DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Preliminary Amendment and Status of the Claims
2. The preliminary amendment filed 21 November 2025, in which claims 1-2, 4-6, were amended, claims 3 and 7 were cancelled, and new claims 8-21 were added, is acknowledged and entered.
Claims 1-2, 4-6, and 8-21 are under prosecution.
Information Disclosure Statement
3. The Information Disclosure Statement filed 29 December 2025 is acknowledged and has been considered.
It is noted that the listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification
4. The use of trade names or marks used in commerce (including but not necessarily limited to those on pages 33-34 of the instant specification), has been noted in this application. Any trade names or marks should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Application Data Sheet and Priority
5. The Corrected Application Data Sheet filed 21 November 2025 is acknowledged and entered.
6. The instant Application is a Continuation in Part of PCT US24/16756, filed 21 February 2024
Claim Objections
7. Claim 1 is objected to because of the following informalities:
Claim 1 contains the recitation “providing plurality of,” which appears to be a typographical error.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
8. 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.
9. Claims 1-2, 4-6, and 8-21 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.
A. Claim 1 (upon which claims 2, 4-6, and 8-21 depend) is indefinite as it is drawn to “processing a biological sample,” but does not recite any steps involving a biological sample.
B. Claim 8 is indefinite in the recitation “(d),” as the amendments to claim 1 no longer recite (d).
C. Claims 9-10, 12-16, and 19-21 are indefinite in claim 9, which recites a “shape criterion” and a “morphology criterion.” It is unclear how a shape differs from morphology.
D. Claims 14 and 20 are indefinite in the recitation “lateral intensity gradient” in claim 14 and the “maximum convoluted intensity,” difference between the maximum intensity and the minimum intensity,” and the “total intensity” of claim 20. Claim 9, upon which claims 14 and 20 depend, distinguishes signal intensity criteria from optical property criteria. Thus, it is unclear how the signal intensities recited in claims 14 and 20 can be optical property criteria.
E. Claim 19 is indefinite in the recitation “the maximum intensity,” which lacks antecedent basis in the previous recitation of “a maximum convoluted intensity.”
Claim Rejections - 35 USC § 102
10. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
11. Claims 1-2, 4-6, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shum et al. (Analytical Chemistry, Published 12 December 2022, Vol. 94, pp. 17868-17876).
Regarding claim 1, Shum et al. teach a method of processing a biological (i.e., prenatal) sample (Abstract) comprising forming plurality of partitions in a container (i.e., tube), using an imaging system to scan the partitions across a set of optical channels (page 17890, column 2), and using the signals to count positive partitions (i.e., droplets) to detect biological target molecules (Abstract).
Regarding claim 2, Shum et al. teach the method of claim 1, wherein the target molecules are nucleic acids (i.e., DNA; Abstract).
Regarding claim 4, Shum et al. teach the method of claim 1, wherein the partitions comprise a set of wells (page 17872, column 1).
Regarding claim 5, Shum et al. teach the method of claim 1, wherein the scanning comprises scanning a sheet of the container using a light sheet imaging system (Figure 2).
Regarding claim 6, Shum et al. teach the method of claim 1, wherein the number of partitions is greater than 1 million (Abstract).
Regarding claim 17, Shum et al. teach the method of claim 1, wherein the target molecules are between 1 and 1 million (e.g., 74 targets; page 17870, column 1).
12. Claims 1-2, 5, 9, 14, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liao et al. (Proc. Nat. Acad. Sci. USA, vol. 117, pages 25628-25633, and Supporting Information, pages 1-37, published 30 September 2020).
Regarding claim 1. Liao et al. teach a method of processing a biological sample (i.e., from L monocytogenes; “Absolute Quantification”) comprising forming plurality of partitions in a container (i.e., tube), using an imaging system to scan the partitions across a set of optical channels (Figure 1), and using the signals to count positive partitions (i.e., droplets) to detect biological target molecules (i.e., PCR products: “CLEAR Digital PCR”).
Regarding claim 2, Liao et al. teach the method of claim 1, wherein the target molecules are nucleic acids (i.e., amplicon DNA; “Absolut Quantification”).
Regarding claim 5, Liao et al. teach the method of claim 1, wherein the scanning comprises scanning a sheet of the container using a light sheet imaging system (Figure 1).
Regarding claim 9, Liao et al. the method of claim 1, wherein the identifying (i.e., detection) of partitions is based on signal intensity (“Image-Based Droplet Counting”) above background, (paragraph 0339) as well as an optical criterion, in the form of fluorescence of HEX/VIX and FAM (Figure 1).
