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 03/06/2026. Claims 1, 3-8, and 14-22 are currently pending. Claims 2 and 9-13 were cancelled. Claim 22 is newly added.
Applicant’s arguments on page 8 of the Remarks of 03/06/2026, with respect to rejections of claims 1-12, 14, 16-18, 20 and 21 under 35 U.S.C. 112(a) for lack of enablement, have been fully considered and are persuasive. The rejection has been withdrawn.
Applicant’s amendments have overcome the rejections of claims 1-12, 14, 16-18, 20 and 21 under 35 U.S.C. 103. The rejection has been withdrawn. The claims are free of the prior art for the reasons described in the office action of 12/11/2025.
Any rejection or objection not reiterated herein has been overcome by amendment. Applicant' s amendments and arguments have been thoroughly reviewed, but are not persuasive to place the claims in condition for allowance for the reasons that follow.
Note: claims 7, 13, 15 and 19 were previously objected to in the office action of 12/11/2025 for being in improper form, and were not treated on the merits. Applicant’s amendments of 03/06/2026 have corrected the improper multiple dependencies. Accordingly, those claims are examined herein.
Objections to the Drawings
The drawings are objected to because the figures are not properly labeled.
37 CFR 1.84 (u)(1) states “The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be preceded by the abbreviation "FIG." Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation "FIG." must not appear.”
In the instant case, the view numbers for the partial views of the Figure 9 are labeled “Figure 9 (part x of 3)” instead of the abbreviation “FIG.” and the number followed by a capital letter.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
PLEASE NOTE: While the remarks of 03/06/2026 state that replacement drawings have been submitted, it appears that the replacement drawings may have been unintentionally omitted, because they have not been received by the office and are not listed on the electronic filing system acknowledgment receipt.
The Applicant is invited to correct the omission. The objection to the drawings will be maintained until the replacement drawings are received.
Claim Objections
Claim 6 is objected to because of the following informalities: the claim recites “claim5” without a space, which should instead be “claim 5”. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 18 and 19 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.
Claim 18 contains the trademark/trade name “FLAG-tag”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a trademarked peptide tag and, accordingly, the identification/description is indefinite. Amending the claim to recite the specific peptide tag sequence would obviate this rejection.
Claim 19 recites the term “preferably”. MPEP 2173.05(d) states "Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made.". Amending the claim to delete the term “preferably” would obviate this rejection.
Conclusion
Claims 1, 3-8, 14-15, 17 and 20-22 are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA M ZAHORIK whose telephone number is (703)756-1433. The examiner can normally be reached M-F 8:00-16:00 EST.
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, Neil Hammell can be reached at (571) 270-5919. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANDA M ZAHORIK/ Examiner, Art Unit 1636
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