Prosecution Insights
Last updated: April 19, 2026
Application No. 17/684,289

METHODS AND COMPOSITIONS FOR WHOLE TRANSCRIPTOME AMPLIFICATION

Non-Final OA §101§112
Filed
Mar 01, 2022
Examiner
SISSON, BRADLEY L
Art Unit
1682
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
BECTON, DICKINSON AND COMPANY
OA Round
5 (Non-Final)
20%
Grant Probability
At Risk
5-6
OA Rounds
5y 5m
To Grant
41%
With Interview

Examiner Intelligence

Grants only 20% of cases
20%
Career Allow Rate
145 granted / 743 resolved
-40.5% vs TC avg
Strong +21% interview lift
Without
With
+21.1%
Interview Lift
resolved cases with interview
Typical timeline
5y 5m
Avg Prosecution
77 currently pending
Career history
820
Total Applications
across all art units

Statute-Specific Performance

§101
20.1%
-19.9% vs TC avg
§103
20.2%
-19.8% vs TC avg
§102
7.4%
-32.6% vs TC avg
§112
45.8%
+5.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 743 resolved cases

Office Action

§101 §112
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 . Continued Examination Under 37 CFR 1.114 A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 21 November 2025 has been entered. Claim Interpretation Attention is directed to MPEP 904.01 [R-08.2012]. The breadth of the claims in the application should always be carefully noted; that is, the examiner should be fully aware of what the claims do not call for, as well as what they do require. During patent examination, the claims are given the broadest reasonable interpretation consistent with the specification. See In re Morris, 127 F.3d 1048, 44 USPQ2d 1023 (Fed. Cir. 1997). See MPEP § 2111 - § 2116.01 for case law pertinent to claim analysis. It is noted with particularity that narrowing limitations found in the specification cannot be inferred in the claims where the elements not set forth in the claims are linchpin of patentability. In re Philips Industries v. State Stove & Mfg. Co, Inc., 186 USPQ 458 (CA6 1975). While the claims are to be interpreted in light of the specification, it does not follow that limitations from the specification may be read into the claims. On the contrary, claims must be interpreted as broadly as their terms reasonably allow. See Ex parte Oetiker, 23 USPQ2d 1641 (BPAI, 1992). In added support of this position, attention is directed to MPEP 2111 [R-11.2013], where, citing In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969), is stated: The court explained that “reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from ‘reading limitations of the specification into a claim,’ to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim.” The court found that applicant was advocating the latter, i.e., the impermissible importation of subject matter from the specification into the claim. Additionally, attention is directed to MPEP 2111.01 [R-01.2024], wherein is stated: II. IT IS IMPROPER TO IMPORT CLAIM LIMITATIONS FROM THE SPECIFICATION “Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). Attention is also directed to MPEP 2111.02 II [R-07.2022]. As stated herein: II. PREAMBLE STATEMENTS RECITING PURPOSE OR INTENDED USE PNG media_image1.png 18 19 media_image1.png Greyscale The claim preamble must be read in the context of the entire claim. The determination of whether preamble recitations are structural limitations or mere statements of purpose or use "can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim" as drafted without importing "'extraneous' limitations from the specification." Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation")… (Emphasis added) Attention is directed to MPEP 2111 [R-10.2019]. As stated therein: During patent examination, the pending claims must be "given their broadest reasonable interpretation consistent with the specification." The Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) expressly recognized that the USPTO employs the "broadest reasonable interpretation" standard: The Patent and Trademark Office ("PTO") determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827, 1830] (Fed. Cir. 2004). Indeed, the rules of the PTO require that application claims must "conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description." 37 CFR 1.75(d)(1). (Emphasis added). Claim Rejections - 35 USC § 112, (b) / Second Paragraph 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. Standard for Definiteness. Attention is directed to MPEP 2171 [R-11.2013]: Two separate requirements are set forth in 35 U.S.C. 112(b) and pre-AIA 35 U.S.C. 112, second paragraph, namely that: (A) the claims must set forth the subject matter that the inventor or a joint inventor regards as the invention; and (B) the claims must particularly point out and distinctly define the metes and bounds of the subject matter to be protected by the patent grant. The first requirement is a subjective one because it is dependent on what the inventor or a joint inventor for a patent regards as his or her invention. Note that although pre-AIA 35 U.S.C. 112, second paragraph, uses the phrase "which applicant regards as his invention," pre-AIA 37 CFR 1.41(a) provides that a patent is applied for in the name or names of the actual inventor or inventors. The second requirement is an objective one because it is not dependent on the views of the inventor or any particular individual, but is evaluated in the context of whether the claim is definite — i.e., whether the scope of the claim is clear to a hypothetical person possessing the ordinary level of skill in the pertinent art. Attention is directed to MPEP 2173.02 I [R-07.2022]: During prosecution, applicant has an opportunity and a duty to amend ambiguous claims to clearly and precisely define the metes and bounds of the claimed invention. The claim places the public on notice of the scope of the patentee’s right to exclude. See, e.g., Johnson & Johnston Assoc. