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 .
Claims 1-2, 5-9 and 11 are currently pending and have been examined.
Claims 1-2 and 5-9 are rejected.
Claims 9 and 11 are objected to.
Response to Arguments
The previous 112(b) rejections of record are hereby withdrawn in light of Applicant’s amendments. However, a new 112(b) rejection is hereby entered for dependent claim 9 due to lack of antecedent basis for the term “the molecular memory”.
Applicant’s arguments with respect to claim(s) 1-2, 6 and 8-9 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Claim 9 is 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 9 recites the limitation "the molecular memory" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim because “a molecular memory” was deleted from independent claim 1 in the amendment dated 12/12/25.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 5 of prior U.S. Patent No. 11,790,280. This is a statutory double patenting rejection. By removing the language “such that the information storage system comprises a molecular memory” and adding “wherein the addressable locations comprise at least 1024 independent mixture spots”, instant claim 1 is now claiming the same subject matter as issued claim 5 of US 11,790,280.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2 and 5-8 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 2019/0244109 (hereinafter Bramlett).
Regarding claim 1, Bramlett discloses:
An information storage system, comprising a solid surface (¶[0168], “An exemplary solid support can be seen in FIGS. 12A-12B. FIG. 12A shows a front side of the solid support made of glass and comprising a clear window for array and fluidic ports.”) with a plurality of addressable locations (¶[0170], “The solid support has dimensions of 3.5 inches by 2.5 inches. The capacity of the solid support is 1 petabyte that is implemented as an addressable 32×32 array comprising 1024 spots.”), wherein each addressable location comprises a mixture of small molecules, and each mixture contains one set of small molecules per addressable location, and wherein the addressable locations comprise at least 1024 independent mixture spots (As noted in the ¶[0170] citation above, Bramlett discloses each addressable location of comprises 1024 spots. Additionally, Bramlett @¶[0066] teaches the spots comprises a mixture of small molecules (emphasis added), “A surface material for nucleic acid extension, a design for loci for nucleic acid extension (aka, arrangement spots), and reagents for nucleic acid synthesis are selected 107. The surface of a structure is prepared for nucleic acid synthesis 108. De novo polynucleotide synthesis is performed 109. The synthesized polynucleotides are stored 111 and available for subsequent release 113, in whole or in part.” Here the polynucleotide molecules are stored at the addressable loci [see also ¶[0157], “Provided herein are devices for storing information, comprising: a chip comprising an array of addressable loci, wherein one or more addressable loci comprise at least one electrode, a synthesis surface, and at least one fluid port, wherein the synthesis surface at each addressable loci comprises at least one polynucleotide extending from the surface, wherein a density of addressable loci on the chip is at least 100×10.sup.6 polynucleotides per cm.sup.2.”].).
Regarding claim 2, Bramlett discloses:
The information storage system of claim 1, wherein the addressable locations are converted to digital sequences (See Figure 1 which shows the stored polynucleotide is ultimately converted to a digital sequence in step 119. See also ¶[0066]).
Regarding claim 5, Bramlett discloses:
The information storage system of claim 1, wherein the addressable locations comprise thousands of spatially arrayed nanoliter spots (As noted above, the addressable locations of Bramlett comprise polynucleotides. Paragraph [0079] goes on to disclose (emphasis added), “In some instances, 109 polynucleotides are supported on less than about 6, 5, 4, 3, 2 or 1 m2 of a structure described herein.”).
Regarding claim 6, Bramlett discloses:
The information storage system of claim 1, wherein the storage system comprises more than 100 kbits of data (See at least ¶[0061], “In some instances, the capacity of the solid support is between about 1 to about 10 petabytes or between about 1 to about 100 petabytes.”).
Regarding claim 7, Bramlett discloses:
The information storage system of claim 1, wherein the storage system comprises a gigabyte of data (See at least ¶[0061], “In some instances, the capacity of the solid support is between about 1 to about 10 petabytes or between about 1 to about 100 petabytes.”).
Regarding claim 8, Bramlett discloses:
The information storage system of claim 1, wherein the storage system is assayable using an analysis techniques selected from the group consisting of mass spectrometry, optical spectroscopy (¶[0058], “Access to nucleic acid information in some instances is achieved by cleavage of polynucleotides from all or a portion of a solid support. Cleavage in some instances comprises exposure to chemical reagents (ammonia or other reagent), electrical potential, radiation, heat, light, acoustics, or other form of energy capable of manipulating chemical bonds. In some instances, cleavage occurs by charging one or more electrodes in the vicinity of the polynucleotides. In some instances, electromagnetic radiation in the form of UV light is used for cleavage of polynucleotides.”), NMR, and chromatography.
Allowable Subject Matter
Claims 9 and 11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The various cited references on the PTO-892 all generally relate to molecular computing and are deemed relevant to the claimed invention.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN M STIGLIC whose telephone number is (571)272-3641. The examiner can normally be reached (M-F) 6:30 - 4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Koenig can be reached at 418-918-7501. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN M STIGLIC/Primary Examiner, Art Unit 6213