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 .
DETAILED ACTION
1.The Applicant’s response to the office action filed on July 20, 2026 is acknowledged.
Status of the Application
2. Claims 1-4, 6-11, 22-23 and 26 ae pending under examination. Claims 27-28, 48-52, 60-64 are withdrawn from further consideration as being drawn to nonelected group. Claims 5, 12-21, 24-25, 29-47 and 53-59 are canceled. The Applicant’s arguments have been fully considered and found persuasive in-part for the following reasons.
Claim Rejections - 35 USC § 112-withdrawn
3. The rejection of claims under 35 USC 112(b) has been withdrawn in view of the persuasive arguments.
Claim Rejections - 35 USC § 103-Withdrawn
4. The rejection of claims under 35 USC 103 as being obvious over Margulies et al. in view of Christensen et al. has been withdrawn in view of the persuasive arguments.
Double Patenting-Maintained
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.
Claims 1-4, 6-11, 22-23 and 26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7, 9-11, 13-15, 19-22, 24, 29-33, 35, 46, 50-51, 54, 57, 66, 69 of co-pending Application No.17/908,809. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims 1-4, 6-11, 22-23 and 26 are entirely within the scope of the claims in the co-pending application. Specifically, the method steps of the 1-4, 6-11, 22-23 and 26 claims comprising a method of detecting the presence of a target analyte comprising contacting target analyte with an aptamer comprising a detectable marker situated at an internal location within the aptamer, wherein the detectable marker is situated at a position that is x nucleotides from a terminus of the aptamer, wherein x is an integer that is 1, n/2 or any integer between 1 and n/2, wherein n is the length of the aptamer and an even or odd number, wherein target analyte binding to the aptamer results in restriction of internal rotation of the marker, resulting in a detectable change in the marker are within the scope of the claims in the co-pending application, specifically claim 1 is within the scope of the claim 1 in combination with claims 19-20 of the co-pending application. The claims 1-4, 6-11, 22-23 and 26 differ from the claims in the co-pending application in reciting an aptamer which is considered obvious over the spherical nucleic acid of the claims in the co-pending application and considered co-extensive in scope. Thus, the instant claims 1-4, 6-11, 22-23 and 26 are obvious over the claims in the co-pending application. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments:
With reference to the rejection of claims under obviousness type of double patenting over the claims in the co-pending application 17/608,809, the Applicant’s arguments requesting to hold the rejection in abeyance have been fully considered. The rejection has been maintained and restated as above because the scope of the claims remain unchanged and within the scope of the claims in the co-pending application and no terminal disclaimer has been filed.
Conclusion
Claims 1-4, 6-11, 22-23 and 26 are free of prior art.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SURYAPRABHA CHUNDURU whose telephone number is (571)272-0783. The examiner can normally be reached 8.00am-4.30pm.
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, 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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Suryaprabha Chunduru
Primary Examiner
Art Unit 1681
/SURYAPRABHA CHUNDURU/Primary Examiner, Art Unit 1681
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