DETAILED ACTION
The Applicant’s response, received 20 November 2025, has been fully considered. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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 the Claims
Claims 12-24, 26-28, 30-35, and 37 are pending.
Claims 12-24, 26-28, 30-35, and 37 are rejected.
Priority
This application makes claim for priority to US provisional application 61/654295 filed 01 June 2012.
Claim Interpretation
Claims 12, 13, 21, 28, 32, and 34 recite the term “item of information.” This term is interpreted to mean encoded bytes represented using a schema by a DNA nucleotide to produce a DNA sequence in silico (Specification, ¶ [0013]).
Claim 12 recites the term “parallel sequencing” at line 4. This term is not explicitly supported by the Specification; however, the term is interpreted to be an embodiment of the technology that is inherent in Illumina sequencing platforms. The Specification provides support for the use of parallel sequencing in the descriptions of processes utilizing Illumina sequencing platforms at ¶¶ [0044]; [0049]; and [0054].
Claim Objections
The claim objection advisory in the Office action mailed 21 July 2025 is withdrawn in view of the amendment received 20 November 2025.
Claim Rejections - 35 USC § 101
The rejection of claims 12-24, 26-28, 30-35, and 37 under 35 U.S.C. 101 in the Office action mailed 21 July 2025 is maintained with modification in view of the amendment received 20 November 2025.
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 12-24, 26-28, 30-35, and 37 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite: (a) mental processes, i.e., concepts performed in the human mind (e.g., observation, evaluation, judgement, opinion); and (b) mathematical concepts (e.g., mathematical relationships, formulas or equations, mathematical calculations).
Subject matter eligibility evaluation in accordance with MPEP 2106.
Eligibility Step 1: Step 1 of the eligibility analysis asks: Is the claim to a process, machine, manufacture or composition of matter?
Claims 12-24, 26-28, 30-35, and 37 are directed to a method (i.e., process).
Therefore, these claims are encompassed by the categories of statutory subject matter, and thus, satisfy the subject matter eligibility requirements under step 1.
[Step 1: YES]
Eligibility Step 2A: First it is determined in Prong One whether a claim recites a judicial exception, and if so, then it is determined in Prong Two whether the recited judicial exception is integrated into a practical application of that exception.
Eligibility Step 2A Prong One: In determining whether a claim is directed to a judicial exception, examination is performed that analyzes whether the claim recites a judicial exception, i.e., whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim.
Independent claim 12 recites the following steps which fall within the mental processes and/or mathematical concepts groupings of abstract ideas:
generating the DNA sequence data by assembling, based on the indexing information, a plurality of storage segments data resulting from the sequencing of the plurality of DNA segments (i.e., mental processes);
discarding any segments of the plurality of DNA segments for which an error is identified (i.e., mental processes); and
converting the DNA sequence data into the item of information, wherein the DNA sequence data is an encoding of the item of information and comprises at least 100,000 reads (i.e., mental processes);
wherein each of the plurality of DNA segments comprises the indexing information and a storage segment (i.e., mental processes); and
wherein the indexing information is configured to indicate a position in the DNA sequence data of any one nucleotide datum of the corresponding storage segment in the corresponding one of the plurality of DNA segments data, thus enabling the assembling of the storage segments data to the DNA sequence data (i.e., mental processes).
Dependent claims 13, 16, 21, 26-28, 32-35, and 37 further recite the following steps which fall within the mental processes and/or mathematical concepts groupings of abstract ideas, as noted below.
Dependent claim 13 further recites:
wherein converting the DNA sequence data into the item of information comprises converting the DNA sequence data into a sequence of bytes (i.e., mental processes).
Dependent claim 16 further recites:
wherein the paired-end reads comprise 104 base pairs (i.e., mental processes).
Dependent claim 21 further recites:
wherein the item of information is encoded using a base-3 scheme (i.e., mental processes and mathematical concepts).
Dependent claim 26 further recites:
wherein the indexing information comprises an error-detecting component (i.e., mental processes).
Dependent claim 27 further recites:
wherein the error-detecting component is a parity-check (i.e., mental processes).
Dependent claim 28 further recites:
wherein the indexing information is further configured to identify a source of the item of information (i.e., mental processes).
