DETAILED ACTION
1. This action is written in response to applicant’s correspondence filed 2/17/2026. Applicant has newly added dependent claims 160-164. Claims 1-4, 6-10, 12-18, 21, 24, 26 and 159-164 are currently pending for examination. All the amendments and arguments have been thoroughly reviewed but are found insufficient to place the instantly examined claims in condition for allowance. Specifically, the double patenting rejection is maintained.
Double Patenting
2. 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.
3. Claims 1-4, 6-10, 12-18, 21, 24, 26 and 159-164 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,332,787. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-15 of U.S. Patent No. 11,332,787 teach or render obvious all the steps and elements as recited in instant claims 1-4, 6-10, 12-18, 21, 24, 26 and 159-164.
Specifically, claim 1 of U.S. Patent No. 11,332,787 is drawn to a method that has all the steps and elements as recited in instant claim 1 except the following: (i) “at one or more time points after contacting the loading solution to the surface, to obtain initial loading data” as recited in step (c); and (ii) “from the initial loading data, calculating a predicted end time point at which the predetermined number of nanoscale wells will have been loaded with a polymerase enzyme complex” as recited in step (d).
Regarding the recitation “at one or more time points after contacting the loading solution to the surface, to obtain initial loading data” in step (c), such feature is implicitly suggested by step (c) of claim 1 of U.S. Patent No. 11,332,787 because the “identifying” in said step would necessarily involve “identifying” nanoscale wells that have been loaded with a polymerase enzyme complex at one or more time points after contacting the loading solution to the surface (i.e., the “identifying” would only occur at one or more time points as one could NOT use zero time point to identify something).
Regarding “from the initial loading data, calculating a predicted end time point at which the predetermined number of nanoscale wells will have been loaded with a polymerase enzyme complex” as recited in step (d), such recitation(s) merely specifies how step (d) of claim 1 of U.S. Patent No. 11,332,787 is done (i.e., how long to maintain the loading solution in contact with the surface to reach a time point when the predetermined number of nanoscale wells have been loaded with a polymerase enzyme complex). The specification of U.S. Patent No. 11,332,787 discloses such details (which are the same as those recited in steps (d)-(e) of instant claim 1) as to how step (d) of claim 1 of U.S. Patent No. 11,332,787 is done (see column 3, lines 24-38; column 23, lines 3-23). According to MPEP 804(II)(B)(1), “those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970). The court in Vogel recognized “that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim,” but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent which provides support for the patent claim. According to the court, one must first “determine how much of the patent disclosure pertains to the invention claimed in the patent” because only “[t]his portion of the specification supports the patent claims and may be considered.” The court pointed out that “this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103, since only the disclosure of the invention claimed in the patent may be examined.”
In addition, the further features recited in dependent claims 2-4, 6-10, 12-18, 21, 24, 26 and 159-164 are also taught or rendered obvious by claims 1-15 of U.S. Patent No. 11,332,787.
Response to Arguments
4. Applicant argues the following:
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In response, since applicant has neither filed a terminal disclaimer nor amended the claims of instant application to be patentably distinct from the claims of the referenced U.S. Patent, the double patenting rejection is maintained.
Conclusion
5. 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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heather Calamita can be reached at 571-272-2876. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KAIJIANG ZHANG/Primary Examiner, Art Unit 1684
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