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
Information Disclosure Statement
Acknowledgment is made of Applicant’s Information Disclosure Statement (IDS) form PTO-1449. These IDS has been considered.
Election/Restrictions
Applicant's election without traverse of Group I, claims 32-33, 35-46, in the reply filed on 04/06/2026 is acknowledged. Claims 34 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to non-elected inventions.
Double Patenting
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 32-33, 35-46 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-18 of U.S. Patent No. 11505825.
Current Application # 18057650
US Pat # 11505825
For example:
Claim 32:
A method of synthesizing a DNA molecule using topoisomerase-mediated ligation, by adding single nucleotides or oligomers to a DNA strand in the 3' to 5' direction, comprising (i) reacting a DNA molecule with a topoisomerase charged with the desired nucleotide or oligomer, wherein the DNA molecule is on a substrate or magnetic bead, such that it can be selectively exposed to or removed from the reagents as required to provide the desired sequence.
For example:
Claim 1:
1. A method of synthesizing a DNA molecule using topoisomerase-mediated ligation, by adding single nucleotides or oligomers to a DNA strand in the 3′ to 5′ direction, comprising (i) reacting a DNA molecule with a topoisomerase charged with the desired nucleotide or oligomer wherein the nucleotide or oligomer is blocked from further addition at the 5′ end, then (ii) deblocking the 5′ end of the DNA thus formed, and repeating steps (i) and (ii) until the desired nucleotide sequence is obtained.
10. The method of claim 1 wherein the DNA is on a substrate or magnetic bead, such that it can be selectively exposed to or removed from the reagents as required to provide the desired sequence.
Even though the claims at issue are not identical but overall scope of the claims are identical and they are not patentably distinct from each other.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attachment.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMED A BASHAR whose telephone number is 469-295-9277. The examiner can normally be reached on 9am-5pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Richard T Elms can be reached on 5712721869. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOHAMMED A BASHAR/Primary Examiner, Art Unit 2824
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