Prosecution Insights
Last updated: April 19, 2026
Application No. 18/397,836

UNIVERSAL SHORT ADAPTERS WITH VARIABLE LENGTH NON-RANDOM UNIQUE MOLECULAR IDENTIFIERS

Non-Final OA §DP
Filed
Dec 27, 2023
Examiner
HORLICK, KENNETH R
Art Unit
1681
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
Illumina, Inc.
OA Round
1 (Non-Final)
79%
Grant Probability
Favorable
1-2
OA Rounds
2y 6m
To Grant
94%
With Interview

Examiner Intelligence

Grants 79% — above average
79%
Career Allow Rate
817 granted / 1035 resolved
+18.9% vs TC avg
Strong +15% interview lift
Without
With
+15.1%
Interview Lift
resolved cases with interview
Typical timeline
2y 6m
Avg Prosecution
24 currently pending
Career history
1059
Total Applications
across all art units

Statute-Specific Performance

§101
5.3%
-34.7% vs TC avg
§103
38.4%
-1.6% vs TC avg
§102
6.5%
-33.5% vs TC avg
§112
15.2%
-24.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1035 resolved cases

Office Action

§DP
Notice of Pre-AIA or AIA Status 1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. OBJECTION 2. Claims 89-97 are objected to because of the following informality: the word ‘claim’ is repeated in the first line. Correction is required. NON-PRIOR ART REJECTIONS 3. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg , 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington , 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer . 4. Claims 76- 77 and 87- 88 are rejected on the ground of nonstatutory double patenting a s being unpatentable over claims 4, 5, 7, and 10 of U.S. Patent No. 11,447,818 . Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims and the pending claim are related as s pecies-genus . That is, regarding pending claim s 76- 77, the patented claims require SEQ ID NO:1, 2, 3, or 5, and these species are recited in the broader pending claim s which also recite other alternative sequences or species. Regarding pending method claim s 87- 88, the patented set of sequencing adapters has no use or purpose other than in said method. 5. Claims 98 and 99 are rejected on the ground of nonstatutory double patenting a s being unpatentable over claim 17 of U.S. Patent No. 11,447,818 . Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claim and the pending claim are related as species-genus . That is, regarding pending claim 98, the pending set of sequencing adapters is broader in that it does not require the 5’ and 3’ arms which are required in the patented claim; thus, the patented set is a species within the pending set. Regarding pending method claim 99 , the patented set of sequencing adapters has no use or purpose other than in said method. 6. Claims 76- 77 and 87- 88 are rejected on the ground of nonstatutory double patenting a s being unpatentable over claims 4, 5, 7, 9 , and 20 of U.S. Patent No. 11,898,198 . Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims and the pending claim are related as species-genus . That is, regarding pending claim s 76- 77, the patented claims require SEQ ID NO:1, 2, 3, or 5, and these species are recited in the broader pending claim which also recites other alternative sequences or species. Regarding pending method claim s 87- 88, the patented set of sequencing adapters has no use or purpose other than in said method. 7. Claims 98 and 99 are rejected on the ground of nonstatutory double patenting a s being unpatentable over claim s 1 3 and 19 of U.S. Patent No. 11, 898 ,1 9 8 . Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claim s and the pending claim are related as species-genus . That is, regarding pending claim 98, the pending set of sequencing adapters is broader in that it does not require the 5’ and 3’ arms which are required in the patented claim s ; thus, the patented set is a species within the pending set. Regarding pending method claim 99, the patented set of sequencing adapters has no use or purpose other than in said method. ALLOWABLE SUBJECT MATTER 8. For the reasons determined during prosecution of the parent applications, claims 76-99 are free of the prior art, but some are rejected for another reason. CONCLUSION 9. No claims are allowable. 10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT KENNETH R HORLICK whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-0784 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Mon. - Thurs. 8:30 - 6:30 . 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, FILLIN "SPE Name?" \* MERGEFORMAT Gary Benzion can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-272-0782 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. 03/18/26 /KENNETH R HORLICK/ Primary Examiner, Art Unit 1681
Read full office action

Prosecution Timeline

Dec 27, 2023
Application Filed
Mar 18, 2026
Non-Final Rejection — §DP (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
79%
Grant Probability
94%
With Interview (+15.1%)
2y 6m
Median Time to Grant
Low
PTA Risk
Based on 1035 resolved cases by this examiner. Grant probability derived from career allow rate.

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