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 .
Election/Restrictions
Applicant’s election without traverse of Group I: Claims 1-18 in the reply filed on December 11, 2025 is acknowledged.
Claims 19 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Status/Action Summary
This action is in response to the papers filed on May 20, 2026.
Claims 1-20 are pending in the present application. Claims 19 and 20 are withdrawn. Claims 1-18 are under examination.
Any objections or rejections not reiterated below are withdrawn.
The objections to the drawings are withdrawn in view of the replacement drawings filed on May 20, 2026.
The objection to claim 18 is withdrawn in view of the amendments to the claims.
The amendment to claims 6-11, now depending from claim 5 rather than claim 1, now provides antecedent basis for “a second blocking element bound to one of said second platform primer binding sequences of said first polynucleotide; or… a second blocking element bound to one of said population of second platform primers” different from the “blocking element bound to one of said third platform primer binding sequences of said second polynucleotide; or… a blocking element bound to one of said third platform primers”.
Priority/Effective Filing Date
The present application, filed on August 3, 2023, claims benefit of U.S. Provisional Patent Application 63/395,276, filed on August 4, 2022. No other priority claims presently exist in the application. Therefore, the effective filing date is determined to be August 4, 2022.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Presently, the abstract reads: “Disclosed herein, inter alia, are methods for increasing monoclonal nucleic acid amplification products on a solid support.”
Response to arguments
The response does not address the objection to the abstract and no amended abstract was submitted with the response. This objection is maintained.
Claim Interpretation
Special definitions of the terms “platform primer” and “about” have been provided by the applicant in the specification at paragraphs [0031] and [0020], respectively.
At paragraph 0020, the specification reads, “As used herein, the term “about” means a range of values including the specified value, which a person of ordinary skill in the art would consider reasonably similar to the specified value.” This definition is referenced in the 112(b) rejections which follow.
At paragraph 0031, the specification reads, “As used herein, a “platform primer” is a primer oligonucleotide immobilized or otherwise bound to a solid support (i.e. an immobilized oligonucleotide).”
In light of this definition, The examiner has interpreted the claim term “a/the… platform primer” as exclusive of primer oligonucleotides that are not bound to a solid support.
For example, Claim 14, step a recites “hybridizing a second platform primer binding sequence of a first immobilized polynucleotide to a second platform primer…”. In light of the definition in the specification, this claim language has been interpreted as excluding possible embodiments wherein the first immobilized polynucleotide hybridizes to a primer that is identical to the “second platform primer” but is not bound to the solid support (i.e. “free” primers).
Claim Rejections - 35 USC § 112(b) - Indefiniteness
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.
Claims 6-13 are 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.
The term “about” in claims 10 and 13 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, and at paragraph 0020, the specification reads, “As used herein, the term “about” means a range of values including the specified value, which a person of ordinary skill in the art would consider reasonably similar to the specified value.” The reference to “a range… which a person of ordinary skill in the art would consider reasonably similar to the specified value” does not provide concrete guidance as to the metes and bounds of the claimed range. Accordingly, the recitation of “about 5 to about 35 nucleotides”, recited by claim 10, appears to cover any value for which an oligonucleotide blocking element would be expected to accomplish the function of a “blocking element” (i.e. impedes hybridization/amplification of one of the plurality of polynucleotides comprising the template sequence(s)). Similarly, the recitation “about 5 minutes to about 4 hours” appears to cover any value the ordinary artisan would expect to be required to perform “the amplifying”. Furthermore, the use of the subjective and relative term “reasonably similar” does not inform concrete metes and bounds of the claimed range of values. Therefore, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Response to arguments
The response asserts that “terms of degree are not indefinite where the intrinsic record provides an objective standard for determining claim scope. Here, paragraph [0020] of the specification defines “about” using objective parameters, including values within ±10% of the specified value and the value itself.”
