CTNF 18/459,672 CTNF 81864 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. The instant application, which has a filing date on or after March 16, 2013, is considered a transition application because the application claims domestic benefit to Application No. 13/793,564, which has a filing date prior to March 16, 2013. Although the instant application does not contain a 37 CFR 1.55/1.78 statement indicating that this application should be examined under the AIA (First Inventor to File), a review of the disclosures of both the instant application and the parent application, by the examiner, reveals that at least one claim presented or that have ever been presented in the instant application appears to be drawn to inventions having an effective filing date on or after March 16, 2013 as the claim(s) fail to have support in the parent application. More specifically, as discussed below in the “Priority” section, not all of the originally filed claims find support in the prior-filed parent and provisional applications. Accordingly, the effective filing date of at least one claim in the application is September 1, 2023. CONSEQUENTLY, THE AIA INDICATOR IN THE INSTANT APPLICATION HAS BEEN CHANGED FROM ITS INITIAL SETTING OF “ NO ” TO THE MODIFIED SETTING OF “ YES ”. And, this application is/will be examined under the AIA (First-Inventor-to-File) law. Therefore, all forthcoming Office actions on the merits will be labeled “ AIA (First Inventor to File) Status: Yes ” (see upper right box on form PTOL-37/37D and/or PTOL-326/326AE). Preliminary Amendment 2. The preliminary amendment filed on January 23, 2024 has been entered. Claims 1-17 are pending and the subject of this Office action. Priority 02-09 AIA 3. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e) as follows: 02-10 The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc. , 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994). In this case, none of the prior-filed provisional and non-provisional applications provides adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for the full scope of claims 1-15. More specifically, the prior-filed applications fail to provide support for the second, third, and fourth primers recited in claim 1. As to the second primer, which appears to correspond to the “first adaptor primer” described in para. 88 of the specification of the instant application, the disclosure of the prior-filed non-provisional applications, which is identical to the disclosure of the instant application, only provides support for a second primer comprising, at minimum, the structural features set forth in para. 88 of the specification of the instant application (i.e., a nucleic acid molecule comprising a nucleic acid sequence identical to a 5’ portion of the first sequencing primer contained in the amplification strand of the universal oligonucleotide-tail adaptor). The instant claim 1, though, is much broader since the second primer need not contain the particular portion of the amplification strand required by the “first adaptor primer” to which it seems to correspond. Put another way, the disclosure of the prior-filed provisional and non-provisional applications fails to disclose an amplification method that uses a second primer as broadly recited in claim 1 and only supports performing an amplification method using a second primer containing, at minimum, the particular features set forth in para. 88 of the specification of the instant application. As to the third primer, which appears to correspond to the “second target-specific primer” described in para. 85 of the specification of the instant application, the disclosure of the prior-filed non-provisional applications, which is identical to the disclosure of the instant application, only provides support for a third primer comprising, at minimum, the structural features set forth in para. 85 of the specification of the instant application. The instant claim 1, though, is much broader since the third primer need not contain all of the structural features recited in para. 85. Put another way, the disclosure of the prior-filed provisional and non-provisional applications fails to disclose an amplification method that uses a third primer as broadly recited in claim 1 and only supports performing an amplification method using a third primer containing, at minimum, the particular features set forth in para. 85 of the specification of the instant application. As to the fourth primer, which appears to correspond to the “second adaptor primer” described in para. 89 of the specification of the instant application, the disclosure of the prior- filed non-provisional applications, which is identical to the disclosure of the instant application, only provides support for a fourth primer comprising, at minimum, the structural features set forth in para. 89 of the specification of the instant application. The instant claim 1, though, is much broader since the fourth primer need not contain all of the structural features recited in para. 89. Put another way, the disclosure of the prior-filed provisional and non-provisional applications fails to disclose an amplification method that uses a fourth primer as broadly recited in claim 1 and only supports performing an amplification method using a fourth primer containing, at minimum, the particular features set forth in para. 89 of the specification of the instant application. It is also noted that the disclosure of the prior-filed applications also fails to provide support for the subject matter of the instant claims 3-5. As to the instant claim 3, the disclosure of the prior-filed applications does not provide support for sequencing with just the first sequencing primer. As to the instant claim 4, the disclosure of the prior-filed applications does not provide support for use of a second primer containing a nucleotide sequence identical to a portion of the second sequencing primer. Instead, the primer in the prior-filed applications that seems to correspond to the second primer recited in the instant claim 4 (i.e., the “first adaptor primer”) contains a sequence identical to a 5’ portion of a first sequencing primer (see, e.g., para. 88 on page 21 of the originally filed specification of prior-filed Application Serial No. 16/897,588). As to the instant claim 5, the disclosure of the prior-filed applications does not support presence of a barcode portion in the amplification strand of the universal oligonucleotide tail-adaptor and also in the second amplification product. Thus, the effective filing date of the instant claims 1-15 is September 1, 2023 . Information Disclosure Statement 4. Applicant’s submission of an Information Disclosure Statement (IDS) on September 1, 2023 and December 20, 2023 is acknowledged. All of the cited references have been considered. Specification 5. The specification is objected to because the continuity information in the first paragraph should be updated to state that prior-filed Application