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 .
Status of the Application
2. Applicant’s response filed on July 31, 2026 has been entered.
Claims 1, 2, 4, 6, 9-10, 12, 14, 16, 19-21, 39, 41-42, 53-54, 58-61, 63, 65, 69, and 73 are pending. Claims 1, 2, 4, 6, 9-10, 12, 14, 16, 19, and 20 are under examination. Claims 21, 39, 41-42, 53-54, 58-61, 63, 65, 69, and 73 remain withdrawn as being drawn to a nonelected invention.
Requirement for Information
3. Applicant’s response to the Requirement for Information set forth in the last Office action is acknowledged. The response is a sufficient response to the Requirement for Information set forth in the last Office action.
Response to Arguments
4. Applicant’s arguments filed on July 31, 2026 have been fully considered.
Objections to the Drawings
Applicant argues that the objections to the drawings should be withdrawn in view of the replacement drawing sheets filed with the response (Remarks, page 12).
This argument was persuasive. The objections have been withdrawn.
Objection to the Sequence Listing
Applicant argues that the objection to the Sequence Listing should be withdrawn in view of the specification amendment filed with the response (Remarks, page 12).
This argument was persuasive. The objection has been withdrawn.
Objections to the Specification
Applicant argues that the objections to the specification should be withdrawn in view of the specification amendment filed with the response (Remarks, page 13).
This argument was persuasive. The objections have been withdrawn.
Claim Objections
Applicant argues that the objections to claims 1 and 19 should be withdrawn in view of the amendments to claims 1 and 19 (Remarks, pages 13-14).
This argument was persuasive in part. The objection to claim 1 has been withdrawn as being obviated by the amendments to that claim. Claim 19 remains objected to, though, because the amendments do not correct all of the issues raised in the objection. More specifically, claim 19 still appears to be missing a word (“and” or “or” between “poly(dT) sequence” and “bead oligonucleotide sequence” in line 2. Accordingly, that basis for objection is maintained.
Rejection of claims 1, 2, 4, 6, 9-12, 14, 16, 19, and 20 under 35 U.S.C. 112(b)
Applicant argues that the rejection should be withdrawn in view of the amendments to claims 1, 6, 10, 12, 16, and 19 (Remarks, pages 14-15).
This argument was persuasive in part. The claim amendments address some of the issues raised previously with respect to claim 1 as well as the issues raised previously concerning claims 12, 14, and 16. Claim 1, though, from which all of the other claims under examination depend, remains indefinite for the reasons set forth in the modified rejection, and none of the dependent claims addresses all of the indefiniteness issues in claim 1. As well, the amendments do not address all of the issues raised previously with respect to claims 6, 9, 10, 16, and 19 for the reasons discussed in the modified rejection. Accordingly, the rejection is maintained with modifications necessitated by the claim amendments.
Priority
5. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Provisional Application No. 63/065,433, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
More specifically, the ‘433 provisional application fails to provide support for the subject matter of claims 4, 6, 9, and 10. As to claim 4, the ‘433 provisional application fails to provide support because it does not disclose the use of a lambda nuclease and a terminal transferase as required by the claim. Then, since claims 6, 9, and 10 depend directly or indirectly from claim 4, the ‘433 provisional application also fails to provide support for these claims. Thus, claims 4, 6, 9, and 10 have an effective filing date of August 12, 2021 (i.e., the filing date of PCT/US2021/045802).
Information Disclosure Statement
6. Applicant’s submission of an Information Disclosure Statement (IDS) on July 31, 2026 is acknowledged. The reference cited on the IDS has been considered.
Drawings
7. Applicant’s submission of replacement drawing sheets on July 31, 2026 is acknowledged. The replacement drawings are acceptable.
Claim Objections
8. Claim 19 is objected to because at least one word appears to be missing between “poly(dT) sequence” and “a bead oligonucleotide sequence” in line 2.
Claim Rejections - 35 USC § 112
9. 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, 2, 4, 6, 9, 10, 12, 14, 16, 19, and 20 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.
Claim 1
Claim 1 is indefinite because several aspects of the amended claim remain unclear.
First, the requirements of step (a) remain unclear. More specifically, it is not clear as to how the “amplicons comprising a 3’ poly(dA) sequence” are generated. Is the 3’ poly(dA) sequence added via the use of a primer with a 5’ tail containing poly(dT) or is this sequence added in some other way (e.g., adapter ligation or TdT tailing)? This information is necessary for a proper understanding of the claim since PCR amplification of DNA does not necessary result in the presence of a 3’ poly(dA) sequence as required by step (a).