Dependent claim 32 further recites:
wherein the item of information comprises at least 15,646 bytes (i.e., mental processes).
Dependent claim 33 further recites:
wherein the DNA sequence data comprises at least 1,000,000 reads (i.e., mental processes).
Dependent claim 34 further recites:
wherein the item of information comprises a first file having a first file type and a second file having a second file type, and the first file type is different than the second file type (i.e., mental processes).
Dependent claim 35 further recites:
wherein the first file type is an MP3 format, a text format, a JPEG format, or a PDF format (i.e., mental processes).
Dependent claim 37 further recites:
wherein the generating of the DNA sequence data further comprises splitting the indexing information from the plurality of DNA segments data (i.e., mental processes).
The abstract ideas recited in the claims are evaluated under the broadest reasonable interpretation (BRI) of the claim limitations when read in light of and consistent with the specification. As noted in the foregoing section, the claims are determined to contain limitations that can practically be performed in the human mind with the aid of a pencil and paper (e.g., generating the DNA sequence data by assembling, based on the indexing information, a plurality of storage segments data), and therefore recite judicial exceptions from the mental process grouping of abstract ideas. Additionally, the recited limitations that are identified as judicial exceptions from the mathematical concepts grouping of abstract ideas (e.g., the item of information is encoded using a base-3 scheme) are abstract ideas irrespective of whether or not the limitations are practical to perform in the human mind.
Therefore, claims 12-24, 26-28, 30-35, and 37 recite an abstract idea.
[Step 2A Prong One: YES]
Eligibility Step 2A Prong Two: In determining whether a claim is directed to a judicial exception, further examination is performed that analyzes if the claim recites additional elements that when examined as a whole integrates the judicial exception(s) into a practical application (MPEP 2106.04(d)). A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception. The claimed additional elements are analyzed to determine if the abstract idea is integrated into a practical application (MPEP 2106.04(d)(I); MPEP 2106.05(a-h)). If the claim contains no additional elements beyond the abstract idea, the claim fails to integrate the abstract idea into a practical application (MPEP 2106.04(d)(III)).
Dependent claims 13, 16, 21, 26-28, 32-35, and 37 do not recite any elements in addition to the judicial exception(s), and thus are part of the judicial exception.
The additional elements in independent claim 12 include:
sequencing the plurality of DNA segments to generate DNA sequence data, wherein sequencing comprises parallel sequencing; and
receiving indexing information associated with each of the plurality of DNA segments (i.e., receiving data).
The additional elements in dependent claims 14, 15, 17-20, 22-24, 30, and 31 include:
wherein the sequencing comprises sequencing by synthesis (claim 14);
wherein the sequencing comprises generation of paired-end reads (claim 15);
wherein the method further comprises amplifying the plurality of DNA segments (claim 17);
wherein the plurality of DNA segments are amplified prior to sequencing (claim 18);
wherein the plurality of DNA segments comprises adapters (claim 19);
wherein the adapters comprise SEQ ID NO: 1 or SEQ ID NO: 2, or the reverse complement thereof (claim 20);
wherein the sequencing uses paired-end PCR primers (claim 22);
wherein paired-end PCR primers comprise SEQ ID NO: 1 (claim 23);
wherein paired-end PCR primers comprise SEQ ID NO: 2 (claim 24);
storing bytes in a digital file (claim 30); and
wherein the digital file is stored on a hard disk (claim 31).
The additional element of sequencing the plurality of DNA segments to generate DNA sequence data, wherein sequencing comprises parallel sequencing (claim 12); is a step of gathering data for use in a claimed process, and therefore does not add more than insignificant extra-solution activity to the judicial exception (see MPEP 2106.05(g)).
The additional elements of sequencing by synthesis (claim 14); generation of paired-end reads (claim 15); amplifying the plurality of DNA segments (claim 17); the plurality of DNA segments are amplified prior to sequencing (claim 18); the plurality of DNA segments comprises adapters (claim 19), wherein the adapters comprise SEQ ID NO: 1 or SEQ ID NO: 2, or the reverse complement thereof (claim 20); and the sequencing uses paired-end PCR primers (claim 22), wherein paired-end PCR primers comprise SEQ ID NO: 1 (claim 23) or wherein paired-end PCR primers comprise SEQ ID NO: 2 (claim 24); merely further limit the additional element of performing parallel sequencing, which is a step of gathering data for use in a claimed process, and therefore do not add more than insignificant extra-solution activity to the judicial exception (see MPEP 2106.05(g)).
