FINAL ACTION
Notice of Pre-AIA or AIA Status and New Examiner
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Please note that the examiner for this application has changed. Please address future correspondence to Robert T. Crow (Art Unit 1683) whose telephone number is (571) 272-1113.
Amendments and Status of the Claims
3. This action is in response to papers filed 22 October 2025 in which the specification and claims 1 and 6 were amended, no claims were canceled, and no new claims were added. All of the amendments have been thoroughly reviewed and entered.
All previous rejections not reiterated below are withdrawn in view of the amendments.
Applicant’s arguments have been thoroughly reviewed and are addressed following the rejections necessitated by the amendments.
Claims 1, 3, 6-8, 14-15, 21-22, 25-28, 32-36, and 38-39 are under prosecution.
4. This Office Action includes new objections and rejections necessitated by the amendments.
Information Disclosure Statement
5. The Information Disclosure Statement filed 22 October 2025 is acknowledged and has been considered.
Claim Objections
6. Claim 35 is objected to because of the following informalities:
Claim 35 is missing a period.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
7. 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.
8. Claims 3, 7, and 8 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.
A. Claim 3 is indefinite in the rection “at least 8 detectors…, or at least 32 detectors,” and claim 8 is indefinite in the recitation “the detectors,” as it is unclear if the claimed detectors refer to individual detectors within the detector banks or the banks themselves.
For the purposes of examination, the claimed detectors are interpreted as individual detectors within a detector bank, as shown in Figure 1 of the instant specification.
B. Claim 7 is indefinite in the recitation “the at least 4 detectors, which lacks antecedent basis in the previous recitation of “at least 4 detector banks.”
Claim Rejections - 35 USC § 103
9. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
10. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
11. Claims 1, 7-8, 25-26, 32-33, and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Frost et al. (U.S. Patent Application Publication No. US 2002/0094116 A1, published 18 July 2002) and Baer et al. (U.S. Patent Application US 2013/022260 A1, published 9 August 2013).
Regarding claim 1, Frost et al. teach methods comprising exposing a sample to a plurality of nucleic acid probes which bind to target nucleic acids (Abstract and paragraphs 0070 and 0024), and detecting the binding of the probes by capturing images using at least four detectors which focus on multiple different focal planes (paragraphs 0016, 0114, 0122, and Figure 16A). Frost et al. also teach using the detected signals to determine abundance (i.e., quantitating) based on the detected signals (paragraph 0173) and spatial distribution (paragraph 0078), and that the methods have the added advantage of allowing identification of polymorphic alleles (paragraph 0026). Thus, Frost et al. teach the known techniques discussed above.
Frost et al. do not teach the claimed banks of detectors.
However, Baer et al. teach methods utilizing detector banks, in the form of imaging sensor comprising an array of photo sensors each tuned to a single color (paragraph 0023), including four colors (paragraph 0025), and that the detector bank (i.e., imaging sensor) has the added advantage of enabling lower cost integration of timing, control, and image processing logic (paragraph 0023). Thus, Baer et al. teach the known techniques discussed above.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of the cited prior art to arrive at the instantly claimed method with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in methods having the added advantages of allowing identification of polymorphic alleles as explicitly taught by Frost et al. (paragraph 0026) and enabling lower cost integration of timing, control, and image processing logic as explicitly taught by Baer et al. (paragraph 0023). In addition, it would have been obvious to the ordinary artisan that the known techniques of the cited prior art could have been combined with predictable results because the known techniques of the cited prior art predictably result in useful imaging techniques and detection of genetic disease.
Regarding claim 7, the method of claim 1 is discussed above. Frost et al. teach passing light from the sample through a plurality of beam splitters to the at least 4 detectors (paragraphs 0053 and 0102). Thus, it would have been obvious to split the beam prior to passage to the at least 4 detector banks.
Regarding claim 8, the method of claim 1 is discussed above. Baer et al. teach the imaging sensors (i.e., the instantly claimed detector banks) comprising an array of photo sensors (i.e., the instantly claimed photodetectors; paragraph 0023). It is also noted that Frost et al. teach cameras (paragraph 0124) and one dimensional (i.e., linear) arrays (paragraph 0131). Baer et al. also teach cameras (paragraph 0021).
Regarding claims 25-26, the method of claim 1 is discussed above. Frost et al. teach combinatorial synthesis of nucleic acids having different sequences (i.e., claim 25; paragraph 0007), and that the library of probes have lengths of 10 nucleotides (i.e., claim 26; paragraph 0033).
In addition, with respect to claim 26, it is reiterated that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists, and that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record.