As well, further regarding step (a), it is not clear how the bead oligonucleotide sequence recited in the last line of step (a) relates to the microbead recited in line 1 of step (a). Is the bead oligonucleotide sequence attached to the microbead? This is not clear from the claim language. As well, it is not clear how the barcoding step occurs. Does the bead oligonucleotide contain a barcode sequence, and/or is the bead oligonucleotide sequence used as a primer in first PCR? These aspects are also not clear from the claim language. As a result, the structural requirements of the bead oligonucleotide and microbead are unclear as are the steps that result in generation of the required barcoded amplicons.
Second, there is insufficient antecedent basis for “the microbead comprising the bead oligonucleotide sequence,” which is recited in lines 1-2 of step (b). Step (a) recites “a microbead” and “a bead oligonucleotide sequence,” but does not clearly require the bead oligonucleotide sequence to be attached to the microbead.
Third, it is not clear whether RNA released from the single cell must hybridize to the bead oligonucleotide on the microbead or if step (b) more broadly encompasses merely adsorbing the RNA to the surface of the microparticle.
Fourth, it is unclear as to how the capturing recited in step (b) results in “captured RNA comprising the bead oligonucleotide sequence.” This language suggests that the RNA is modified to contain the bead oligonucleotide sequence in a single strand. That is, the aforementioned claim language suggests that the capturing step results in production of a molecule with either of the following configurations: (i) 5’ bead oligonucleotide sequence-RNA 3’, or (ii) 5’ RNA-bead oligonucleotide sequence 3’. It is not clear that this is Applicant’s intention, though, because a typical capture step would simply involve hybridization of the RNA to the bead oligonucleotide, wherein the bead oligonucleotide is attached/immobilized on the microbead.
Fifth, the structural requirements of “a bead oligonucleotide sequence” recited in each of steps (a) and (b) are not clear. The specification does not define this term, and it does not have a fixed meaning in the art that would allow the ordinary artisan to readily identify any particular sequence in an amplicon as “a bead oligonucleotide sequence.” One way for Applicant to address this issue would be to amend claim 1 to clearly require the bead oligonucleotide sequence to be immobilized on the microbead, provided that support for such an amendment exists. In doing so, it would be clear that “a bead oligonucleotide” is simply an oligonucleotide immobilized on the microbead.
Sixth, the requirements of step (d) are unclear. This step states that the reverse transcription reaction “transcrib[es] the captured RNA comprising the bead oligonucleotide sequence.” This language suggests that the bead oligonucleotide sequence is part of the RNA sequence captured on the microparticles, but as discussed above, the preceding steps in the claim do not clearly require this. As a result, it is unclear whether the RNA must be ligated to the bead oligonucleotide sequence on the microbead or if the claim actually intends to require the reverse transcription reaction to include a template switching step.
In view of the foregoing, claim 1 is indefinite.
Claims 2, 4, 6, 9, 10, 12, 14, 16, 19, and 20
Each of claims 2, 4, 6, 9-12, 14, 16, 19, and 20 is also indefinite since they depend directly or indirectly from claim 1 and do not correct all of its indefiniteness issues.
Claims 6 and 9
Claim 6 is further indefinite because its requirements are not entirely clear. First, it is not clear what is meant by “biotinylated second strand synthesis” as recited in line 2 of the claim. This term is not defined by the specification, nor is it a term that is routinely used in the art, especially in the context of further amplification of DNA. Instead, “second strand synthesis” is typically used in the context of cDNA synthesis from an RNA molecule. As a result, it is unclear whether “biotinylated second strand synthesis” in claim 6 requires incorporating biotin into the amplicons generated by the method of claim 4 during a polymerase-mediated process that either uses a biotinylated primer or a biotinylated nucleotide or if this language requires something else altogether.
Claim 9 is further indefinite by way of its dependency on claim 6.
Claims 10 and 16
Claim 10 is further indefinite because there is insufficient antecedent basis for “the enzymatically modified and amplified amplicons.” Claim 4, from which claim 10 depends, does not provide antecedent basis for “enzymatically modified and amplified amplicons” (emphasis added). Claim 6 provides the required antecedent basis.
Claim 16 is further indefinite by way of its dependency on claim 10.
Claim 19
Claim 19 is further indefinite for the following reason. This claim depends from claim 1 and recites “wherein the reverse primers used in the first PCR comprise a poly(dT) sequence a bead oligonucleotide sequence.” At least one word is missing between “poly(dT) sequence” and “a bead sequence.” As a result, it is not clear whether the reverse primers used in the first PCR must contain a bead oligonucleotide sequence in addition to the poly(dT) sequence or if some other requirement concerning the bead oligonucleotide sequence was intended.
Conclusion
10. No claims are currently allowable. The claims are free of the prior art for the reasons set forth in the last Office action, but they are rejected for other reasons.
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).
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 Angela Bertagna whose telephone number is (571)272-8291. The examiner can normally be reached 8-5, M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gary Benzion can be reached at 571-272-0782. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANGELA M. BERTAGNA/Primary Examiner, Art Unit 1681
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