Regarding claim 14, Liao et al. teach the method of claim 9, and further shows that a true positive droplet should have a normal contrast against its adjacent voxels, and the contrast filters detect the valley between droplet signal and background noise (Supplemental Information, page 6, Contrast filter) (i.e., a lateral intensity gradient across a set of pixels).
Regarding claim 17, Liao et al. teach the method of claim 1, wherein the number of target molecules in 106 (“Absolute Quantification”).
Claim Rejections - 35 USC § 103
13. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
14. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
15. Claims 1-2, 4-6, 8, 11, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Shum et al. (U.S. Patent Application Publication No. US 2022/0389410 A1, published 8 December 2022).
Regarding claim 1, Shum et al. teach a method of processing a biological sample (paragraph 0040) comprising forming plurality of partitions in a container (Abstract), using an imaging system to scan the partitions across a set of optical channels (paragraph 0118), and using the signals to count positive partitions (i.e., droplets) to detect biological target molecules (paragraph 0120). Thus, because Shum et al. teach all of the claimed steps, the method is obvious.
Regarding claim 2, the method of claim 1 is discussed above. Shum et al. teach the target molecules are nucleic acids (paragraph 0008).
Regarding claim 4, the method of claim 1 is discussed above. Shum et al. teach the partitions comprise a set of wells (paragraph 0054).
Regarding claim 5, the method of claim 1 is discussed above. Shum et al. teach the scanning comprises scanning a sheet of the container using a light sheet imaging system (paragraph 0118).
Regarding claim 6, the method of claim 1 is discussed above. Shum et al. teach at least one million droplets (paragraph 0011).
Regarding claim 8, the method of claim 1 is discussed above. Shum et al. teach counting within 5 seconds (paragraph 0120).
Regarding claim 11, the method of claim 1 is discussed above. Shum et al. teach the container has a compacity of 50 microliters (paragraph 0011).
In addition, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
The courts have also found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II.
Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is advised that MPEP 716.01(c) makes clear that “[t]he arguments of counsel cannot take the place of evidence in the record” (In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965)). Thus, Applicant should not merely rely upon counsel’s arguments in place of evidence in the record.
Regarding claim 17, the method of claim 1 is discussed above. Shum et al. teach the method of claim 1, wherein the target molecules are between 1 and 1 million (paragraph 0080).
16. Claims 1-2, 4, 9, 12-16, and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017).
Regarding claim 1, Chiu et al. teach methods of processing a biological sample (paragraph 0060), comprising a plurality of partitions in a container (i.e., a microwell plate), following by using an imaging system, in the form of a fluorescence microscope to image the plurality of partitions (i.e. the plate; Example 2 and Figure 4). Chiu et al. further teach detection of at least a subset of the partitions using a set of optical channels, in the form of two color channels (Example 2 and Figure 4), as well as counting the target molecules (i.e., reaction volumes having a detectable nucleic acid therein; paragraph 0140).
Regarding claim 2, the method of claim 1 is discussed above. Chiu et al. teach the target molecules are nucleic acids (paragraph 0140).
Regarding claim 4, the method of claim 1 is discussed above. Chiu et al. teach the plurality of partitions comprises a set of wells (i.e., of a microtiter plate; Example 2).
Regarding claims 9 and 21, the method of claim 1 is discussed above. Chiu et al. teach detection of signal intensity above background, (paragraph 0339) as well as and optical criterion, in the form of fluorescence of ROX or FAM (Figure 4), the shape of the partition (paragraph 0274), and morphology criterion (paragraph 0234).
Regarding claim 12, the method of claim 9 is discussed above. Chiu et al. teach partitions are detected by evaluating a set of pixels (paragraph 0326).
Regarding claim 13, the method of claim 9 is discussed above. Chiu et al. teach partitions are detected by evaluating the maximum intensity pixels in a set of pixels (paragraph 0325).
In addition, Regarding claims 12, 13, and 19, in scenarios wherein the at least two criteria do not include signal intensity, the claims are not further limiting.
Regarding claims 14 and 20, the method of claim 9 is discussed above. In scenarios wherein the at least two criteria do not include an optical property, the claims are not further limiting.
Regarding claim 15, the method of claim 9 is discussed above. In scenarios wherein the at least two criteria do not include a shape criteria, the claim is not further limiting.
Regarding claim 16, the method of claim 9 is discussed above. In scenarios wherein the at least two criteria do not include an morphology, the claim is not further limiting.