The additional element of receiving indexing information associated with each of the plurality of DNA segments (i.e., receiving data) (claim 12) is merely a pre-solution activity of gathering data for use in the claimed process – a nominal addition to the claims that does not meaningfully limit the claims, and therefore does not add more than insignificant extra-solution activity to the judicial exceptions (MPEP 2106.05(g)).
The additional elements of storing the bytes in a digital file (i.e., storing data) (claim 30) and the digital file is stored on a hard disk (i.e., storing data) (claim 31) are post-solution activities use in the claimed process, and therefore do not add more than insignificant extra-solution activity to the judicial exceptions (see MPEP 2106.05(g)).
Thus, the additionally recited elements do not add more than insignificant extra-solution activity to the judicial exceptions, and as such, when all limitations in claims 12-24, 26-28, 30-35, and 37 have been considered as a whole, the claims are deemed to not recite any additional elements that would integrate a judicial exception into a practical application, and therefore claims 12-24, 26-28, 30-35, and 37 are directed to an abstract idea (MPEP 2106.04(d)).
[Step 2A Prong Two: NO]
Eligibility Step 2B: Because the claims recite an abstract idea, and do not integrate that abstract idea into a practical application, the claims are probed for a specific inventive concept. The judicial exception alone cannot provide that inventive concept or practical application (MPEP 2106.05). Identifying whether the additional elements beyond the abstract idea amount to such an inventive concept requires considering the additional elements individually and in combination to determine if they amount to significantly more than the judicial exception (MPEP 2106.05A i-vi).
The claims do not include any additional elements that are sufficient to amount to significantly more than the judicial exception(s) because of the reasons noted below.
Dependent claims 13, 16, 21, 26-28, 32-35, and 37 do not recite any elements in addition to the judicial exception(s).
The additional elements recited in independent claim 12 and dependent claims 14, 15, 17-20, 22-24, 30, and 31 are identified above, and carried over from Step 2A: Prong Two along with their conclusions for analysis at Step 2B. Any additional element or combination of elements that was considered to be insignificant extra-solution activity at Step 2A: Prong Two was re-evaluated at Step 2B, because if such re-evaluation finds that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this finding may indicate that the additional element is no longer considered to be insignificant; and all additional elements and combination of elements were evaluated to determine whether any additional elements or combination of elements are other than what is well-understood, routine, conventional activity in the field, or simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, per MPEP 2106.05(d).
The additional elements of receiving data (claim 12) and storing data (claims 30 and 31); are conventional (see MPEP at 2106.05(b) and 2106.05(d)(II) regarding conventionality of computer components and computer processes).
The additional elements of sequencing DNA segments using parallel sequencing (claim 12); sequencing by synthesis (claim 14); paired-end reads (claim 15); amplifying DNA segments (claims 17 and 18); DNA adapters (claim 19); and paired-end PCR primers (claim 22); are conventional. Evidence for the conventionality is shown by Ansorge (New Biotechnology, 2009, Vol. 25, No. 4, pp. 195-203, as cited in the Office action mailed 21 July 2025). Ansorge shows next-generation sequencing technologies (Abstract; and page 196, column, para. 4, through page 201, column 2, para. 1). Ansorge further shows a sequencing platform based on sequencing-by-synthesis chemistry; using adapters with DNA fragments; the adapters act as primers for PCR amplification (page 197, column 1, para. 2); and the sequencer system upgraded with a paired-end sequencing module (page 197, column 2, para. 2).
