DETAILED ACTION
Status of the Claims
Claim 1 is cancelled
Claim 2 is pending and examined herein.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Claim 2 is 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 2 recites the limitation "the first ligation region of the first adaptor probe" in step (e). There is insufficient antecedent basis for this limitation in the claim because the “first adaptor probe” is not previously recited as having a “first ligation region”. Step (e) does recite a ligation region of the first probe when stating, “wherein the first probe comprises (i) a first ligation region…” but “the first probe” and “the first adaptor probe” are distinct entities.
This rejection may be overcome by changing the limitation to recite “a” first ligation region of the first adaptor probe, or by providing antecedent basis for the limitation elsewhere. Other solutions are possible.
For the purposes of examination, the recited elements (i) and (ii) will be interpreted to limit the first adaptor probe instead of the first probe. This is congruent with step (g), which recites both elements as limiting the second adaptor probe.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
U.S. Pat No. 11,821,024
Claim 2 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 11,821,024. This is a statutory double patenting rejection.
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.
U.S. Pat No. 11,359,228
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 11,359,228 in view of Chee (US 2011/0245111; cited in the IDS of 03/18/2025) for the following reasons.
Claim 1 of ‘228 patent is drawn to a method of detecting a nucleic acid in a plurality of cells, the method comprising: (a) delivering a plurality of cells to a microfluidic device having multiple addressing channels, wherein an addressing channel of the multiple addressing channels comprises a probe comprising (i) an address tag having a sequence that uniquely identifies the addressing channel, and (ii) a primer region, and wherein a cell of the plurality of cells is delivered through the addressing channel; (b) permeabilizing the cell in the addressing channel and hybridizing the nucleic acid to the probe; (c) extending the probe using the nucleic acid as a template to generate an extended product in the addressing channel; and (d) determining (i) the sequence of the address tag or a complement thereof, and (ii) all or a portion of the extended product or a complement thereof, and using the determined sequences of (i) and (ii) to associate the nucleic acid with the addressing channel, thereby detecting the nucleic acid in the plurality of cells.
Claims of ‘228 patent is not drawn to delivering the first and second adapter probes, which is taught by Chee, who is in the same field of endeavor teaches adaptor probe (Fig. 3, and its associated descriptions in the text) that enable identification of the coding identifiers using sequencing technologies thereby increasing the throughput of identifying nucleic acids in the sample (paragraph 0062).
The artisan would recognize that the limitations instant claim 1 would be obvious over claim 1 of 228 patent in view of Chee.
U.S. Patents, continued
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims in the following patents in view of Chee for the reasons as discussed in section 9:
US 11,618, 918; US 11,286,515; US 11,046,996; US 10,927,403; US 10,774,372 and US 9,879,313.
Application No. 18/501,523
Claim 2 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-21 of copending Application No. 18/501,523 in view of Chee for the reasons as discussed in section 9.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claims are allowed.
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/ALEXANDRA OLSON/Examiner, Art Unit 1684
/JEREMY C FLINDERS/Primary Examiner, Art Unit 1684
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