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 of 4/19/2024
Claims pending 67-86
Claims currently under consideration 67-86
Priority
This application was filed 04/19/2024 and is a CON of
18/047,249 filed 10/17/2022 now PAT 12024705
18/047,249 is a CON of
16/468,260 filed 06/10/2019 now PAT 11473081
16/468,260 is a 371 of
PCT/US2017/065600 filed 12/11/2017 that has
PRO 62/433,210 12/12/2016
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 67,68,70-84,86 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al (2016 Nature Chemical Biology 12:76-81; published 7DEC2015; IDS entry 7/26/2024).
Chen et al teach throughout the document and especially the abstract and p 77 including figure, the platform referred to as microcapillary single-cell analysis and laser extraction (microSCALE). That is, more particularly, said microSCALE constitutes an apparatus (system) and a method of use therewith entailing for selecting at least one protein from a population of variant proteins, the platform comprising: providing a microcapillary array comprising a plurality of microcapillaries, each microcapillary comprising variant proteins such as an antibodies, etc., immobilized target molecules on the surface of a bead, and a reporter element such as a fluorescent second antibody (shown schematically), wherein the variant protein(s) associate(s) with the immobilized target molecule necessarily with a particular affinity, wherein the variant protein is expressed by a cell-free expression system; and measuring a signal from at least one reporter element that indicates association of at least one variant protein with at least one immobilized target molecule to identify at least one microcapillary of interest; then isolating, using an extraction device, the contents of the at least one microcapillary of interest, wherein the extraction device comprises a laser and isolating comprises pulsing the at least one or multiple microcapillaries of interest with the laser. Said surface is configured settle in a microcapillary by gravitational sedimentation. The foregoing reads on claims 67,68,70,71,72,73,74,75,76,77,78,79, 80,81,82,83,84,86.
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 67,68,71,72,75,78-82,84 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1,2,8-11,15,20,21-25 of U.S. Patent No. 11085039 (entered in 7/26/2024 IDS).
Although the conflicting claims are not identical, they are not patentably distinct from each other the presently claimed method (and apparatus for its practice) recited in said present claims constitute a genus anticipated by the species thereof set forth in such conflicting claims at least of ‘039.
Claims 67,68,71,72,75,78-82,84 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-14,16-22 of U.S. Patent No. 10227583. (entered in 7/26/2024 IDS).
Although the conflicting claims are not identical, they are not patentably distinct from each other the presently claimed method (and apparatus for its practice) recited in said present claims constitute a genus anticipated by the species thereof set forth in such conflicting claims at least of ‘583.
Claims 67,68,70-73,75,78-84,86 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20,24-27 of U.S. Patent No. 11473081 (entered in 7/26/2024 IDS).
Although the conflicting claims are not identical, they are not patentably distinct from each other the presently claimed system (and method of using) recited in said present claims constitute a genus anticipated by the species thereof set forth in such conflicting claims at least of ‘081.
Claims 67-86 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 12024705.
Although the conflicting claims are not identical, they are not patentably distinct from each other the presently claimed system (and method of using) recited in said present claims constitute a genus anticipated by such species thereof set forth in such conflicting claims at least of ‘705.
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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/CHRISTOPHER M GROSS/Primary Examiner, Art Unit 1684