DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions and Status of the Claims
2. Applicant’s election of Group II in the reply filed on 18 February 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
However, Applicant has also cancelled all claims in non-elected Group I (i.e., claims 52-62), and added new claims 68-72. Thus, claims 63-72 are under prosecution.
Specification
3. The use of trade names or marks used in commerce (including but not necessarily limited to Ficoll), 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.
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.
Information Disclosure Statement
4. The Information Disclosure Statements filed 26 January 2024, 12 June 2024, 18 July 2025, and 18 February 2026 are acknowledged and have been considered. References that are lined through are duplicate citations.
It is noted that the listing of references in 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, they have not been considered.
Claim Interpretation
5. The claims are subject to the following interpretation:
A. Claim 63 (upon which claims 64-72 depend) recites a formamide concentration “of about 25% v/v or less.” The limitations is interpreted as requiring at least some non-zero concentration of formamide.
B. While affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of a prior application do not automatically become a part of this application, it is noted that paragraphs 8-11 of the Declaration filed 8 June 2017 in parent Application No. 14,348,134 (now U.S. Patent No. 10,662,465 B2, issued 26 May 2020; hereafter “the ‘465 Patent”) state that the compositions and methods of “the ‘656 PCT” (i.e., Matthiesen, PCT International Publication No. WO 2010/097656 A1, published 2 September 2010; cited below as prior art) were not meant to be used in a hybridization composition or method.
Thus, the claimed “method of hybridizing a nucleic acid,” as recited in claim 63, is interpreted as excluding the teachings of the ‘656 PCT as prior art.
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.
7. Claims 63-72 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 63 (upon which claims 64-72 depend) is indefinite in the recitation “about 25% v/v or less.” The phrase “or less” typically indicates a maximum point; however, the phrase “or less” is controverted by the term “about,” which implies that values above and below the indicated amount are permitted. Therefore, the juxtaposition of these two terms makes it unclear what maximum values are encompassed by the claim. See MPEP 2173.05 (b) III, which discusses the phrase “less than about.” The phrase “about…or less” is deemed indefinite for similar reasons.
Claim Rejections - 35 USC § 103
8. The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
9. Claims 63-72 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Stender et al. ((U.S. Patent Application Publication No. US 2002/0137035 A1, published 26 September 2002) and Selitrennikoff et al. (U.S. Patent No. US 6,716,625 B1, published 6 April 2004) and/or further in view of Chau et al. (U.S. Patent Application Publication No. US 2006/0160069 A1, published 20 July 2006)..
Regarding claim 63-64, Stender et al. teach methods of hybridizing probes to a target (e.g., blotted RNA), using solutions comprising 10% w/v dextran sulfate and hybridizing for 1.5 hours (i.e., claims 63 and 64; paragraphs 0322-0324). Stender et al. also teach hybridization solutions including 20% formamide (paragraphs 0279 and 0336), and that the formamide has the added advantage of increasing the ratio between specific and non-specific binding (paragraph 0279). Thus, Stender et al. each the known techniques discussed above.
Stender et al. do not teach the claimed molecular weight of dextran sulfate.
However, Selitrennikoff et al. teach methods and compositions for probe hybridization comprising the use of formamide, dextran sulfate having a molecular weight of about 500,000 (i.e., 500kDA), bovine serum albumin, polyvinylpyrrolidone, buffer (i.e., Tris; Example 15), and that the use of these components are well known in the art as having the added advantage of allowing variation of the stringency conditions (column 38, line 65-column 39, line 20). Thus, Selitrennikoff et al. teach the known techniques discussed above.
Alternatively, Chau et al. teach hybridization methods and compositions comprising 35% formamide that further utilize high molecular weight dextran sulfate in concentrations of 20% w/v have the added advantage of accelerating the rate of hybridization (paragraph 0300). Chau et al. also teach the use of BSA (paragraph 0092). Thus, Chau et al. teach the known techniques discussed above.
In addition, with respect to the multiple ranges found within the instant claims, the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
The courts have found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II.
Therefore, the claimed ranges alternatively represent routine optimization and/or an obvious variant of the values taught by the prior art.
MPEP 716.01(c) makes clear that “[t]he arguments of counsel cannot take the place of evidence in the record” (In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965)). Thus, counsel’s mere arguments cannot take the place of evidence in the record.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the Stender et al. with Selitrennikoff et al. and/or Chau et al. to arrive at the instantly claimed composition with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in a composition having the added advantages of utilizing components well known in the art as having the added advantages of:
Increasing the ratio between specific and non-specific binding as explicitly taught by Stender et al. (paragraph 0279);
Allowing variation of the stringency conditions as explicitly taught by Selitrennikoff et al. (column 38, line 65-column 39, line 20); and/or
Accelerating the rate of hybridization as explicitly taught by Chau et al. (paragraph 0300).
