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 .
Status of Claims
The amendments to the claims filed August 27, 2026 are acknowledged and entered. Claims 1-32 and 34-38 are pending.
Priority
This application is a 371 of PCT/CA2023/050149, filed February 6, 2023, which claims benefit of 63/307,778, filed February 8, 2022.
Information Disclosure Statement
Acknowledgement is made of the Information Disclosure Statements filed on August 6, 2024 and July 22, 2026. All references have been considered except where marked with a strikethrough.
Election/Restriction
Applicant’s election with traverse of Group I, claims 1-27, in the reply filed on August 27, 2026 is acknowledged. Claims 28-32 and 34-38 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Therefore this restriction is considered proper and thus made FINAL.
Objections to the Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code (see references listed at pages 66-68). Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
The specification is objected to because it lists sequences (see [00125]), but the application does not list the required Seq ID Nos and Applicant has not uploaded the appropriate file on patent center. Applicant is required to address the specific deficiencies provided below.
Summary of Requirements for Patent Applications Filed On Or After July 1, 2022, That Have Sequence Disclosures
37 CFR 1.831(a) requires that patent applications which contain disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.831(b) must contain a “Sequence Listing XML”, as a separate part of the disclosure, which presents the nucleotide and/or amino acid sequences and associated information using the symbols and format in accordance with the requirements of 37 CFR 1.831-1.835. This “Sequence Listing XML” part of the disclosure may be submitted:
1. In accordance with 37 CFR 1.831(a) using the symbols and format requirements of 37 CFR 1.832 through 1.834 via the USPTO patent electronic filing system (see Section I.1 of the Legal Framework for Patent Electronic System (https://www.uspto.gov/PatentLegalFramework), hereinafter “Legal Framework”) in XML format, together with an incorporation by reference statement of the material in the XML file in a separate paragraph of the specification (an incorporation by reference paragraph) as required by 37 CFR 1.835(a)(2) or 1.835(b)(2) identifying:
a. the name of the XML file
b. the date of creation; and
c. the size of the XML file in bytes; or
2. In accordance with 37 CFR 1.831(a) using the symbols and format requirements of 37 CFR 1.832 through 1.834 on read-only optical disc(s) as permitted by 37 CFR 1.52(e)(1)(ii), labeled according to 37 CFR 1.52(e)(5), with an incorporation by reference statement of the material in the XML format according to 37 CFR 1.52(e)(8) and 37 CFR 1.835(a)(2) or 1.835(b)(2) in a separate paragraph of the specification identifying:
a. the name of the XML file;
b. the date of creation; and
c. the size of the XML file in bytes.
SPECIFIC DEFICIENCIES AND THE REQUIRED RESPONSE TO THIS NOTICE ARE AS FOLLOWS:
Specific deficiency - Sequences appearing in the specification are not identified by sequence identifiers (i.e., “SEQ ID NO:X” or the like) in accordance with 37 CFR 1.831(c).
Required response – Applicant must provide:
A substitute specification in compliance with 37 CFR 1.52, 1.121(b)(3), and 1.125 inserting the required sequence identifiers, consisting of:
• A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
• A copy of the amended specification without markings (clean version); and
• A statement that the substitute specification contains no new matter.
Specific deficiency - This application fails to comply with the requirements of 37 CFR 1.831-1.834 because it does not contain a “Sequence Listing XML” as a separate part of the disclosure. A “Sequence Listing XML” is required because the specification recites sequences (see Table 1 at [00125]).
Required response - Applicant must provide:
• A “Sequence Listing XML” part of the disclosure, as described above in item 1. or 2.; together with
o A statement that indicates the basis for the amendment, with specific references to particular parts of the application as originally filed, as required by 37 CFR 1.835(a)(3);
o A statement that the “Sequence Listing XML” includes no new matter as required by 37 CFR 1.835(a)(4)
AND
• A substitute specification in compliance with 37 CFR 1.52, 1.121(b)(3), and 1.125 inserting the required incorporation by reference paragraph as required by 37 CFR 1.835(a)(2), consisting of:
o A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
o A copy of the amended specification without markings (clean version); and
o A statement that the substitute specification contains no new matter.