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1052, 62 USPQ2d 1225, 1228 (Fed. Cir. 2002) (en banc). As the Federal Circuit stated in Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008): “We note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation.” *** During examination, after applying the broadest reasonable interpretation to the claim, if the metes and bounds of the claimed invention are not clear, the claim is indefinite and should be rejected. Packard, 751 F.3d at 1310 (“[W]hen the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b).”); Zletz, 893 F.2d at 322, 13 USPQ2d at 1322. Attention is also directed to MPEP 2173.02 III B, which states in part: To comply with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, applicants are required to make the terms that are used to define the invention clear and precise, so that the metes and bounds of the subject matter that will be protected by the patent grant can be ascertained. See MPEP § 2173.05(a), subsection I. It is important that a person of ordinary skill in the art be able to interpret the metes and bounds of the claims so as to understand how to avoid infringement of the patent that ultimately issues from the application being examined. See MPEP § 2173.02, subsection II (citing Morton Int ’l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993)); see also Halliburton Energy Servs., 514 F.3d at 1249, 85 USPQ2d at 1658 (“Otherwise, competitors cannot avoid infringement, defeating the public notice function of patent claims.”). Examiners should bear in mind that “[a]n essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.” Zletz, 893 F.2d at 322, 13 USPQ2d at 1322 [Fed. Cir. 1989]. (Emphasis added) Attention is also directed to MPEP 2173.04 [R-10.2019], which states in part: A broad claim is not indefinite merely because it encompasses a wide scope of subject matter provided the scope is clearly defined. But a claim is indefinite when the boundaries of the protected subject matter are not clearly delineated and the scope is unclear. For example, a genus claim that covers multiple species is broad, but is not indefinite because of its breadth, which is otherwise clear. But a genus claim that could be interpreted in such a way that it is not clear which species are covered would be indefinite (e.g., because there is more than one reasonable interpretation of what species are included in the claim). (Emphasis added) Holding and Rationale Claims 1-9 and 11-14 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The term “plurality” in claim 1 is a relative term which renders the claim indefinite. The term “plurality” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claims 2-9 and 11-14, which depend from claim 1, fail to overcome this issue and are similarly rejected. Claims 1-9 and 11-14 are indefinite with respect to what the beads comprise. Acknowledgement is made of claim 6 specifying that the beads (comprises plastic, ceramic, or metal.” It is unclear as to just which plastic(s), ceramic(s), or metal(s) the beads comprise. In recognition that claim 1 must encompass additional embodiments not recited in claim 6, it is less than clear as to what other embodiment(s) of “beads” is/are encompassed. Acknowledgement is made of claim 7 specifying that the beads can be “antibody conjugated beads”; however, it is unclear as to just which types of antibodies, or antibody fragments, produced by which organism, and would bind to which target(s)/antigen(s) is/are encompassed by the claim. In support of the potential breadth of scope of the claim attention to US 6,300,093 B1 (Kindsvogel et al.), which teaches at column 22, last paragraph: Antibodies of the present invention may be produced by immunizing an animal, a wide variety of warm-blooded animals such as horses, cows, goats, sheep, dogs, chickens, rabbits, mice, and rats can be used, with a recombinant or synthetic islet cell antigen polypeptide or a selected portion thereof (e.g., a peptide). Attention is also directed to US 2003/0092624 A1 (Wang et al.). As disclosed at paragraph [0194]: [0194] According to yet an additional aspect of the present invention there is provided an antibody, either polyclonal or monoclonal antibody, recognizing at least one epitope of the polypeptide described herein. The present invention can utilize serum immunoglobulins, polyclonal antibodies or fragments thereof, (i.e., immunoreactive derivative of an antibody), or monoclonal antibodies or fragments thereof. Monoclonal antibodies or purified fragments of the monoclonal antibodies having at least a portion of an antigen binding region, including, such as, Fv, F(ab1)2, Fab fragments (Harlow and Lane, 1988 Antibody, Cold Spring Harbor), single chain antibodies (U.S. Pat. No. 4,946,778), chimeric or humanized antibodies and complementarily determining regions (CDR)… Antibodies of the IgG class are made up of four polypeptide chains linked together by disulfide bonds. The four chains of intact IgG molecules are two identical heavy chains referred to as H-chains and two identical light chains referred to as L-chains. Additional classes includes IgD, IgE, IgA, IgM and related proteins. (Emphasis added) Attention is also directed to US 2013/0338038 A1 (DuBridge et al.), which teaches the following at paragraph [0061]: [0061] Examples of suitable sources for immunoglobulin genes include, but are not limited to, humans, primates, rodents (e.g., rat, mouse, hamster, guinea pig, etc.), non-rodents such as sheep, donkey, goat, horse, cow, pig, chicken, llama, camel, dog, cat, rabbit, fish, and birds. In addition to immunoglobulins obtained from various organisms, variant forms of known antibodies can be used, including humanized, chimeric, and monoclonal antibodies. Further, the immunoglobulin molecules or antibodies of the invention can be of any type (e.g., IgG, IgE, IgM, IgD, IgA, and IgY), class (e.g., IgG1, IgG2, IgG3, IgG4, IgA1, and IgA2), or subclass of immunoglobulin molecule. (Emphasis added) As evidenced above, it is