This assertion has been thoroughly reviewed and is not persuasive. As was noted in the rejection of record, paragraph [0020] of the specification begins: “As used herein, the term “about” means a range of values including the specified value, which a person of ordinary skill in the art would consider reasonably similar to the specified value.” The remainder of paragraph [0020] establishes particular examples of the term usage in particular non-limiting embodiments: “In embodiments, the term “about” means within a standard deviation using measurements generally acceptable in the art. In embodiments, about means a range extending to +/- 10% of the specified value. In embodiments, about means the specified value.”
Therefore, the specification does not clearly define that “about” is limited to ±10% of the specified value and the value itself as asserted in the response, but only that “about” is limited to “a range of values including the specified value, which a person of ordinary skill in the art would consider reasonably similar to the specified value.” There is no limiting definition of the claim term that provides an objective standard for the claim term “about” nor the term “reasonably similar”. As such, the claim term “about” does not inform one having skill in the art as to the metes and bounds of the claimed invention.
For these reasons and the reasons already of record, the rejection is maintained.
Claims 10, 12, and 13 recite limitations “comprising about 5 to 35 nucleotides”, “comprises 1 to 100 bridge-PCR amplification cycles”, and “comprises about 5 minutes to about 4 hours”, respectively. The open claim language “comprising/comprises” recited before these ranges renders the range indefinite with respect to the maximum value included within the claimed range. AT paragraph 0021, the instant specification provides “the words “comprise”, “comprises”, and “comprising” will be understood to imply the inclusion of a stated step or element or group of steps or elements but not the exclusion of any other step or element or group of steps or elements.” Therefore, a recitation of “comprising” a minimum value to a maximum value necessarily includes all possible values greater than the minimum value. As such, the recited maximum value of the claimed range appears not to impose any meaningful limitation on the scope of the claims. Claims 10, 12, and 13 have accordingly been given their broadest reasonable interpretation encompassing “about 5 [or more] nucleotides” and “1 [or more] bridge-PCR amplification cycles”, and “at least about 5 minutes” respectively.
Response to arguments
The response asserts that the transitional phrase “comprising” recited in the context of approximate ranges, for example “comprising about 5 to about 35 nucleotides” does “not nullify expressly recited numerical limits” because the claim language recites a defined length range.
This assertion has been thoroughly reviewed and is not persuasive. First, as described above, the claims and the specification do not recite or provide a limiting definition that objectively informs the metes and bounds of the claim term “about”. Second, it is reiterated that “an oligonucleotide comprising about 5 to about 35 nucleotides” necessarily reads on any oligonucleotide having at least about 5 nucleotides because the claim term “comprising”, as defined by the instant specification (see above) does not exclude embodiments wherein an oligonucleotide simply “comprises” a subsequence having the recited length and additionally “comprises” any additional sequence(s) of arbitrary size.
See MPEP 2111.03 and In re Crish, 393 F.3d 1253, 73 USPQ2d 1364 (Fed. Cir. 2004) (The claims at issue "related to purified DNA molecules having promoter activity for the human involucrin gene (hINV)." Id., 73 USPQ2d at 1365. In determining the scope of applicant’s claims directed to "a purified oligonucleotide comprising at least a portion of the nucleotide sequence of SEQ ID NO:1 wherein said portion consists of the nucleotide sequence from … to 2473 of SEQ ID NO:1, and wherein said portion of the nucleotide sequence of SEQ ID NO:1 has promoter activity," the court stated that the use of "consists" in the body of the claims did not limit the open-ended "comprising" language in the claims (emphases added). Id. at 1257, 73 USPQ2d at 1367. The court held that the claimed promoter sequence designated as SEQ ID NO:1 was obtained by sequencing the same prior art plasmid and was therefore anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. Id. at 1256 and 1259, 73 USPQ2d at 1366 and 1369. The court affirmed the Board’s interpretation that the transition phrase "consists" did not limit the claims to only the recited numbered nucleotide sequences of SEQ ID NO:1 and that "the transition language ‘comprising’ allowed the claims to cover the entire involucrin gene plus other portions of the plasmid, as long as the gene contained the specific portions of SEQ ID NO:1 recited by the claim[s]." Id. at 1256, 73 USPQ2d at 1366.).
