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 II and species in the reply filed on
05/26/2026 is acknowledged.
No prior art was found for the nucleotide species of Formula I-A, wherein the nucleotide base is thymine, X is O, R7 is H, n is 2 and R1 is NH2 wherein each of R2 and R3 is H.
The examination has been extended to all species of formula I-A and I-B.
No prior art was found for the method of Group II using a nucleotide of Formula I-A or I-B.
Claims 37, 40-55 are allowable. Claims 2 and 25, previously withdrawn from consideration as a result of a restriction requirement, require all the limitations of an allowable claim. Pursuant to the procedures set forth in MPEP § 821.04(a), the restriction requirement between inventions of Groups I and II, as set forth in the Office action mailed on 12/16/2025, is hereby withdrawn and claims 2 and 25 are hereby rejoined and fully examined for patentability under 37 CFR 1.104. In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Objections
Claim 25 is objected to because of the following informalities:
Claim 25 depends from claims 1-24, however claims 1, 3-24 are canceled claims. Appropriate correction is required.
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.
Claim 25 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.
Claim 25 is vague and indefinite because it depends from canceled claims 1, and 3-24, which makes the antecedent basis for its limitation insufficient and confusing.
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) 2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by O’Halloran et al. US 2016/0139133.
O’Halloran et al. discloses a nucleotide analog of formula I-B, as shown (formula, Hepta-Triethylammonium Cleavable SCATP on page 45; paragraphs [0384]-[0389]), R1 is the second moiety (the tert-butyl moiety is in the pivaloyl residue attached to the C3' carbon atom of the deoxyadenosine core through the oxygen bridge of the compound; paragraphs [0384]-[0389); X is O (the oxygen atom is attached to the phosphorous atom in the first phosphate residue of the triphosphate moiety; paragraphs [0384]-[0389]); R7 is H (the hydrogen atom is attached to the C2' carbon atom of the deoxyadenosine core; paragraphs [0384]-[0389]); n is 2 (the second and the third phosphate moieties are in the triphosphate residue of the compound; paragraphs [0384]-[0389]); B is a nucleotide base (the protected modified 7-deaza-adenine base is in the core of the compound, where modified 7-deaza-adenine base is the nucleotide base, paragraphs [0384]-[0389]); L is a linker comprising a cleavable linkage (the compound is Cleavable SCATP, the reporter composition comprises nucleotide with a cleavable linker molecule attached to a high charge mass moiety; paragraphs [0099], [0384]-[0389]); and R6 is a label (in Hepta-Triethylammonium Cleavable SCATP, the cleavable linker is attached to a high charge mass moiety with a charge that is sufficient to cause a detectable change in the property of a sensitive detection, i.e., the label, the applicants do not disclose the meaning of detection of the label; paragraphs [0099], [0384]-[0389]); wherein R6 and B are covalently linked via L (as shown in formula on page 45, in Hepta-Triethylammonium Cleavable SCATP, the high charge mass moiety
having four carboxy acid residues, is attached covalently to the adenine base through the Cleavable linker; paragraphs [0099], [0384]-[0389]), where the stereo-chemical configuration of the compound is as shown (the stereo-chemical configuration of the compound is as shown; paragraphs [0384]-[0389]).
Claims 37, 40-55 are allowed.
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/JEZIA RILEY/ Primary Examiner, Art Unit 1681 9 July 2026
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