DETAILED ACTION
1. Please note that the examiner for this application has changed. Please address future correspondence to Robert T. Crow (Art Unit 1683) whose telephone number is (571) 272-1113.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
3. Applicant’s election without traverse of Group I in the reply filed on 17 December 2025 is acknowledged.
Claims 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 17 December 2025.
Claims 1-9 are under prosecution.
Information Disclosure Statement
4. The Information Disclosure Statements filed 24 August 2023, 3 November 2023, and 6 March 2025 filed are acknowledged and have been considered.
It is noted that the listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification
5. The use of trade names or marks used in commerce (including but not necessarily limited to Teflon), has been noted in this application. Any trade names or marks should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Rejections - 35 USC § 112
6. 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.
7. Claims 4 and 9 are 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. Claim 4 is indefinite in the recitation “the first capture probe comprises the first polynucleotide,” which means the first polynucleotide is contained within the first capture probe, which is unclear because claim 1 states that the first polynucleotide is linked to the first capture probe, and thus requires them to be separate from one another.
B. Claim 9 is indefinite int the recitation “the indexes,” which clacks antecedent basis because none of claims 1-3 recite indexes.
Claim Rejections - 35 USC § 103
8. 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.
9. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
10. Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Hardenbol et al. (U.S. Patent Application Publication No. US 2016/0257984 A1, published 8 September 2016) and Frisen et al. (PCT International Publication No. WO 2016/162309 A1. Published 4 April 2016).
Regarding claim 1, Hardenbol et al. teach methods comprising providing a bead array (paragraph 0135), wherein each bead of a library of beads comprises oligonucleotide 602 comprising a barcode sequence 604 and a primer binding sequence 608 (Figure 24 and paragraph 0315). Primer 610 binds to primer binding sequence 608 via 608c and is extended therefrom (Figure 24); thus, oligonucleotide 602 is immobilized at the 5’ end, and primer binding sequence 608 is 3’ to barcode sequence 604. Hardenbol et al. further teach the primer is bound and extended (Figure 24), the barcode is sequenced (paragraph 0326), and that the methods have the added advantage of applicability for generation of long range sequence information (paragraph 0007). Thus, Hardenbol et al. teach the known techniques discussed above.
While Hardenbol et al. teach bead arrays and barcodes as discussed above, Hardenbol. et al do not teach the barcode is used to identify allocation on the bead array.
However, Frisen et al teach methods comprising use of bead arrays, wherein each bead is barcoded and the barcodes are determined to spatially teach the oligonucleotides, which has the added advantage of allowing the use of random arrays (pages 14-15). Thus, Frisen et al. teach the known techniques discussed above.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of the cited prior art to arrive at the instantly claimed method with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in a method having the added advantages of being appliable to long range sequence information as explicitly taught by Hardenbol et al. (paragraph 0007) and correlating location within random bead arrays as explicitly taught by Frisen et al. (pages 14-15). In addition, it would have been obvious to the ordinary artisan that the known techniques of the cited prior art could have been combined with predictable results because the known techniques of the cited prior art predictably result in techniques useful for detection nucleic acids on bead arrays.
Claim Objections
11. Claims 2-3 and 5-8 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.
Conclusion
12. No claim is allowed.
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert T. Crow whose telephone number is (571)272-1113. The examiner can normally be reached M-F 8:00-4:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anne Gussow can be reached at 571-272-6047. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Robert T. Crow
Primary Examiner
Art Unit 1683
/Robert T. Crow/ Primary Examiner, Art Unit 1683