unclear as to what type(s) of antibodies and/or antibody fragment(s), which bind to which antigen(s), that is/are produced by which organism(s) is/are encompassed by the claim(s). Claim Rejections - 35 USC § 101, Judicial Exception 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. Effective December 16, 2014, subject matter eligibility determinations under 35 U.S.C. § 101 follow the procedure explained in the Federal Register notice titled 2014 Interim Guidance on Patent Subject Matter Eligibility (79 FR 74618), which is found at: http://www.gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf. These guidelines were updated May 2, 2016, in the Federal Register notice titled May 2016 Subject Matter Eligibility Update, (81 FR 27381), which can be found at: https://www.gpo.gov/fdsys/pkg/FR-2016-05-06/pdf/2016-10724.pdf, and were further updated in the Federal Register notice titled 2019 Revised Patent Subject Matter Eligibility Guidance, (Federal Register, Vol. 84, No. 4, pp. 50-57), which can be found at: https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf. In a Additionally, attention is directed to Gottschalk, Comr. Pats. v. Benson, et al. (US, 1972) 175 USPQ 673, 675: The Court stated in MacKay Co. v. Radio Corp., 306 U.S. 86, 94, 40 USPQ 199, 202, that “While a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.” That statement followed the long-standing rule that “An idea of itself is not patentable.” Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 507. “A principle, in the abstract, is a fundamental truth; an original cause; a motive; and these cannot be patented, as no one can claim in either of them an exclusive right.” LeRoy v. Tatham, 14 How. 156, 175. Phenomena of nature, though just discovered, mental processes, abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work. As we stated in Funk Bros. Seed Co. v. Kalo Co., 333 U.S. 127, 130, 76 USPQ 280, 281, “He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end.” We dealt there with a “product” claim, while the present case deals only with a “process” claim. But we think the same principle applies. (Emphasis added) Here the “process” claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure-binary conversion. The end use may (1) vary from the operation of a train to verification of drivers’ licenses to researching the law books for precedents and (2) be performed through any existing machinery or future-devised machinery or without any apparatus. (Emphasis added) Attention is also directed to the precedential decision in Ariosa Diagnostics, Inc., et al. v. Sequenom, Inc., et al. 115 USPQ2d 1152 (Fed. Cir. 2015): In Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. ___, 132 S. Ct. 1289 (2012), the Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, we determine whether the claims at issue are directed to a patent-ineligible concept. Id. at 1297. If the answer is yes, then we next consider the elements of each claim both individually and “as an ordered combination” to determine whether additional elements “transform the nature of the claim” into a patent-eligible application. Id. at 1298. *** Mayo made clear that transformation into a patent-eligible application requires “more than simply stat[ing] the law of nature while adding the words ‘apply it.’” Id. At 1294. A claim that recites an abstract idea, law of nature, or natural phenomenon must include “additional features” to ensure “that the [claim] is more than a drafting effort designed to monopolize the [abstract idea, law of nature, or natural phenomenon].” Id. at 1297. For process claims that encompass natural phenomenon, the process steps are the additional features that must be new and useful. See Parker v. Flook, 437 U.S. 584, 591 (1978) (“The process itself, not merely the mathematical algorithm, must be new and useful.”). (Emphasis added) *** Thus, in this case, appending routine, conventional steps to a natural phenomenon, specified at a high level of generality, is not enough to supply an inventive concept. *** Sequenom and amici encourage us to draw distinctions among natural phenomena based on whether or not they will interfere significantly with innovation in other fields now or in the future. The Supreme Court cases, however, have not distinguished among different laws of nature or natural phenomenon according to whether or not the principles they embody are sufficiently narrow. See, e.g., Parker v. Flook, 437 U.S. 584 (1978) (holding narrow mathematical formula unpatentable). In Parker v. Flook, the Supreme Court stated the issue in the case as follows: “The question in this case is whether the identification of a limited category of useful, though conventional, post-solution applications of such a formula makes respondent’s method eligible for patent protection.” Id. at 585. The answer to that question was “no” because granting exclusive rights to the mathematical formula would be exempting it from any future use. Claims 1-9 and 11-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. As noted in Sequenom: First, we determine whether the claims at issue are directed to a patent-ineligible concept. Id. at 1297. As seen in the Interim Guidelines, one asks the question: Is the claim to a process, machine, manufacture or composition of matter? In the present case, the claims are to a composition of matter- a kit. Next, in applying Step 2A, Prong 1, of the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG): Does the claim recite an abstract idea, law of nature, or natural phenomenon? In the present case, the claim(s) is/are directed to natural phenomena- a ligase and a transposase. As seen in US 5,807,674 (Tyagi) at column 10, fourth paragraph: A candidate protein was added to four of the each aliquots so that the five aliquots contained; no ligase, T4 DNA ligase, T4 RNA ligase, E. coli DNA ligase, and a DNA ligase isolated from the thermophilic organism, Thermus aquaticus. (Emphasis