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 .
Election/Restrictions
Applicant’s election without traverse of claims 38-42 in the reply filed on 04/13/26 is acknowledged. As such, non-elected claims 26-37 and 43-45 are withdrawn from further consideration.
Claim Rejections - 35 USC § 112
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 38-42 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.
Independent claim 38 is deemed to be indefinite in regards to the modifying phrases “or a complement thereof” made in reference to each of the following: SEQ ID NO: 1, SEQ ID NO: 2. and SEQ ID NO: 3, because its metes and bounds are completely unknown.
Likewise, dependent claim 41 is itself deemed to be indefinite in regards to the modifying phrases “or a complement thereof” made in reference to each of the following: SEQ ID NO: 4 and 5, SEQ ID NO: 6 and SEQ ID NO: 7, because its metes and bounds are completely unknown.
Dependent claims 39-40 and 42 are also being rejected here because they are dependent on a rejected base claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims(s) 38-42 are rejected under 35 U.S.C. 103 as being unpatentable over Nair et al. U.S. Patent Application Publication No.: 2015/0087545 A1.
Nair et al. discloses methods of identifying a methicillin-resistant Staphylococcus aureus (MRSA) in a sample wherein the methods involve detecting a S. aureus-specific nucleic acid sequence, mecA and mecC, in the sample. Kits for determining the presence of MRSA in a sample are also provided, see abstract and claim 1.
Nair et al.’s claim 12 reads as followed: “A kit for determining the presence or absence of methicillin resistant Staphylococcus aureus (MRSA) in a biological sample, comprising (i) a first primer pair that specifically hybridizes under stringent conditions to a segment of a target nucleic acid specific for Staphylococcus aureus, (ii) a second primer pair that specifically hybridizes under stringent conditions to a segment of a target mecA nucleic acid, and (iii) a third primer pair that specifically hybridizes under stringent conditions to a segment of a target mecC nucleic acid, wherein one primer of each primer pair is a primer-probe that comprises a probe sequence element at the 5' end of the primer, wherein the probe sequence element further comprises a fluorophore and a quencher, and wherein the fluorophore of the mecA primer and the fluorophore of the mecC primer are identical.”[Emphasis added].
Nair et al. thus discloses a kit for a multiplex polymerase chain reaction (PCR) test using primers and probes for detecting both MecA and MecC genes. Nair et al.’s kit is thus deemed to read on applicant’s claimed kit for detecting a nucleic acid of mecA-containing Staphylococcus aureus (mecA-MRSA) and Staphylococcus aureus (mecC-MRSA), with the only difference being the set of primers-probes used to solve the exact same issue.
One having ordinary skill in the art would readily know that there are a great number of different, yet similar to each other, primers and probes used for detecting a nucleic acid of mecA-containing Staphylococcus aureus (mecA-MRSA) and Staphylococcus aureus (mecC-MRSA) in the prior-art. Applicant’s specifically claimed primers are deemed to be an obvious design modification for one having ordinary skill in the art, since they have very similar structures to the disclosed primers used in the prior-art, such as in Nair et al.’s own invention. Outside a showing of superior and unexpected results for applicant’s specifically claimed primers, applicant’s claimed invention is deemed to be obvious over Nair et al..
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764
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