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 .
Duplicate Claims, Warning
Applicant is advised that should claim 57 be found allowable, claim 60 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claim 61 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
With respect to claim 61, the claim is rejected as being inconsistent with claim 56 from which it depends. Specifically, claim 61 recites “wherein the solvent is trimethylacetonitrile” whereas claim 56 recites, in relevant part, “wherein the solvent has a boiling temperature less than or equal to about 82°C.” Here, it is noted that the boiling point of trimethylacetonitrile is known to be 105°C-106°C1 and thus is not “less than or equal to about 82°C.” Thus, claim 61 is indefinite for being inconsistent with claim 56.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 64-69 and 71-74 are rejected under 35 U.S.C. 103 as being unpatentable over Banyai (WO 2015/021080 A2).
With respect to claims 64-69 and 71-74, Banyai discloses a device for polynucleotide synthesis (see Banyai, Abstract) comprising: (a) a solid support comprising a surface; (b) a plurality of structures for polynucleotide extension located on the surface; and (c) a solvent distributed across the surface (see Banyai, paragraph [00346]). The surface may comprise at least 30,000 loci (see Banyai, paragraphs [00288] and [00289]). In various embodiments, the device may have components for heating and/or cooling with the necessary electrical connections (e.g., electrodes) for automatic (computer) control for carrying out polynucleotide synthesis (see Banyai, paragraphs [00325], [00354], [00459], and [00551]). The distance between center of a first structure and center of a second structure may be about 1000 nm (see Banyai, paragraphs [00276] and [00282]), the structures themselves being on a size order of about 1000 nm (see Banyai, paragraph [00291]). The solvent may be a polar solvent, e.g., acetonitrile (see Banyai, paragraph [00346]).
Claims 56-60, 62, and 63 are rejected under 35 U.S.C. 103 as being unpatentable over Banyai (WO 2015/021080 A2) in view of Gasparetto (Gasparetto et al., Overview of Acetonitrile: Physicochemical Properties, Applications and Clinical Aspects, pp 1-23 (2012)).
With respect to claims 56-60, 62, and 63, see discussion supra at paragraph 10. It is known that acetonitrile has a melting point of -45°C, a boiling point of 81.6°C, and a density of 0.77 g/mL (see Gasparetto, page 3, third paragraph).
Allowable Subject Matter
Claim 61 would be allowable if rewritten to overcome the rejection under 35 U.S.C. 112(b) set forth in this Office Action and to include all of the limitations of the base claim and any intervening claims.
Claims 70 and 75 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Randy Boyer whose telephone number is (571) 272-7113. The examiner can normally be reached Monday through Friday from 10:00 A.M. to 7:00 P.M. (EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Prem C. Singh, can be reached at (571) 272-6381. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Randy Boyer/
Primary Examiner, Art Unit 1771
1 See entry for “trimethylacetonitrile” available at https://www.sigmaaldrich.com/US/en.
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