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 .
Claim Objections
2. Claims 1, 11 and 12 are objected to because of the following informalities:
Claim 1, last line: “the at least one terminal coding region” should be changed to “of the first and second terminal coding regions” to be consistent with the amended language in lines 6-9.
Claim 11, the line immediately above the “sorting” step: “the at least one terminal coding region” should be changed to “of the first and second terminal coding regions” to be consistent with the amended language in lines 11-14.
Claim 11, the last two lines: “the at least one terminal coding region” should be changed to “of the first and second terminal coding regions” for more clarity in view applicant’s amendment to the claim.
Claim 12, line 3: “an oligonucleotide G” should be changed to “an oligonucleotide G’ [[G]]” to correct the typographical error.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
3. 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.
4. Claims 11-15 and 17-19 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 pre-AIA the applicant regards as the invention.
Claim 11 recites the limitation “the pool of molecules of formula (II)” in the “sorting” step. There is insufficient antecedent basis for this limitation in the claim. Claims 12-15 and 17-19, each of which depends from claim 11, are also rejected for the same reason.
Double Patenting
5. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
6. Claims 1-2, 4-15 and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-16 and 18-20 of U.S. Patent No. 11,186,836. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-2, 4-16 and 18-20 of U.S. Patent No. 11,186,836 teach or render obvious all the features or limitations as recited in instant claims 1-2, 4-15 and 17-20.
Specifically, claim 1 of U.S. Patent No. 11,186,836 teaches a probe molecule that is more generic than, and encompasses, the probe molecule of instant claim 1; claim 11 of U.S. Patent No. 11,186,836 teaches a method involving the use of a probe molecule that is more generic than, and encompasses, the probe molecule used in the method of instant claim 10; and claim 12 of U.S. Patent No. 11,186,836 teaches a method of forming a probe molecule that is more generic than, and encompasses, the probe molecule formed in the method of claim 11. Since the instantly claimed subgenus is just one of the limited few subgenuses encompassed by the claimed genus in U.S. Patent No. 11,186,836 (e.g., claim 1 of U.S. Patent No. 11,186,836 recites “at least one terminal coding region encoding a first building block or a second building block” [meaning (i) one terminal coding region encoding a first building block, (ii) one terminal coding region encoding a second building block, or (iii) a first terminal coding region encoding a first building block and a second terminal coding region encoding a second building block], “O is an integer from zero to 1”, “P is an integer from zero to 1” and “provided that at least one of O and P is 1” [meaning (i) O=0, P=1; (ii) O=1, P=0; or (iii) O=1, P=1]; whereas instant claim 1 recites “a first terminal coding region encoding a first building block and a second terminal coding region encoding a second building block”, “O is 1” and “P is 1”), the claimed genus in U.S. Patent No. 11,186,836 containing only a limited few subgenuses under the more generic formula would inherently anticipate the instantly claimed subgenus because “one skilled in [the] art would... envisage each member [i.e., each subgenus]” of the genus. In re Petering, 301 F.2d 676, 681, 133 USPQ 275, 280 (CCPA 1962) (emphasis in original).
In addition, the other features as recited in dependent claims 2, 4-9, 12-15 and 17-20 are taught or rendered obvious by claims 2, 4-10, 13-16 and 18-20 of U.S. Patent No. 11,186,836.
Conclusion
7. 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