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 .
Terminal Disclaimer
This application was filed on or after September 16, 2012. The person who signed the terminal disclaimer is not the applicant, the patentee or an attorney or agent of record. See 37 CFR 1.321(a) and (b).
Please file a Power of Attorney that gives power to the attorney who is signing the terminal disclaimer, along with another copy of the terminal disclaimer, or file a terminal disclaimer that is signed by the applicant.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 19-43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12/173,367. Although the claims at issue are not identical, they are not patentably distinct from each other because both claims 19 and claim 1 of ‘367 recite a nanopore based sequencing chip comprising an array of cells, each comprising a well; a flow chamber coupled to the nanopore based sequencing chip; and a processor or circuitry configured to: flow a salt buffer solution over the array of cells to fill the wells; flow a lipid and solvent mixture over the array of cells to deposit the lipid and solvent mixture over at least some of the wells; detect whether a lipid bilayer or lipid membrane greater than three lipid molecules thick is present by applying a voltage stimulus and measuring a resultant change in voltage; and selectively applying an electrical lip-thinning stimulus only to a portion of the cells. Claim 1 of ‘367 anticipates that of claim 19.
As to dependent claims 20-28, claims 2-9 of ‘367 anticipate the claimed subject matter.
As to claims 29-30, the claims of ‘367 the limitations are routine design and control refinements that do not introduce new inventive concept and therefore do not render the claims patentably distinct.
As to claims 31-34, the claims merely restate the same invention using different terminology (“thin membrane” versus “lipid bilayer” and “thick membrane” versus “lipid membrane greater than three lipid molecules thick”) and repeat the same electrical detection and selective thinning control logic. Claim 10 of ‘367, recites the same nanopore sequencing system, the same electrical membrane thickness detection mechanism, and same selective thinning stimulus control loop. The additional dependent limitations in claims 32-43 merely are either anticipated by or obvious operational refinements, parameter values or implementation details to claims 11-18 of ‘367 and do not render the claims patentably distinct.
Claims 19-43 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 10,465,240. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 19 is an obvious variant of claim 1 of ‘240. Claim 1 of ‘240 recites flowing a salt buffer solution to fill wells; flowing a lipid and solvent mixture to deposit lipid membranes; determining whether a lipid bilayer or lipid membrane is present by applying a voltage stimulus and measuring a resultant change in voltage using a determined threshold; and selectively applying a lipid thinning stimulus only to cells lacking a lipid bilayer. Claim 1 of ‘240 recites the same system and operational steps except the membrane is greater than three lipid molecules thick. The use of slightly different terminology by characterizing thick membranes as being “greater than three lipid molecules thick” does not render the claim patentably distinct.
As to dependent claims 20-30, claims 2-5 of ‘240 anticipate the claimed subject matter.
As to claims 31-34, the claims merely restate the same invention using different terminology (“thin membrane” versus “lipid bilayer” and “thick membrane” versus “lipid membrane”) and repeats the same electrical detection and selective thinning control logic. Claim 10 of ‘676, recites the same nanopore sequencing system, the same electrical membrane thickness detection mechanism, and same selective thinning stimulus control loop. The additional dependent limitations in claims 32-43 are anticipated operational refinements, parameter values or implementation details to claims 5-9 of ‘240 and do not render the claims patentably distinct.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/CACHET I. PROCTOR/
Examiner
Art Unit 1712
/CACHET I PROCTOR/Primary Examiner, Art Unit 1712
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