Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
NON-PRIOR ART REJECTIONS
2. 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.
Claims 31, 33, and 34 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.
A) Claim 31 is indefinite because ‘the nucleotides having a scissile moiety’ lacks proper antecedent basis. Correction is required.
B) Claim 33 is indefinite because although it is drawn to a system, it is recited only with respect to the ‘intended use’ of performing the method of claim 1. It is well settled in U.S. patent practice that product claims such as a system are examined only based on the required components or elements, and ‘intended use’ language is not given patentable weight. As the system of claim 33 is being claimed without even a single physical component or element, and only based on ‘intended use’, no meaningful search of, and comparison with, the prior art is possible.
C) Claim 34 is indefinite because ‘the first surface primers’ in part b) lacks proper antecedent basis. Correction is required.
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 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.
4. Claims 1-11, 26-32, and 34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 11,535,892. 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, ‘single stranded nucleic acid concatemer template molecules’ in the patented claims is a species within the genus ‘nucleic acid concatemer template molecules’ in the pending claims. Thus, the patented claims are a species within the broader pending claims.
5. Claims 1-11, 26-32, and 34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of U.S. Patent No. 11,220,707. 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, ‘having up to 30% of thymines replaced with uridine’ in the patented claims is a species within the genus ‘comprise at least one uridine’ in the pending claims. Thus, the patented claims are a species within the broader pending claims.
6. Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 28 of U.S. Patent No. 11,891,651. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claim and the pending claim are related as species-genus. That is, ‘detectably labeled multivalent molecules’ in the patented claim is a species within the genus ‘multivalent molecules’ in the pending claim. Thus, the patented claim is a species within the broader pending claim.
ALLOWABLE SUBJECT MATTER
7. For the reasons discussed during prosecution of the parent applications, claims 1-11, 26-32, and 34 are free of the prior art, but they are rejected for other reasons.
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.
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 at 571-272-0782. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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02/25/26
/KENNETH R HORLICK/ Primary Examiner, Art Unit 1681
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