For these reasons and the reasons already of record, the rejection is maintained.
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.
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 1-5, 12, and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Trepagnier et al., US 2018/0312917 A1 (published November 1, 2018) in view of Fisher et al., WO 2022/055729 A1 (published March 17, 2022).
Regarding claims 1, 14, and 18, Trepagnier et al. teach methods for differentially amplifying subpopulations of polynucleotides having different orthogonal primer binding sites on a solid support comprising primers with orthogonal blocking groups (Trepagnier et al., paragraph 0014-0016) (i.e. hybridizing pluralities of template polynucleotides having different platform primer binding sequences to blocked platform primers). Trepagnier et al. teach deblocking one of the set of orthogonal primer sets and selectively incorporating nucleotides only to the deblocked subpopulation of primers (Trepagnier et al., paragraph 0014). The incorporated nucleotides may additionally comprise the corresponding blocking group of the orthogonal primer set (i.e. a blocking element) (Trepagnier et al., paragraph 0014). Furthermore, Trepagnier et al. teach orthogonality of primer sets and blocking groups can be increased using greater than two orthogonal primer/blocking group sets (i.e. a first, second, and third, etc. blocked platform primer sequence). Trepagnier further teaches amplifying the plurality of polynucleotides on the solid support by bridge amplification (Trepagnier et al., paragraph 0025).
Trepagnier et al. generally teach iterative cycles of selectively deblocking one of the plurality of orthogonally blocked immobilized primers (i.e. platform primers) and adding a labeled and blocked nucleotide to one subset of the captured template polynucleotides hybridized to the (now deblocked) platform primer during the sequence-determining amplification step rather than the bridge amplification step.
However, Fisher et al. teach methods of preferentially amplifying particular subsets of polynucleotides on a solid support during the bridge amplification step (Fisher et al., paragraph 0060). Fisher et al. teach biased bridge amplification is useful in sequencing applications to enhance cluster monoclonality (i.e. the homogeneity of polynucleotide template sequences in a particular region on the surface) (Fisher et al., paragraph 0060).
Therefore, it would have been prima facie obvious prior to the effective filing date of the claimed invention for one of ordinary skill in the art to have modified the methods of Trepagnier et al. comprising selective incorporation (i.e. differential amplification) of a subset of immobilized polynucleotides within a plurality of immobilized polynucleotides comprising orthogonal primer/blocking group sets during the sequencing step to differentially amplify the orthogonally primed and blocked subsets of polynucleotides during the bridge amplification step, as taught by Fisher et al. The ordinary artisan would have been motivated to modify the method of Trepagnier et al. with the teachings of Fisher et al. because Fisher et al. teach that biased (i.e. selective) amplification during cluster generation (i.e. bridge amplification) predictably and beneficially enhances the monoclonality of resulting sequencing clusters (Fisher et al., paragraph 0060).
Regarding claim 2, Fisher et al. and Trepagnier et al. teach performing bridge amplification (i.e. cycles comprising hybridization of the free 3’ end of an immobilized polynucleotide to a platform primer, extension of the platform primer with a polymerase, and denaturing the amplification product (see Fisher et al., Figure 3).
Regarding claim 3, Trepagnier et al. teach contacting the solid support with blocking elements during each amplification cycle (Trepagnier et al., paragraph 0018).
Regarding claims 4, 5, and 17 Trepagnier et al. teach iteratively removing each one of the plurality of orthogonal blocking elements, amplifying each one of the plurality of orthogonally-blocked template polynucleotides, and blocking the amplified polynucleotides. (i.e. removing the first blocking group and amplifying the second plurality…) (Trepagnier et al., paragraph 0014).
Regarding claim 12, Trepagnier et al. teach the amplification can proceed for one or more cycles comprising 1 to [more than 100] cycles (Trepagnier et al., paragraph 0070).
