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 .
The claims filed 4/28/2023 are under consideration.
Priority
The present application claims benefit to US provisional application 61/337,044. Priority is recognized.
Information Disclosure Statement
The listing of references in the specification or citation of references throughout 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 or on a submitted IDS, they have not been considered.
Drawings
The colored drawings dated 8/8/2023 and 4/28/2023 are accepted.
A petition for colored drawings was granted on 11/14/2023.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
The specification includes reference to websites on p. 96, line 23 and p. 170, line 13.
The use of terms that are trade names or marks used in commerce, such as CYTOP®, Alexa Fluor®, Abberior® and BODIPY®, has been noted in this application. The terms 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. The examiner notes that applicant has provided proper symbols on numerous occasions throughout the specification, and invites applicant to acknowledge proper symbols have been provided as needed.
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 § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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(s) 1 and 2 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Van Der Zaag (WO 2016/046408 A1).
Regarding claim 1, Van Der Zaag teaches using an evanescent wave for excitation light to image and identify a nucleotide incorporated into a “primer” as part of a bound molecule (p. 8, lines 22-29). The nucleotide is a 3’-unblocked reversible terminator (p. 6, lines 17-20; and p. 9, lines 23-31), which is encompassed by a “3’-unblocked protected nucleotide”.
See also Fig. 1.
Regarding claim 2, Van Der Zaag teaches contacting a substrate polynucleotide as part of a bound molecule with a sequencing primer (p. 9, lines 3-12) and a 3’-unblocked reversible terminator (p. 6, lines 17-20; and p. 9, lines 23-31), which is encompassed by a “3’-unblocked protected nucleotide”.
Van Der Zaag teaches using an evanescent wave for excitation light to image and identify a nucleotide incorporated into a “primer” as part of a bound molecule (p. 8, lines 22-29). The nucleotide is a 3’-unblocked reversible terminator (p. 6, lines 17-20; and p. 9, lines 23-31), which is encompassed by a “3’-unblocked protected nucleotide”.
See also Fig. 1.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH G DAUNER whose telephone number is (571)270-3574. The examiner can normally be reached 7 am EST to 4:30 EST with second Fridays Off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Wu-Cheng Winston Shen can be reached at 5712723157. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH G. DAUNER/Primary Examiner, Art Unit 1682