the species compound 2.
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 1,2, 7-16 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 1-2 are vague and indefinite because it is unclear what is linked to the open bond after R8 when R2 is -NR8-.
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.
Claim(s) 1, 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pati et al. (PNAS, September 29, 2020, Vol. 117, No. 39, pp. 24305-24315, Supplementary Information pages 1-61 ).
Pati et al. discloses a fluorescent compound (Cy3, Cy5 and Cy7, which have an expected wavelength typically falling between the range of 400 to 800nm) covalently attached to a photoprotective moiety comprising the formula (Ia), wherein R1 is H, R2 is -NR8R9, with R8 being H and R9 is a substituted C1-C6-alkyl. (see attached supplementary information pages 56-57).
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.
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.
Claim(s) 1, 2, 7-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. US 20210155983 in view of Pati et al. (PNAS, September 29, 2020, Vol. 117, No. 39, pp. 24305-24315, Supplementary Information pages 1-61 ).
Wu et al. teaches a fluorescent compound linked to a photo-protective moiety comprising a cyclooctatetraene moiety (COT). Said fluorescent is identical to the instant fluorescent moiety of claim 15 wherein Ra and Rb can be ethyl (see compounds comprising Dye4-COT pages 44, 45, 48, 49). Wu et al. teaches a linker identical to the instant linker of formula (V) (see for example Dye 4-COT page 44).
Wu et al. does not show a photoprotective moiety comprising the formula (Ia) having a COR2 group.
Pati et al. discloses a fluorescent compound (Cy3, Cy5 and Cy7, which have an expected wavelength typically falling between the range of 400 to 800nm) covalently attached to a photoprotective moiety comprising the formula (Ia), wherein R1 is H, R2 is -NR8R9, with R8 being H and R9 is a substituted C1-C6-alkyl (see attached supplementary information pages 56-57). Pati et al. teaches “In order to maximize the self-healing mechanism in organic fluorophores commonly used in a broad array of imaging applications, we have sought to clarify generalized strategies for modulating the TET (triplet energy transfer) rate by physically altering COT's triplet-state energy (ET; Fig. 1C). Cyanine-class fluorophores serve as an ideal starting point for these initiatives, as they are spectrally diverse and widely employed by the medical and fundamental research communities. Here, we performed an array of quantitative photophysical investigations of chemically distinct self-healing Cy3, Cy5, and Cy7 fluorophores bearing COT derivatives with specifically tailored triplet energies and charge densities. These pursuits were enabled by appending one or more electron-withdrawing amide substituents to COT and generalizing a synthetic strategy for coupling the amide-COT (AC) derivatives to amine-activated Cy3, Cy5, and Cy7 fluorophores. … These efforts helped establish a mechanistic framework for maximizing the potential of the COT-mediated self-healing mechanism, wherein the triplet energy and lifetime of the COT substituent must be appropriately tuned to match the unique properties and performance features of the fluorophore to which it is attached. They also enabled us to achieve enhancements in the photostability and brightness of self-healing cyanine dyes ... and superior performance metrics compared to other fluorophore classes commonly employed … we observed parallel reductions in ROS generation (page 24307-24308, bridging paragraph). ROS (Reactive Oxygen Species) include singlet oxygen, peroxide, and superoxide radicals that lead to chemical destruction of the fluorophore (photobleaching), photo crosslinking to elements in the surrounding environment, and other potentially toxic side effects (page 24305, col. 2, first paragraph).
Therefore, one of ordinary skill in the art seeking to solve the stated problem, according to the circumstances, would have been motivated to modify the primary reference in the manner of the claims, without exercising inventive skill, to achieve the expected benefits, optimizations and/or expanded applications as this is well known practice in the art, because Pati teaches that their photoprotective moieties comprising a cyclooctatetraene moiety can be applied to a cyanine dye or any commonly used fluorophore and Wu teaches that their dye can be any dyes (pages 17-24) including cyanine (page 9). The cyclooctatetraene of Pati et al. can be covalently attached to a fluorescent moiety of Wu et al. since Wu et al. relates to fluorescent compounds and compositions containing cyclooctatetraene or optionally substituted derivatives thereof. In particular, the fluorescent compounds and compositions may be used in various biological applications, such as nucleic acid sequencing applications; the COT containing fluorescent compounds and the compositions described herein may enhanced dye photostability when exposed to a light source irradiation, in particular to the blue light with wavelength between about 400 nm to about 500 nm (e.g., about 450 nm to about 460 nm). These compounds and composition also reduce or prevent DNA damage during sequencing runs (abstract; [0002], [0008]-[0010], [0050]).
MPEP states wherein the “[W]here 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 Alter, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Routine optimization is not considered inventive and no evidence has been presented that the selection of the substitution of the cyclooctatetraene was other than routine, that the products resulting from the optimization have any unexpected properties, or that the results should be considered unexpected in any way as compared to the closest prior art.
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/JEZIA RILEY/ Primary Examiner, Art Unit 1681 3 April 2026