Serial No. 16/897,588 has issued as US 11,781,179. The specification is also objected to because it fails to provide support for the subject matter of original claims 1 and 3-5. Claim 1 As to original claim 1, the specification fails to provide support for the second, third, and fourth primers as broadly recited in claim 1. As discussed above in the “Priority” section, the specification of the prior-filed non-provisional applications, which is identical to the specification of the instant application, fails to provide support for the second, third, and fourth primer recited in claim 1. Accordingly, the specification of the instant application also fails to provide the required support for the reasons set forth above in the “Priority” section. Claim 3 As to original claim 3, the specification fails to provide support for sequencing using just the first sequencing primer as encompassed by the claim. Claim 4 As to original claim 4, the specification fails to provide support for a second primer that contains “a nucleotide sequence identical to a portion of the second sequencing primer” as recited in the claim. Claim 5 As to original claim 5, the specification fails to provide support for a universal oligonucleotide tail-adaptor in which the amplification strand contains a barcode portion and a second amplification product that also contains said barcode portion. Since the aforementioned subject matter in claims 1 and 3-5 was presented in the original claims, it is part of the original disclosure. In other words, this is not a new matter issue. And, as discussed in MPEP 2163.06 III, when claimed subject matter is supported by the original disclosure but not contained in the specification, Applicant may amend the specification to include this material without introducing new matter. Drawings 6. The drawings filed on September 1, 2023 are objected to because not all of the text in Figure 5 is legible. In particular, the text in the 12 panels in the right-hand portion of the figure is too small to read easily. 07-30-03-h AIA Claim Interpretation 7. The following terms in the claims are explicitly defined in the specification: (i) amplicon/amplification product/amplified product = PCR products (page 11, para. 49); (ii) first target-specific primer = a single-stranded oligonucleotide comprising a nucleic acid sequence that can specifically anneal to the target nucleic acid at the annealing temperature (page 20, para. 83); (iii) second target-specific primer = a single-stranded oligonucleotide comprising a 3’ target-specific portion and a 5’ portion comprising a nucleic acid sequence that is identical to a second sequencing primer, wherein the second target-specific primer is nested relative to the first target-specific primer (page 21, para. 85); (iv) first adaptor primer/first tail-adaptor primer = a nucleic acid comprising a sequence identical to a 5’ portion of the first sequencing primer (page 22, para. 88); (v) second adaptor primer/second tail-adaptor primer = a nucleic acid comprising a sequence identical to a portion of the first sequencing primer and nested relative to the first adaptor primer (page 22, para. 89); (vi) universal oligonucleotide tail-adaptor = a nucleic acid that contains a blocking strand and an amplification strand as well as a ligatable duplex portion and an unpaired end (page 15, para. 65). The blocking strand must contain a 5' duplex portion, and the amplification strand must contain an unpaired 5' portion, a 3' duplex portion, and a 3' T overhang, as well as sequences identical to the first and second sequencing primers (page 15, para. 65); and (vii) known target nucleotide sequence = a portion of a target nucleic acid for which the sequence….is known (page 14, para. 63). This paragraph also requires a known target nucleotide sequence to be at least ten nucleotides in length. Claim Objections 8. Claims 1 and 16 are objected to because the word “and” should be inserted after the semicolon at the end of step (a) in each claim. As well, the comma after “oligonucleotide tail-adaptor” in line 4 of step (a) in each claim appears to be unnecessary. Claims 13-15 are objected to because a hyphen should be inserted between “tail” and “adaptor” in line 2 of each claim to maintain consistency with claim 1. Claim Rejections - 35 USC § 112 07-30-02 AIA 9. 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. 07-34-01 Claims 1-17 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 1 Claim 1 is indefinite because the structure of the second amplification product generated in step (b) is not entirely clear. Claim 2, which depends from claim 1, states that the second amplification product must contain the first nucleotide sequence referenced in step (a) of claim 1, but claim 1 does not appear to require this. In other words, step (b) in claim 1, which generates the second amplification product to be sequenced in claim 2, never seems to require the second amplification product to contain the first nucleotide sequence because the broadly recited third and fourth primers do not necessarily produce such an amplicon. As a result, it is not clear whether the second amplification product generated in step (b) of claim 1 must contain the first nucleotide sequence or if this is an additional requirement only present in claim 2. Thus, claim 16 is indefinite. Claim 1 is also indefinite because the scope of the following terms recited in the claims is unclear: (i) “second primer” in step (a), (ii) “third primer” in step (b), and (iii) “fourth primer” in step (b). The specification discloses an amplification method that uses four different primers (see, e.g., Fig. 1 and para. 7), but these four primers are always defined using the following terms, which as noted above in the Claim Interpretation section, are explicitly defined in the specification: (i) first target-specific primer, (ii) first adaptor primer, (iii) second target-specific primer, and (iv) second adaptor primer. In other words, although the specification describes an amplification method that use four different primers, these primers are never described with the terms recited in claim 1 (i.e., first primer, second primer, third primer, and fourth primer), and instead, are described using the more specific terms noted above and in the Claim Interpretation section. And, the explicit definitions set forth in the specification require the “first adaptor primer,” “second target-specific primer,” and “second adaptor primer” to contain structural features in addition to those indicated by the plain meaning of the terms. For example, a “first adaptor primer,” according to the explicit definition on page 22, must contain “a nucleic acid sequence identical to a 5’ portion of the first sequencing primer.” The possibly corresponding “second primer” in claim 1, though, is not explicitly required to contain this sequence and is only stated to comprise “a nucleotide sequence identical to a portion of the amplification strand of the ligated universal oligonucleotide tail-adaptor.” 