Prosecution Insights
Last updated: April 19, 2026
Application No. 18/010,826

METHOD

Non-Final OA §103§112§DP
Filed
Jul 13, 2023
Examiner
CROW, ROBERT THOMAS
Art Unit
1683
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
Oxford Nanopore Technologies PLC
OA Round
1 (Non-Final)
41%
Grant Probability
Moderate
1-2
OA Rounds
3y 10m
To Grant
73%
With Interview

Examiner Intelligence

Grants 41% of resolved cases
41%
Career Allow Rate
292 granted / 708 resolved
-18.8% vs TC avg
Strong +32% interview lift
Without
With
+31.9%
Interview Lift
resolved cases with interview
Typical timeline
3y 10m
Avg Prosecution
34 currently pending
Career history
742
Total Applications
across all art units

Statute-Specific Performance

§101
1.8%
-38.2% vs TC avg
§103
40.2%
+0.2% vs TC avg
§102
11.0%
-29.0% vs TC avg
§112
29.8%
-10.2% vs TC avg
Black line = Tech Center average estimate • Based on career data from 708 resolved cases

Office Action

§103 §112 §DP
CTNF 18/010,826 CTNF 81315 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 2. Please note that the examiner for this application has changed. Please address future correspondence to Robert T. Crow (Art Unit 1683) whose telephone number is (571) 272-1113. Election/Restrictions 08-25-02 3. Applicant’s election of Group I in the reply filed on 26 February 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requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). 08-06 AIA Claim 26 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention , there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 26 February 2026 . Claims 1-5, 7, 9-10, 12-15, 17-22, 24, and 29 are under prosecution. Notice to Comply with Requirements for Patent Applications Containing Nucleotide Sequence And/Or Amino Acid Sequence Disclosure. 4. This application contains sequence disclosures that are encompassed by the definitions for nucleotide and/or amino acid sequences set forth in 37 CFR 1.821(a)(1) and (a)(2). However, this application fails to comply with the requirements of 37 CFR 1.821 through 1.825 for the reason(s) set forth below. Specifically, the application fails to comply with CFR 1.821(d), which states: (d) Where the description or claims of a patent application discuss a sequence that is set forth in the “Sequence Listing” in accordance with paragraph (c) of this section, reference must be made to the sequence by use of the sequence identifier, preceded by “SEQ ID NO:” in the text of the description or claims, even if the sequence is also embedded in the text of the description or claims of the patent application. 5. At least page 70 of the Specification discloses a nucleotide sequence that is not identified by a SEQ ID NO. 6. For compliance with sequence rules, it is necessary to include the sequence in the “Sequence Listing” and identify them with SEQ ID NO. In general, any sequence that is disclosed and/or claimed as a string of particular bases or amino acids, and that otherwise meets the criteria of CFR 1.821(a), must be set forth in the “Sequence Listing.” See MPEP 2422.03. 7. While the Examiner has made every attempt to check the Specification for sequence compliance, Applicant is required to carefully check the entire Specification for any and all issues regarding sequence compliance. 8. For the response to this Office Action to be complete, Applicant is REQUIRED to comply with the Requirements for Patent Applications Containing Nucleotide Sequence And/Or Amino Acid Sequence Disclosures. Failure to comply with the Requirements will be considered nonresponsive . Information Disclosure Statement 9. The Information Disclosure Statements filed 14 February 2023 and 26 February 2026 are acknowledged and have been considered. 06-49-06 AIA 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 06-11 AIA 10. The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. 11. The use of trade names or marks used in commerce (including but not necessarily limited to PyroPhage, Lucigen, and Bioron), 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. 07-30-03-h AIA Claim Interpretation 07-30-03 AIA 12. The following is a quotation of 35 U.S.C. 112(f): (f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 07-30-05 13. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked. As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph: (A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function; (B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and (C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function. Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function. Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function. Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. 14. While this application includes one or more claim limitations that invokes U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, the limitation discussed below is not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Despite the lack of the word “means,” the claim limitation uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. The claim limitation is “a blocking moiety to prevent…” in claim 24. Because this claim limitation is not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is broadly interpreted as encompassing any structure capable of performing the claimed function, including but not limited to any structures described in the instant specification. 15. If Applicant does intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, Applicant may present a sufficient showing that the claim limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. 16. It is also noted that while claim 1 recites a “stalling moiety,” claims 19 and 22 each recite “stalling units,” which are interpreted as the same as a stalling “moiety.” 17. It is further noted that claim 12 recited “an adaptor,” which is not necessarily the same as the recited “an adaptor” or clam 13 or the recited “a hairpin adaptor” of claims 14 or 15. Claim Rejections - 35 USC § 112 07-30-02 AIA 18. 