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 .
DETAILED ACTION
Responsive to claim set entered 25NOV2024
Claims pending 67-86
Claims currently under consideration 67-86
Priority
This application has a filing date of 4/16/2024 and is a CON of
17/500,422 10/13/2021 PAT 11959129
17/500,422 is a CON of 17/150,079 01/15/2021 PAT 11186863
17/150,079 is a CON of PCT/US2020/026456 04/02/2020
PCT/US2020/026456 has PRO 62/913,542 10/10/2019
PCT/US2020/026456 has PRO 62/913,543 10/10/2019
PCT/US2020/026456 has PRO 62/910,394 10/03/2019
PCT/US2020/026456 has PRO 62/910,397 10/03/2019
PCT/US2020/026456 has PRO 62/828,397 04/02/2019
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 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).
Claims 67,73-80,83-86 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-8,10-12,15-17,22,23 of U.S. Patent No. 11186863.
Although the conflicting claims are not identical, they are not patently distinct from each other because, for example, present claims 67,73-76 constitute a genus method of nucleic acid analysis anticipated by the species thereof set forth in ‘863 claims 1,10-12,23. Additionally present claims 67,73-80,83-86 represent variants conflicting with ‘893 claims 1-8,10-12,15-17,22, overlapping in scope to a large extent and, as a result, the conflicting claims are alternatively rendered obvious.
The following is illustrative.
For claim(s) 77-79, ‘893 is drawn to the same exonucleases as in claims 2-7
For claim(s) 80 ‘893 is drawn to exonuclease inactivation (e.g. see claim(s) 8)
For claim(s) 83 ‘893 is drawn to glass solid supports as in claim 15
Additionally, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify embodiments of ‘893 that fall outside the scope of the present application to select a specifically disclosed embodiment that falls within the scope of the present application because each set of claims use reagents with similar physiochemical properties and/or biological activity. Furthermore, one of ordinary skill in the art would have been motivated to make such a modification because such modifications are disclosed as “preferred” since the dependent claims of ‘893 “teach toward” Applicant’s presently claimed materials, reaction containers and irregular probe dispersal (of claims 84-86).
Claims 67-69,74-83 and 70-72,84,85 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11959129 in view of Green et al (US AppPub 20190302128) if necessary.
Although the conflicting claims are not identical, they are not patently distinct from each other because, for example, said present claims represent obvious methodological variants of all that is recited in the ‘129 claims or, alternatively overlap in scope to a large extent and, as a result, the overlapping claims would be similarly rendered obvious.
The following is illustrative.
For claim(s) 68-69, ‘129 claims the same detergents (e.g. see claim(s) 3-4)
For claim(s) 74-75,‘129 claims the same coatings (e.g. see claim(s) 13-14)
For claim(s) 77-79, ‘129 is drawn to the same exonucleases as in claims 7-9 Additionally, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify embodiments of ‘129 that fall outside the scope of the present application to select a specifically disclosed embodiment that falls within the scope of the present application because each use reagents with similar physiochemical properties and/or biological activity. Furthermore, one of ordinary skill in the art would have been motivated to make such a modification because such modifications are disclosed as “preferred” since the dependent claims of ‘893 “teach toward” Applicant’s presently claimed materials as well as subject samples (of claims 81-82), especially since incubating in a multi-will plate with three or more shaking cycles (as in present claims 70-72, 84-85) improves reproducibility, particularly in heterogeneous reaction mixtures, being within grasp of the skilled artisan or else in view of Green et al, who suggest just such techniques in fluorescence assay in paragraph 0092.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M GROSS whose telephone number is (571)272-4446. The examiner can normally be reached M-F 10-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heather Calamita can be reached on (571)272-2876. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER M GROSS/Primary Examiner, Art Unit 1684