1 Therefore, it is unclear whether the second primer recited in claim 1 must contain the particular structural features of the “first adaptor primer” explicitly defined in the specification, or if the term “second primer” more broadly encompasses primers that do not contain “a nucleic acid sequence identical to a 5’ portion of the first sequencing primer.” Thus, the structural requirements of the second primer recited in claim 1 are not entirely clear. The third and fourth primers in claim 1 present the same problem since the potentially corresponding primers in the specification are required by their explicit definitions in the specification to contain features not currently recited in the claim. Claims 2-15 Claims 2-15 are also indefinite because they depend, directly or indirectly, from claim 1 and do not resolve its indefiniteness issues. Claims 16 and 17 Claim 16 is indefinite because the structure of the second amplification product generated in step (b) is not entirely clear. Claim 17, which depends from claim 16, states that the second amplification product must contain the first nucleotide sequence referenced in step (a) of claim 16, but claim 16 does not appear to require this. In other words, step (b) in claim 16, which generates the second amplification product to be sequenced in claim 17, never requires the second amplification product to contain the first nucleotide sequence because the broadly recited second target-specific primer and second adaptor primer do not necessarily produce such an amplicon. As a result, it is not clear whether the second amplification product generated in step (b) of claim 16 must contain the first nucleotide sequence or if this is an additional requirement only present in claim 17. Thus, claim 16 is indefinite. Claim 17 is also indefinite since it depends from claim 16 and does not resolve its indefiniteness issue. Claim Rejections - 35 USC § 112 07-36 AIA 10. The following is a quotation of 35 U.S.C. 112(d): (d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph: Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. Claims 13-15 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 13 depends from claim 1 and requires “prior to (a), ligating the universal oligonucleotide tail adaptor to the nucleic acid template comprising the known target nucleotide sequence to produce a ligation product.” This is not further limiting because it is already required by step (a) in claim 1. More specifically, by reciting “amplifying…a nucleic acid template comprising….an amplification strand of a ligated universal oligonucleotide tail-adaptor” in step (a), claim 1 already requires ligation as recited in claim 13 prior to step (a) in claim 1. Therefore, claim 13 is not further limiting. Claim 14 depends from claim 13, which in turn depends from claim 1, and requires the universal oligonucleotide tail-adaptor to contain “a first ligatable duplex end and a second unpaired end.” This is not further limiting because it is already required by claim 1. More specifically, the explicit definition for the “universal oligonucleotide tail-adaptor” set forth in para. 65 on page 15 of the specification requires the universal oligonucleotide-tail adaptor to contain “a first ligatable duplex end and a second unpaired end.” Accordingly, claim 14 does not require anything in addition to the claims from which it depends, and the claim is rejected under 35 U.S.C. 112(d) for not being further limiting. Claim 15 depends from claim 13, which in turn depends from claim 1, and requires the universal oligonucleotide tail-adaptor to contain a blocking strand. This is not further limiting because it is already required by claim 1. More specifically, the explicit definition for the “universal oligonucleotide tail-adaptor” set forth in para. 65 on page 15 of the specification requires the universal oligonucleotide-tail adaptor to contain a blocking strand. Accordingly, claim 15 does not require anything in addition to the claims from which it depends, and the claim is rejected under 35 U.S.C. 112(d) for not being further limiting. Applicant may cancel the claims, amend the claims to place them in proper dependent form, or present a sufficient showing that the aforementioned dependent claims comply with the statutory requirements. Double Patenting 08-33 AIA 11. 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp. 12. Claims 1-3 and 5-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-47 of U.S. Patent No. 9,487,828 B2 (IDS reference). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘828 patent overlap in scope with the instant claims and recite or suggest all of their limitations. The instant claims are drawn to a method for preparing a nucleic acid for sequencing. The method comprises the following steps: (i) adapter ligation, (ii) a first amplification conducted with a first target-specific primer and a first adapter-targeting primer, and (iii) a second amplification conducted with a second target-specific primer and a second adapter-targeting primer. The second target-specific primer is nested relative to the first target-specific primer. As well, as discussed above in the “Claim Interpretation” section, the following terms in the instant claims have particular meanings that are narrower than the conventional meaning: (a) amplification/amplification product; (b) first target-specific primer; (c) second target-specific primer; (d) first adaptor primer; (e) second adapter primer; and (f) universal oligonucleotide tail-adaptor. More specifically, as noted above, “amplification” refers only to PCR, and the explicit definitions require the universal oligonucleotide-tail adaptor, target-specific primers, and adapter primers to have particular structural features. The instant application is a continuation of prior-filed Application Serial No. 16/897,588, which is a continuation of Application Serial No. 15/984,612, which is a continuation of Application Serial No. 15/269,448, which is a continuation of the application that issued as the cited ‘828 patent. Therefore, the limiting definitions in the instant application concerning “amplification,” the target-specific primers, the universal oligonucleotide tail-adaptor, and the adapter primers also apply to the claims of the ‘828 patent. The claims of the ‘828 patent are also drawn to a method for preparing a nucleic acid for sequencing. Like the instant claims, the method recited in the claims of the ‘828 patent comprises ligation of a universal oligonucleotide tail-adaptor, a first amplification conducted with a first target-specific primer and a first adapter-targeting primer, and a second amplification conducted with a nested second target-specific primer and a second adapter-targeting primer. See independent claims 1 and 40 of the ‘828 patent, where the recited primers contain all of the structural features required by the instant claims 1 and 16. Claims 1 and 40 of the ‘828 patent also recite additional elements (sequencing with a first and second sequencing primer) that are not required by the instant claims 1 and 16, but are recited in the instant claims 2 and 3. Thus, these claims of the ‘828 patent contain all of the elements of the instant claims 1-3 and 13-16 as well as additional elements and each represent a species of the method more generically claimed in the instant claims 1-3 and 13-16. 