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
Status of Claims
Claims 1-12 are pending and the subject of this NON-FINAL Office Action. This is the first office action on the merits.
Claim Rejections - 35 USC § 112- Indefiniteness
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.
Claim 1-12 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 pre-AIA the applicant regards as the invention.
The claims are confusing at the point of novelty. Specifically, claim 1 requires the same oligomer, defined in two different ways. First, claim 1 states “wherein each of the first and second reporters includes an oligomer having a quencher, and wherein the oligomer is configured to base-pair with the primer of the first primer pair to quench the first photoluminophore and to base-pair with the primer of the second primer pair to quench the second photoluminophore.” In the specification, this is called a “sink” (e.g. paras. 0009-10, 0014, 0017-25, 0030-31, 0034-37, 0044). Yet, claim 1 also includes “a sink to bind with the primer of the first primer pair and the primer of the second primer pair to reduce an ability of the photoluminophore to emit light.” The “sink . . . to reduce an ability of the photoluminophore to emit light” is broader than the “oligomer having a quencher.” For example, reducing ability of the photoluminophore to emit light could be the mere location of a guanine relative to a photoluminophore, location of an intercalator, or other methods. As explained in the parent United States applications, this “oligomer having a quencher” (AKA “sink”), combined with photoluminophore primer, yield ability to detect photoluminophore at a temperature below the melting temperature of the oligomer-primer duplex. This inclusion of two different oligos at this point of potential novelty and nonobvious renders the claims too confusing to apply prior art (as best the Examiner can determine, the prior art cited in the parent United States applications remains applicable, especially since the claims here do not require the melting temperature and detection configuration found in the allowed parent applications). Thus, claim 1 is confusing.
Claim Rejection - 35 USC § 112 – Written Description
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-12 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the full scope of the claimed invention.
The specification fails to demonstrate possession of a reaction with both “oligomer having a quencher” and “sink . . . to reduce an ability of the photoluminophore to emit light.” This is because, as explained above, the “oligomer having a quencher” is the “sink.”
Potential Double Patenting
If the claims are amended to recite only one of either “oligomer having a quencher” or “sink,” then they will be subject to, at least, obvious-type double patenting over: US9556475; US10604789; US11085070; US12024737.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Aaron Priest whose telephone number is (571)270-1095. The examiner can normally be reached 8am-6pm.
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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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/AARON A PRIEST/Primary Examiner, Art Unit 1681
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