DETAILED ACTION
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 .
Status of the Application
The Response and the Request for Continued Examination, each filed May 4, 2026, are acknowledged.
Claims 1-19, 21-27 and 98-100 were pending. Claims 1-4, 8, 10-11, 13, 17-19, 98-100 and new claims 101-104 are being examined on the merits. Claim 12 remains withdrawn. New claim 105 is newly withdrawn. Claims 14-16 and 27 were withdrawn and are now canceled. Claims 5-7, 9 and 21-26 are canceled.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 4, 2026 has been entered.
Response to Arguments
Applicant’s arguments filed May 4, 2026 have been fully considered.
The following rejections are WITHDRAWN in view of the instant claim amendments:
Objection to claim 98
Prior Art rejections
Response to arguments regarding prior art rejections
The Examiner agrees with Applicant’s arguments as to the differences between the combined teachings of Aksel and Zhu and the instantly claimed method (Remarks, pp. 7-9).
The prior art rejections are withdrawn.
Election/Restrictions
Newly submitted claim 105 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the subject matter of independent claim 1 plus its dependent claims and claim 105 are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case, the apparatus as claimed can be used to practice another and materially different process, e.g., a method of detecting a reaction at each site of a plurality of sites simultaneously (as opposed to only a subset of the plurality of sites).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 105 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Objections
Claim 10 is objected to because of the following informalities:
In claim 10, the limitation “bringing the second fluorescent label with the first distance”
in ll. 1-2 should be “bringing the second fluorescent label within the first distance”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-4, 8, 10-11, 13, 17-19 and 98-104 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 has been amended to recite, in part, “(b) forming a reaction between a first set
of analytes … and affinity reagents … at a first set of sites of the plurality of sites”, the meaning of which is unclear. Specifically, it is unclear if the phrase “forming the reaction” is stating the outcome of practicing the steps recited in (a), or if some additional step(s) must be completed to form the reaction. Further, if additional steps are required, it is not clear if those steps are applied to each site of the plurality of sites or only to each site at the first set of sites. Since the ordinary artisan would not be able to determine the metes and bounds of the claim, it is indefinite.
Claims 2-4, 8, 10-11, 13, 17-19 and 98-104 depend directly or indirectly from claim 1, and consequently incorporate the indefiniteness issues of claim 1.
Claim 11 recites the limitation “wherein the [first/second] fluorescent label comprises a [first/second] oligonucleotide”, the meaning of which is unclear. That is, while a fluorescent label can be attached to an oligonucleotide, it is not clear how a fluorescent label can comprise an oligonucleotide. Since the ordinary artisan would not be able to determine the metes and bounds of the claim, it is indefinite.
Claim 13 depends from claim 11, and consequently incorporates the indefiniteness issues of claim 11.
Conclusion
Claims 1-4, 8, 10-11, 13, 17-19 and 98-104 are being examined, and are rejected. Claim 10 is objected to. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAROLYN GREENE whose telephone number is (571)272-3240. The examiner can normally be reached M-Th 7:30-5:30 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/CAROLYN L GREENE/Primary Examiner, Art Unit 1681
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