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 .
DETAILED ACTION
1. Applicant’s election without traverse of Group II (claims 4-8) in the reply filed on May 08, 2026 is acknowledged.
Status of the Application
2. Claims 4-8 are considered for examination. Claims 1-3 and 9-11 are withdrawn from further consideration as being drawn to nonelected group.
Priority
3. This application filed on January 19, 2024 is a CON of PCT/CN2022/109952 filed on August 03, 2022 which claims foreign priority to CN202111399046.1 filed on November 19, 2021.
Informalities
4. The following informalities are noted:
(i) Claim 4 recites the terms ‘PCR’ and ‘SSR’. Elaborating the terms at least for the first time that they appear in the claims is suggested. Appropriate correction is required.
Nucleotide and/or Amino Acid Sequence Disclosures
5. This application contains disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.821.
(i) Nucleotide and/or amino acid sequences appearing in the drawings (Fig. 2A-2C. Fig. 3A-3C, Fig. 4A-4C) are not identified by sequence identifiers in accordance with 37 CFR 1.821(d). Sequence identifiers for nucleotide and/or amino acid sequences must appear either in the drawings or in the Brief Description of the Drawings. Appropriate correction is required.
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.
Claims 4-8 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. Claim 4 recites barcode seq ID No: 3 and/or 4 as a barcode. The specification discloses that the SEQ ID NO. 3 and 4 are amplification products comprising barcode sequence (para 0078-0081). The barcode as recited in the claim 4 is not clear if the barcode is used as a barcode in the amplification reaction or does it represent an amplification product comprising barcode.
Double Patenting
7. 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.
Claims 4-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-8 of copending Application No US 18/417,236. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims 4-8 are entirely within the scope of the claims 4-8 in the co-pending application. Specifically, the method steps of the 4-8 claims comprising extracting genomic DNA of a samplefrom floccularia luteovirens, performing a fluorescent PCR and detecting SSR loci repetitive elements in amplification product by capillary fluorescence electrophoresis are within the scope of the claims 4-8 in the co-pending application. Thus, the instant claims are obvious over the claims in the co-pending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 4-8 along with primer SEQ ID NO: 1 and 2 and combination of barcode sequences 3 and 4 are free of prior art. Xing et al. J Microbiol, Vol. 55(8), pp.600-606, (2017); and Li et al. BioMed. J Sci & Tech Res., Vol.2(1), p. 2264-2266, (2018) are noted as closest prior art.
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Suryaprabha Chunduru
Primary Examiner
Art Unit 1681
/SURYAPRABHA CHUNDURU/Primary Examiner, Art Unit 1681
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