2 As discussed in MPEP 804 II.B.1, a species claim anticipates a more generic claim. Thus, the instant claims 1-3 and 13-16 are not patentably distinct from the claims of the ‘828 patent. The instant claim 5 depends from the instant claim 1 and requires the amplification strand in the universal oligonucleotide tail-adaptor to contain a barcode portion and for the second amplification product to also contain said barcode portion. Claim 38 of the ‘828 patent states that the universal oligonucleotide tail-adaptor may contain a barcode portion. This claim does not state that the barcode portion is in the amplification strand of the universal oligonucleotide tail-adaptor, but the ordinary artisan would have recognized that the barcode portion could be located in either of the two strands of the universal oligonucleotide tail-adaptor, and, accordingly, would have been motivated to place the barcode portion in the amplification strand with a reasonable expectation of success. The ordinary artisan also would have recognized that for the barcode to be useful, it should be present in the second amplification product (i.e., the amplification product to be sequenced). Therefore, it also would have been obvious to place the barcode in the universal oligonucleotide tail-adaptor such that it will be present in the second amplification product. Thus, the instant claim 5 is not patentably distinct from the claims of the ‘828 patent. The instant claim 6, which depends from the instant claim 1, requires that the nucleotide sequence contiguous to the known nucleotide sequence contains a genetic alteration. Claims 35 and 44 of the ‘828 patent state that the known target nucleotide sequence “comprises a sequence associated with a gene rearrangement,” which indicates that a genetic alteration is located within the known target sequence rather than a nucleotide sequence contiguous thereto. The ordinary artisan would have recognized, though, that a genetic alteration, particularly a novel alteration, could also be located in a nucleotide sequence contiguous to the known target sequence. Therefore, it would have been obvious to practice the method recited in the claims of the ‘828 patent using a nucleic acid in which a genetic alteration is located in a nucleotide sequence contiguous to the known target sequence, and the instant claim 6 is not patentably distinct from the claims of the ‘828 patent. The limitations of the instant claims 7 and 9 are recited in claims 6 and 7 of the ‘828 patent. The instant claim 8, which depends from the instant claim 1, requires the nucleotide sequence contiguous to the known target nucleotide sequence to contain an insertion or a deletion. As discussed above with respect to the instant claim 6, a genetic alteration in this nucleotide sequence is rendered obvious by the claims of the ‘828 patent. The claims of the ‘828 patent do not state that the genetic alteration may be a deletion or an insertion, but the ordinary artisan would have recognized the desirability of detecting the presence of any type of genetic alteration (i.e., a rearrangement, an insertion, a deletion, or a point mutation). Thus, the instant claim 8 is not patentably distinct from the claims of the ‘828 patent. The limitations of the instant claims 10 and 11 are recited in claims 35 and 36 of the ‘828 patent. The instant claim 12 depends from the instant claim 1 and requires the nucleic acid template to be “prepared from a sample obtained from a subject having a condition associated with a genetic alteration.” As discussed above, the claims of the ‘828 patent suggest practicing the method using nucleic acid templates containing a genetic alteration. Therefore, the ordinary artisan would have also recognized that such templates could be isolated from subjects having a condition associated with a genetic alteration. Thus, the instant claim 12 is not patentably distinct from the claims of the ‘828 patent. The limitations of the instant claim 17 are recited in claim 34 of the ‘828 patent. Thus, the instant claims 1-3 and 5-17 are not patentably distinct from the claims of the ‘828 patent. 13. Claims 1-3, 5-10, and 12-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,017,810 B2 (IDS reference). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘810 patent overlap in scope with the instant claims and recite or suggest all of their limitations. The instant claims are drawn to a method for preparing a nucleic acid for sequencing. The method comprises the following steps: (i) adapter ligation, (ii) a first amplification conducted with a first target-specific primer and a first adapter-targeting primer, and (iii) a second amplification conducted with a second target-specific primer and a second adapter-targeting primer. The second target-specific primer is nested relative to the first target-specific primer. As well, as discussed above in the “Claim Interpretation” section, the following terms in the instant claims have particular meanings that are narrower than the conventional meaning: (a) amplification/amplification product; (b) first target-specific primer; (c) second target-specific primer; (d) first adaptor primer; (e) second adapter primer; and (f) universal oligonucleotide tail-adaptor. More specifically, as noted above, “amplification” refers only to PCR, and the explicit definitions require the universal oligonucleotide-tail adaptor, target-specific primers, and adapter primers to have particular structural features. The instant application is a continuation of prior-filed Application Serial No. 16/897,588, which is a continuation of Application Serial No. 15/984,612, which is a continuation of Application Serial No. 15/269,448 (issued as the cited ‘810 patent), which is a continuation of Application Serial No. 13/793,564. Therefore, the limiting definitions in the instant application concerning “amplification,” the target-specific primers, the universal oligonucleotide tail-adaptor, and the adapter primers also apply to the claims of the ‘810 patent. The claims of the ‘810 patent are also drawn to a method for preparing a nucleic acid for sequencing. Like the instant claims, the method recited in the claims of the ‘810 patent comprises adapter ligation, a first amplification conducted with a first target-specific primer and a first adapter-targeting primer, and a second amplification conducted with a nested second target-specific primer and a second adapter-targeting primer. See independent claims 1 and 16 of the ‘810 patent, where the recited primers contain all of the structural features required by the instant claims 1 and 16. Dependent claim 20 in the ‘810 patent also recites sequencing the second amplification product using a first and second amplification primer, which meets the requirement in the instant claims 2 and 3 for determining the nucleotide sequence contiguous to the known target nucleotide sequence using at least a first sequencing primer. It is further noted that the second adapter in the claims of the ‘810 patent is nested relative to the first adapter primer since its explicit definition requires as much. Thus, the claims of the ‘810 patent contain all of the elements of the instant claim 1-3 and 13-16. 