Regarding claims 32-33 and 36, the method of claim 1 is discussed above. Frost et al. teach fluorescence imaging (i.e., claim 32; paragraph 0070) including multi-color-fluorescence imaging (i.e., claim 33; paragraph 0016), and detection of the binding of nucleic acid probes in a cell (i.e., claim 36; paragraph 0092).
12. Claims 3, 6, and 32-34 are rejected under 35 U.S.C. 103 as being unpatentable over Frost et al. (U.S. Patent Application Publication No. US 2002/0094116 A1, published 18 July 2002) and Baer et al. (U.S. Patent Application US 2013/022260 A1, published 9 August 2013) as applied to claim 1 above, and further in combination with Babcock (Scientific Reports, vol. 8, pages 1-8, published online 29 January 2018).
It is noted that while claims 32-33 are rejected as described above, the claims are also obvious using the interpretation outlined below.
Regarding claims 3, 6 and 32-34, the method of claim 1 is discussed above in Section 11.
Frost et al. teach at least 5 detectors (Figure 16A), and Baer et al. teach each photosensor in the bank (i.e., sensor array) is dedicated to one of four colors (paragraph 0023 ad 0025). Thus, substitution of each of the five detectors of Frost et al. with a sensor array (i.e., detector bank) as taught by Baer et al. results in 4 detectors for each of 5 detector banks, for a total of 20 detectors.
While Frost et al. and Baer et al. teach CMOS cameras (paragraphs 0076 and 0023, respectively), and detection of probe binding (paragraph 0092), neither Frost et al. nor Baer et al. teach focusing on the claimed number of focal planes (i.e., claim 3), focal plane distance (i.e., claim 6), or super resolution imaging (i.e., claim 34).
However, Babcock teaches methods comprising the use of multiple detectors in for fluorescence imaging (Figure 1), as well as a octaplane setup (i.e., claim 3; “Discussion”), as well as focal planes within 600 nm (i.e., claim 6; page 4), and that the methods have the added advantage of removing sCMOS noise (“Discussion”). Babcock also teaches the use of super-resolution fluorescence imaging, which has the added advantage of comparative simplicity for localizing single fluorescent molecules (i.e., claim 34; “Introduction”), which a type of fluorescence imaging (i.e., claim 32) which is multicolor imaging (i.e., claim 33). Thus, Babcock teach the known techniques discussed above.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
The courts have also found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II.
Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is advised that MPEP 716.01(c) makes clear that “[t]he arguments of counsel cannot take the place of evidence in the record” (In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965)). Thus, Applicant should not merely rely upon counsel’s arguments in place of evidence in the record.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Babcock with the cited prior art to arrive at the instantly claimed method with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in methods having the added advantages of allowing removal of sCMOS noise as explicitly taught by Babcock (“Discussion”) and comparative simplicity in localizing single fluorescent molecules as explicitly taught by Babcock (“Introduction”). In addition, it would have been obvious to the ordinary artisan that the known techniques of Babcock could have been combined with the cited prior art with predictable results because the known techniques of Babcock predictably result in useful imaging techniques.
13. Claims 6 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Frost et al. (U.S. Patent Application Publication No. US 2002/0094116 A1, published 18 July 2002) and Baer et al. (U.S. Patent Application US 2013/022260 A1, published 9 August 2013) as applied to claim 1 above, and further in combination with Zhuang et al. (U.S. Patent Application Publication No. US 2011/0002530 A1, published 6 January 2011).
It is noted that while claim 6 is rejected as described above, the claim is also obvious using the interpretation outlined below.
Regarding claims 6 and 14, the method of claim 1 is discussed above in Section 11.
Neither Frost et al. nor Baer et al. teach the claimed focal plane distance (i.e., claim 6) or the claimed z-plane resolution (i.e., claim 14).
However, Zhuang et al. teach methods wherein each of the different focal planes is focused at no more than 1000 nm from a neighboring focal plane (i.e., claim 6; paragraph 0018), as well as determining z positions of the nucleic acid probes in the sample at a resolution of at least 300 nm (i.e., claim 14; paragraph 0028), and that the methods have the added advantage of allowing accurate positioning of the detected entities in all three spatial dimensions (Abstract). Thus, Zhuang et al. teach the known techniques discussed above.
It is reiterated that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists, and that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Zhuang et al. with the cited prior art to arrive at the instantly claimed method with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in methods having the added advantage of allowing accurate positioning of the detected entities in all three spatial dimensions as explicitly taught by Zhuang et al. (Abstract). In addition, it would have been obvious to the ordinary artisan that the known techniques of Zhuang et al. could have been combined with the cited prior art with predictable results because the known techniques of Zhuang et al. predictably result in useful imaging techniques.