added) Attention is also directed to US 2018/0016632 A1 (Penkler et al.), which teaches at paragraph [0056]: In one aspect, the transposase is a hyperactive transposase such as hyperactive Tn5. In another aspect the transposase is wild-type or mutant transposase derived from another source organism, such as Alishewanella aestuarii, Vibrio cholerae, and Vibrio harveyi. (Emphasis added) Attention is also directed to US 2003/0143740 A1 (Wooddell et al.), which teaches at paragraph [0027]: The Tn5 transposase may be purified from natural sources or it may be recombinant protein produced in vitro or it may be synthesized by methods known in the art. (Emphasis added) In applying Step 2A, Prong 2, of the 2019 PEG: Does the claim recite additional elements that integrate the judicial exception into a practical application? In the present case, the claim(s) have not been found to recite additional elements that integrate the judicial exception into a practical application. As noted above in Sequenom, For process claims that encompass natural phenomenon, the process steps are the additional features that must be new and useful. See Parker v. Flook, 437 U.S. 584, 591 (1978) (“The process itself, not merely the mathematical algorithm, must be new and useful.”). (Emphasis added) In the present case, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the components of the claimed kit have not been modified in any manner nor have they been combined with other reagents into a composition that does not exist in nature. Response to argument At pages 5-6 of the response of 21 November 2025, hereinafter the response, applicant’s representative traverses thee rejection of claims under 35 USC 101 for being directed to a judicial exception. At page 5 of the response said representative effectively reproduces the rejection. At page 6 of the response said representative asserts: Applicant respectfully disagrees with the rejections. Applicant respectfully submits that claim 1 recites additional elements (a plurality of beads and an adaptor) beyond the judicial exception, which when evaluated individually and as a whole, i.e., in combination with the other elements of Applicant's claimed invention, integrates the exception into a practical application. The plurality of beads and the adaptor enable the generation of quasi-symmetric stochastically barcoded nucleic acids capable of undergoing suppression PCR to reduce amplification artefacts and enable more efficient amplification of a target nucleic acid (See, e.g., paragraphs [0194], [0211], and [0244] of the application as filed). Accordingly, these additional elements recited in claim 1 are meaningful limitations that integrate the alleged natural phenomena into a practical application of the alleged natural phenomena (e.g., for labeling a plurality of targets from a sample). Therefore, claim 1 is not directed to natural phenomena (or any other judicial exception). Therefore, claim 1 is directed to patent-eligible subject matter. Accordingly, for at least these reasons, Applicant respectfully requests the withdrawal of the rejection of claims 1-9 and 11-13 under 35 U.S.C. §101. The above cited argument has been considered and has not been found persuasive. It is noted that the claims are to “a kit”. The kit comprises “a plurality of beads…; an adaptor…; and an enzyme, wherein the enzyme is a ligase or a transposase.” It is noted with particularity that the claims do not specify that the components of the kit, and in particular, the enzyme that is either a ligase or a transposase be part of any mixture. Absent such a limitation, the claimed kit has been construed as encompassing embodiments where the “plurality of beads”, “an adaptor” and “an enzyme” are in separate containers, and, therefore, not part of any mixture. It is further noted that the claims do not specify that the ligase or transposase have any non-natural properties. Given such, the ligase and transposase are deemed to fairly encompass naturally occurring enzymes, and do not provide significantly more than the judicial exception. In view of the above analysis and in the absence of convincing evidence to the contrary, claims 1-9 and 11-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Conclusion Objections and/or rejections which appeared in the prior Office action and which have not been repeated hereinabove have been withdrawn. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Attention is directed to US 2001/0053519 A1 (Fodor et al.), paragraph [0101]. As stated therein: [0101] A powerful form of the generic array is the n-mer array. N-mer arrays comprise a solid support to which are attached all possible nucleic acid sequences of a give length. Therefor, a 2-mer array comprises all possible oligonucleotides containing 2 base positions. Because each position can be filled with one of four possible bases, adenine (A), cytosine (C), thymine (with uracil replacing thymine in RNA) (T(U)), and guanine (G), an n-mer array comprising all possible n-mers contains 4.sup.n different oligonucleotide probes. Thus, a 2-mer array comprises 4.sup.2 or 16 different oligonucleotide sequences. A 10-mer array comprises 4.sup.10 or 1,048,576 distinct sequences and a 25-mer array comprises 4.sup.25 or over 1.times.10.sup.15 different oligonucleotide sequences. By way of explanation, all possible oligonucleotide 25-mers may be depicted in the fashion. (Emphasis added) Such an array must encompass each of SEQ ID NO. 3 and 7 of the instant application. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bradley L. Sisson whose telephone number is (571)272-0751. The examiner can normally be reached Monday to Thursday, from 6:30 AM to 5 PM. 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, Wu-Cheng Shen can be reached at 571-272-3157. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /Bradley L. Sisson/Primary Examiner, Art Unit 1682
Read full office action