3 The claims of the ‘810 patent also contain additional elements at least because claim 16 of the ‘810 patent requires the universal oligonucleotide tail-adaptor to contain a barcode portion (see step (iii)). As discussed in MPEP 804 II.B.1, a species claim anticipates a more generic claim. Thus, the instant claims 1-3 and 13-16 are not patentably distinct from the claims of the ‘810 patent. The instant claim 5 depends from the instant claim 1 and requires the amplification strand in the universal oligonucleotide tail-adaptor to contain a barcode portion and for the amplification product of the second amplification reaction to contain said barcode portion. Step (iii) in claim 16 of the ‘810 patent states that the universal oligonucleotide tail-adaptor may contain a barcode portion. This claim does not state that the barcode portion is in the amplification strand of the universal oligonucleotide tail-adaptor, but the ordinary artisan would have recognized that the barcode portion could be located in either of the two strands of the universal oligonucleotide tail-adaptor, and, accordingly, would have been motivated to place the barcode portion in the amplification strand with a reasonable expectation of success. The ordinary artisan also would have recognized that for the barcode to be useful, it should be present in the second amplification product (i.e., the amplification product to be sequenced). Therefore, it also would have been obvious to place the barcode in the universal oligonucleotide tail-adaptor such that it will be present in the second amplification product. Thus, the instant claim 5 is not patentably distinct from the claims of the ‘810 patent. The instant claim 6, which depends from the instant claim 1, requires that the nucleotide sequence contiguous to the known nucleotide sequence contains a genetic alteration. Claim 14 of the ‘810 patent states that the known target nucleotide sequence “comprises a sequence associated with a gene rearrangement,” which indicates that a genetic alteration is located within the known target sequence rather than a nucleotide sequence contiguous thereto. The ordinary artisan would have recognized, though, that a genetic alteration, particularly a novel alteration, could also be located in a nucleotide sequence contiguous to the known target sequence. Therefore, it would have been obvious to practice the method recited in the claims of the ‘810 patent using a nucleic acid in which a genetic alteration is located in a nucleotide sequence contiguous to the known target sequence, and the instant claim 6 is not patentably distinct from the claims of the ‘810 patent. The limitations of the instant claim 7 are recited in claim 5 of the ‘810 patent. The instant claim 8, which depends from claim 1, requires the nucleotide sequence contiguous to the known target nucleotide sequence to contain an insertion or a deletion. As discussed above with respect to the instant claim 6, a genetic alteration in this nucleotide sequence is rendered obvious by the claims of the ‘810 patent. The claims of the ‘810 patent do not state that the genetic alteration may be a deletion or an insertion, but the ordinary artisan would have recognized the desirability of detecting the presence of any type of genetic alteration (i.e., a rearrangement, an insertion, a deletion, or a point mutation). Thus, the instant claim 8 is not patentably distinct from the claims of the ‘810 patent. The limitations of the instant claim 9, which depends from claim 1, are met by claims 5 and 6 of the ‘810 patent since the reverse transcription step in claim 6 of the ‘810 patent generates cDNA. The limitations of the instant claim 10 are recited in claim 14 of the ‘810 patent since “a sequence associated with a gene rearrangement” encompasses “a sequence comprising a gene rearrangement.” The instant claim 12 depends from the instant claim 1 and requires the nucleic acid template to be “prepared from a sample obtained from a subject having a condition associated with a genetic alteration.” As discussed above, the claims of the ‘810 patent suggest practicing the method using nucleic acid templates containing a genetic alteration. Therefore, the ordinary artisan would have also recognized that such templates could be isolated from subjects having a condition associated with a genetic alteration. Thus, the instant claim 12 is not patentably distinct from the claims of the ‘810 patent. Thus, the instant claims 1-3, 5-10, and 12-16 are not patentably distinct from the claims of the ‘810 patent. 08-36 AIA 14. Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-20 of U.S. Patent No. 10,017,810 B2 (IDS reference) in view of Verbeek et al. ( Journal of Clinical Endocrinology and Metabolism 2011; 96: E991-E995; IDS reference) . As discussed above, the instant claims 1-3, 5-10, and 12-16 are not patentably distinct from the claims of the ‘810 patent. Regarding the instant claim 11, which depends from the instant claim 10, claim 14 of the ‘810 patent states that the known target sequence comprises a sequence associated with a gene rearrangement. The claims of the ‘810 patent do not state that the gene rearrangement comprises a fusion oncogene, however. This difference between the instant claims and those of the ‘810 patent would have been obvious, though, in view of the teachings of Verbeek. This reference teaches that two types of thyroid cancer can result from rearrangements in the RET gene and goes on to discuss different treatment options for these cancers (abstract and pages E991-E993). The ordinary artisan would have been motivated by these teachings of Verbeek to use the method recited in the claims of the ‘810 patent to detect rearrangements in the RET gene, which is a fusion oncogene, recognizing that doing so would aid in diagnosing thyroid cancers associated with RET rearrangements. The ordinary artisan would have had a reasonable expectation of success since the sequence of the RET gene was known at the time of the invention and Verbeek teaches that at least one cancer-associated rearrangement was also known (page E994, column 1). Thus, the instant claim 11 is not patentably distinct from the claims of the ‘810 patent in view of Verbeek . 08-36 AIA 15. Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-20 of U.S. Patent No. 10,017,810 B2 (IDS reference) in view of Lennon et al. ( Genome Biology 2010: 11: R15; IDS reference) . As discussed above, the instant claims 1-3, 5-10, and 12-16 are not patentably distinct from the claims of the ‘810 patent. The claims of the ‘810 patent do not meet the requirements of the instant claim 17, which depends from the instant claim 16, since they do not state that the sequencing step is performed via a next-generation sequencing method. Selecting a next-generation sequencing method for the sequencing step recited in claim 20 of the ‘810 patent would have been obvious, though, since Lennon taught that next-generation sequencing methods “provided the opportunity for both large genome centers and individual labs to generate DNA sequence data at an unprecedented scale” (page 1, column 1). The ordinary artisan would have had a reasonable expectation of success since this portion of Lennon also indicates that several NGS methods have been commercialized. Thus, the instant claim 17 is not patentably distinct from the claims of the ‘810 patent in view of Lennon. 16. Claims 1-3 and 5-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 10,718,009 B2 (IDS reference). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘009 patent overlap in scope with the instant claims and recite or suggest all of their limitations. The instant claims are drawn to a method for preparing a nucleic acid for sequencing. The method comprises the following steps: (i) adapter ligation, (ii) a first amplification conducted with a first target-specific primer and a first adapter-targeting primer, and (iii) a second amplification conducted with a second target-specific primer and a second adapter-targeting primer. The second target-specific primer is nested relative to the first target-specific primer. As well, as discussed above in the “Claim Interpretation” section, the following terms in the instant claims have particular meanings that are narrower than the conventional meaning: (a) amplification/amplification product; (b) first target-specific primer; (c) second target-specific primer; (d) first adaptor primer; (e) second adapter primer; and (f) universal oligonucleotide tail-adaptor. More specifically, as noted above, “amplification” refers only to PCR, and the explicit definitions require the universal oligonucleotide-tail adaptor, target-specific primers, and adapter primers to have particular structural features. The instant application is a continuation of prior-filed Application Serial No. 16/897,588, which is a continuation of Application Serial No. 15/984,612 (issued as the cited ‘009 patent), which is a continuation of Application Serial No. 15/269,448, which is a continuation of Application Serial No. 13/793,564. Therefore, the limiting definitions in the instant application concerning “amplification,” the target-specific primers, the universal oligonucleotide tail-adaptor, and the adapter primers also apply to the claims of the ‘009 patent. The claims of the ‘009 patent are also drawn to a method for preparing a nucleic acid for sequencing. Like the instant claims, the method recited in the claims of the ‘009 patent comprises adapter ligation, a first amplification conducted with a first target-specific primer and a first adapter-targeting primer, and a second amplification conducted with a nested second target-specific primer and a nested second adapter-targeting primer. See independent claim 1 in the ‘009 patent, where the recited primers contain all of the structural features required by the instant claims 1 and 16. Step (d) in claim 1 of the ‘009 patent also recites sequencing the second amplification product using a first and second amplification primer, which meets the requirement in the instant claims 2 and 3 for determining the nucleotide sequence contiguous to the known target nucleotide sequence using at least a first sequencing primer. Thus, the claims of the ‘009 patent contain all of the elements of the instant claim 1-3 and 13-16. 4 The claims of the ‘009 patent also contain additional elements at least because claim 1 of the ‘009 patent requires a sequencing step that is not required by the instant claims 1 and 13-16 and narrower than the sequencing step recited in the instant claims 2 and 3. As discussed in MPEP 804 II.B.1, a species claim anticipates a more generic claim. Thus, the instant claims 1-3 and 13-16 are not patentably distinct from the claims of the ‘009 patent. The instant claim 5 depends from the instant claim 1 and requires the amplification strand in the universal oligonucleotide tail-adaptor to contain a barcode portion and for the amplification product of the second amplification reaction to contain said barcode portion. Claim 13 of the ‘009 patent states that the universal oligonucleotide tail-adaptor may contain a barcode portion. This claim does not state that the barcode portion is in the amplification strand of the universal oligonucleotide tail-adaptor, but the ordinary artisan would have recognized that the barcode portion could be located in either of the two strands of the universal oligonucleotide tail-adaptor, and, accordingly, would have been motivated to place the barcode portion in the amplification strand with a reasonable expectation of success. The ordinary artisan also would have recognized that for the barcode to be useful, it should be present in the second amplification product (i.e., the amplification product to be sequenced). Therefore, it also would have been obvious to place the barcode in the universal oligonucleotide tail-adaptor such that it will be present in the second amplification product. Thus, the instant claim 5 is not patentably distinct from the claims of the ‘009 patent. The instant claim 6, which depends from the instant claim 1, requires that the nucleotide sequence contiguous to the known nucleotide sequence contains a genetic alteration. Claim 9 of the ‘009 patent requires the known target sequence “is comprised by a gene rearrangement,” which indicates that the genetic alteration is within the known target sequence rather than the nucleotide sequence contiguous thereto. The ordinary artisan would have recognized, though, that a genetic alteration, particularly a novel alteration, could also be located in the nucleotide sequence contiguous to the known target sequence. Therefore, it would have been obvious to practice the method recited in the claims of the ‘009 patent using a nucleic acid in which the genetic alteration is located in the nucleotide sequence contiguous to the known target sequence, and the instant claim 6 is not patentably distinct from the claims of the ‘009 patent. The limitations of the instant claims 7 and 9, which each depend from the instant claim 1, are met by claim 8 of the ‘009 patent since the recited reverse transcription step generates cDNA. The instant claim 8, which depends from the instant claim 1, requires the nucleotide sequence contiguous to the known target nucleotide