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 Amendment filed April 28, 2026, and the Request for Continued Examination filed May 8, 2026, are each acknowledged.
Claims 1-19 were pending. Claims 1-2, 4-12 and 14-19 are being examined on the merits. Claims 3 and 13 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 28, 2026 has been entered.
Response to Arguments
Applicant’s arguments filed April 28, 2026 have been fully considered.
All of the previously made rejections are WITHDRAWN in view of Applicant’s arguments and claim amendments.
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 7 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 7 recites the limitation “the endonuclease being BamHI”, the meaning of which is
unclear as to some embodiments of claim 1. That is, claim 1, from which claim 7 depends, recites the following three embodiments of templates with digestion sites: (i) “template comprising digestion site[] of Nt.BbvCI”; (ii) “template comprising digestion site[] of … BamHI”; and (iii) “template comprising digestion site[] of Nt.BbvCI and BamHI”. For embodiments (ii) and (iii), a BamHI endonuclease would clearly be required for the linearization step. However, for embodiment (i), it isn’t clear why a BamHI endonuclease would be required, or in what step of the method it would participate. Since the ordinary artisan would not be able to determine the metes and bounds, it is indefinite.
This rejection could be obviated by amending claim 7 to read “… the endonuclease being BamHI, when at least one BamHI digestion site is present in the nicked circular DNA template.”, or something equivalent.
Allowable Subject Matter
The claims are free of the art for the reasons already of record, at least, in the Final Office Action mailed February 24, 2026.
Claims 1-2, 4-6, 8-12 and 14-19 are allowed.
Claim 7 is free of the art, but stands rejected under 35 USC § 112(b).
Conclusion
Claims 1-2, 4-12 and 14-19 are being examined on the merits. Claims 1-2, 4-6, 8-12 and 14-19 are allowed. Claim 7 is rejected.
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.
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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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