DETAILED ACTION
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 .
Election/Restrictions
2. Applicant’s election of Group III (including claims 17-20, as well as newly added claims 21-36) in the reply filed on 2/6/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
3. Since applicant has canceled claims 1-16 in the non-elected Groups I-II, claims 17-36 are currently pending and under examination.
Claim Objections
4. Claims 17, 21 and 22 are objected to because of the following informalities:
Claim 17, lines 2-3: “a first double stranded nucleic acid and second double stranded nucleic acid” should be changed to “a first double stranded nucleic acid and a second double stranded nucleic acid” to correct the grammatical error
Claim 17, line 6: “a 5’ end and a 3’ of the second double stranded nucleic acid” should be changed to “a 5’ end and a 3’ end of the second double stranded nucleic acid” for more clarity
Claim 21, line 2: “Kapa Uracil polymerase” should be changed to “Kapa Uracil polymerase.” because each claim should end with a period (see MPEP 608.01(m): “Each claim begins with a capital letter and ends with a period.”)
Claim 22, line 2: “polymerase” should be changed to “polymerase.” because each claim should end with a period (see MPEP 608.01(m): “Each claim begins with a capital letter and ends with a period.”)
Appropriate correction is required.
Claim Rejections - 35 USC § 112
5. 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.
6. Claims 17-36 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 pre-AIA the applicant regards as the invention.
Claim 17 recites “annealing a uracil at a 5’ end and a 3’ end of the first double stranded nucleic acid” and “annealing a uracil at a 5’ end and a 3’ [end] of the second double stranded nucleic acid” in lines 4-6 (emphasis added). First, it is not clear whether the “uracil” being annealed is from the 5’-end and 3’-end of the first/second double stranded nucleic acid or from an external source. Second, if the “uracil” being annealed is from an external source, it is unclear as to what conditions are used to anneal such a single nucleotide to the first/second double stranded nucleic acid and how such a single nucleotide could possibly be annealed at the 5’/3’-end instead of anywhere else of the first/second double stranded nucleic acid.
Furthermore, claim 17 recites a step of “amplifying the mixture using a uracil incompatible polymerase to generate a single-stranded nucleic acid” in the last two lines (emphasis provided). Since amplifying involves the use of a primer and a nucleic acid template and would result in a double-stranded nucleic acid comprising the extended primer hybridized to the nucleic acid template, it is unclear how the “amplifying” step at the end of claim 17 could possibly generate a single-stranded nucleic acid.
Likewise, claim 26 recites a step of “amplifying a mixture using a uracil incompatible polymerase to generate a single-stranded nucleic acid” at the end of the claim (emphasis provided). Since amplifying involves the use of a primer and a nucleic acid template and would result in a double-stranded nucleic acid comprising the extended primer hybridized to the nucleic acid template, it is unclear how the “amplifying” step at the end of claim 26 could possibly generate a single-stranded nucleic acid.
Claims 18-25 and 27-36, each of which depends from claim 17 or 26, are also rejected as being indefinite for the same reason(s) as discussed above.
Note: As discussed above, there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of the claims. Thus, it would not be proper to reject such claims on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Conclusion
7. No claim is allowed.
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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/KAIJIANG ZHANG/Primary Examiner, Art Unit 1684