sequence to contain an insertion or a deletion. As discussed above with respect to the instant claim 6, a genetic alteration in this nucleotide sequence is rendered obvious by the claims of the ‘009 patent. The claims of the ‘009 patent do not state that the genetic alteration may be a deletion or an insertion, but the ordinary artisan would have recognized the desirability of detecting the presence of any type of genetic alteration (i.e., a rearrangement, an insertion, a deletion, or a point mutation). Thus, the instant claim 8 is not patentably distinct from the claims of the ‘009 patent. The limitations of the instant claims 10 and 11 are recited in claims 9 and 10 of the ‘009 patent. The instant claim 12 depends from the instant claim 1 and requires the nucleic acid template to be “prepared from a sample obtained from a subject having a condition associated with a genetic alteration.” As discussed above, the claims of the ‘009 patent suggest practicing the method using nucleic acid templates containing a genetic alteration. Therefore, the ordinary artisan would have also recognized that such templates could be isolated from subjects having a condition associated with a genetic alteration. Thus, the instant claim 12 is not patentably distinct from the claims of the ‘009 patent. The limitations of the instant claim 17, which depends from the instant claim 1, are recited in claim 11 of the ‘009 patent. Thus, the instant claims 1-3 and 5-17 are not patentably distinct from the claims of the ‘009 patent. 17. Claims 1-3 and 5-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,781,179 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘179 patent overlap in scope with the instant claims and recite or suggest all of their limitations. The instant claims are drawn to a method for preparing a nucleic acid for sequencing. The method comprises the following steps: (i) adapter ligation, (ii) a first amplification conducted with a first target-specific primer and a first adapter-targeting primer, and (iii) a second amplification conducted with a second target-specific primer and a second adapter-targeting primer. The second target-specific primer is nested relative to the first target-specific primer. As well, as discussed above in the “Claim Interpretation” section, the following terms in the instant claims have particular meanings that are narrower than the conventional meaning: (a) amplification/amplification product; and (b) universal oligonucleotide tail-adaptor. More specifically, as noted above, “amplification” refers only to PCR, and the explicit definitions require the universal oligonucleotide-tail adaptor to have particular structural features. The instant application is a continuation of prior-filed Application Serial No. 16/897,588 (issued as the cited ‘179 patent), which is a continuation of Application Serial No. 15/984,612, which is a continuation of Application Serial No. 15/269,448, which is a continuation of Application Serial No. 13/793,564. Therefore, the limiting definitions in the instant application concerning “amplification” and the universal oligonucleotide tail-adaptor also apply to the claims of the ‘179 patent. The claims of the ‘179 patent are also drawn to a method for preparing a nucleic acid for sequencing. Like the instant claims, the method recited in the claims of the ‘179 patent comprises adapter ligation, a first amplification conducted with a first target-specific primer and a first adapter-targeting primer, and a second amplification conducted with a nested second target-specific primer and a nested second adapter-targeting primer. See independent claims 1 and 14 in the ‘179 patent, where the recited primers contain all of the structural features required by the instant claims 1 and 16. As well, since the primers recited in claims 1 and 14 of the ‘179 are more narrowly defined compared to the primers recited in the instant claims, the claims of the ‘179 patent contain all of the elements of the instant claims 1 and 13-16 as well as additional elements. 5 As discussed in MPEP 804 II.B.1, a species claim anticipates a more generic claim. Thus, the instant claims 1 and 13-16 are not patentably distinct from the claims of the ‘179 patent. The limitations of the instant claim 2, which depends from the instant claim 1, are recited in the last step in each of claims 1 and 14 of the ‘179 patent. The limitations of the instant claim 3, which depends from the instant claim 2, are recited in claim 2 of the ‘179 patent. The limitations of the instant claims 5-12 are recited in claims 4-8 and 10-12, respectively, of the ‘179 patent. The limitations of the instant claim 17, which depends from the instant claim 16, are recited in step (d) in claim 14 of the ‘179 patent. Thus, the instant claims 1-3 and 5-17 are not patentably distinct from the claims of the ‘179 patent. Prior Art 18. The instant claims are free of the prior art. They are drawn to a method for preparing a nucleic acid for sequencing that comprises two rounds of amplification. The method comprises the following steps: (a) providing a single strand of a nucleic acid template that (i) contains a known target nucleotide sequence and a first nucleotide sequence contiguous to the known target nucleotide sequence and (ii) is ligated, at the 5’ end, to the “amplification strand” of a partial-duplex adaptor (i.e., the universal oligonucleotide tail-adaptor defined above); (b) amplifying the template nucleic acid using two primers, one of which is target-specific and the other of which targets the adaptor portion; and (c) amplifying the amplification product of (b) with a second adaptor-targeting primer and a second target-specific primer, wherein the second adaptor-targeting primer comprises a 3’ portion that is identical to a portion of the first adaptor-targeting primer, and wherein the second target-specific primer is nested relative to the first target-specific primer. As discussed above in the “Claim Interpretation” section, the specification contains explicit definitions for the universal oligonucleotide tail-adaptor and primers recited in claims 16 and 17. As also discussed above, the first, second, third, and fourth primers recited in claims 1-15 do not appear to be limited to the explicit definitions in the specification for the “first target-specific primer,” “second target-specific primer,” “first adaptor primer,” and “second adaptor primer.” Nevertheless, claims 1-15 are also free of the prior art for the reasons set forth below. The following references, each of which was cited on an IDS, are the closest prior art: (1) Xiao et al. ( Journal of Plant Physiology and Molecular Biology 2007; 33: 85-90); Zheng et al. ( Nature Protocols 2011; 6: 1367-1376), Ryan et al. (US 2012/0122701 A1), and Lamant et al. ( Blood 1999; 93: 3088-3095). Xiao describes a method for amplifying the nucleic acid sequences that flank a known sequence. The method comprises ligation of an adaptor with a partial-duplex