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 108-133 are objected to because of the following informalities:
Claim 108, line 1: “synthesising” should be changed to “synthesi[[s]]zing” to correct the typographical error
Claim 109, line 1: “A method according to claim 108” should be changed to “The [[A]] method according to claim 108” for more clarity
Claim 110, line 1: “A method according to claim 109” should be changed to “The [[A]] method according to claim 109” for more clarity
Claim 111, line 1: “A method according to…” should be changed to “The [[A]] method according to…” for more clarity
Claim 112, line 1: “A method according to…” should be changed to “The [[A]] method according to…” for more clarity
Claim 113, line 1: “A method according to…” should be changed to “The [[A]] method according to…” for more clarity
Claim 114, line 1: “A method according to…” should be changed to “The [[A]] method according to…” for more clarity
Claim 115, line 1: “A method according to…” should be changed to “The [[A]] method according to…” for more clarity
Claim 116, line 1: “A method according to…” should be changed to “The [[A]] method according to…” for more clarity
Claim 117, line 1: “A method according to…” should be changed to “The [[A]] method according to…” for more clarity
Claim 118, line 1: “A method according to…” should be changed to “The [[A]] method according to…” for more clarity
Claim 119, line 1: “A method according to…” should be changed to “The [[A]] method according to…” for more clarity
Claim 120, line 1: “A method according to…” should be changed to “The [[A]] method according to…” for more clarity
Claim 121, line 1: “A method according to…” should be changed to “The [[A]] method according to…” for more clarity
Claim 122, line 1: “A method according to…” should be changed to “The [[A]] method according to…” for more clarity
Claim 123, line 1: “A method according to…” should be changed to “The [[A]] method according to…” for more clarity
Claim 124, line 1: “A method according to…” should be changed to “The [[A]] method according to…” for more clarity
Claim 125, line 1: “A method according to…” should be changed to “The [[A]] method according to…” for more clarity
Claim 126, line 1: “A method according to…” should be changed to “The [[A]] method according to…” for more clarity
Claim 127, line 1: “A method according to…” should be changed to “The [[A]] method according to…” for more clarity
Claim 128, line 1: “A method according to…” should be changed to “The [[A]] method according to…” for more clarity
Claim 129, line 1: “A method according to…” should be changed to “The [[A]] method according to…” for more clarity
Claim 130, line 1: “A method according to…” should be changed to “The [[A]] method according to…” for more clarity
Claim 131, line 1: “A method according to…” should be changed to “The [[A]] method according to…” for more clarity
Claim 132, line 1: “A method according to…” should be changed to “The [[A]] method according to…” for more clarity
Claim 133, line 1: “A method according to…” should be changed to “The [[A]] method according to…” for more clarity
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 108-133 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: (i) essential technical feature(s) associated with “incorporation of one or more nucleotides in a first ligation reaction by the action of an enzyme having ligase activity” and “incorporation of one or more nucleotides in a second ligation reaction by the action of an enzyme having ligase activity” (because an enzyme having ligase activity would not add just “one” nucleotide in a ligation reaction and such ligation reaction also requires some additional feature(s) not recited in claim 108); (ii) essential technical feature(s) that enables the incorporation of nucleotides in the two strands of the double-stranded polynucleotide to occur in two separate ligation reactions (i.e., a “first” ligation reaction and a “second” ligation reaction) rather than a single ligation reaction (Note that the “cleavage” step between the two ligation-based extending steps as recited in claim 114 would require a cleavage site which is totally undefined in either claim 108 or claim 114, even though the specification (e.g., see Figure 1B) discloses that a universal nucleotide (that is added together with the one or more nucleotides to be incorporated by ligation) serves as such a cleavage site).
Conclusion
5. No claim is currently allowed. However, once the informality and 112 issues (as discussed in the objections and rejections above) are resolved, claims 108-133 will be allowable. The prior art does not teach or reasonably suggest the method of instant claim 108. Specifically, Milton et al. (WO 2018/134616 A1), regarded as the closest prior art reference, disclose an in vitro method of synthesizing a double-stranded polynucleotide having a predefined sequence, the method comprising performing cycles of synthesis wherein in each cycle, a first strand is extended by the incorporation of a nucleotide of the predefined sequence and the second strand which is hybridized to the first strand is extended by the incorporation of a nucleotide thereby forming a nucleotide pair with the incorporated nucleotide of the first strand (see page 2, line 13 – page 3, line 21; claims 1-4; Figures 1-2). However, the first strand is extended by the action of a polymerase in the method of Milton et al. (see page 3, lines 3-21; claim 4), unlike the method of instant claim 108 wherein both strands of the double-stranded polynucleotide are extended by the action of an enzyme having ligase activity.
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/KAIJIANG ZHANG/Primary Examiner, Art Unit 1684
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