Regarding claim 15, Trepagnier et al. teach removing a blocking element of the plurality of orthogonal blocking elements from the plurality of orthogonal platform primers and amplifying the corresponding template polynucleotide by extending the deblocked primer with a polymerase (Trepagnier et al., paragraph 0014).
Regarding claim 16, Trepagnier et al. teach the solid support comprises a population of orthogonal platform primers, each having orthogonal blocking groups and each being immobilized to the solid support (Trepagnier et al., paragraph 0014-0017).
Response to arguments
The response asserts that “Trepagnier teaches orthogonal control of sequencing extension. That is not the claimed differential amplification method”; and “Fisher does not cure this deficiency… [because] Fisher’s solution underscores the difference from the claimed method which uses a blocking element to selectively suppress amplification of one immobilized polynucleotide population while allowing another to amplify… and that Fisher does not supply the claimed blocking architecture and does not explain why a skilled artisan would have modified Trepagnier’s sequencing-based reversible blocking moieties into separate blocking elements that bind to platform primer binding sequence or platform primers during bridge amplification”
These arguments have been thoroughly reviewed and are not persuasive.
The “sequencing-based reversible blocking moieties” taught by Trepagnier et al. encompass primers comprising modified nucleotides that are non-extendable (i.e. blocking elements). In some examples taught by Trepagnier et al., these blocked primers are used to prevent amplification of one of a plurality of sets of templates with a first, second, … etc., primer binding sequence in a sequencing by synthesis step. The methods for biased bridge amplification taught by Fisher et al. encompass “orthogonal capture primers” (i.e. platform primers) that comprise modified nucleotides that are non-extendable (i.e. blocking elements) (See above, and, for example Fisher et al., paragraph 0015). As described above, Fisher et al. further teach methods of preferentially amplifying particular subsets of polynucleotides on a solid support during the bridge amplification step (Fisher et al., paragraph 0060). Fisher et al. teach biased bridge amplification is useful in sequencing applications to enhance cluster monoclonality (i.e. the homogeneity of polynucleotide template sequences in a particular region on the surface) (Fisher et al., paragraph 0060).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it is maintained that it would have been prima facie obvious prior to the effective filing date of the claimed invention for one of ordinary skill in the art to have modified the methods for orthogonal control of polymerization from orthogonally blocked primers (taught by Trepagnier et al.) with the methods taught by Fisher et al. that orthogonally blocked (platform) primers allow for preferential amplification of templates having particular adapter sequences during bridge amplification. A resulting combination of elements wherein the orthogonally blocked primers (described at length above) of Trepagnier et al. are used in a biased bridge amplification method (described at length above) taught by Fisher et al. results in the claimed invention. It is further maintained that the ordinary artisan would have been motivated to combine the methods of Trepagnier et al. with the methods of Fisher et al. because of the teaching of Fisher et al. that biased (i.e. selective) amplification during cluster generation (i.e. bridge amplification) predictably and beneficially enhances the monoclonality of resulting sequencing clusters (Fisher et al., paragraph 0060). As is described above, an artisan having ordinary skill in arts relevant to nucleic acid sequencing by synthesis would have been aware of the two sets of methods for biased amplification of nucleic acids in sequencing by synthesis methods. Similarly, the ordinary artisan would have recognized that the blocked primers taught by Trepagnier et al. would have provided for orthogonal control of amplification at each cycle, rather than simply at the initial elongation step allowed by the orthogonally blocked platform primers taught by Fisher et al.
For these reasons and the reasons already of record, the rejection is maintained.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Trepagnier et al., US 2018/0312917 A1 (published November 1, 2018) in view of Fisher et al., WO 2022/055729 A1 (published March 17, 2022) as applied to claims 1-5, 12, and 14-18 above, and further in view of Adams et al., US 5,641,658 (issued June 24, 1997).
Regarding claim 13, Trepagnier et al. teach the amplification can be rolling circle amplification, cluster amplification, bridge amplification, among others (Trepagnier et al., paragraph 0051-0052) comprising 1 to [more than 100] cycles (Trepagnier et al., paragraph 0070). Trepagnier et al. do not teach the amount of time required to perform their amplification steps.
