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
Responsive to claim set of 12/11/2015
Claims pending 1-30
Claims currently under consideration 1-30
Priority
This application has a filing date of 12/02/2022 and has PRO 63/285,677 filed 12/03/2021
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 24 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Fan et al (US AppPub 20240279712).
Fan et al disclose throughout the document and especially the abstract, spatial epigenomic profiling. More particularly, in paragraphs 0231,0218,0310, figures 1A and 5A-C and/or figure 72, Fan et al provide a composition for determining abundance and/or location of accessible genomic DNA including: (A) an Illumina flow cell that inherently during operation has a plurality of capture probes, wherein a capture probe of the plurality of capture probes hybridizes with: (A) complementary capture domain* bearing a spatial barcode*; (B) a complex or multi-complex with (i) an antibody-binding protein (e.g. protein A or a secondary antibody), (ii) a transposase, (iii) a first transposon end sequence comprising a splint sequence* that is substantially complementary to a portion of a splint oligonucleotide and (iv) a second functional transposon end sequence; and (C) an antibody bound to a chromatin protein in the biological sample, wherein the antibody is additionally bound to (B).
* Applicant is respectfully advised in so far as any nucleotide sequence may serve as a barcode, capture sequence, or splint complement, the foregoing is merely one interpretation that anticipates claim 24
Claim Rejections - 35 USC § 103
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.
Claims 24 and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Fan et al (US AppPub 20240279712) in view of MPEP 2111.05.
Fan et al is relied on as above concerning claim 24 and claim items (a) and (b) of each of claims 22-23.
Fan et al do not expressly teach the instructions set forth as item (c) of claims 22-23, however it is noted that said instruction(s) is(are) not functionally related to the array, complex, nor multi-complex set forth as items (a) and (b) in claims 22 and 23. Whereas, as interpreted in MPEP 2111.05, the courts have held in order to be given patentable weight, a functional relationship must exist between printed matter and an associated product and indeed in a kit containing a set of chemicals and a printed set of instructions for using the chemicals, the instructions were held not related to that particular set of chemicals. In re Ngai, 367 F.3d at 1339, 70 USPQ2d at 1864.
Likewise, here the printed matter set forth claims 22c and 23c constitute instructions for using biochemical materials that not related to the biochemicals since instructions do not cause any action to occur and do not interact with the array, complex, nor multi-complex in any way.
Allowable Subject Matter
Claims 1-23 and 25-30 are allowed.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M GROSS whose telephone number is (571)272-4446. The examiner can normally be reached M-F 10-6.
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/CHRISTOPHER M GROSS/Primary Examiner, Art Unit 1684