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. 07-34-01 19. Claims 1-5, 7, 9-10, 12-15, 17-22, 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 2-5, 7, 9-10, 12-15, 17-22, and 24 depend) is indefinite in each of the following: I. The recitation “the first opening of a transmembrane nanopore having a first opening” because the first recitation of the “first opening” lacks antecedent basis and because the limitation appears to be a circular definition of itself. II. The recitation “the nanopore,” which lacks antecedent basis in the previous recitation of “a transmembrane nanopore.” This imitation is also resent in each of claims 2-4, 9 and 22. It is suggested that Applicant use consistent language when claiming the nanopore, in particular so that apparently redundant language, such as “the nanopore spans a membrane,” as found in claims 2 and 3, is avoided. B. Claims 4, 19, 22 are each indefinite in the recitation “preferably,” as it is unclear if the “preferable” limitation is actually required by the claims. For the purposes of examination, any limitation listed prefaced with “preferably” is interpreted as a possible, but not required, limitation. C. Claims 19 and 22 are indefinite in each of the following: 07-34-10 I. The phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). II. The two recitations of “and/or” in the list of fluorophores, as the use of multiple recitation of “and/or” renders the claim unclear as to what the alternative groups are. D. Claim 21 is indefinite in the recitation “stepping the applied force one or more times between the destalling force and the read force.” Claim 20, upon which claim 21, requires applying a destalling force; thus, the applied force is the destalling force, and it is unclear how it can be applied between itself and the read force. Claim Rejections - 35 USC § 103 07-20-aia AIA 20. 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. 07-20-02-aia AIA 21. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. 07-21-aia AIA 22. Claim s 1-5, 7, 9-10,12-13, 17-22, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Heron et al. (U.S. Patent application Publication No. US 2016/0010147 A1, published 14 January 2016) . Regarding claim 1, Heron et al. teach a method of characterizing a target polynucleotide (Abstract) comprising providing a transmembrane nanopore (paragraph 0005) having a first opening and a second opening (i.e., on cis and trans sides of a chamber; paragraph 0082), contacting the nanopore with a motor protein, in the form of a stalled helicase, and a polynucleotide (paragraph 0005). Heron et al. further teach the helicase is stalled on a stalling moiety (e.g., an adaptor; paragraph 0089), as well as taking one or measurements as the motor protein moves the target polynucleotide through the openings of the nanopore, thereby characterizing the target polynucleotide (paragraphs 0008-0009). With respect to the limitations “thereby destalling the motor protein,” it is noted that the subject matter of a properly construed claim is defined by the terms that limit its scope. It is this subject matter that must be examined. As a general matter, the grammar and intended meaning of terms used in a claim will dictate whether the language limits the claim scope. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. “Thereby” clauses are examples of language that may raise a question as to the limiting effect of the language in a claim. See MPEP 2103 I.C. and MPEP § 2111.04. It is also noted that a “thereby” clause, such as that in claim 1, must give “meaning and purpose to the manipulative steps.” See MPEP § 2111.04. It is also noted that the courts have held that any order of performing process steps is prima facie obvious in the absence of new or unexpected results ( In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930); Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959)). See MPEP §2144.04 IV C. Thus, any order of contacting the target polynucleotide, the stalled motor protein, and/or the transmembrane nanopore is an obvious variant of the steps of the cited prior art. MPEP 716.01(c) makes clear that “[t]he arguments of counsel cannot take the place of evidence in the record” ( In re Schulze , 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965)). Thus, counsel’s mere arguments cannot take the place of evidence in the record. Regarding claims 2-3, the method of claim 1 is discussed above. Heron et al. teach the nanopore spans a membrane (paragraph 0224), and that the motor protein (i.e. helicase) threads the target polynucleotide to either the cis from the trans side (i.e., claim 2) or vice versa (i.e., claim 3; paragraph 0082). Regarding claim 4, the method of claim 1 is discussed above. Heron et al. teach the motor protein (i.e., helicase) works against the direction of an applied force (i.e., potential; (paragraph 0082). Regarding claim 5, the method of claim 1 is discussed above. Heron et al. teach the motor protein is a Dda helicase (paragraph 0040). Regarding claim 7, the method of claim 1 is discussed above. Heron et al. teach an adaptor, which is part of a spacer (paragraph 0011), which is attached to an end of the target polynucleotide (paragraph 0244). Regarding claims 9-10, the method of claim 1 is discussed above. Heron et al. teach the target polynucleotide is single stranded and has a leader sequence, in the form of an adaptor (paragraph 0011), wherein the adaptor is at the end of the target polynucleotide (paragraph 0244). Heron et al. also teach the motor protein is stalled on an adaptor attached to the second end (paragraph 0011), as well as a leader sequence at an end of the polynucleotide (paragraph 0113), which is captured by the nanopore (paragraph 0087). Regarding claims 12-13, the method of claim 1 is discussed above. Heron et al. teach the target polynucleotide comprises a double stranded portion, and thus has first and second strands hybridized to each other (paragraph 0114), and that the target