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 .
MAINTAINED REJECTION
2. 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.
Claims 25 and 26 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. Claims 25-26 are indefinite because it cannot be determined what is encompassed by a reagent ‘capable of isolating nucleic acids from EVs’, as a reagent cannot isolate nucleic acids, but can be used to isolate them. This language is not defined in the specification, and one of ordinary skill in the art would not be apprised of its meaning. Clarification is required.
REPLY TO ARGUMENTS
3. With respect to the above rejection, the arguments of the response filed 01/09/26 on page 6 have been fully considered, but are not found persuasive. While the response argues that ‘reagent capable of isolating nucleic acids from EVs’ is expressly defined in the specification at the top of page 21, the Office does not agree. What is recited is ‘relates to any reagent to isolate nucleic acids associated to or inside the EVs’, which is not a definition, but merely an ‘intended use’ which does not define the reagent either structurally or functionally. While the response points to examples of what is intended by such a reagent, such examples or preferred embodiments are not to be read into claims. Clarification is required.
ALLOWABLE SUBJECT MATTER
4. Claims 16-24 and 27 are allowable. Claims 25-26 are free of the prior art, but they are rejected for another reason. The arguments of the response on pages 6-9 regarding the obviousness rejection have been fully considered, and are persuasive to obviate the rejection, which is withdrawn.
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.
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH R HORLICK whose telephone number is (571)272-0784. The examiner can normally be reached Mon. - Thurs. 8:30 - 6:30.
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, Gary Benzion can be reached at 571-272-0782. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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03/09/26
/KENNETH R HORLICK/ Primary Examiner, Art Unit 1681
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