structure, linear amplification with a target-specific primer, exponential amplification with a nested target-specific primer and an adaptor primer, and further amplification with two additional specific primers (page 86, section 1.3 and Figure 1), but it does not use nested adaptor primers as required by claims 16 and 17, nor does the partial-duplex adaptor of Xiao contain all of the structural features required of the universal oligonucleotide tail-adaptor recited in all of the instant claims. More specifically, at least the requirement for an overhanging 3’ thymine is not met by the adaptor of Xiao (see Fig. 1). There is no proper motivation or rationale to modify Xiao to arrive at a method containing all of the elements required by the instant claims. Zheng describes a sequencing method that comprises ligating adaptors with a partial-duplex structure to a target nucleic acid, PCR, and sequencing (Figures 1-2 and pages 1367-1374), but the reference does not teach conducting the PCR with target-specific primers, let alone nested target-specific primers as required by all of the claims. Instead, only adaptor-targeting primers are used. As with Xiao, there is no proper motivation or rationale to modify Zheng to arrive at a method containing all of the elements required by the instant claims. Ryan describes a sequencing method that comprises adaptor ligation and PCR amplification (Experiment 2 on page 28), but the reference fails to teach a second round of amplification conducted with nested primers as required by the instant claims. As with Xiao and Zheng, there is no proper motivation or rationale to modify Ryan to arrive at a method containing all of the elements required by the instant claims. Lamant describes a method comprising adaptor ligation followed by amplification with nested primers (Fig. 1), but neither the adaptors nor the primers of Lamant have the structural features required by the instant claims. As with Xiao, Zheng, and Ryan, there is no proper motivation or rationale to modify Lamant to arrive at a method containing all of the elements required by the instant claims. Thus, although each of the above references discloses one or more elements of the claimed methods, there is no suggestion to combine the different elements from multiple references or to modify the prior art methods to arrive at a method comprising the particular combination of steps and elements (i.e., primers and adaptor) recited in the claims. Accordingly, all of the pending claims are free of the prior art. Conclusion 19. No claims are currently allowable. Zhou et al. (US 2024/0191295 A1) is also cited as a reference of interest. This reference, which qualifies as prior art in view of the effective filing date of the instant claims 1-15, discloses a method comprising adaptor ligation followed by amplification with nested target-specific primers (see Fig. 1A and paras. 159-160). The universal oligonucleotide adapter used by Zhou differs from the claimed adapter, though, at least because it lacks the overhanging 3’-thymine required by the claimed adapter and instead contains a 5’ overhang (see Fig. 1A and paras. 147 and 160). Any inquiry concerning this communication or earlier communications from the examiner should be directed to Angela Bertagna whose telephone number is (571)272-8291. The examiner can normally be reached 8-5, M-F. 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, Gary Benzion can be reached on 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. /ANGELA M. BERTAGNA/Primary Examiner, Art Unit 1637 Application/Control Number: 18/459,672 Page 2 Art Unit: 1681 Application/Control Number: 18/459,672 Page 3 Art Unit: 1681 Application/Control Number: 18/459,672 Page 4 Art Unit: 1681 Application/Control Number: 18/459,672 Page 5 Art Unit: 1681 Application/Control Number: 18/459,672 Page 6 Art Unit: 1681 Application/Control Number: 18/459,672 Page 7 Art Unit: 1681 Application/Control Number: 18/459,672 Page 8 Art Unit: 1681 Application/Control Number: 18/459,672 Page 9 Art Unit: 1681 Application/Control Number: 18/459,672 Page 10 Art Unit: 1681 Application/Control Number: 18/459,672 Page 11 Art Unit: 1681 Application/Control Number: 18/459,672 Page 12 Art Unit: 1681 Application/Control Number: 18/459,672 Page 13 Art Unit: 1681 Application/Control Number: 18/459,672 Page 14 Art Unit: 1681 Application/Control Number: 18/459,672 Page 15 Art Unit: 1681 Application/Control Number: 18/459,672 Page 16 Art Unit: 1681 Application/Control Number: 18/459,672 Page 17 Art Unit: 1681 Application/Control Number: 18/459,672 Page 18 Art Unit: 1681 Application/Control Number: 18/459,672 Page 19 Art Unit: 1681 Application/Control Number: 18/459,672 Page 20 Art Unit: 1681 Application/Control Number: 18/459,672 Page 21 Art Unit: 1681 Application/Control Number: 18/459,672 Page 22 Art Unit: 1681 Application/Control Number: 18/459,672 Page 23 Art Unit: 1681 Application/Control Number: 18/459,672 Page 24 Art Unit: 1681 Application/Control Number: 18/459,672 Page 25 Art Unit: 1681 Application/Control Number: 18/459,672 Page 26 Art Unit: 1681 Application/Control Number: 18/459,672 Page 27 Art Unit: 1681 Application/Control Number: 18/459,672 Page 28 Art Unit: 1681 Application/Control Number: 18/459,672 Page 29 Art Unit: 1681 Application/Control Number: 18/459,672 Page 30 Art Unit: 1681 Application/Control Number: 18/459,672 Page 31 Art Unit: 1681 Application/Control Number: 18/459,672 Page 32 Art Unit: 1681 Application/Control Number: 18/459,672 Page 33 Art Unit: 1681 Application/Control Number: 18/459,672 Page 34 Art Unit: 1681 1 As noted in the explicit definition for the “universal oligonucleotide tail-adaptor” at page 14, para. 65, the amplification strand of the adaptor must contain sequences identical to the first and second sequencing primers. 2 As noted above, the instant claims 13-15 fail to further limit the instant claim 1 because the recited features of the universal oligonucleotide tail-adaptor are already required by the explicit definition of “universal oligonucleotide tail-adaptor” in para. 65 of the specification. 3 As noted above, the instant claims 13-15 fail to further limit the instant claim 1 because the recited features of the universal oligonucleotide tail-adaptor are already required by the explicit definition of “universal oligonucleotide tail-adaptor” in para. 65 of the specification. 4 As noted above, the instant claims 13-15 fail to further limit the instant claim 1 because the recited features of the universal oligonucleotide tail-adaptor are already required by the explicit definition of “universal oligonucleotide tail-adaptor” in para. 65 of the specification. 5 As noted above, the instant claims 13-15 fail to further limit the instant claim 1 because the recited features of the universal oligonucleotide tail-adaptor are already required by the explicit definition of “universal oligonucleotide tail-adaptor” in para. 65 of the specification.
Prosecution Insights