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 .
DETAILED ACTION
This Non-Final Office Action is responsive to the communication received 7/6/2026.
Election/Restrictions
Applicant’s election with traverse in the Reply filed on 7/6/2026 of group II, claims 10-12 is acknowledged.
Applicant argues (Reply starting page 5) that Robins teaches two regions while the claims teach four regions.
The Applicant is interpreting the claims in a narrow way instead of the broadest reasonable interpretation of the applicant's claims. Under the broadest reasonable interpretation standard, Robins's primers can be interpreted to include four regions (see 102 rejection below).
Applicant has elected in the Reply filed on 7/6/2026 the following species:
A. the first and second oligonucleotides comprise DNA
Because applicant did not distinctly and specifically point out the supposed errors in the species election requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
The Restriction/Election Requirements are thus deemed proper and are made FINAL.
Claims 1-17 are pending.
Claims 1-9 and 13-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the Reply filed on 7/6/2026.
Claims 10-12 are under examination in this Office Action.
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)(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.
Claims 10-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Robins (01/28/2016) US Patent Application Publication 2016/0024493 A1 cited in the 8/18/2025 IDS (hereinafter known as "Robins").
With regards to claims 10-12, Robins teaches:
a) as in claims 10-12, a method of generating a library from a nucleic acid sample comprising amplifying the nucleic acid sample using a kit comprising (a) a pair of sequencing oligonucleotides comprising: (a) a first oligonucleotide comprising from 5′ to 3′ a first barcode primer region, a first sequencing primer region, a first in-line barcode region, and a first target-specific binding region complementary to a first sequence in a target nucleic acid; and (b) a second oligonucleotide comprising from 5′ to 3′ a second barcode primer region and a second target-specific binding region homologous to a second sequence in the target nucleic acid, wherein the first and second target-specific binding regions flank a sequencing assay region in the target nucleic acid that can be amplified using the pair and (b) a pair of barcoding oligonucleotides comprising: (i) a first barcoding oligonucleotide comprising from 5′ to 3′ a first region for attachment to a solid substrate, a first unique barcode sequence, and a first primer region homologous to the first barcode primer region; and (ii) a second barcoding oligonucleotide comprising a second region for attachment to a solid substrate, a second unique barcode sequence, and a second primer region homologous to the second barcode primer region to produce amplicons, wherein the amplicons comprise a nucleic acid sequence comprising the first region for attachment to a solid substrate, the first unique barcode sequence, the first barcode primer region, the first sequencing primer region, the first in-line barcode region, the first target-specific binding region, the sequencing assay region, the complement sequence of the second target-specific binding region, the complement sequence of the second barcode primer region, the complement sequence of the second unique barcode sequence, and the complement sequence of the second region for attachment to a solid substrate and the complement thereof, thereby generating the library; wherein the nucleic acid sample is amplified using the pair of sequencing oligonucleotides and the pair of barcoding oligonucleotides in a single amplification step to produce the amplicons; wherein the nucleic acid sample is sequentially amplified by (a) amplifying the nucleic acid sample using the pair of sequencing oligonucleotides to produce an intermediate amplicon comprising a nucleic acid sequence comprising the first barcode primer region, the first sequencing primer region, the first in-line barcode region, the first target-specific binding region, the sequencing assay region, the complement sequence of the second target-specific binding region, and the complement sequence of the second barcode primer region and the complement thereof; and (b) amplifying the intermediate amplicon and its complement using the pair of barcoding oligonucleotides to produce the amplicons (see Figure 1 and [0019] to [0070]).
Thus, Robins anticipates the present claims.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Christian Boesen whose telephone number is 571-270-1321. The Examiner can normally be reached on Monday-Friday 9:00 AM to 5:00 PM.
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/CHRISTIAN C BOESEN/Primary Examiner, Art Unit 1684
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