Prosecution Timeline

Mar 01, 2022
Application Filed
Jun 30, 2022
Response after Non-Final Action
Jun 26, 2023
Non-Final Rejection — §101, §112
Oct 02, 2023
Response Filed
Jul 17, 2024
Final Rejection — §101, §112
Oct 24, 2024
Request for Continued Examination
Oct 28, 2024
Response after Non-Final Action
Nov 14, 2024
Non-Final Rejection — §101, §112
May 16, 2025
Response Filed
Aug 19, 2025
Final Rejection — §101, §112
Nov 21, 2025
Request for Continued Examination
Nov 25, 2025
Response after Non-Final Action
Jan 24, 2026
Non-Final Rejection — §101, §112 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12529100
METHODS FOR REMOVAL OF ADAPTOR DIMERS FROM NUCLEIC ACID SEQUENCING PREPARATIONS
2y 5m to grant Granted Jan 20, 2026
Patent 12492424
COMPOSITIONS AND METHODS FOR DETECTING VIRAL NUCLEIC ACIDS
2y 5m to grant Granted Dec 09, 2025
Patent 12410463
NOVEL MOLECULAR BEACONS
2y 5m to grant Granted Sep 09, 2025
Patent 12404543
HYBRIDIZATION COMPOSITIONS AND METHODS FOR MAKING AND USING COMPOSITIONS
2y 5m to grant Granted Sep 02, 2025
Patent 12385089
METHODS FOR SINGLE-MOLECULE ANALYSIS
2y 5m to grant Granted Aug 12, 2025
Study what changed to get past this examiner. Based on 5 most recent grants.

AI Strategy Recommendation

Get an AI-powered prosecution strategy using examiner precedents, rejection analysis, and claim mapping.
Powered by AI — typically takes 5-10 seconds

Prosecution Projections

5-6
Expected OA Rounds
20%
Grant Probability
41%
With Interview (+21.1%)
5y 5m
Median Time to Grant
High
PTA Risk
Based on 743 resolved cases by this examiner. Grant probability derived from career allow rate.

Sign in with your work email

Enter your email to receive a magic link. No password needed.

Personal email addresses (Gmail, Yahoo, etc.) are not accepted.

Free tier: 3 strategy analyses per month