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
Status of the Claims
Claims 1-5, 7, 11-13, 16-17, 19, 21-22, 24-26, 28-29 and 42 are pending and the subject of this FINAL Office Action.
New Grounds of Rejections - 35 USC § 112- Indefiniteness
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.
Claims 1-5, 7, 11-13, 16-17, 19, 21-22, 24-26, 28-29 and 42 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Independent claims 1 and 42 are amended to recite steps (A4) followed by (A5), and (B4) followed by (B5), which are confusing. Specifically, it is unclear after which “incubation” the Tn5 is added. Steps (A5) and (B5) both state “adding the Tn5 transposase after the incubation.” However, multiple “incubations” are present in steps (A1)-(A5) and (B1)-(B5). Further, Applicants argue that the order of steps between (A4) and (A5) and between (B4) and (B5) is critical. Yet, it is not clear from steps (A5) and (B4) when the Tn5 is added. HENIKOFF (US 20220214356) specifically teaches to add pA-Tn5 (ChiTag) and Tn5 at after secondary antibody (Example 1 and para. 1035). It is not clear if this meets the claim as there are “incubations” at steps (A2)-(A5) in the claims, meaning the Tn5 could be added after any of them (e.g. before ChiTag). In light of this disconnect between Applicants’ arguments and the supposedly critical order of steps in the claims, the claims are ambiguous.
Allowable Subject Matter
Claims 12-13, 21-22 and 28 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. The Examiner cannot find the specific sequences claimed.
Conclusion
No claims are allowed.
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 MELODY TSUI whose telephone number is (571)272-1846. The examiner can normally be reached Monday - Friday, 9am - 5pm.
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/YUNG-SHENG M TSUI/ Primary Examiner, Art Unit 1684
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