polynucleotide has a leader sequence, in the form of an adaptor (paragraph 0011). The adaptor is at the end of the target polynucleotide (paragraph 0244). Heron et al. also teach the motor protein is stalled on the adaptor attached to the second end (paragraph 0011). Regarding claims 17-18, the method of claim 1 is discussed above. Heron et al. teach the target polynucleotide comprises a double stranded portion, and thus has an oligonucleotide hybridized thereto, and a leader sequence on a single stranded portion (paragraph 0114), wherein the leader is a poly dT sequence (paragraph 0106), which is complementary to the polyA tag of an mRNA. It is noted that the claim does not require any binding of the tag to any complementary sequence. Regarding claim 19, the method of claim 1 is discussed above. Heron et al. teach the motor protein (i.e., helicase) is stalled on a spacer (paragraph 0005), wherein the spacer comprises a hairpin (paragraph 0120). Regarding claims 20-21, the method of claim 1 is discussed above. Heron et al. teach applying a destalling force (i.e., a potential) to allow the polynucleotide to pass through the nanopore (paragraph 0080). With respect to the relative force of the read force and the destalling force, it is noted that the courts have found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller , 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II. Thus, the claimed lower destalling force/higher read force merely represents routine optimization of the oread conditions and destalling conditions. Applicant is again cautioned to not merely rely upon counsel’s arguments in place of evidence in the record. Regarding claim 22, the method of claim 1 is discussed above. Heron et al. teach the target polynucleotide comprises multiple spacers, each of which has a blocking group (i.e., blocking molecule; paragraph 0239), and that the blocking molecules stall the helicase (paragraph 0129). Thus, a blocking molecule is a pausing moiety. With respect to the limitations “wherein the motor protein is stalled,” wherein contacting…retards the movement…,” and “thereby causing the protein motor to destall,” it is noted that the subject matter of a properly construed claim is defined by the terms that limit its scope. It is this subject matter that must be examined. As a general matter, the grammar and intended meaning of terms used in a claim will dictate whether the language limits the claim scope. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. “Thereby” clauses are examples of language that may raise a question as to the limiting effect of the language in a claim. It is also reiterated that a “thereby” clause, such as that in claim 22, must give “meaning and purpose to the manipulative steps.” Regarding claim 24, the method of claim 1 is discussed above. Heron et al. teach a blocking moiety; i.e., the end of the polynucleotide is capture by the pore (paragraph 0082). Thus, because the target is captured by the pore, the target polynucleotide is prevented from disengaging from the helicase (i.e., motor protein) . 07-21-aia AIA 23. Claim s 14-15 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Heron et al. (U.S. Patent application Publication No. US 2016/0010147 A1, published 14 January 2016) as applied to claims 1 and 12, and further in combination with Davis et al. (U.S. Patent Application Publication No. US 2013/0244340 A1, published 19 September 2013) . It is noted that while claims 20-21 have been rejected as described above, the claims are also obvious using the interpretation outlined below. Regarding claims 14-15 and 20-21, the methods of claims 1 and 12 are discussed above in Section 22. Heron et al. also teach the methods have the added advantage of controlling the movement of polynucleotides (paragraph 0005). Thus, Heron et al. teach the known techniques discussed above. While Heron et al. teach the use of hairpins to link two strands (paragraph 0108), Heron et al. do not teach the motor protein (i.e., helicase) is stalled on the hairpin (i.e., claims 14-15). However, Davis et al. teach methods of nanopore sequencing of target polynucleotides (Abstract), wherein hairpins are used to stall the progression of the polynucleotide through the nanopore, and that the motor protein is on the nanopore (Figure 11 and paragraph 0155); thus, the motor protein is stalled at the hairpin (i.e., claims 14-15), which has the added advantage of allowing a set of electrical signals from the polynucleotide to be obtained (paragraph 0155). Davis et al. also teach reversing the current across the nanopore using a voltage opposite that of the tag detection (i.e., the read force of claims 20-21; paragraph 0092). Davis et al. further teach reversing the direction of the target polynucleotide when it becomes stalled (i.e., trapped) has the added advantage of allowing resequencing of the molecule (paragraph 0150). Thus, Davis et al. teach the known techniques discussed above. It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Heron et al. and Davis et al. to arrive at the instantly claimed methods with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in methods having the added advantages of: Controlling the movement of polynucleotides as explicitly taught by Heron et al. (paragraph 0005); Allowing a set of electrical signals from the polynucleotide to be obtained as explicitly taught by Davis et al. (paragraph 0155); and Allowing resequencing of the molecule as explicitly taught by Davis et al. (paragraph 0150). In addition, it would have been obvious to the ordinary artisan that the known techniques of the cited prior art could have been combined with predictable results because the known techniques of the cited prior art predictably result in techniques useful for sequencing polynucleotides . 07-21-aia AIA 24. Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Davis et al. (U.S. Patent Application Publication No. US 2013/0244340 A1, published 19 September 2013) . Regarding claim 29, Davis et al. teach methods of characterizing a target polynucleotide, comprising contacting a first known speed bump with a target polynucleotide, taking one or more measurements characterizing of the target polynucleotide (i.e., electrical signals) as it passes through a nanopore, unbinding (i.e., removing) the speed bump from the target polynucleotide and reversing the flow of the polynucleotide through the nanopore, and repeating these steps (paragraph 0244). Davis et al. also teach the speed bump is a stopper (paragraph 0061), which is an enzyme that binds the target polynucleotide at a hybridization site, and that the enzyme is a motor protein because it moves the target polynucleotide through the nanopore (paragraph 0353). Thus, Davis et al. teach all of the claimed limitations . Double Patenting 08-33 AIA 25. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg , 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington , 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer. 08-37 AIA 26. Claim s 1-5, 7, 9-10, 12-13, 17-22, and 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 51-70 of copending Application No. 18/010,825 in view of Heron et al. (U.S. Patent Application Publication No. US 2016/0010147 A1, published 14 January 2016). Both sets of claims are drawn to methods of characterizing polynucleotides comprising stalling the polynucleotide on a motor protein with a stalling moiety (i.e., adapter), single and double stranded polynucleotides, taking measurements, destalling, hairpins, etc. Any additional limitations of the ‘825 claims are encompassed by the open claim language “comprising” found in the instant claims. The ’825 claims do not explicitly discuss the openings of a transmembrane nanopore. However, Heron et al. teach this limitation, as well as the other limitations and the rationale for combining as discussed above . This is a provisional nonstatutory double patenting rejection. 08-37 AIA 27. Claim s 14-15 and 20-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 51-70 of copending Application No. 18/010,825 in view of Heron et al. (U.S. Patent Application Publication No. US 2016/0010147 A1, published 14 January 2016). as applied to claims 1 and 12, and further in combination with Davis et al. (U.S. Patent Application Publication No. US 2013/0244340 A1, published 19 September 2013) based on the citations and rationale provided above . This is a provisional nonstatutory double patenting rejection. 08-37 AIA 28. Claim s 1-5, 7, 9-10, 12-13, 17-22, and 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 2-12, 34, and 49-56 of copending Application No. 18/065,735 in view of Heron et al. (U.S. Patent Application Publication No. US 2016/0010147 A1, published 14 January 2016). Both sets of claims are drawn to methods of characterizing polynucleotides comprising stalling the polynucleotide on a motor protein with a stalling moiety (i.e., adapter), single and double stranded polynucleotides, taking measurements, hairpins, etc. Any additional limitations of the ‘735 claims are encompassed by the open claim language “comprising” found in the instant claims. The ’735 claims do not explicitly discuss the openings of a transmembrane nanopore or destalling. However, Heron et al. teach these limitations, as well as the other limitations and the rationale for combining as discussed above . This is a provisional nonstatutory double patenting rejection. 08-37 AIA 29. Claim s 14-15 and 20-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 2-12, 34, and 49-56 of copending Application No. 18/065,735 in view of Heron et al. (U.S. Patent Application Publication No. US 2016/0010147 A1, published 14 January 2016). as applied to claims 1 and 12, and further in combination with Davis et al. (U.S. Patent Application Publication No. US 2013/0244340 A1, published 19 September 2013) based on the citations and rationale provided above . This is a provisional nonstatutory double patenting rejection. 30. Claim 29 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 11-14, 16-17, and 31-34 of copending Application No. 18/722,827. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to methods of characterizing polynucleotides comprising contacting a detector, bound motor proteins, unbinding and rebinding, etc. Any additional limitations of the ‘827 claims are encompassed by the open claim language “comprising” found in the instant claims. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Conclusion 31. No claim is allowed. 32. 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. Robert T. Crow Primary Examiner Art Unit 1683 /Robert T. Crow/Primary Examiner, Art Unit 1683 Application/Control Number: 18/010,826 Page 2 Art Unit: 1683 Application/Control Number: 18/010,826 Page 3 Art Unit: 1683 Application/Control Number: 18/010,826 Page 4 Art Unit: 1683 Application/Control Number: 18/010,826 Page 5 Art Unit: 1683 Application/Control Number: 18/010,826 Page 6 Art Unit: 1683 Application/Control Number: 18/010,826 Page 7 Art Unit: 1683 Application/Control Number: 18/010,826 Page 8 Art Unit: 1683 Application/Control Number: 18/010,826 Page 9 Art Unit: 1683 Application/Control Number: 18/010,826 Page 10 Art Unit: 1683 Application/Control Number: 18/010,826 Page 11 Art Unit: 1683 Application/Control Number: 18/010,826 Page 12 Art Unit: 1683 Application/Control Number: 18/010,826 Page 13 Art Unit: 1683 Application/Control Number: 18/010,826 Page 14 Art Unit: 1683 Application/Control Number: 18/010,826 Page 15 Art Unit: 1683 Application/Control Number: 18/010,826 Page 16 Art Unit: 1683 Application/Control Number: 18/010,826 Page 17 Art Unit: 1683 Application/Control Number: 18/010,826 Page 18 Art Unit: 1683 Application/Control Number: 18/010,826 Page 19 Art Unit: 1683 Application/Control Number: 18/010,826 Page 20 Art Unit: 1683 Application/Control Number: 18/010,826 Page 21 Art Unit: 1683 Application/Control Number: 18/010,826 Page 22 Art Unit: 1683
Read full office action

