DETAILED ACTION
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 .
Application Status
This action is written in response to applicant’s correspondence received 4/3/2026. Claims 1-3, 5-18,19,20 filed 4/3/2026 are under examination in this Office action. Claims 4, 5 and 18 remain withdrawn, being drawn to a non-elected invention.
Any rejection or objection not reiterated herein has been overcome by amendment.
Information Disclosure Statement
The information disclosure statement filed on 1/21/2026 does not fully comply with the requirements of 37 CFR 1.98(b) because: it is very blurry, making parts of it unreadable. Since the submission appears to be bona fide, applicant is given ONE (1) MONTH from the date of this notice to supply the above mentioned omissions or corrections in the information disclosure statement. NO EXTENSION OF THIS TIME LIMIT MAY BE GRANTED UNDER EITHER 37 CFR 1.136(a) OR (b). Failure to timely comply with this notice will result in the above mentioned information disclosure statement being placed in the application file with the noncomplying information not being considered. See 37 CFR 1.97(i).
Claim Objections
Claim 15 is objected to because of the following informalities: redundancy that is unnecessary in preamble: An authentication assay, the assay comprising does not need “the assay” prior to comprising.
Claim 15 is objected to additionally because it is missing “that” in line 4 prior to is prehybridized.
Appropriate correction is required.
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.
Claim(s) 1, 2,3, 6-17,19-20 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.
Claims 1 and 15 are indefinite in the recitation “each reporter oligonucleotide of the plurality of reporter oligonucleotides being bound to one of the plurality of assay locations via an anchor region” is indefinite because there are multiple interpretations of the phrase, including that each reporter oligonucleotide is bound to a different assay location from other reporter oligonucleotides, OR that each reporter is bound to one (the same one for all reporters) location.
Claim 1 is indefinite in the recitation of “the at least one DNA taggant is configured to bind to the at least one reporter oligonucleotide to initiate…” since it is not entirely clear whether “the at least one reporter” can be any and or all reporters, given that the taggant is fully complementary to only one type of the reporter.
The same issue is relevant for “the at least one reporter oligonucleotide for the at least one DNA taggant a few lines subsequent on Pg3, penultimate “para” from end.
The same issue is relevant for the final “para” of the claim.
Claim 1 is indefinite in the recitation of “the pattern of emitted light is due to binding of the at least one DNA taggant” since it is not unambiguously indicated what constitutes the pattern (e.g. is there a pattern in one signal, or is the unique signal a result of the sum of a suite of bindings occurring at particular/unique locations, or the amount of light emitted, or binding stringency, or something else).
For the final two rejections to claim 1, claims 2-3,6-7 depend from claim 1 and are indefinite for the same reason(s) as each rejection above, since the additional limitations fail to resolve the deficiency of the base claim.
Claim 8 is indefinite in the recitation of “synthesizing at least one embedded deoxyribonucleic acid” taggant, since it is unclear how to synthesize an embedded taggant as part of the manufacture of the authentication assay. Claims 9-14 depend from claim 8 and are indefinite for the same reason, since the additional limitations fail to resolve the deficiency of the base claim.
Claim 11 is indefinite in the recitation of “the pattern of light is configured to be
captured” since the light does not appear to be configured and the specification refers to the
reader as being configured to capture the light emitted [0040]. Claim 12 depends from claim 11
and is indefinite for the same reason, since the additional limitations fail to resolve the
deficiency of the base claim.
Claim 13 is indefinite in the recitation of “configuring the authenticity label” since it is
unclear what method of manufacture step “configuring the label” would reference. The specification does not recite configuring the label. Rather, it merely states “the label 236 may be included in a coating that is applied to a surface” (Pg 19) or embedded in a wax coating that is sprayed (Pg 20). Several other recitations merely state “included in a coating”.
Claim 14 and 20 have a similar issue at claim 13 re: configuring the authenticity label, and the clarity regarding what configuring is claimed, since the Specification recites “the taggant 226, may be added to a liquid…” ([0044], Pg 17) and “swabbed from a product and placed in a liquid” ([0052], Pg 20) and “when the product is a liquid product, the authenticity label is added directly to the product” ([0074], Pg 29).
Claim 17 is indefinite in the recitation of the “the at least one DNA taggant is prehybridized” because it is unclear to which taggant this refers.
Response to Remarks:
Prior rejections have been overcome by amendment, thus no further response is necessary.
Conclusion
Claim 15 is objected to and claims 1-3, 6-17,19-20 are rejected.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Lisa Horth whose telephone number is (703)756-4557. The examiner can normally be reached Monday-Friday 8-4 EST.
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/LISA HORTH/Examiner, Art Unit 1636
/NEIL P HAMMELL/Supervisory Patent Examiner, Art Unit 1636
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