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 .
It is noted that the Primary Examiner has changed. Please direct all future correspondences to Katherine Salmon.
This action is in response to papers filed 6/11/2026.
Claims 1,4,6,9,12,22,23,25,28,30,31,40,41,42,43,52,54,56,86,87 are pending.
This action is nonfinal.
Withdrawn Rejections
The rejections made in the prior office action are withdrawn after consideration of the pre appeal conference.
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 1,4,6,9,12,22,23,25,28,30,31,40,41,42,43,52,54,56,86,87 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 1,4,6,9,12,22,23,25,28,30,31,40,41,42,43,52,54, 86,87 are indefinite over step a of claim 1. Step a requires providing a probe comprising an interrogatory region and a blocking strand. The wherein clause are drawn to differently hybridization methods, however, it is not clear if the step is requiring this hybridization or if the claim step only requires “providing”.
Claim 56 is indefinite over step a of claim 56. Step a requires providing a probe comprising an interrogatory region and a blocking strand. The wherein clause are drawn to differently hybridization methods, however, it is not clear if the step is requiring this hybridization or if the claim step only requires “providing”.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1,4,6,9,12,22,23,25,28,30,31,40,41,42,43,52,54,56,86,87 is/are rejected under 35 U.S.C. 102(a) as being anticipated by Soderberg et al. (US Patent Application 2017/0009278 Jan 12, 2017).
With regard to claim 1, Soderberg et al. teaches a method detecting a region on interest (abstract). Soderberg et al. teaches providing a probe with an interrogatory region (para 133) and a blocking strand (para 29). Soderberg et al. teaches hybridization between a probe and target with a displaced region (para 27-30). Soderberg et al. teaches ligating and detecting an amplification product (para 244-247).
With regard to claim 4, Soderberg et al. teaches that the blocking oligonucleotide can be within another molecule (para 27).
With regard to claim 6, Soderberg et al. teaches that the blocking and probe can be in the same molecule (para 27). Soderberg et al. teaches that the probe is a circular probe comprising a specific stem loop structure with an region of interest and a stem that can be blocking (27-35).
With regard to claim 9, Soderberg et al. teaches a probe is a circularizable probe and the ligating in step (c) circularizes the circularizable probe (para 41-56).
With regard to claim 12, Soderberg et al. teaches rolling circle amplification (para 88).
With regard to claim 22 and 25, Soderberg et al. teaches that the blocking sequence can be ribonucleotides at the end of the of the probe (para 29-33).
With regard to claim 23 and 30, Soderberg et al. teaches that the interrogation can be within the probe (para 133).
With regard to claim 28, Soderberg et al. teaches a mismatch (snp) (para 207-213).
With regard to claim 31, Soderberg et al. teaches a method wherein the probe has a region adjacent to the region of interest for displacement (para 29-33).
With regard to claim 40, Soderberg et al. a method of removing probe bound to mismatches before ligation (para 99-107).
With regard to claim 41, Soderberg et al. teaches probes that have more mismatches are less stable (para 87-88).
With regard to claims 42, Soderberg et al. teaches a removing step with multiple washes (para 181-186).
With regard to claim 43, Soderberg et al. teaches methods of using RCA assays (para 88).
With regard to claim 52, Soderberg et al. teaches a method wherein the RCA product has a barcode (para 88).
With regard to claim 54, Soderberg et al. teaches detection of barcodes by contacting labeled probes with the barcodes and detecting the signals (para 88, 99-111).
With regard to claim 56, Soderberg et al. teaches contacting the sample with a circular probe hybridized to a blocking strand (para 27-30). Hybridizing a toehold region of RNA molecules, the blocking strand is displaced and hybridizing a first target RNA and second target using RCA (para 27-100).
With regard to claim 86, Soderberg et al. teaches that the clocking strand can hybridize to the hybridization region and block (para 190).
With regard to claim 87, Soderberg et al. that the blocking strand hybridizes the region and blocks it from hybridizing to the probe (para 190).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE D SALMON whose telephone number is (571)272-3316. The examiner can normally be reached 9-530.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Wu Cheng (Winston) Shen can be reached at 5712723157. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE D SALMON/Primary Examiner, Art Unit 1682
