DETAILED ACTION
The present Office Action is responsive to the Amendment received on January 26, 2026.
Drawings
The replacement drawings received on January 26, 2026 are acceptable.
Sequence Rules
The application fails to comply with the sequence rules as set forth in 37 CFR 1.821-1.825. specifically, section [0029] discloses specific nucleotide sequences which are longer than 10 bases in length without their SEQ ID numbers.
The application is filed after July 1, 2022 and therefore, must comply with ST.26 standard.
Failure to comply with the rules will result in the response being held Non-Responsive.
Claim Rejections - 35 USC § 112
The rejection of claims 1-3 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particularly point out and distinctly claim the subject matter, made in the Office Action mailed on August 27, 2025 is withdrawn in view of the Amendment received on January 26, 2026.
Claim Rejections - 35 USC § 102
The rejection of claims 1 and 2 under 35 U.S.C. 102(a)(1) as being anticipated by Stern et al. (WO 2019/175323 A1, published September 2019), made in the Office Action mailed on August 27, 2025 is withdrawn in view of the Amendment received on January 26, 2026.
Claim Rejections - 35 USC § 103
The rejection of claim 3 under 35 U.S.C. 103 as being unpatentable over Stern et al. (WO 2019/175323 A1, published September 2019) in view of Chen et al. (J. Am. Chem. Soc., 2013, vol. 134, pages 5731-5737), made in the Office Action mailed on August 27, 2025 is withdrawn in view of the Amendment received on January 26, 2026.
Rejection – New Grounds, Necessitated by Amendment
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 1-3 under 35 U.S.C. 103 as being unpatentable over Stern et al. (WO 2019/175323 A1, published September 2019) in view of Chen et al. (J. Am. Chem. Soc., 2013, vol. 134, pages 5731-5737) and Rotter et al. (WO 2023/170297 A1, published September 2013, filed March 10, 2022).
With regard to claim 1, Stern et al. teach a dual-probe method for fluorescence quantitative PCR (“method of the invention … drop-off digital polymerase chain reaction (PCR) in the presence of a PCR solution …”, page 4, lines 13-15), wherein the dual probes comprise a first probe and a second probe as shown below (from
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FiG. 1B):
As seen, Stern et al. teach a first probe and a second probe that anneal adjacent to each other, each of which comprises its respective fluorescent label, further wherein the first probe (or detection probe) anneals to a wild-type allele (see VIC probe), wherein the reference probe targets a the wild-type sequence adjacent to the target sequence (see REFex8 probe), and these two probes anneal inside forward and reverse primers that flank them (see also, page 6, lines 1-6).
With regard to claim 2, the probes are “hydrolysis” probes, which is synonymous in character with TaqMan® reaction that hydrolyzes the fluorescent labeled probe.
Stern et al. do not explicitly teach that their drop-off probes are employed in a real-time PCR, but in a digital PCR.
Rotter et al. teach a multiplex assay, wherein the artisans teach the use of a drop-off oligonucleotide in a PCR assay:
“detecting a polynucleotide variant in a sample using a combination of signals to detect loci that are specific and/or semi-specific for the polynucleotide variant … the signals are fluorophores wherein one fluorophore signal is specific to a particular variant and one or more semi-specific fluorophore signals are used to detect variants that have a locus in common” (page 2, lines 10-15)
“quantitative RT-PCR can be used in performing the methods of the present invention …” (page 10, lines 19 and 20)
While Stern et al. teach that each probe comprises its own, different fluorescent label, the artisans do not teach that each probe comprises its own quencher pair (BHQ1, BHQ2, TAMRA, or MGB NFQ) and a fluorescent group.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Stern et al., Chen et al. and Rotter et al., thereby arriving at the invention as claimed based on the well-known means of utilizing FRET dye pair oligonucleotides which are employed in a PCR-based detection assay, wherein the quencher of the pair is BHQs, evidenced by Chen et al., for the following reasons.
The reason to combine a black hole quencher in a FRET system detection has been well-known, its benefit owning to the reduction of background noise in the assay, as evidenced by Chen et al.:
“Using BHQ as the nonfluorescent FRET acceptor lacks the traditional anticorrelated intensity signal of the acceptor dye … This approach has several advantages. Most importantly, the use of BHQ frees the spectral region of the acceptor dye for labeling of other components of the systems in multiplexed experiments … BHQ further eliminates the poor behavior of the acceptor fluorescence … Since BHQ itself is not fluorescent, the background noise is also reduced, resulting in an increased signal-to-noise ratio …” (page 5734, 2nd column, bottom paragraph to page 5735, 1st column, 1st paragraph)
Therefore one of ordinary skill in the art would have been motivated to add a BHQ quencher to each of the probes of Stern et al., so as to reduce the background noise and increase the signal-to-noise ratio in their FRET system detection.
As to utilizing the method of Stern et al. in a method of performing a real time PCR amplification, while the artisans employed their method in a digital PCR, allowing for the quantitation and discrimination of different alleles in the droplets, one of ordinary skill in the art would have also had a reasonable expectation of success at applying the method of Sterne et al. in an alternatively well-known quantification PCR means, such as a real-time PCR.
Because the probes employed in the method of Sterne et al. would have produced a different fluorescent signal/signature from the two probe system based on the type of allele that is found in the amplification reaction, one of ordinary skill in the art would have expected that the signal generated during each cycle could be used in a real-time PCR to determine a cycle threshold so as to quantify the target nucleic acids.
Indeed, this has been demonstrated by Rotter et al. who teach the application of the same drop-off probe system with an explicit suggestion to use in a real-time PCR reaction (i.e., quantitative RT-PCR).
Therefore, the invention as claimed is deemed prima facie obvious over the cited references.
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.
Inquiries
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Young J. Kim whose telephone number is (571) 272-0785. The Examiner can best be reached from 7:30 a.m. to 4:00 p.m (M-F). The Examiner can also be reached via e-mail to Young.Kim@uspto.gov. However, the office cannot guarantee security through the e-mail system nor should official papers be transmitted through this route.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's supervisor, Gary Benzion, can be reached at (571) 272-0782.
Papers related to this application may be submitted to Art Unit 1681 by facsimile transmission. The faxing of such papers must conform with the notice published in the Official Gazette, 1156 OG 61 (November 16, 1993) and 1157 OG 94 (December 28, 1993) (see 37 CFR 1.6(d)). NOTE: If applicant does submit a paper by FAX, the original copy should be retained by applicant or applicant’s representative. NO DUPLICATE COPIES SHOULD BE SUBMITTED, so as to avoid the processing of duplicate papers in the Office. All official documents must be sent to the Official Tech Center Fax number: (571) 273-8300. Any inquiry of a general nature or relating to the status of this application should be directed to the Group receptionist whose telephone number is (571) 272-1600.
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/YOUNG J KIM/Primary Examiner
Art Unit 1637 March 7, 2026
/YJK/