However, Trepagnier et al. cites Adams et al. as describing useful bridge amplification methods.
Adams et al. teach formation of an approximately 1 kb amplification product by bridge amplification (one cycle) comprises: denaturing the DNA at 94°C for 1 minute, hybridizing at 55°C for one minute, and amplifying DNA at 75°C for 5 minutes (i.e. about 7 minutes per cycle) (Adams et al., column 13, paragraph 5-7). Therefore, embodiments comprising 1 to more than 100 cycles (as taught by Adams et al.) require about 7 to more than about 700 minutes (i.e. 7 minutes-about 11.6 hours) (i.e. amplification comprises about 5 minutes to about 4 hours of bridge amplification).
Therefore, it would have been prima facie obvious prior the effective filing date of the claimed invention for one of ordinary skill in the art to have selected a particular amplification program (i.e. temperatures, step duration, and cycle number) required for bridge amplification of a particular target sequence by the methods of Trepagnier et al. in view of Fisher et al. as informed by the guidance of Adams et al. for bridge amplification of nucleic acids. The ordinary artisan would have been motivated to consult Adams et al. for guidance for bridge amplification because Trepagnier et al. specifically cite Adams et al. as teaching bridge amplification methods.
Response to arguments
The response asserts claim 13 is patentable for at least the same reasons as claim 1 because Trepagnier and Fisher do not teach or suggest the claimed method… and Adams does not cure the deficiencies of Trepagnier and Fisher.
This assertion has been thoroughly reviewed and is not persuasive for the reasons of record and those described at length in the response to arguments against the 103 rejection over Trepagnier et al. in view of Fisher et al. above.
Therefore, the rejections are maintained.
Claims 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over Trepagnier et al., US 2018/0312917 A1 (published November 1, 2018) in view of Fisher et al., WO 2022/055729 A1 (published March 17, 2022) as applied to claims 1-5, and 12-18 above, and further in view of Geipel et al., WO 2018/137826 A1 (published August 2, 2018).
Regarding claim 1, Trepagnier et al. in view of Fisher et al. teach methods for differentially amplifying subpopulations of polynucleotides having different orthogonal primer binding sites on a solid support comprising primers with orthogonal blocking groups (Trepagnier et al., paragraph 0014-0016) (i.e. hybridizing pluralities of template polynucleotides having different platform primer binding sequences to blocked platform primers). Trepagnier et al. teach deblocking one of the set of orthogonal primer sets and selectively incorporating nucleotides only to the deblocked subpopulation of primers (Trepagnier et al., paragraph 0014). The incorporated nucleotides may additionally comprise the corresponding blocking group of the orthogonal primer set (i.e. a blocking element) (Trepagnier et al., paragraph 0014). Furthermore, Trepagnier et al. teach orthogonality of primer sets and blocking groups can be increased using greater than two orthogonal primer/blocking group sets (i.e. a first, second, and third, etc. blocked platform primer sequence). Trepagnier further teaches amplifying the plurality of polynucleotides on the solid support by bridge amplification (Trepagnier et al., paragraph 0025).
Trepagnier et al. generally teach iterative cycles of selectively deblocking one of the plurality of orthogonally blocked immobilized primers (i.e. platform primers) and adding a labeled and blocked nucleotide to one subset of the captured template polynucleotides hybridized to the (now deblocked) platform primer during the sequence-determining amplification step rather than the bridge amplification step.
However, Fisher et al. teach methods of preferentially amplifying particular subsets of polynucleotides on a solid support during the bridge amplification step (Fisher et al., paragraph 0060). Fisher et al. teach biased bridge amplification is useful in sequencing applications to enhance cluster monoclonality (i.e. the homogeneity of polynucleotide template sequences in a particular region on the surface) (Fisher et al., paragraph 0060).