The additional elements of SEQ ID NO: 1 and SEQ ID NO: 2 (claims 20, 23, and 24) are conventional. Evidence for the conventionality is shown by May et al. (United States Patent Application Publication No.: US 2010/0273219, as cited in the Office action mailed 21 July 2025), Rigatti et al. (United States Patent Application Publication No.: US 2009/0176662, as cited in the Office action mailed 21 July 2025), Peters et al. (United States Patent Application Publication No.: US 2012/0065076, as cited in the Office action mailed 21 July 2025), Igartua et al. (Current Protocols in Human Genetics, 2010, Supplement 66, pp. 18.3.1-18.3.14, as cited in the Office action mailed 21 July 2025), Jiang et al. (Virology Journal, 2011, Vol. 8:194, pp. 1-8, as cited in the Office action mailed 21 July 2025);
May et al. shows using SEQ ID NO. 1 (page 130, SEQ ID NO. 440);
Rigatti et al. shows using SEQ ID NO. 1 (page 33, SEQ ID NO. 7);
Peters et al. shows using SEQ ID NO. 1 (page 65, SEQ ID NO. 69);
Igartua et al. shows using both SEQ ID NO. 1 and SEQ ID NO. 2 (Table 18.3.1) with SEQ ID NO. 2 shown at line 8 (EXOME_BLOCK_R_rev) and both SEQ ID NO. 1 and SEQ ID NO. 2 shown at the bottom of the table (EXOME_ADAPT_HI and EXOME_ADAPT_LO); and
Jiang et al. shows using both SEQ ID NO. 1 and SEQ ID NO. 2 (page 2, column 1, para. 3).
Therefore, when taken alone, all additional elements in claims 12-24, 26-28, 30-35, and 37 do not amount to significantly more than the above-identified judicial exception(s). Even when evaluated as a combination, the additional elements fail to transform the exception(s) into a patent-eligible application of that exception. Thus, claims 12-24, 26-28, 30-35, and 37 are deemed to not contribute an inventive concept, i.e., amount to significantly more than the judicial exception(s) (MPEP 2106.05(II)).
[Step 2B: NO]
Response to Arguments
The Applicant’s arguments/remarks received 20 November 2025 have been fully considered, but are not persuasive.
The Applicant states on page 7 of 12 of the Remarks that claim 12 is not directed to an abstract idea and is patent eligible. The Applicant further states that the Deputy Commissioner Charles Kim issued a memorandum on August 4. 2025 (“August Memorandum”) that provided further guidance to examiners regarding the evaluation of subject matter eligibility of claims under 35 U.S.C. 101. The Applicant further states that this guidance was issued after the mailed date of the present Office action, but given that this guidance appears highly pertinent to the evaluation of the subject matter eligibility of the claims presented herein, Applicant respectfully requests that the rejections under 35 U.S.C. 101 are reconsidered in view of this guidance. The Applicant further states that the recent August Memorandum instructs that, among other things, “[t]he mental process grouping is not without limits. Examiners are reminded not to expand this grouping in a manner that encompasses claim limitations that cannot practically be performed in the human mind.” The Applicant further states that here, claim 12 “cannot practically be performed in the human mind” for at least the following two reasons: First, claim 12 recites “discard any segments of the plurality of DNA segments for which an error is identified” and Applicant contends that the human mind cannot practically discard segments of DNA segments for which an error is identified, and; Second, claim 12 recites “converting the generated DNA sequence data into the item of information, wherein the DNA sequence data… comprises at least 100,000 reads.” The Applicant contends that the human mind cannot practically convert DNA sequence data that comprises at least 100,000 reads into the item of information, and as such, the Applicant contends that claim 12 is not directed to a mental process.
These arguments are not persuasive, because first, regarding the “August Memorandum,” the August 4, 2025 Memorandum states (page 1, para. 1) that the memorandum is not intended to announce any new USPTO practice or procedure and is meant to be consistent with existing USPTO guidance, and second, the USPTO guidance has been followed during examination of the instant claims in this Office action and in the Office actions of record. Third, regarding the Applicant’s argument that the human mind cannot practically discard segments of DNA segments for which an error is identified, it is noted that the “segments of DNA segments for which an error is identified” is data (as supported by the specification at para. [0050]), and data can absolutely be discarded, e.g., deleted, both in the human mind without aid, and also performed in the human mind with the aid of pen and paper. Fourth, regarding the Applicant’s argument that “converting the generated DNA sequence data into the item of information, wherein the DNA sequence data… comprises at least 100,000 reads” cannot practically be performed in the human mind, it is noted that the steps of encoding bytes of information that are represented using a schema by a DNA nucleotide to produce a DNA sequence in silico is a process that can practically be performed in the human mind. The amount of data and/or the amount of time to perform the process steps, in and of themselves is not a limitation which takes a process out of the realm of the human mind. It is the process performed on that data which is the mental step, and mental steps identified in the claims do not have to be the fastest, most efficient, or require specialized computing elements. Thus, although the amount of data may be considered to be significantly large and take considerable time and effort to process manually, the use of a computer to perform the claimed method at a rate and accuracy that can far outstrip the mental performance of a skilled artisan does not change the nature of the activity being performed (i.e., an abstract idea), and therefore does not materially alter the patent eligibility of the claimed subject matter.
