DETAILED ACTION
Applicant's amendment and remarks of March 9, 2026 overcome the following:
Objections to claims 2, 21, and 29
Rejection of claims 1-17 under 35 U.S.C. 112(b), pre-AIA 35 U.S.C. 112, second paragraph
Applicant has amended claims 1, 3, 6-10, 13, 18-21, 26-27, and 29. Claims 1-30 are pending.
Specification
Applicant’s amendment of the title of the invention of March 9, 2026 is acknowledged. However, the amended title is not descriptive because “MINIMIZING OPTICAL CROWDING IN SITU” in not currently being recited by the claims. Therefore, a new title is still required that is clearly indicative of the invention to which the claims are directed, as previously in indicated in Pg. 2 of the Non-Final Office action (OA) of December 8, 2025.
Claim Objections
Claim 18 is objected to because of the following informalities:
Claim 18 now recites “a plurality of targeting probes… wherein each targeting probe is complementary” in lines 2-3 of the claim. However, it is not clear if the claimed “each targeting probe” recited in line 3 of claim 18 encompass embodiments corresponding to the each one of the claimed “plurality of targeting probes” previously recited in line 2 of claim 18, or not, for example. Therefore, for examination purposes the claimed “a plurality of targeting probes… wherein each targeting probe is complementary” recited in lines 2-3 of the claim will be interpreted as “a plurality of targeting probes… wherein each targeting probe of the plurality of targeting probes is complementary”.
Appropriate correction is required.
Response to Arguments
Applicant’s remarks of March 9, 2026 (Remarks, Pg. 11-12) regarding objections to claims 2, 21, and 29 previously in indicated in Pg. 2-4 of the Non-Final OA of December 8, 2025, respectively, have been fully considered an found persuasive. Therefore, previously indicated claim objections have been withdrawn.
Regarding claim 18, upon further review of the claim, a new ground of rejection is warranted due to indefiniteness issue(s) that should have been indicated in the last OA. Therefore, Applicant's remarks of March 9, 2026 with respect to claims 18-30 have been considered but are moot in view of the new ground(s) of rejection indicated below.
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 18-30 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 18 further recites “a plurality of target ribonucleic acid (RNA) molecules… a plurality of targeting probes… each targeting probe is complementary to a sequence of a target RNA… a barcode sequence that identifies said target RNA, and wherein at least some targeting probes of said plurality of targeting probes utilize target probe code word splitting… a codebook comprising a plurality of code words each associated with a target RNA” in lines 2-10 of the claim.
However, upon further view of the claim, it is not clear if the claimed “a target RNA” recited in lines 3-4 of claim 18 encompass embodiments corresponding to one of the claimed “plurality of target ribonucleic acid (RNA) molecules” recited in lines 2-3 of claim 18, or if the claimed “a target RNA” recited in lines 3-4 of claim 18 encompass embodiments corresponding to another “target RNA” different to any one of the claimed “plurality of target ribonucleic acid (RNA) molecules” recited in lines 2-3 of claim 18, for example.
Additionally, it is not clear if the claimed “a target RNA” recited in line 10 of claim 18 encompass embodiments corresponding to one of the claimed “plurality of target ribonucleic acid (RNA) molecules” recited in lines 2-3 of claim 18, or if the claimed “a target RNA” recited in line 10 of claim 18 encompass embodiments corresponding to the claimed “a target RNA” previously recited in lines 3-4 of claim 18, or if the claimed “a target RNA” recited in line 10 of claim 18 encompass corresponding to another “target RNA” different to any one of the claimed “plurality of target ribonucleic acid (RNA) molecules” recited in lines 2-3 of claim 18 or embodiments corresponding another “target RNA” different from the claimed “a target RNA” previously recited in lines 3-4 of claim 18, for example.
Therefore, based on above, the metes and bounds of the claim are not clearly set forth and the examiner cannot clearly determine which elements are encompassed by the claim language, which renders the claim indefinite.
Claims 19-30 are rejected by virtue of being dependent upon rejected base claim 18.
Allowable Subject Matter
Claims 1-17 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record fails to anticipate or render obvious the following limitations as claimed:
In view of claim 1 in its entirety, the further limitations of “…a plurality of targeting probes configured to hybridize to a target ribonucleic acid (RNA),
wherein a first targeting probe of said plurality of targeting probes is complementary to a first sequence of said target RNA, wherein said first targeting probe comprises a first nucleic acid barcode sequence that is associated with a first code word, wherein said first code word comprises a series of ON signals and OFF signals;
wherein a second targeting probe of said plurality of targeting probes is complementary to a second sequence of said target RNA different than said first sequence of said target RNA,
wherein said second targeting probe comprises a second nucleic acid barcode sequence different than said first nucleic acid barcode sequence, wherein said second nucleic acid barcode sequence is associated with a second code word, wherein said second code word comprises a series of ON signals and OFF signals, and
wherein said first code word and said second code word have a mutually disjoint set of ON signals…
… a plurality of detection probes, comprising (i) a first set of detection probes that hybridize to said first nucleic acid barcode sequence, or a reverse complement thereof; and (ii) a second set of detection probes that hybridize to said second nucleic acid barcode sequence, or a reverse complement thereof…
… data analysis software configured to perform decoding of optical signals associated with said plurality of detection probes to identify said target RNA, wherein said data analysis software comprises:
assignment data associating said first code word and said second code word with said target RNA” as recited in claim 1.
Claims 2-17 are dependent upon claim 1.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GUILLERMO M RIVERA-MARTINEZ whose telephone number is (571) 272-4979. The examiner can normally be reached on 9 am to 5 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, Andrew Bee can be reached on 571-270-5183. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/GUILLERMO M RIVERA-MARTINEZ/ Primary Examiner, Art Unit 2677
Prosecution Insights