Therefore, it would have been prima facie obvious prior to the effective filing date of the claimed invention for one of ordinary skill in the art to have modified the methods of Trepagnier et al. comprising selective incorporation (i.e. differential amplification) of a subset of immobilized polynucleotides within a plurality of immobilized polynucleotides comprising orthogonal primer/blocking group sets during the sequencing step to differentially amplify the orthogonally primed and blocked subsets of polynucleotides during the bridge amplification step, as taught by Fisher et al. The ordinary artisan would have been motivated to modify the method of Trepagnier et al. with the teachings of Fisher et al. because Fisher et al. teach that biased (i.e. selective) amplification during cluster generation (i.e. bridge amplification) predictably and beneficially enhances the monoclonality of resulting sequencing clusters (Fisher et al., paragraph 0060).
Regarding claims 6-7, Trepagnier et al. in view of Fisher et al. do not teach that the blocking elements are oligonucleotides that comprise a complementary sequence to the platform primer(s) or a complement thereof.
However, Geipel et al. teach methods for enriching template nucleic acids comprising selective hybridization of primer sequences to platform primers wherein a protecting oligonucleotide complementary to the primer occludes hybridization between the platform primer and the complementary primer sequence on the polynucleotide comprising template sequence (Geipel et al., page 38-39). Geipel et al. further teach that the protecting oligonucleotides may comprise blocking groups (Geipel et al., page 15, paragraph 2).
Therefore, it would have been prima facie obvious prior to the effective filing date of the claimed invention for one of ordinary skill in the art to have modified the methods taught by Trepagnier et al. in view of Fisher et al. comprising selective bridge amplification using orthogonal 3’ blocked platform primers corresponding to a primer binding sequence in a subpopulation of a plurality of immobilized polynucleotides comprising a template sequence with the methods taught by Geipel et al. comprising preventing non-specific hybridization between platform primers and template polynucleotides comprising platform primer binding sequences using blocked “protecting” oligonucleotides that hybridize to primer sequences to be suppressed in a particular amplification step (i.e. a platform primer or platform primer-binding sequence other than that desired to be amplified).
The ordinary artisan would have been motivated to substitute the 3’ blocked platform primers taught by Trepagnier et al. in view of Fisher et al. with the 3’ blocked “protecting oligonucleotides” that hybridize to the platform primers or complementary primer sequences on the template oligonucleotides taught by Geipel et al. because the ordinary artisan would have recognized that the non-extendible primers (taught by Trepagnier et al. in view of Fisher et al.) and non-extendible oligonucleotides that are complementary to primers or primer-complementary sequences (taught by Geipel et al.) are interchangeable equivalent components for preventing hybridization and extension of a particular primer sequence to a template sequence.
Regarding claims 8 and 9, Geipel et al. teach that the “blocking” or “protecting” oligonucleotides can comprise PNAs (peptide nucleic acids), RNA:DNA chimeras and 3’ blocking groups (Geipel et al., page 13, paragraph 5-page 14, paragraph 1 ).
Regarding claim 10, Geipel et al. teach the length of the protecting oligonucleotides may be within the range 4-100 nucleotides and in preferred embodiments, within 10-50 nucleotides or 20-40 nucleotides (i.e. comprising about 5 to about 35 nucleotides).
Regarding claim 11, Geipel et al. teach the blocking elements are non-extendable oligonucleotides (Geipel et al., page 13, paragraph 5-page 14, paragraph 1).
Response to arguments
The response asserts that Geipel does not cure the deficiencies of Trepagnier and Fisher. The response further summarizes particular embodiments of the teachings of Geipel alone and asserts the rejection does not provide a motivation for the cited combination of references.
These assertions have been thoroughly reviewed and are not persuasive for the reasons of record and those described at length in the response to arguments against the 103 rejection over Trepagnier et al. in view of Fisher et al. above.
Therefore, the rejections are maintained.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY MARK TURPIN whose telephone number is (703)756-5917. The examiner can normally be reached Monday-Friday 8:00 am - 5:00 pm.
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/Z.M.T./Examiner, Art Unit 1682
/WU CHENG W SHEN/Supervisory Patent Examiner, Art Unit 1682
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