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 .
Preliminary Amendment and Status of the Claims
2. The preliminary amendment filed 8 February 2023, in which claims 1-6,8, 11-12, 14-19, 21, and 24 were amended and claims 7, 13, 20, 23, and 25-105 were cancelled is acknowledged and entered.
Claims 1-6, 8-12, 14-19, 21-22, and 24 are under prosecution.
Drawings
3. Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by:
I. The appropriate fee set forth in 37 CFR 1.17(h);
II. One set of color drawings or color photographs, as appropriate, if submitted via EFS-Web or three sets of color drawings or color photographs, as appropriate, if not submitted via EFS-Web; and, unless already present,
III. An amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
4. A statement from Applicant that there is no intention to have color drawings will result in acceptance of the drawings; otherwise, the conditions set forth above must be met in order for the color drawings to be accepted.
Information Disclosure Statement
5. The Information Disclosure Statement filed 10 February 2023 is acknowledged and has been considered.
It is noted that the listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification
6. The use of trade names or marks used in commerce (including but not necessarily limited to those on page 80), has been noted in this application. Any trade names or marks should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Rejections - 35 USC § 112
7. 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.
8. Claims 1-6, 8-12, 14-19, 21-22, and 24 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.
A. Claim 1 (upon which claims 2-6, 8-12, 14-19, 21-22, and 24 depend) is indefinite in the recitations “the attached molecule” and “the interior of the site,” which lack antecedent basis because there is no previous recitation of an “attached molecule” or an “interior of the site.”
B. Claims 3-5 are each indefinite in the recitation “step (c),” which lacks antecedent basis because claim 1 does not recite any “step.”
C. The term “small” in claim 6 is a relative term which renders the claim indefinite. The term “small” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Prior Art
9. The following prior art is hereby made of record, but not presently relied upon for any rejection, as it is considered pertinent to Applicant's disclosure.
A. Chun et al (U.S. Patent Application Publication No. US 2005/0118603 A1), teach double-stranded probes, wherein a first strand binds to target molecule 1 and collapses to a hairpin (Figure 20 and paragraph 0242), degradation (i.e., cleavage; paragraph 0156), and removal (by washing) of unbound probes (paragraph 0267).
B. Gormley et al (U.S. Patent Application Publication No. US 2014/0194234 A1) teach binding of nucleic acids to one location on a substrate and transferring one end of the nucleic acid to another location on the substrate (e.g., Figs. 1a-1b).
C. Todd et al (U.S. Patent Application Publication No. US 2014/0017669 A1) teach exonuclease degradation of a DNA strand (e.g., Figure 8 and paragraph 0564).
However, none of the cited art, nor any combination thereof, teaches the collapsed hairpin carries the attached molecule to the interior of the site.
Conclusion
10. No claim is allowed.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert T. Crow whose telephone number is (571)272-1113. The examiner can normally be reached M-F 8:00-4:30.
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, Anne Gussow can be reached at 571-272-6047. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Robert T. Crow
Primary Examiner
Art Unit 1683
/Robert T. Crow/Primary Examiner, Art Unit 1683