DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Applicant’s election of Group II (claims 2-4) in the reply filed on 11/25/2025 is acknowledged. 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)).
3. Claims 1-10 are pending in the application. Claims 1 and 5-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Claims 2-4 are currently under examination.
Specification
4. The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code (see page 2 line 22 and page 201 line 2 of the specification as filed; or see paragraphs [0011] and [0029] of the pre-grant publication). 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.
5. The lengthy 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 errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112
6. 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.
7. Claim 2 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 2 is drawn to “[a] set of probes for detecting the combination of soybean whole genome SNP loci according to claim 1” (emphasis provided). Since there are different approaches for detecting SNPs, such as (1) sequencing-based approach where the probes (e.g., adapters and/or primers) used are universally applicable to all sorts of target genomic DNA (see the reference cited below in the rejection under 35 USC 102) and (2) hybridization-based genotyping approach where the hybridization probes have sequences specific to the SNP loci to be detected, probes for detecting SNPs can mean vastly different things. Accordingly, claim 2 is indefinite for failing to define the metes and bounds of the recited “probes” because there are multiple and different ways (e.g., (1) probes, such as adapters and/or primers, used in sequencing-based approach where such probes are universally applicable to all sorts of target genomic DNA and are not specific to the SNPs to be detected; or (2) hybridization probes used in hybridization-based genotyping approach where such probes have sequences specific to the SNP loci to be detected) to interpret the currently claimed set of “probes” (see MPEP 2173.02.I: “…For example, if the language of a claim, given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate.”).
Claim Rejections - 35 USC § 101
8. 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.
9. Claims 2-4 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., product(s) of nature) without significantly more.
Regarding claim 2
Claim 2 is drawn to a set of probes for detecting the combination of soybean whole genome SNP loci according to claim 1. If the probes are interpreted as hybridization probes used in hybridization-based genotyping approach (i.e., approach (2) as discussed in the 112(b) rejection above), such probes would have the same nucleotide sequences as the corresponding naturally occurring soybean genomic DNA sequences and thus the claimed set of probes would be directed to product(s) of nature which is a judicial exception.
The judicial exception (i.e., product(s) of nature) is not integrated into a practical application because the claimed set of probes can be just naturally occurring soybean genomic DNA fragments. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because there is no additional structural element recited in the claim.
Regarding claims 3-4
Claims 3-4 are directed to a gene chip for detecting the combination of soybean whole genome SNP loci according to claim 1, wherein the gene chip is a liquid-phase chip containing a set of nucleotide probes for detecting the SNP loci according to claim 1, and wherein a solution system of the liquid-phase chip is nuclease-free water. As currently presented, the claimed liquid-phase gene chip appears to be just a set of nucleotide probes in an aqueous solution. Assuming these nucleotide probes are used in hybridization-based genotyping approach, such nucleotide probes would have the same nucleotide sequences as the corresponding naturally occurring soybean genomic DNA sequences and thus the claims would be directed to product(s) of nature which is a judicial exception.
The judicial exception (i.e., product(s) of nature) is not integrated into a practical application because the claimed liquid-phase chip seems to comprise only a set of nucleotide probes in an aqueous solution, where the nucleotide probes are naturally occurring soybean genomic DNA fragments and the solvent (i.e., water) is also a naturally occurring material that exists in soybean cells. Thus, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Claim Rejections - 35 USC § 102
10. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
11. 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.
12. Claim 2 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Elshire et al. (PLoS ONE 2011, 6(5):e19379).
Elshire et al. disclose a set of probes (e.g., adapters, PCR primers, and/or sequencing primers. See the whole document, particularly Figure 1) that can be universally used in a Genotyping-by-Sequencing (GBS) based approach for detecting all sorts of genomic SNP loci.
Conclusion
13. No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAIJIANG ZHANG whose telephone number is (571)272-5207. The examiner can normally be reached Monday - Friday, 8:30 am - 5 pm.
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/KAIJIANG ZHANG/Primary Examiner, Art Unit 1684