The Applicant states on page 8 of 12 (para. 2) of the Remarks that the Examiner argues that claim 12 recites the wording “wherein each of the plurality of DNA segments comprises the indexing information and a storage segment” falls within the mental processes (see point 20 of the July 21, 2025 NFOA). The Applicant further states that the Applicant disagrees, because the wording in question refers to “DNA segments” (not “DNA segments data”) and to “storage segment” (not “storage segment data”). The Applicant further states that in other words, the referenced wording relates to DNA molecules composed of atoms, such as oligonucleotides, however the wording does not relate to data. The Applicant further states that likewise, the terms “indexing information” and “storage segment” in the referenced wording relate to portions of DNA molecules (e.g., oligonucleotides), and therefore the referenced wording does not fall within the mental processes but represents properties of the DNA molecules used for storing the data (or item of information) and therefore, these properties of the DNA molecules are to be regarded as an additional element to be considered.
These arguments are not persuasive, because first, the referenced wording (i.e., “indexing information” and “storage segment”) are not actually properties of DNA molecules, but rather abstract concepts applied to DNA molecules, i.e., a plurality of DNA segments of nucleotides does not actually contain 26 seconds of the audio from Martin Luther Kings “I Have a Dream” speech (Specification, para. [0012]), but rather the actual DNA molecules are merely representative of the information based on an abstract assignment of the information to particular segments of molecules arranged in a particular order.
The Applicant states on page 8 of 12 (bottom) of the Remarks that amended claim 12 is not directed to a mathematical concept, and further states on page 9 (para. 1) that even if claim 12 is based on a mathematical concept, claim 12 does not recite a mathematical concept.
These arguments are not persuasive, because a mathematical concept is not identified at Step 2A Prong One for claim 12 in the Office action mailed 21 July 2025 or in the above rejection.
The Applicant states on page 9 of 12 (para. 2) of the Remarks that claim 12 is integrated into a practical application and amounts to significantly more for at least the following reasons: First, claim 12 is integrated into a practical application and amounts to significantly more in view of BASCOM Global Internet v. AT&T Mobility, because BASCOM held the claims patent eligible, recognizing that: as is the case here, an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces, and that claim 12 is similarly directed towards an inventive concept, specifically, similar to BASCOM, claim 12 recites non-conventional and non-generic subject matter, as evidenced by the lack of a rejection under 35 U.S.C. 102 and 35 U.S.C. 103, and; Second, claim 12 is integrated into a practical application and amounts to significantly more for being directed to a technical improvement. The Applicant further references the “August Memorandum” (Remarks, page 10 of 12) and the Specification (para. [0012]) and further states that paragraphs [0074] – [0083] in the Specification further explain that the claimed DNA data storage enables data retrieval in a massively parallel manner using the sequencing step, which includes parallel sequencing, and that this parallelization leads to high decoding bandwidths (data retrieval bandwidths), and that data storage costs are reduced, scalability to large applications is possible, and that long-term and robust data storage are enabled. The Applicant further states that these statements underscore the impact of large-scale DNA data storage and recoverability of that information, and that claim 12 improves the technical field of high capacity storage of digital information in DNA by incorporating a combination of elements intended to enhance the recoverability of the encoded messages from the DNA segment, and that moreover, amended claim 12 does not recite an extra-solution activity because at least the combination of “receiving indexing information associated with each of the plurality of DNA segments” and “discarding any segments of the plurality of DNA segments for which an error is identified” as recited in claim 12 eliminates sequencing errors to provide high fidelity recovery of stored information significantly improving the field of DNA data storage and data recovery.
