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 .
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.
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Claim 79 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10936953. Although the claims at issue are not identical, they are not patentably distinct from each other because the method described in Claim 1 of ‘953 anticipates claim 79 as filed.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 69- are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Pat. Pub. No. 20200172898 to Peterson et al. (Peterson).
Regarding Claim 69, Peterson teaches in Fig. 2A at least, device, comprising:
a solid support comprising a plurality of wells (numbered 1-5), wherein each well comprises:
a synthesis surface located at a bottom region of the well;
a bottom electrode 202;
a sidewall electrode 205 located on a sidewall of the well; and
a polynucleotide extending from the synthesis surface (nucleotides may be synthesized from beads at the bottom synthesis surface [0111]);
wherein the solid support includes at least 1.0 x 108 polynucleotides extending from synthesis surfaces per cm2 (Table 1).
Regarding Claim 69, Peterson teaches the device of claim 69, wherein the plurality of wells comprises a first well, and the polynucleotide extending from the synthesis surface of the first well has a sequence that is different than polynucleotides of the other wells of the plurality of wells [0027].
Regarding Claim 73, Peterson teaches the device of claim 69, wherein each of the wells is cylindrical [0116].
Regarding Claim 78, Peterson teaches the device of claim 69, wherein the sidewall electrode and the bottom electrode are independently addressable (“Each electrode communicates with a current controller 203 which regulates current to the electrode” necessarily implying each electrode is independently addressed, rather than “to the electrodes”).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims, 71, 72, 74-77, 78, are rejected under 35 U.S.C. 103 as being unpatentable over Patterson.
Regarding Claim 71, Peterson teaches the device of claim 69, but does not explicitly teach that each of the wells comprises a depth of 100 nm to 1000 nm.
However, where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device (MPEP 2144.04(IV)(A)). In this case, the person of ordinary skill may adjust the depth of the wells depending on the length of nucleotides to be synthesized [0111].
Regarding Claim 72, Peterson teaches the device of claim 69, but does not explicitly teach that each of the wells comprises a longest cross- sectional diameter of 100 nm to 800 nm. However, see above regarding relative dimensions.
Regarding Claim 74, Peterson teaches the device of claim 69, but does not explicitly teach that the bottom electrode has a cross-sectional area of 104 nm2 to 105 nm2. However, the area of the electrode directly affects its resistivity and therefore its current delivery, and is therefore a result effective variable that may be optimized by the person of ordinary skill to meet application specific requirements.
Regarding Claim 75, Peterson teaches the device of claim 69, but does not explicitly teach that the sidewall electrode is 50 nm to 200 nm from the synthesis surface. However, see above regarding relative dimensions.
Regarding Claim 76, Peterson teaches the device of claim 69, but does not explicitly teach that the at least one sidewall electrode comprises a height of 5 nm to 25 nm. However, see above regarding the optimization of the size of an electrode.
Regarding Claim 77, Peterson teaches the device of claim 69, but does not explicitly teach that the sidewall electrode is a first sidewall electrode, and wherein each well further comprises a second sidewall electrode. However, mere duplication of parts has no patentable significance unless a new and unexpected result is produced (MPEP 2144.04(VI)(B)). In this case, a further electrode will have the expected result of greater control of nucleotide synthesis.
Regarding Claim 79, Peterson teaches a device, comprising:
a solid support comprising a plurality of wells, wherein each well comprises:
a synthesis surface located at a bottom region of each of the wells;
a bottom electrode; and
at sidewall electrode located on a sidewall, wherein the sidewall electrode and the bottom electrode are independently addressable (see above), but does not explicitly teach that the sidewall electrode is 50 nm to 200 nm from the bottom region (see above regarding relative dimensions.
Regarding Claim 80, Peterson teaches the device of claim 79, but does not explicitly teach that the solid support comprises addressable loci at a density of at least 1.00 x108 addressable loci per cm2. However, Peterson does teach that density is a function of well spacing [0116] and is therefore a result effective variable that may be optimized by the person of ordinary skill to meet application specific requirements (MPEP 2144.05(II)(B)).
Regarding Claim 81, Peterson teaches the device of claim 79, but does not explicitly teach that each of the wells comprises a depth up to about 1000 nm. However, see above regarding changes in dimension.
Regarding Claim 82, Peterson teaches the device of claim 79, but does not explicitly teach that each of the wells comprises a longest cross- sectional diameter of 100 nm to 800 nm. However, see above regarding changes in dimension.
Regarding Claim 83, Peterson teaches the device of claim 79, wherein each of the wells is cylindrical [0116].
Regarding Claim 84, Peterson teaches the device of claim 79, but does not explicitly teach that the bottom electrode comprises a longest cross- sectional area of 104 nm2 to 105 nm2. However, see above regarding optimization of an electrode.
Regarding Claim 85, Peterson teaches the device of claim 79, but does not explicitly teach that the sidewall electrode is 75 nm to 125 nm from the bottom region. Attorney Docket No.: 00415-0022-05000 86. (New) The device of claim 79, wherein the sidewall electrode comprises a height of 5 nm to 25 nm. However, see above regarding optimization of an electrode.
Regarding Claim 87, Peterson teaches the device of claim 79, but does not explicitly teach at least two sidewall electrodes. However, see above regarding duplication of parts.
Regarding Claim 88, Peterson teaches the device of claim 87, wherein the at least two sidewall electrodes are independently addressable (see above, controller 203 provides current to the electrode rather than the electrodes).
Conclusion
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/EVREN SEVEN/ Primary Examiner, Art Unit 2812
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