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 the particular species that are: Zeolite Imidazolate Frameworks (ZIF); glicydyl methacrylate (GMA); and an azide moiety, in the reply filed on 03/25/2026 is acknowledged.
In light of the Examiner’s search and analysis of the elected species, the species election requirement as set forth in the Requirement of 02/02/2026 is withdrawn.
Objection to the Drawings
Color photographs (see Fig 1C of the submitted drawings) and color drawings (see Figures 2A, 2B, 2C, 3A, 3B, 4A, 5, 6B, 7) are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted.
Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
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 31-49 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 11,795,505 (cited on the IDS of 12/05/2023) in view of Gleezer et al (WO-2020163630-A1).
The claims of 11,795,505 are directed to methods including contacting a solid support with a plurality of particles, the particles comprising a degradable core and a polymer shell comprising bioconjugate reactive moieties, with a degrading agent to decompose the particle core.
The conflicting claims include aspects of providing primers to the bioconjugate reactive moieties (e.g.: conflicting claim 1), degrading with acids and bases (e.g.: conflicting claims 22 and 23), solid supports comprising wells (e.g.: conflicting claims 7-10), and particle compositions that are metal-organic frameworks including Zeolitic Imidazolate Framework and polymers that are glicydyl methacrylate (GMA) azide.
The conflicting claims do not specify that the particles are provided in a plurality of layers of particles (as recited in instantly rejected claim 1). But the use of layers of functionalized particles was known in the prior art and is taught by Gleezer et al (WO-2020163630-A1).
Gleezer et al (WO-2020163630-A1) teaches compositions of functionalized particles (e.g.: p.1) arranged in layers (e.g.: Fig 2B; p.190; Fig. 14) used for analysis of nucleic acids.
It would have been prima facie obvious to someone with ordinary skill in the relevant art before the effective filing date of the rejected claims to have arranged the particles of 11,795,505 into layers of a plurality of differently functionalized particles, as taught and suggested by Gleezer et al (WO-2020163630-A1). The skilled artisan would have been motivated to use layers of particles based on the expressed teaching of Gleezer et al (WO-2020163630-A1)that multiple layers may be analyzed in a three-dimensional matrix (e.g.: p.41-43). The skilled artisan would have had a reasonable expectation of success because the conflicting claims of 11,795,505 include methods of sequencing a target nucleic acid, and Gleezer et al (WO-2020163630-A1) teaches that the arrangements of particles are suitable for sequencing analyses (e.g.: p.41). With regard to the instant rejection of claims 42 and 43, Gleezer et al (WO-2020163630-A1) teaches the relevant sizes of the particles (e.g.: p.180). With regard to the rejection of claim 39, where the conflicting claims of 11,795,505 are directed to the degradation of a particle core with the same compositions as the particles of the instantly rejected claims, the particular time required for degradation of the core would be a matter of routine optimization.
Claims 31-49 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 80-97 of copending Application No. 18/844,864 in view of Gleezer et al (WO-2020163630-A1).
The claims of 18/844,864 are directed to methods including contacting a solid support with a particle, the particle comprising a degradable core and a polymer shell comprising a bioconjugate reactive moiety, with a degrading agent to decompose the particle core.
The conflicting claims include aspects of providing primers to the bioconjugate reactive moieties (e.g.: conflicting claim 81), and particle compositions that are metal-organic frameworks including Zeolitic Imidazolate Framework and polymers that are glicydyl methacrylate (GMA) azide.
The conflicting claims do not specify that the particles are provided in a plurality of layers of particles (as recited in instantly rejected claim 1), or a solid support comprising wells. But the use of layers of functionalized particles, and solid supports comprising wells, were known in the prior art and is taught by Gleezer et al (WO-2020163630-A1).
Gleezer et al (WO-2020163630-A1) teaches compositions of functionalized particles (e.g.: p.1) arranged in layers (e.g.: Fig 2B; p.190; Fig. 14), and solid supports including wells (e.g.: p.11) used for analysis of nucleic acids.
It would have been prima facie obvious to someone with ordinary skill in the relevant art before the effective filing date of the rejected claims to have arranged the particles of 18/844,864 into layers of a plurality of differently functionalized particles, as taught and suggested by Gleezer et al (WO-2020163630-A1). The skilled artisan would have been motivated to use layers of particles based on the expressed teaching of Gleezer et al (WO-2020163630-A1) that multiple layers may be analyzed in a three-dimensional matrix (e.g.: p.190). The skilled artisan would have had a reasonable expectation of success because the conflicting claims of 18/844,864 include methods of sequencing a target nucleic acid, and Gleezer et al (WO-2020163630-A1) teaches that the arrangements of particles are suitable for sequencing analyses (e.g.: p. 190). With regard to the instant rejection of claims 42 and 43, Gleezer et al (WO-2020163630-A1) teaches the relevant sizes of the particles (e.g.: p.180). With regard to the rejection of claims 36-39, where the conflicting claims of 18/844,864 are directed to the degradation of a particle core, and recite particles with the same compositions as the particles of the instantly rejected claims, the particular degrading agents, and time required for degradation of the core, would be a matter of routine optimization.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claim is allowed.
The claims are free of the prior art. The prior art dies not teach methods comprising a contacting a solid support with a plurality of layers of particles where the particles comprise a degradable core and a polymer shell with a bioconjugate reactive moiety, and the degradation of the particle cores. The closest prior art with regard to layer of particles is Gleezer et al (WO-2020163630-A1). However, Gleezer et al (WO-2020163630-A1) teaches that the bioconjugate reactive moieties are attached to the core of the particle (not to the polymer shell). No prior art suggests the degradation of particle cores in making layers of particles; the prior art does not suggest that such a method permits higher accuracy sequencing experiments, as taught by the instant specification.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN THOMAS KAPUSHOC whose telephone number is (571)272-3312. The examiner can normally be reached M-F, 8am-5pm.
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, Anne Gussow can be reached at 571-272-6047. 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.
Stephen Kapushoc
Primary Examiner
Art Unit 1683
/STEPHEN T KAPUSHOC/Primary Examiner, Art Unit 1683
Prosecution Insights