Prosecution Timeline

Jul 13, 2023
Application Filed
Mar 24, 2026
Non-Final Rejection — §103, §112, §DP (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12135323
Serially Deposited Biomolecules
2y 5m to grant Granted Nov 05, 2024
Patent 12134098
MICRODROPLET MANIPULATION METHOD
2y 5m to grant Granted Nov 05, 2024
Patent 12129518
METHOD FOR NANOPORE RNA CHARACTERISATION
2y 5m to grant Granted Oct 29, 2024
Patent 12128403
FLUID DELIVERY METHODS
2y 5m to grant Granted Oct 29, 2024
Patent 12116629
METHODS AND COMPOSITIONS FOR REDUCING NUCLEOTIDE IMPURITIES
2y 5m to grant Granted Oct 15, 2024
Study what changed to get past this examiner. Based on 5 most recent grants.

AI Strategy Recommendation

Get an AI-powered prosecution strategy using examiner precedents, rejection analysis, and claim mapping.
Powered by AI — typically takes 5-10 seconds

Prosecution Projections

1-2
Expected OA Rounds
41%
Grant Probability
73%
With Interview (+31.9%)
3y 10m
Median Time to Grant
Low
PTA Risk
Based on 708 resolved cases by this examiner. Grant probability derived from career allow rate.

Sign in with your work email

Enter your email to receive a magic link. No password needed.

Personal email addresses (Gmail, Yahoo, etc.) are not accepted.

Free tier: 3 strategy analyses per month