In addition, it would have been obvious to the ordinary artisan that the known techniques of the cited prior art could have been combined with predictable results because the known techniques of the cited prior art predictably result in useful methods of using the claimed hybridization compositions.
Regarding claims 65 and 71, the method of claim 63 is discussed above. Stender et al. teach 10% dextran sulfate (paragraph 0324), as do Chau et al. (paragraph 0092) and Selitrennikoff et al. (Example 15).
Regarding claims 66-68, the method of claim 65 is discussed above. Stender et al. teach 500 mM salt (paragraph 0208 and 0281). Chau et al. teach 4x SSC buffer for hybridization (paragraph 0090), which contains 600 mM NaCl.
Regarding claim 69, the method of claim 63 is discussed above. Stender et al. teach 20% formamide (paragraph 0279).
Regarding claims 70 and 72, the method of claim 63 is discussed above. Stender et al. also teach the solution includes polyvinylprrrolidone and a buffer (i.e., Tris; paragraphs 0324 and 0355). Selitrennikoff et al. teach PVP and BSA (Example 15), and Chau et al. teach SSC buffer, VPV, and BSA (paragraph 0090).
In addition, it is reiterated that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists, and that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Therefore, the claimed ranges alternatively represent routine optimization and/or an obvious variant of the values taught by the prior art.
Applicant is reminded that counsel’s mere arguments cannot take the place of evidence in the record.
Double Patenting
10. 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.
11. Claims 63-72 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 and 31-52 of U.S. Patent No. 9,297,035 in view of Stender et al. ((U.S. Patent Application Publication No. US 2002/0137035 A1, published 26 September 2002) and Selitrennikoff et al. (U.S. Patent No. US 6,716,625 B1, published 6 April 2004) and/or further in view of Chau et al. (U.S. Patent Application Publication No. US 2006/0160069 A1, published 20 July 2006).
Both sets of claims are drawn to hybridizing nucleic acids in less than 4 hours, dextran sulfate concentrations, less than 25% formamide, NaCl, glycols, accelerating agents, etc. Any additional limitations of the ‘035 claims are encompassed by the open claim language “comprising” found in the instant claims.
The “035 claims do not recite the hybridization times.
However, Stender et al. teach hybridization methods wherein dextran sulfate solutions having NaCl and formamide are incubated of 1.5 hours (paragraphs 0322-0324), and that the formamide has the added advantage of increasing the ratio between specific and non-specific binding (paragraph 0279). Thus, Stender et al. each the known techniques discussed above.
Neither Stender et al. nor the ‘035 claims recite the claimed molecular weight of dextran sulfate.
However, Selitrennikoff et al. teach compositions for probe hybridization comprising the use of formamide, dextran sulfate having a molecular weight of about 500,000 (i.e., 500kDA), bovine serum albumin, polyvinylpyrrolidone, buffer (i.e., Tris; Example 15), and that the use of these components are well known in the art as having the added advantage of allowing variation of the stringency conditions (column 38, line 65-column 39, line 20). Thus, Selitrennikoff et al. teach the known techniques discussed above.
Alternatively, Chau et al. teach hybridization compositions that utilize high molecular weight dextran sulfate in concentrations of 20% w/v have the added advantage of accelerating the rate of hybridization (paragraph 0300). Chau et al. also teach the use of BSA (paragraph 0092). Thus, Chau et al. teach the known techniques discussed above.
In addition, it is reiterated that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists, and that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Therefore, the claimed ranges alternatively represent routine optimization and/or an obvious variant of the values taught by the prior art.
Applicant is reminded that counsel’s mere arguments cannot take the place of evidence in the record.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the ‘035 claims with Stender et al. and Selitrennikoff et al. and/or Chau et al. to arrive at the instantly claimed composition with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in a composition having the added advantages of:
Increasing the ratio between specific and non-specific binding as explicitly taught by Stender et al. (paragraph 0279);
Allowing variation of the stringency conditions as explicitly taught by Selitrennikoff et al. (column 38, line 65-column 39, line 20); and/or
Accelerating the rate of hybridization as explicitly taught by Chau et al. (paragraph 0300).
In addition, it would have been obvious to the ordinary artisan that the known techniques of the cited prior art could have been combined with the ‘035 claims with predictable results because the known techniques of the cited prior art predictably result in useful methods of using the claimed hybridization compositions.
12. Claims 63-72 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 8-54 of U.S. Patent No. 9,303,287 in view of Selitrennikoff et al. (U.S. Patent No. US 6,716,625 B1, published 6 April 2004) and/or Chau et al. (U.S. Patent Application Publication No. US 2006/0160069 A1, published 20 July 2006).
