DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of the Applications, Amendments and/or Claims
It is noted that the examiner of record has changed. Please address all future correspondence to Examiner Olayinka Oyeyemi, whose correspondence information is provided at the conclusion of the office action.
This action is written in response to applicant's correspondence(s) submitted on 07/07/2025. In the paper of 07/07/2025, Applicant amended claims 1-2, 4, 14, and 24-25. Claims 28 and 32 are canceled. Accordingly, claims 1-27, 29-31, and 33-38 are still pending. Claims 9, 13,15 and 33-37 remain withdrawn. Claims 1-8, 10-12, 14, 16-27, 29-31 and 38 are under review.
The paper contain new rejection(s) and is NON-FINAL.
Response to Arguments
Moot objection(s) and Withdrawn Rejection(s)
The objection to claim 24 for reasons stated on page 2 of the Non-Final paper mailed on 04/07/2025 is withdrawn in view of claim amendments.
The rejections of claims 4 and 25-26 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for reasons stated on page 3 of the Non-Final paper mailed on 04/07/2025 are withdrawn in view of claim amendments.
The rejections of claims 1, 2, 6, 9, 10, 11, 12, 14, 16, 19, 20, 22, 24, 25, 26, 27, 30, 31 and 38 under pre-AIA 35 U.S.C. 102(a) or alternatively under 35 U.S.C. 102(e) as being anticipated by Kuersten (US 8,008,010, cited on IDS) are withdrawn based on claim amendments, and because Applicant’s arguments (page 12 of the Remarks of 07/07/2025) were found to be persuasive.
Applicant argues that Kuersten discloses stopper has the tag on the 3' end, distinct from claim 1’s requirement of stoppers comprising a sequence tag on the 5’ end. Applicant argues that the sequence tag at the 5' end of the stopper is fundamentally different to the method of Kuersten as then the tag would lie in between the primer and stopper and prevent the production of a sequence being the reverse complement of the juxtaposed hybridising oligonucleotides. Nothing in Kuersten teaches or suggest the sequence tag being on the 5' position of the stopper.
The rejections of claims 9 and 15 under pre-AIA 35 U.S.C. 102(a) or alternatively under 35 U.S.C. 102(e) as being anticipated by Kuersten (US 8,008,010, cited on IDS) is withdrawn. These inventions are distinct from claim 1 and the claims which were rejected because of the discovery of Kuersten (US 8,008,010, cited on IDS) should not have been rejoined with the elected method(s).
The rejection of claim 17 under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kuersten (US 8,008,010, cited on IDS) as applied to claim 16 above, and further in view of Kayser (US 2011/0104669) is withdrawn for the same reasons as stated above for claims 1 and 16.
The rejection of claim 23 under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kuersten (US 8,008,010, cited on IDS) as applied to claim 1, and further in view of Wallner (US 5,928,643) is withdrawn for the same reasons as stated above for claim 1.
Claim Objections
Claim 6 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 2. Claim 2 is directed to a template nucleic acid being DNA or RNA, preferably RNA. However, since claim 1 is already drawn to the template nucleic acid is RNA, claim 6 should be directed to template nucleic acid being DNA as claim 2 is already construed as encompassing DNA or RNA. If the language of “DNA or RNA, preferably RNA”, remains in claim 6 at the time of allowance, claim 6 will be duplicative of claim 1 or claim 2 and objected to. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 5-8, 10-11, 14, 18-27, 29, 31 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 10, 20-21, 23, 25-27 and 29 each recite the limitation “characterized in that”. This limitation lacks clarity concerning whether the scope of the structure meant by the limitation. It is suggested that conventional U.S. claim language such as “comprising” or “consisting of” or “wherein” be used in place of the phrase “characterized in that” of the limitation to maintain clarity of the scope of the claimed subject matter.
Claim 5 recites the limitation “preferably all”. Claim 6 recites the limitation “preferably RNA”. Claims 7 and 8 each recite the limitations “preferably wherein” and “especially preferred”. Claim 10 each recites the limitation “especially preferred”. Claims 11, 14 and 24 each recite the limitations “preferably wherein”. Claims 17, 18, 19, 22 and 31 each recites the limitation “preferably”. Claim 25 recites the limitations, “preferably selected from” and “preferably intercalators”. The presence of the words “preferably” or “preferred” renders these claims confusing and indefinite. It is not known if the embodiments that follow the words “preferably” or “preferred” are required or suggested/optional limitations in the claims. Deletion of these limitations is
Claim Rejections - 35 USC § 112
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.
Claim 12 is 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. Claim 12 depends from claim 1. Since claim 1 recites the limitation, “wherein any one of the oligonucleotide primers comprises a sequence tag each and any one of the oligonucleotide stoppers and further primers comprises a sequence tag on the 5’ end of the stopper each, claim 12 is not found to be further limiting of claim 1.
This rejection could be obviated if the requirement of claim 12 is that for each sequence tag of the any one of the oligonucleotide primers and any one of the oligonucleotide stoppers, these tags of claim 1, are attached via ligation (also see claim 14 to avoid duplicative claims, claim 14 is construed as having the identical subject matter of claim 12 as it pertains to labeling via ligation of tags to the primers and stoppers of claim 1).
Conclusion
Claims 1-4 and 38 are in condition to be allowed. The remaining pending claims are either not currently allowable in view of the objections and rejection(s) that are stated above and/or because they are withdrawn claims.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLAYINKA A OYEYEMI whose telephone number is (571)270-5956. The examiner can normally be reached Monday -Thursday: 9:00 am - 5:00 pm, EST.
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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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OLAYINKA A. OYEYEMI
Examiner
Art Unit 1681
/OLAYINKA A OYEYEMI/Examiner, Art Unit 1681
/GARY BENZION/Supervisory Patent Examiner, Art Unit 1681