14. Claims 15, 21-22, 26-28, and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Frost et al. (U.S. Patent Application Publication No. US 2002/0094116 A1, published 18 July 2002) and Baer et al. (U.S. Patent Application US 2013/022260 A1, published 9 August 2013) as applied to claims 1 and 36 above, and further in combination with Cai et al. (PCT International Application Publication No. WO 2018/026873, published 8 February 2018).
Regarding claims 15, 21-22, 26-28, and 38, the methods of claims 1 and 36 are discussed above in Section 12.
Neither Frost et al. nor Baer et al. teach the claimed amplifier probes (i.e., claim 15) or codewords (i.e., claim 22).
However, Cai et al. teach methods of nucleic acid detection comprising binding bridge oligonucleotides to primary probes, which are specific to target nucleic acid sequences, and further binding tertiary readout probes to the bridge oligonucleotides ( (i.e., claim 15; Figure 26). Cai et al. further teach the tertiary readout probes (i.e., the claimed secondary amplifier nucleic acids) comprise a fluorescent signaling entity, in the form of fluorescent dyes (i.e., claim 21; paragraph 00177).
Cai et al. also teach creating codewords by binding of the nucleic acid probes within the sample; and for at least some of the codewords, matching the codeword to a valid codeword optionally wherein, if no match is found, applying error correction to the codeword to form a valid codeword (i.e., claim 22; paragraphs 00318 and 00409).
Cai et al. further teach acid probes that have an average length of between 10 and 300 nucleotides (i.e., claim 26), that the targets sequences have an average length of between 10 and 200 nucleotides ( i.e., claim 28; paragraph 00139), and that at least some of the plurality of nucleic acid probes comprises a target sequence and one or more read sequences (i.e., clam 27; paragraph 00168).
Cai et al. also teach the method utilize a cell that is fixed (i.e., claim 38; paragraph 00406), and that the methods have the added advantage of allowing quantitation of nucleic acids (Abstract). Thus, Cai et al. teach the known techniques discussed above.
It is reiterated that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists, and that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Cai et al. with the cited prior art to arrive at the instantly claimed method with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in methods having the added advantage of allowing quantitation of nucleic acids as explicitly taught by Cai et al. (Abstract). In addition, it would have been obvious to the ordinary artisan that the known techniques of Cai et al. could have been combined with the cited prior art with predictable results because the known techniques of Cai et al. predictably result in useful techniques for detecting nucleic acids.
15. Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Frost et al. (U.S. Patent Application Publication No. US 2002/0094116 A1, published 18 July 2002), Baer et al. (U.S. Patent Application US 2013/022260 A1, published 9 August 2013) and Babcock (Scientific Reports, vol. 8, pages 1-8, published online 29 January 2018) as applied to claim 34 above, alternatively further in combination with Zhuang et al. (U.S. Patent Application Publication No. US 2011/0002530 A1, published 6 January 2011).
Regarding claim 35, the method of claim 34 is discussed above in Section 12.
It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter which there is reason to believe includes functions that are newly cited or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter shown to be in the prior art does not possess the characteristic relied on” (205 USPQ 594, second column, first full paragraph).
Specifically, Babcock teaches using STORM (e.g., SR-STORM; Figure 6), which is believed to be encompassed by the claimed STORM.
Alternatively, Zhuang et al. methods comprising determining binding of the nucleic acid probes using stochastic optical reconstruction microscopy (STORM) (e.g., Zhuang para 0076, 0082). Thus, Zhuang et al. teach the known techniques discussed above.
It would therefore have alternatively been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have further combined the teachings of Zhuang et al. with the cited prior art to arrive at the instantly claimed method with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in methods having the added advantage of allowing accurate positioning of the detected entities in all three spatial dimensions as explicitly taught by Zhuang et al. (Abstract). In addition, it would have been obvious to the ordinary artisan that the known techniques of Zhuang et al. could have been combined with the cited prior art with predictable results because the known techniques of Zhuang et al. predictably result in useful imaging techniques.
16. Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over Cai et al. (PCT International Application Publication No. WO 2018/026873, published 8 February 2018) and Frost et al. (U.S. Patent Application Publication No. US 2002/0094116 A1, published 18 July 2002).
Regarding claim 39, Cai et al teach methods comprising exposing a sample to a plurality of nucleic acid probes; for each of the nucleic acid probes, exposing the nucleic acid probes to amplifier nucleic acids able to bind thereto, wherein a maximum finite number of amplifier nucleic acids is able to directly or indirectly bind to each of the nucleic acid probes; and for each of the nucleic acid probes (Figure 26), and that the methods have the added advantage of allowing quantitation of nucleic acids (Abstract). Thus, Cai et al. teach the known techniques discussed above.