Both sets of claims are drawn to hybridizing nucleic acids in less than 4 hours, dextran sulfate concentrations, less than 25% formamide, NaCl, glycols, accelerating agents, etc. Any additional limitations of the ‘287 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘287 claims do not recite the claimed molecular weight of dextran sulfate.
However, the molecular weight, as well as additional claimed limitations and the rationale for combining with Selitrennikoff et al. and/or Chau et al., is discussed above.
13. Claims 63-72 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-33 and 35-61 of U.S. Patent No. 9,309,562 in view of Selitrennikoff et al. (U.S. Patent No. US 6,716,625 B1, published 6 April 2004) and/or Chau et al. (U.S. Patent Application Publication No. US 2006/0160069 A1, published 20 July 2006).
Both sets of claims are drawn to hybridizing nucleic acids in less than 4 hours, dextran sulfate concentrations, less than 25% formamide, NaCl, glycols, accelerating agents, etc. Any additional limitations of the ‘562 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘562 claims do not recite the claimed molecular weight of dextran sulfate.
However, the molecular weight, as well as additional claimed limitations and the rationale for combining with Selitrennikoff et al. and/or Chau et al., is discussed above.
14. Claims 63-72 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 8-20 of U.S. Patent No. 10,202,638 in view of Selitrennikoff et al. (U.S. Patent No. US 6,716,625 B1, published 6 April 2004) and/or Chau et al. (U.S. Patent Application Publication No. US 2006/0160069 A1, published 20 July 2006).
Both sets of claims are drawn to hybridizing nucleic acids in less than 4 hours, dextran sulfate concentrations, less than 25% formamide, NaCl, glycols, accelerating agents, etc. Any additional limitations of the ‘638 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘638 claims do not recite the claimed molecular weight of dextran sulfate.
However, the molecular weight, as well as additional claimed limitations and the rationale for combining with Selitrennikoff et al. and/or Chau et al., is discussed above.
15. Claims 63-72 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-34 of U.S. Patent No. 10,662,465 in view of Selitrennikoff et al. (U.S. Patent No. US 6,716,625 B1, published 6 April 2004) and/or Chau et al. (U.S. Patent Application Publication No. US 2006/0160069 A1, published 20 July 2006).
Both sets of claims are drawn to hybridizing nucleic acids in less than 4 hours, dextran sulfate concentrations, less than 25% formamide, NaCl, glycols, accelerating agents, etc. Any additional limitations of the ‘465 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘465 claims do not recite the claimed molecular weight of dextran sulfate.
However, the molecular weight, as well as additional claimed limitations and the rationale for combining with Selitrennikoff et al. and/or Chau et al., is discussed above.
16. Claims 63-72 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 8-31 of U.S. Patent No. 11,118,214 in view of Stender et al. ((U.S. Patent Application Publication No. US 2002/0137035 A1, published 26 September 2002) and Selitrennikoff et al. (U.S. Patent No. US 6,716,625 B1, published 6 April 2004) and/or further in view of Chau et al. (U.S. Patent Application Publication No. US 2006/0160069 A1, published 20 July 2006).
Both sets of claims are drawn to dextran sulfate concentrations, less than 25% formamide, NaCl, glycols, accelerating agents, etc. Any additional limitations of the ‘214 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘214 claims do not recite the claimed hybridization times or the claimed molecular weight of dextran sulfate.
However, the hybridization times, the molecular weight, and the additional claimed limitations and the rationale for combining with Stender et al. and Selitrennikoff et al. and/or Chau et al., is discussed above.
17. Claims 63-72 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,118,226 in view of Stender et al. ((U.S. Patent Application Publication No. US 2002/0137035 A1, published 26 September 2002) and Selitrennikoff et al. (U.S. Patent No. US 6,716,625 B1, published 6 April 2004) and/or further in view of Chau et al. (U.S. Patent Application Publication No. US 2006/0160069 A1, published 20 July 2006).
Both sets of claims are drawn to hybridizing nucleic acids in less than 4 hours, dextran sulfate concentrations, less than 25% formamide, NaCl, glycols, accelerating agents, etc. Any additional limitations of the ‘226 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘226 claims do not recite the claimed hybridization times or the claimed molecular weight of dextran sulfate.
However, the hybridization times, the molecular weight, and the additional claimed limitations and the rationale for combining with Stender et al. and Selitrennikoff et al. and/or Chau et al., is discussed above.
18. Claims 63-72 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 11,795,499 in view of Selitrennikoff et al. (U.S. Patent No. US 6,716,625 B1, published 6 April 2004) and/or Chau et al. (U.S. Patent Application Publication No. US 2006/0160069 A1, published 20 July 2006).
