Notice of Pre-AIA or AIA Status
1. The present application is being examined under the pre-AIA first to invent provisions.
OBJECTIONS
2. The specification is objected to because of the following informality: the continuation information must be updated to indicate the issue of the parent ‘836 application as U.S. 11,845,995.
3. Claim 30 is objected to because of the following informality: in line 4, ‘reagents’ is misspelled as ‘regents’. Correction is required.
NON-PRIOR ART REJECTIONS
4. 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.
5. Claims 23-43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,091,812. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims and the pending claims are related as genus-obvious species. That is, the patented method, reaction mixture, and kit require an invasive oligonucleotide (genus), and the pending method, reaction mixture, and kit explicitly require that the invasive oligonucleotide be ‘distinct from the first primer’ (species), which would have been suggested merely by straightforward, logical scientific reasoning as an alternative. It would have been prima facie obvious to one of ordinary skill in the art considering the patented claims to provide the invasive oligonucleotide as one distinct from the first primer.
6. Claims 23-43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,845,995. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims and the pending claims are related as species-genus. That is, the steps or components of the pending method, reaction mixture, and kit are within the steps or components of the patented method, reaction mixture, and kit, and the patented method, reaction mixture, and kit additionally require targeting a second genomic locus. Thus, the patented claims are a species within the broader pending claims.
ALLOWABLE SUBJECT MATTER
7. Claims 23-43 are free of the prior art, but they are rejected for another reason. The closest prior art and reasons for allowance were determined during prosecution of the parent ‘752 application.
CONCLUSION
8. No claims are allowable.
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH R HORLICK whose telephone number is (571)272-0784. The examiner can normally be reached Mon. - Thurs. 8:30 - 6:30.
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03/04/26
/KENNETH R HORLICK/ Primary Examiner, Art Unit 1681