DETAILED CORRESPONDENCE
Summary
This is the initial Office Action based on the Qing, et al. application filed with the Office on 27 January 2025.
Claims 48-74 are currently pending and have been fully considered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The preliminary amendments filed on 31 January 2025 and 26 March 2025, are acknowledged and have been entered.
Priority
The instant application is a Continuation Patent Application to a US National Stage Application, 17/260,110. Thus, the instant application has an earliest effective filing date of 16 July 2018.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted regarding the present application filed on 11 February 2025, are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDSs have been considered by the Examiner.
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 48-57 and 59-70 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22, 24 and 29 of U.S. Patent No. 12,247,990. Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of instant claim 48 are taught by patented claims 1, 29 and 2; the limitations of instant claim 49 are taught by patented claim 3; the limitations of instant claim 50 are taught by patented claim 4; the limitations of instant claim 51 are taught by patented claim 5; the limitations of instant claim 52 are taught by patented claim 6; the limitations of instant claim 53 are taught by patented claim 7; the limitations of instant claim 54 are taught by patented claim 8; the limitations of instant claim 55 are taught by patented claim 9; the limitations of instant claim 56 are taught by patented claim 10; the limitations of instant claim 57 are taught by patented claim 11; the limitations of instant claim 59 are taught by patented claim 12; the limitations of instant claim 60 are taught by patented claim 13; the limitations of instant claim 61 are taught by patented claim 14; the limitations of instant claim 62 are taught by patented claim 15; the limitations of instant claim 63 are taught by patented claim 16; the limitations of instant claim 64 are taught by patented claim 17; the limitations of instant claim 65 are taught by patented claim 18; the limitations of instant claim 66 are taught by patented claim 19; the limitations of instant claim 67 are taught by patented claim 20; the limitations of instant claim 68 are taught by patented claim 21; the limitations of instant claim 69 are taught by patented claim 22; and, the limitations of instant claim 70 are taught by patented claim 24.
Allowable Subject Matter
Claims 71-74 are allowed.
Claim 58 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: A published paper by Pulcu, et al. (("Continuous observation of the stochastic motion of an individual small-molecule walker", Nature Nanotechnology, 10(1): p. 76-83, Jan. 2015) is considered the closest prior art reference to the instant claims. However, Pulcu does not anticipated nor render obvious a molecular hopper attached to a charged analyte (as required by instant independent claim 71), nor the hopper configured for conjugating to an analyte (as required by instant independent claim 74). Pulcu further does not anticipate nor render obvious the hopper comprising a charged cargo moiety (as required by instant independent claim 48) or that the cargo comprises a charged polymer (required by claim 58).
Interview with the Examiner
If at any point during the prosecution it is believe an interview with the Examiner would further the prosecution of an application, please consider this option.
The Automated Interview Request form (AIR) is available to request an interview to be scheduled with the Examiner. First, an authorization for internet communications regarding the case should be filed prior or with an AIR online request.
The internet communication authorization form (SB/0439), which authorizes or withdraws authorization for internet-based communication (e.g., video conferencing, email, etc.) for the application must be signed by the applicant or the attorney/agent for applicant. The form can be found at:
https://www.uspto.gov/sites/default/files/documents/sb0439.pdf
The AIR form can be filled out online, and is automatically forwarded to the Examiner, who will call to confirm a requested time and date, or set up a mutually convenient time for the interview. The form can be found at:
https://www.uspto.gov/patent/uspto-automated-interview-request-air-form.html
The Examiner encourages, but does not require, interviews by the USPTO Microsoft Teams video conferencing. This system allows for file-sharing along audio conferencing. Microsoft Teams can be used as an internet browser add-on in Microsoft IE, Google Chrome, or Mozilla Foxfire, or as a temporary Java-based application on these browsers. Steps for joining an Examiner setup Microsoft Teams can be found at the USPTO website:
https://www.uspto.gov/patents/laws/interview-practice#step3
Additionally, a blank email to the Examiner at the time of a telephonic interview can be used for a reply to easily allow for Microsoft Teams communication. Please note, policy guidelines regarding Internet communications are detailed at MPEP §500-502.3, and office policy regarding interviews are detailed at MPEP §713.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN C BALL whose telephone number is (571)270-5119. The examiner can normally be reached M - F, 9 am - 5:30 pm.
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, Luan Van can be reached at (571)272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J. Christopher Ball/ Primary Examiner, Art Unit 1795
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