Both sets of claims are drawn to hybridizing nucleic acids in less than 4 hours, dextran sulfate concentrations, less than 25% formamide, NaCl, accelerating agents, etc. Any additional limitations of the ‘499 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘499 claims do not recite the claimed molecular weight of dextran sulfate.
However, the molecular weight, as well as additional claimed limitations and the rationale for combining with Selitrennikoff et al. and/or Chau et al., is discussed above.
19. Claims 63-72 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 and 11-19 of U.S. Patent No. 11,834,703 in view of Stender et al. ((U.S. Patent Application Publication No. US 2002/0137035 A1, published 26 September 2002) and Selitrennikoff et al. (U.S. Patent No. US 6,716,625 B1, published 6 April 2004) and/or further in view of Chau et al. (U.S. Patent Application Publication No. US 2006/0160069 A1, published 20 July 2006).
Both sets of claims are drawn to hybridizing nucleic acids, dextran sulfate concentrations, less than 25% formamide, NaCl, accelerating agents, etc. Any additional limitations of the ‘703 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘703 claims do not recite the claimed hybridization times or the claimed molecular weight of dextran sulfate.
However, the hybridization times, the molecular weight, and the additional claimed limitations and the rationale for combining with Stender et al. and Selitrennikoff et al. and/or Chau et al., is discussed above.
20. Claims 63-72 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 and 11-19 of U.S. Patent No. 12,209,276 in view of Stender et al. ((U.S. Patent Application Publication No. US 2002/0137035 A1, published 26 September 2002) and Selitrennikoff et al. (U.S. Patent No. US 6,716,625 B1, published 6 April 2004) and/or further in view of Chau et al. (U.S. Patent Application Publication No. US 2006/0160069 A1, published 20 July 2006).
Both sets of claims are drawn to hybridizing nucleic acids, dextran sulfate concentrations, less than 25% formamide, NaCl, accelerating agents, etc. Any additional limitations of the ‘276 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘276 claims do not recite the claimed hybridization times or the claimed molecular weight of dextran sulfate.
However, the hybridization times, the molecular weight, and the additional claimed limitations and the rationale for combining with Stender et al. and Selitrennikoff et al. and/or Chau et al., is discussed above.
21. Claims 63-72 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,534,755 in view of Selitrennikoff et al. (U.S. Patent No. US 6,716,625 B1, published 6 April 2004) and/or Chau et al. (U.S. Patent Application Publication No. US 2006/0160069 A1, published 20 July 2006).
Both sets of claims are drawn to hybridizing nucleic acids, times under 4 hours,, dextran sulfate concentrations, less than 25% formamide, NaCl, accelerating agents, etc. Any additional limitations of the ‘755 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘755 claims do not recite the claimed molecular weight of dextran sulfate.
However, the molecular weight, as well as additional claimed limitations and the rationale for combining with Selitrennikoff et al. and/or Chau et al., is discussed above.
22. Claims 63-72 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 61-74 of copending Application No. 19/035,623 in view of Stender et al. ((U.S. Patent Application Publication No. US 2002/0137035 A1, published 26 September 2002) and Selitrennikoff et al. (U.S. Patent No. US 6,716,625 B1, published 6 April 2004) and/or further in view of Chau et al. (U.S. Patent Application Publication No. US 2006/0160069 A1, published 20 July 2006).
Both sets of claims are drawn to hybridizing nucleic acids, dextran sulfate concentrations, less than 25% formamide, NaCl, accelerating agents, etc. Any additional limitations of the ‘623 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘623 claims do not recite the claimed hybridization times or the claimed molecular weight of dextran sulfate.
However, the hybridization times, the molecular weight, and the additional claimed limitations and the rationale for combining with Stender et al. and Selitrennikoff et al. and/or Chau et al., is discussed above.
This is a provisional nonstatutory double patenting rejection.
Prior Art
23. The following prior art is hereby made of record, but not presently relied upon for any rejection, as it is considered pertinent to Applicant's disclosure.
Capon et al. (U.S. Patent No. 4,965,199) teaches hybridization reactions, in the form of Southern hybridizations, comprising target nucleic acids and probes, 0-50% formamide, 10% dextran sulfate, in 5x SSC buffer having PVP and BSA (column 14, lines 5-20). However, Capon et al. do not teach the molecular weight of dextran sulfate or a hybridization time of less than 8 hours.
Conclusion
24. No claim is allowed.
25. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert T. Crow whose telephone number is (571)272-1113. The examiner can normally be reached M-F 8:00-4:30.
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Robert T. Crow
Primary Examiner
Art Unit 1683
/Robert T. Crow/Primary Examiner, Art Unit 1683
Prosecution Insights