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 .
Status of Claims
The amendments to the claims filed April 24, 2026 are acknowledged and entered. Claims 1-6, 8, 10, 12-14, 17, 30-31, 33 and 35-39 are pending.
Priority
This application is a 371 of PCT/US2022/081798, filed December 16, 2022, which claims benefit of 63/291,883, filed December 20, 2021.
Information Disclosure Statement
Acknowledgement is made of the Information Disclosure Statement filed on March 12, 2024. All references have been considered except where marked with a strikethrough.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any of the errors of which applicant may become aware of in the specification.
Election/Restriction
Applicant’s election of Group I drawn to a composition, and kits thereof, in the reply filed on April 24, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Therefore this restriction is considered proper and thus made FINAL.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, lines 1-2, recites the phrase “for improving chemical linearization rate of double-stranded polynucleotides” which is an intended use of the claimed composition. The intended use does not provide any structural limitation to the claimed composition and therefore has no patentability weight. It is suggested the claim be amended to delete the intended use.
Claim Rejections - 35 USC § 112b
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 2-6, 8, 10, 12-14, 17, 31, 33 and 35-38 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. The claims are indefinite for the reasons that follow:
Claims 4-6, 8, 10, 17 and 31 recite the phrase “salt comprises” which renders the claims indefinite because the structure of the salt intended by “salt comprises” is unclear. The term "comprising" is open-ended and does not exclude additional, unrecited elements or method steps (see MPEP 2111.03). It is suggested that Applicant amend the claim to replace “comprises” with “is”. For instance, “the periodate salt
The term “about” recited in claims 2-3, 6, 8, 10, 12-14, 33 and 35-38 is a relative term which renders the claims indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is suggested the claims be amended to delete the term “about”.
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 1-6, 8, 10, 12-14, 17, 30-31, 33 and 35-39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-8, 10-14, 29-31, 33, 35 and 38-39 of copending Application No. 18/568,600 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are anticipated by the reference claims.
Reference claim 1 recites a composition comprising a periodate salt and an ionic liquid additive, wherein the periodate is dissolved in an aqueous solution, and the periodate salt does not form a precipitate in the aqueous solution.
Reference claim 5 recites wherein the ionic liquid additive is selected from a crown ether or a substituted imidazolium salt. Reference claim 7 depends from claim 5 and recites wherein the substituted imidazolium salt comprises 1-benzyl-3-methylimidazolium chloride ([Bzmim]Cl).
Reference claim 12 depends from claim 1 and recites further comprising one or more inorganic salts.
The reference claims additionally recite salt concentrations of and molar ratios that overlap the instant claims.
Reference claims 29-31 and 35 recite a kit.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6, 8, 10, 12-14, 17, 30-31, 33 and 35-39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 22-32 and 41-43 of copending Application No. 18/191,299 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are obvious over the reference claims.
Reference claim 1 is drawn to a method comprising contacting a solid support with a periodate salt composition.
Reference claim 22 depends from claim 1 and recites wherein the composition comprises at least one ionic liquid additive.
Reference claim 27 depends from claim 22 and recites wherein the ionic liquid additive is 1-benzyl-3-methylimidazolium chloride ([Bzmim]Cl).
Reference claim 28 depends from claim 22 and recites wherein the periodate composition further comprises one or more inorganic salts.
The reference claims recite salt concentrations of and molar ratios that overlap the instant claims and also recite the limitations of the claimed kit.
The difference between the reference claims and the instant claims is that the instant claims are drawn to the composition recited in the reference claims. However, the instant claims would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the instant application because the claimed composition was used in the method of the reference claims.
One would have been motivated to obtain the claimed composition as a matter of practicing the method of the reference claims.
One would have had a reasonable expectation of success because one would have possessed the claimed composition while practicing the method of the reference application.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN MARTIN whose telephone number is (571)270-0917. The examiner can normally be reached Monday - Friday 8 am - 5 pm.
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August 17, 2026
/K.S.M./Examiner, Art Unit 1624
/BRUCK KIFLE/Primary Examiner, Art Unit 1624
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