Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
NON FINAL ACTION
Amendment Entry
1. Applicant’s response to the Non-Final action dated 4/23/25 is acknowledged (reply filed 10/22/25). Claims 1-37 were canceled without prejudice or disclaimer. New claims 38-56 were added. Currently claims 38-56 are pending and under consideration.
Priority
2. This application is a continuation of US application No. 16/686,549 filed November 19, 2019, which is a continuation of 16/122,558 filed September 5, 2018 (now US Patent No. 10,481,162), which is a continuation of US application No. 15/426,175 filed February 7, 2017 (now abandoned), which is a continuation of US application No. 12/891,313 filed September 27, 2010 (now US Patent No. 9,566,335), which claims priority to US provisional application no. 61/245,875 filed on September 25, 2009. Claims 1 and 21 have a priority date of 9/25/2009. Newly added claims 28-37 have a priority date of 1/10/25.
NEW GROUNDS OF REJECTIONS NECESSITATED BY AMENDMENTS
Double Patenting
3. 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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
4. Claims 38, 42, 47, 48, and 56 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 9,566,335.
Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions are drawn to a method of sequencing a polypeptide by selectively binding N-terminal amino acid or derivative. Additional the method utilize the probes claimed in the instant invention (SEQ ID NO: 1 or 2).
The inventions encompass each other. Accordingly, the inventions are not patentably distinct.
Regarding claim 38, see claims 1, 7, and 12 of the ‘335 Patent.
Regarding claim 42, see claim 10 of the “335 Patent.
Regarding claim 47, see claims 9 and 12 of the ‘335 Patent.
Regarding claims 48, see claims 1, 12, 16, and 17 of the ‘335 Patent.
Regarding claim 56, see claim 1, 7, and 12 of the ‘335 Patent.
5. Claims 38, 40, 41, 42, 43, 50, 51, 54, and 56 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 10,481,162.
Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions are drawn to a method of sequencing a polypeptide by selectively binding N-terminal amino acid or derivative. Additional the method utilize the probes claimed in the instant invention (SEQ ID NO: 1 or 2). The inventions encompass each other. Accordingly, the inventions are not patentably distinct.
Regarding claim 38, see claims 1, 6, 7, and 10 in the ‘162 Patent.
Regarding claim 40, see claim 10 in the ‘162 Patent.
Regarding claim 41, see claims 1 and 10 in the ‘162 Patent.
Regarding claim 42, see claim 9 in the ‘162 Patent.
Regarding claim 43, see claims 1 and 10 in the ‘162 Patent.
Regarding claim 50, see claim 5 in the ‘162 Patent.
Regarding claim 51, see claim 4 in the ‘162 Patent.
Regarding claim 54, see claim 11 in the ‘162 Patent.
Regarding claim 56, see claims 1, 6, 7, and 10 in the ‘162 Patent.
6. Claims is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,802,878.
Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions are drawn to a method of sequencing a polypeptide by selectively binding N-terminal amino acid or derivative. Additional the method utilize the probes claimed in the instant invention (SEQ ID NO: 1 or 2). The inventions encompass each other. Accordingly, the inventions are not patentably distinct.
Regarding claims 38-41, see claims 1 and 13 in the ‘878 Patent.
Regarding claim 42, see claim 12 in the ‘878 Patent.
Regarding claim 44, see claim 8 in the ‘878 Patent.
Regarding claim 45, see claim 9 in the ‘878 Patent.
Regarding claim 46, see claim 16 in the ‘878 Patent.
Regarding claim 47, see claim 11 in the ‘878 Patent.
Regarding claim 48, see claim 17 in the ‘878 Patent.
Regarding claim 50, see claim 5 in the ‘878 Patent.
Regarding claim 51, see claim 4 in the ‘878 Patent.
Regarding claim 56, see claims 1 and 13 in the ‘878 Patent.
Response to Arguments
Applicant’s arguments directed against canceled claims 1-37 are Moot. New claims 38-56 have been considered and new rejections are presented herein.
7. For reasons aforementioned, no claims are allowed.
8. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Remarks
9. Prior art made of record and not relied upon is considered pertinent to theapplicant's disclosure:
A. Erbse et al. (Nature, Vol.439, No.9, February 2006, pages 753-756) disclose ClpS specific mutations.
B. Ray and Norden (FASEB Journal, Vol.14, 2000, pages 1041-1060) disclose the utility of PNAs.
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA V COOK whose telephone number is (571)272-0816. The examiner works a flexible schedule but can normally be reached on Monday-Friday from 9am to 5pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Samira Jean-Louis, can be reached at telephone number 571-270-3503. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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Lisa V. Cook
Patent Examiner
Art Unit 1642
Remsen
571-272-0816
1/24/26
/LISA V COOK/Primary Examiner, Art Unit 1642