These arguments are not persuasive, because first, claim 12 does not recite any additional elements that apply, rely on, or use the judicial exception(s) in a manner that imposes a meaningful limit on the judicial exception(s), because the claim begins with steps of sequencing the DNA segments to generate data and receiving indexing information data, however the claim ends with the step of converting the generated DNA sequence data into the item of information. Second, with regard to the Applicant’s attempt at analogizing the instant claim to BASCOM, it is noted that the amended claim 12 steps reciting the additional elements of sequencing the plurality of DNA segments to generate DNA sequence data, wherein sequencing comprises parallel sequencing; and receiving indexing information associated with each of the plurality of DNA segments; do not amount to amount to an inventive concept. Third, with regard to the Applicant’s argument that claim 12 is directed to a technical improvement, it is noted that the purported improvement comprises the judicial exceptions identified at Step 2A Prong One. Fourth, with regard to the Applicant’s argument that amended claim 12 does not recite an extra-solution activity, it is noted that the steps of sequencing and receiving data are identified as extra-solution activity, and the step of discarding any segments of the plurality of DNA segments for which an error is identified is identified as a judicial exception at Step 2A Prong One.
The Applicant states on page 10 of 12 (bottom) and page 11 of 12 (top) of the Remarks that claim 12 effects a transformation or reduction of a particular article to a different state or thing, and that an article includes a physical object or substance, and the physical object or substance must be particular, meaning it can be specifically identified. The Applicant further states that, specifically, the sequencing step of claim 12 effects a transformation, because in the sequencing step, a physical substance, i.e., the DNA molecules or “DNA segments” are transformed to a different state or thing, i.e., the sequence data, and thus the sequencing step involves a transformation which is further evidence that claim 12 integrates the alleged judicial exception into a practical application (or recites significantly more, if considered at Step 2B).
These arguments are not persuasive, because the sequencing step of claim 12 does not actually effect a transformation (i.e., the sequencer does not transform molecules into data) because broadly, the sequencing machine records a signal (e.g., light or current) for each physical nucleotide base and then these signals are assigned letters (i.e., A, T, C, G) to represent the bases in the form of a sequence read (i.e., data).
Double Patenting
The rejection of claims 12, 13, 14, 15, 16, 17, 18, 19, 20, 22, 23, 24, 28, 30, 32, 33, and 34 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 11, 12, 13, 14, and 15 of U.S. Patent No. 11,892,945 in view of Mardis et al. in the Office action mailed 21 July 2025 is withdrawn in view of the amendment received 20 November 2025.
The rejection of claim 31 on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,892,945 in view of Mardis et al. as applied to claim 12 above, and further in view of Chen et al. in the Office action mailed 21 July 2025 is withdrawn in view of the amendment received 20 November 2025.
The rejection of claim 35 on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,892,945 in view of Mardis et al. as applied to claim 12 above, and further in view of Vishwakarma et al. in the Office action mailed 21 July 2025 is withdrawn in view of the amendment received 20 November 2025.
The provisional rejection of claims 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 26, 27, 28, 30, 31, and 32 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10, 12, 15, 18, 19, 27, 28, 29, 30, 31, 32, 33, and 34 of copending Application No. 17/514,269 (reference application) in view of Hughes et al. in view of Bentwich et al. in the Office action mailed 21 July 2025 is withdrawn in view of the amendment received 20 November 2025.
The provisional rejection of claim 33 on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17/514,269 (reference application) in view of Hughes et al. in view of Bentwich et al. as applied to claim 12 above, and further in view of Mardis et al. in the Office action mailed 21 July 2025 is withdrawn in view of the amendment received 20 November 2025.
More specifically, the instant claims are not the same invention nor do they provide steps which are obvious as the applications above because although there is some overlap in claim limitations, the claims start with the digital data and generating the library and sequencing the library, whereas the instant claims start with the dna fragments and sequencing them to generate the digital data. So, complimentary elements, but appear to be different they are different inventions with different outcomes of at least different ends of the complete process of using molecules to represent digital data.
Conclusion
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.
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/S.W.B./Examiner, Art Unit 1687
/Joseph Woitach/Primary Examiner, Art Unit 1687