DETAILED ACTION
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 . Applicant’s amendment filed 3/23/2026 is acknowledged. Claims 1, 2, 3 and 20 have been amended. Claims 1-20 are pending. Claims 3-18 are withdrawn from consideration as being drawn to a non-elected invention. All of the amendments and arguments have been thoroughly reviewed and considered.
Any rejection not reiterated in this action has been withdrawn as being obviated by the amendment of the claims.
This action is made Final.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Previous Rejections
The claim rejections under 35 USC 112(b) directed to the claims 1-2 and 20 are withdrawn in view of Applicant’s amendment of the claims. The claim rejection under USC 102 is withdrawn in view of Applicant’s declaration under 37 CFR 1.130(a) disqualifying the applied reference as prior art.
New Ground(s) of Rejections
THE NEW GROUND(S) OF REJECTIONS WERE NECESSITATED BY APPLICAN’T AMENDMENT OF THE CLAIMS:
Claim Rejections - 35 USC § 112
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 and 20 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.
(a) Claims 1-2, 19 and 20 are indefinite in the claim 1 and 19 for the recitation of “A set” comprising “first primer pair, one or more intermediate primer pairs and a last primer pair” because it is unclear as to what is meant by “A set” which is understood to mean two primers (a pair) when the claims recited pairs encompassing more than two primers being in the set. Additionally, the claims are indefinite at the recitation of a “first primer pair, one or more intermediate primer pairs and a last primer pair” because it is unclear how one is to determine or distinguish between which of the primer pairs corresponds to a first, intermediate or last primer or satisfy the criteria of being considered a first primer pair, an intermediate primer pair or a last primer pair in the context of the claims. Clarification is required.
(b) Claims 1-2 and 20 are indefinite in the claim 1 at the recitation of “wherein different primer pairs satisfy the following structural relationships: for two different primer pairs, a forward primer of one primer pairs differs from a reverse primer of the other primer pair in n bases A, and an n-th based in the n bases is a base d, wherein n is an integer greater than or equal to 4” because the limitation is ambiguous since multiple structures are embodied in the limitation recited therein. The limitation is ambiguous because it is unclear where the structural relationship lies. It is unclear if the two different primer pairs as recited in the “wherein clause” are structurally the same or structurally distinct or if applicant is making reference to the different primer being different based on the location of the primers as compared to each other or something entirely different. A clear interpretation cannot be ascertained. Clarification is required.
(c) Claim 20 is indefinite because it is unclear the meets and bounds of the claimed limitations “wherein a forward primer of a first primer pair and a reverse primer of a last primer pair do not have the structural relationship as defined in claim 1. It is unclear what information either structurally or based on primers relationship is one to extrapolate from the claim as currently written. Given the ambiguity of the claims, a clear interpretation cannot be ascertained.
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.
/CYNTHIA B WILDER/Primary Examiner, Art Unit 1681
Prosecution Insights