Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
1. Applicant’s election without traverse of Group I in the reply filed on July 20, 2026 is acknowledged.
Status of Application
2. Claims 1-5, 7, 9-12, 14-18 and 20-26 are considered for examination. Claim 27 has been withdrawn from further consideration as being drawn to nonelected group. Claims 6, 8, 13, 19 and 28-138 were canceled.
Priority
3. This application filed on April 12, 2024 claims priority benefit to US 63/496,351 filed on April 14, 2023.
Claim Rejections - 35 USC § 112
4. 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 18 and 20-22 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 18 recites the limitation "the first polynucleotide" in line 2. There is insufficient antecedent basis for this limitation in the claim because the claim 17, 16 or 1 upon which the claim 18 depends do not have support for a first polynucleotide and it is unclear and indefinite what the limitation is referring to.
Claim Rejections - 35 USC § 102
5. The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
Claims 1-5, 7, 9-12, 14-18 and 20-26 are rejected under pre-AIA 35 U.S.C. 102(a)(1) as being anticipated by Fisher et al. (US 2022/0090187).
Fisher et al. teach a method of claim 1, amplifying a polynucleotide, the method comprising: contacting a structure (flow cell) with a fluid comprising polynucleotides having a variety of lengths, each of the polynucleotides comprising first and second adapters, wherein the structure comprises: a substrate comprising a first region and a second region spaced apart from one another by a gap of at least 100 nm; a first set of capture primers coupled to the first region of the substrate; and a second set of capture primers coupled to the second region of the substrate; hybridizing the first adapter of a polynucleotide from the fluid to a capture primer of the first set of capture primers; based upon that polynucleotide being sufficiently long to bridge the gap, amplifying that polynucleotide using the first set of capture primers and the second set of capture primers; and based upon that polynucleotide being insufficiently long to bridge the gap, not amplifying that polynucleotide (para 0120-0123, 0115, 0024-0036, 0054-0057, 0100, 0004-0021).
With reference to claim 2, Fisher et al. teach that the gap has length A, and based upon the polynucleotide being about A/0.34 nm bases long or greater, the polynucleotide is amplified, and based upon the polynucleotide being less than about A/0.34 nm bases long, the polynucleotide is not amplified (para 0099-0100).
With reference to claims 3-5, 7, 9-10, Fisher et al. teach that the structure further comprises a wall disposed within the gap between the first region and the second region, the first region is located within a first recess of the substrate, wherein the second region is located within a second recess of the substrate, and wherein the wall divides the first recess from the second recess; the structure further comprises a vertical sidewall comprising the first region or a raised surface comprising the first region; the first region surrounds the second region or wherein the second region surrounds the first region, the first region and the second region are at least partially coplanar with one another; the first region and the second region are at least partially vertically separated from one another (para 0071, 0115, 0014, 0023, 0099-0100).
With reference to claims 11-17, Fisher et al. teach that the second set of capture primers comprises a mixture of first and second types of capture primers; the first set of capture primers consists essentially of a third type of capture primer; the first set of capture primers comprises amplification primers of a first type.; the second set of capture primers comprises amplification primers of a second type that is different from the first type; the first set of capture primers comprises seeding primers of a first type and the second set of capture primers comprises seeding primers of a second type that is different from the first type of the first seeding primers (para 0120-0124, 0024-0036, 0054-0057, 0095-0100).
With reference to claim 18, Fisher et al. teach that the first adapter comprises a first seeding adapter which is shorter than the seeding primers of the first type, and the first polynucleotide comprises a second seeding adapter which is shorter than the seeding primers of the second type (para 0024-0036).
With reference to claim 20, Fisher et al. teach that based upon that polynucleotide being sufficiently long to bridge the gap: the first seeding adapter and one of the seeding primers of the first type of the seeding primers form a first duplex, and the second seeding adapter and one of the seeding primers of the second type of the seeding primers form a second duplex, wherein the first and second duplex together sufficiently hold the polynucleotide to the structure to amplify the polynucleotide (para 0120-0123, 0024-0036, 0054-0057, 0100).
With reference to claims 21, 23, Fisher et al. teach that based upon that polynucleotide being insufficiently long to bridge the gap: the first seeding adapter and one of the seeding primers of the first type of the seeding primers form a first duplex, or the second seeding adapter and one of the seeding primers of the second type of the seeding primers form a second duplex, wherein the first duplex alone insufficiently holds the polynucleotide to the structure to amplify the polynucleotide, and wherein the second duplex alone insufficiently holds the polynucleotide to the structure to amplify the polynucleotide and the structure further comprises amplification primers (para 0120-0123, 0024-0036, 0054-0057, 0095-0100).
With reference to claim 22, Fisher et al. teach that the first duplex has a melting temperature of about 35-50 C; and the second duplex has a melting temperature of about 35-55 C (para 0099, 0115, 0033).
With reference to claims 24-26, Fisher et al. teach that the first adapter is single-stranded; the polynucleotide further comprises a second adapter, which is double-stranded and a capture primer of the second set of capture primers binds to the second adapter using strand invasion (para 0095-0096, 0009, 0029, 0080-0081, 0064-0068, 0124). For all the above the claims are anticipated.
Conclusion
No claims are allowable.
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Suryaprabha Chunduru
Primary Examiner
Art Unit 1681
/SURYAPRABHA CHUNDURU/Primary Examiner, Art Unit 1681
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