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 .
Priority
This application is a CON of 17/215,683 (03/29/2021 US11926871)
17/215,683 is a CON of 16/802,264 (02/26/2020 US10988808)
16/802,264 is a CON of 15/404,980 (01/12/2017 US10612089)
15/404,980 has PRO 62/277,783 (01/12/2016).
Drawings
The drawings filed 2/2/24 are objected to for illegible text, in particular in several of the sequences. MPEP 608.02.
Claim Interpretation
Claim 1 is to a product that is library of oligonucleotides comprising various regions without specifying any particular sequence or structural requirements. The specification provides exemplary embodiments without indicating how the library or any of regions are limited to any particular structure. Thus, one of skill in the art would understand the library as being broadly defined as any collection of oligonucleotides and claims are construed under this BRI accordingly. MPEP 2111.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Samuels et al. (US20120220494).
Samuels teaches a collection of oligonucleotides (i.e., “Universal Droplet Barcode Library”, Figures; [0213]-[0349]) which anticipates claim 1 under the BRI. Regarding claim 2-6, Samuels teaches more than 50 unique barcodes, in a partition, attached to hydrogel beads, and with a poly-T ([0161], [0205]-[0206], [0291]).
Regarding claim 7, Samuels teaches analyzing nucleic acids from a population of cells including providing, partitioning, lysing, hybridization, template directed polymerization, combining, and sequencing (Figs. 18. 24). Regarding claims 8-14, Samuels teaches use of barcode beads, RNA, RT, polyT, unique identifiers, and adapters (Fig. 23, [0226]-[0234]; [0245]; [0336]; [0465]; [0469]).
Regarding claims 15-20, Samuels teaches method of synthesizing a barcode library comprising various regions, annealing to primers, extending, and displacing (claims 1-13; [0246]; [0205]-[0270]; Figs. 5-26) which anticipate the claims under the BRI as with claim 1.
Double Patenting
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11926871. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims a method of making barcodes in the same manner as in the instant claims for the same utility which anticipates and renders obvious the instant claims in view of Samuels et al. (US20120220494) which is in the same field of endeavor and would be combined by one of ordinary skill in the art to arrive at the claimed invention.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11685947. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims barcodes equivalent to the instant claims for the same utility which anticipates and renders obvious the instant claims in view of Samuels et al. (US20120220494) which is in the same field of endeavor and would be combined by one of ordinary skill in the art to arrive at the claimed invention.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 10988808. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims a method of using barcodes in the same manner as in the instant claims for the same utility which anticipates and renders obvious the instant claims in view of Samuels et al. (US20120220494) which is in the same field of endeavor and would be combined by one of ordinary skill in the art to arrive at the claimed invention.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10752894. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims a method of making barcodes in the same manner as in the instant claims for the same utility which anticipates and renders obvious the instant claims in view of Samuels et al. (US20120220494) which is in the same field of endeavor and would be combined by one of ordinary skill in the art to arrive at the claimed invention.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10730030. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims a method of using barcodes in the same manner as in the instant claims for the same utility which anticipates and renders obvious the instant claims in view of Samuels et al. (US20120220494) which is in the same field of endeavor and would be combined by one of ordinary skill in the art to arrive at the claimed invention.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 10612089. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims barcodes equivalent to the instant claims for the same utility which anticipates and renders obvious the instant claims in view of Samuels et al. (US20120220494) which is in the same field of endeavor and would be combined by one of ordinary skill in the art to arrive at the claimed invention.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT H HAVLIN whose telephone number is (571) 272-9066. The examiner can normally be reached 9am - 6pm.
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/ROBERT H HAVLIN/Primary Patent Examiner, Art Unit 1626
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