Cai et al. do not teach 4 cameras focused in different focal planes.
However, Frost et al. teach methods comprising exposing a sample to a plurality of nucleic acid probes which bind to target nucleic acids (Abstract and paragraphs 0070 and 0024), and detecting the binding of the probes by capturing images using at least four detectors which focus on multiple different focal planes (paragraphs 0016, 0114, 0122, and Figure 16A). Frost et al. also teach the detectors are cameras (paragraph 0124), simultaneous detection (paragraph 0016), and that the methods have the added advantage of allowing identification of polymorphic alleles (paragraph 0026). Thus, Frost et al. teach the known techniques discussed above.
It is reiterated that the courts have found that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. Thus, the claimed maximum finite number of probes merely represents routine optimization of the teachings of the cited prior art.
Applicant is again cautioned to not merely rely upon counsel’s arguments in place of evidence in the record.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of the cited prior art to arrive at the instantly claimed method with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in methods having the added advantages of allowing quantitation of nucleic acids as explicitly taught by Cai et al. (Abstract) and allowing identification of polymorphic alleles as explicitly taught by Frost et al. (paragraph 0026). In addition, it would have been obvious to the ordinary artisan that the known techniques of the cited prior art could have been combined with predictable results because the known techniques of the cited prior art. predictably result in useful techniques for detecting nucleic acids.
Double Patenting
17. 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.
18. Claims 1, 7-8, 15, 21-22, 25-27, 32-33, and 36 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 177-206 of copending Application No. 18/046,409 in view of Frost et al. (U.S. Patent Application Publication No. US 2002/0094116 A1, published 18 July 2002) and Baer et al. (U.S. Patent Application US 2013/022260 A1, published 9 August 2013).
Both sets of claims are drawn to methos of hybridizing, codewords, secondary probes, lengths, read sequences, fluorescence imaging, etc. any additional limitations of the ‘409 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘409 claims do not teach four detector banks or abundance and spatial distribution.
However, these limitations, and the additional limitations, and the rationale for combining, are taught by Frost et al. and Baer et al. as discussed above.
This is a provisional nonstatutory double patenting rejection.
19. Claims 3, 6, and 33-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 177-206 of copending Application No. 18/046,409 in view of Frost et al. (U.S. Patent Application Publication No. US 2002/0094116 A1, published 18 July 2002) and Baer et al. (U.S. Patent Application US 2013/022260 A1, published 9 August 2013) as applied to claim 1 above, and further in combination with Babcock (Scientific Reports, vol. 8, pages 1-8, published online 29 January 2018) based on the citations and rationale provided above.
This is a provisional nonstatutory double patenting rejection.
20. Claims 6 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 177-206 of copending Application No. 18/046,409 in view of Frost et al. (U.S. Patent Application Publication No. US 2002/0094116 A1, published 18 July 2002) and Baer et al. (U.S. Patent Application US 2013/022260 A1, published 9 August 2013) as applied to claim 1 above, and further in combination with Zhuang et al. (U.S. Patent Application Publication No. US 2011/0002530 A1, published 6 January 2011) based on the citations and rationale provided above.
This is a provisional nonstatutory double patenting rejection.
21. Claim 35 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 177-206 of copending Application No. 18/046,409 in view of Frost et al. (U.S. Patent Application Publication No. US 2002/0094116 A1, published 18 July 2002), Baer et al. (U.S. Patent Application US 2013/022260 A1, published 9 August 2013), and Babcock (Scientific Reports, vol. 8, pages 1-8, published online 29 January 2018) as applied to claim 34 above, alternatively further in combination with Zhuang et al. (U.S. Patent Application Publication No. US 2011/0002530 A1, published 6 January 2011) based on the citations and rationale provided above.
This is a provisional nonstatutory double patenting rejection.
22. Claim 38 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 177-206 of copending Application No. 18/046,409 in view of Frost et al. (U.S. Patent Application Publication No. US 2002/0094116 A1, published 18 July 2002), Baer et al. (U.S. Patent Application US 2013/022260 A1, published 9 August 2013) as applied to claim 36 above, and further in combination with Cai et al. (PCT International Application Publication No. WO 2018/026873, published 8 February 2018) ) based on the citations and rationale provided above.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
23. Applicant’s arguments have been considered but are moot in view of the new rejections necessitated by the amendments.
Conclusion
24. No claim is allowed.
25. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert T. Crow whose telephone number is (571)272-1113. The examiner can normally be reached M-F 8:00-4:30.
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, Anne Gussow can be reached at 571-272-6047. 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.
Robert T. Crow
Primary Examiner
Art Unit 1683
/Robert T. Crow/Primary Examiner, Art Unit 1683
Prosecution Insights