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any of the errors of which applicant may become aware of in the specification.
Claim Objections
Claim 1 is objected to because the structures of the disclaimed compounds (pictured below) are blurry and difficult to read. It is suggested that Applicant amend the claim to include clear structures of these compounds.
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Claim Rejections - 35 USC § 112b
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 1-27 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. The claims are indefinite for the reasons that follow:
The limitations “haloalkyl, alkyl, alkenyl, alkynyl, cycloalkyl, aryl, heteroaryl, heterocyclyl, alkoxy, sulfenyl, acyl, sulfinyl, sulfonyl, ester, thiocarbonyl” and “optionally substituted” render the scope of the claimed compounds indefinite because the structure of these groups is ambiguous based on the definitions provided in the specification. Paragraph [0053], for instance, recites typical alkyl groups include, but are in no way limited to, methyl, ethyl… Paragraph [0052] teaches non-limiting examples of possible optional substituents include alkyl, halogen…The definitions of each of the above groups provided in the specification teach limited examples of each group and it is unclear what other groups Applicant intends. Similarly, sulfenyl, acyl, sulfinyl, sulfonyl, ester and thiocarbonyl are generically defined at paragraphs [0069]-[0075]; however, the scope of each of these generic definitions is entirely unclear. The scope of the claims is ambiguous. Examiner suggests amending the claims to recite specific groups (e.g. C1-6 alkyl) for which Applicant has written support in the specification.
Claim 1 recites the variable corresponding to Y is a “Linker”. “Linker” is regarded as indefinite because it is not defined in the specification. A person skilled in the art understands the concept of a “Linker”; however, the point at issue is that there is no requirement regarding the chemical structure of the “Linker”. The structure of “Linker” is ambiguous. It is suggested that Applicant amend the claim to recite specific linking groups such as those which are provided at [00100] of the specification.
Claims 2-25 and 27 depend from claim 1, do not cure all of the above deficiencies, and are therefore also indefinite.
Claims 7-8, 10-11, and 13-14 recite limitations that R2, R2a and R2b can form a ring with the acridine ring of the claimed compounds. There is insufficient antecedent basis for this limitation because the claims depend from claim 1 which does not recite that R2, R2a and R2b can optionally for a ring with the acridine core of formulae (Ia), (Ib) or (Ic). Claim 26 is drawn to the following compound wherein R2 forms a ring with the acridine core. This compound lacks support in claim 1.
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Claim Rejections - 35 USC § 112d
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 7-8, 10-11, 13-14 and 26-27 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 7-8, 10-11, and 13-14 recite limitations that R2, R2a and R2b can form a ring with the acridine ring of the claimed compounds. As noted above, claim 26 is drawn to a compound wherein R2 forms a ring with the acridine core. This limitation is not provided in claim 1. The claims are therefore broader than the base claim and rejected for failing to further limit the subject matter of claim 1.
Claim 27 is a substantial duplicate of claim 1. Claim 27 depends from claim 1 and recites “being a probe” which is an intended use of the claimed compound that does not further limit the structure of the claims. Claim 27 is therefore rejected for failing to further limit the subject matter of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claim 1 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 2-6, 9, 12, and 15-25 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest reference to the instant claims is Yang et al. (Angew. Chem. Int. Ed., 51: Supporting Information)(hereinafter “Yang”). Yang teaches ATTO 495-Tz (pictured below) which is not a compound of the invention (see claim 1, “provided the compound is not”). There is no teaching or motivation provided in Yang or elsewhere in the art that would guide a person of ordinary skill to selectively modify ATTO 495-Tz into the claimed invention with any reasonable expectation of success.
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN MARTIN whose telephone number is (571)270-0917. The examiner can normally be reached Monday - Friday 8 am - 5 pm.
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, Jeffrey Murray can be reached on (571) 272-9023. 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.
September 19, 2026
/K.S.M./Examiner, Art Unit 1624
/BRUCK KIFLE/Primary Examiner, Art Unit 1624
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