17. Claims 5, 8, 10, 14, and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claims 1 and 9 above, and further in combination with Liao et al. (Proc. Nat. Acad. Sci. USA, vol. 117, pages 25628-25633, published 30 September 2020).
Regarding claims 5, 8, 10, 14, and 16-17, the methods of claims 1 and 9 discussed above in Section 16.
Chiu et al. also teach the method has the added advantage of lacking undue experimental error (paragraph 0010). Thus, Chiu et al. teach the known techniques discussed above.
While Chiu et al. teach the method can also be performed in microcentrifuge tubes (paragraph 0055), and while Chiu et al. discuss accuracy (e.g., paragraph 0253), Chiu et al. do not teach light sheet imaging of claim 5.
However, Liao et al. teach methods of processing a biological sample (i.e., from L monocytogenes; “Absolute Quantification”) comprising forming plurality of partitions in a container (i.e., tube), using an imaging system to scan the partitions across a set of optical channels (Figure 1), and using the signals to count positive partitions (i.e., droplets) to detect biological target molecules (i.e., PCR products: “CLEAR Digital PCR”). Liao et al. further teach quantifying the sample, which is based on the counting of the partitions, with uncertainty approaching 0%, which means the accuracy is approaching 100% (i.e., claim 10; Figure S7). Liao et al also teach wherein the number of target molecules in 106 (i.e., claim 17; “Absolute Quantification”), and that the scanning comprises scanning a sheet of the container using a light sheet imaging system (i.e., claim 5; Figure 1), which takes only 6 seconds (i.e., claim 8; “Light-Sheet Sectioning the Transparent Emulsion”) has the added advantage of enabling a greatly increased dynamic range (Abstract). Thus, Liao et al. teach the known techniques discussed above.
It is reiterated that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists, and that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Therefore, the claimed time and accuracy ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is reminded to not merely rely upon counsel’s arguments in place of evidence in the record.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Chiu et al. and Liao et al. to arrive at the instantly claimed methods with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in methods having the added advantages of lacking undue experimental error as explicitly taught by Chiu et al. (paragraph 0010) and enabling a greatly increased dynamic range as explicitly taught by Liao et al. (Abstract). In addition, it would have been obvious to the ordinary artisan that the known techniques of the cited prior art could have been combined with predictable results because the known techniques of the cited prior art predictably result in techniques useful for counting partitions.
Regarding claims 14 and 16, the method of claim 9 is discussed above in Section 16.
Chiu et al. also teach the method has the added advantage of lacking undue experimental error (paragraph 0010). Thus, Chiu et al. teach the known techniques discussed above.
While Chiu et al. teach comparing morphology (i.e., droplet shrinkage) is evaluated based on a set of control samples, in the form of a set of control droplets (paragraph 0439), as well as 3D maps (paragraph 296), Chiu et al. do not teach correlation with a 3-D profile.
However, Liao et al. teach methods of processing a biological sample (i.e., from L monocytogenes; “Absolute Quantification”) comprising forming plurality of partitions in a container (i.e., tube), using an imaging system to scan the partitions across a set of optical channels (Figure 1). Liao et al teach a set of control samples (i.e., mock samples and negative controls; “Prenatal Fetal DNA Exonal Identification”).
Liao et al. teach that a true positive droplet should have a normal contrast against its adjacent voxels, and the contrast filters detect the valley between droplet signal and background noise (Supplemental Information, page 6, Contrast filter) (i.e., the lateral intensity gradient across a set of pixels of claim 14). Liao et al further teach forming a tree dimensional resolution of the droplets based on pixel images, and that the methods have the added advantage of imaging a large sample with relatively low phototoxicity at a high speed (“In Situ 3D Imaging of Emulsion Using LSFM”). Thus, Liao et al. teach the known techniques discussed above.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Chiu et al. and Liao et al. to arrive at the instantly claimed methods with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in methods having the added advantages of lacking undue experimental error as explicitly taught by Chiu et al. (paragraph 0010) and imaging a large sample with relatively low phototoxicity at a high speed as explicitly taught by Liao et al. (“In Situ 3D Imaging of Emulsion Using LSFM”). In addition, it would have been obvious to the ordinary artisan that the known techniques of the cited prior art could have been combined with predictable results because the known techniques of the cited prior art predictably result in techniques useful for counting partitions.
18. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Colston et al. (U.S. Patent Application Publication No. US 2010/01273394 A1, published 8 July 2010).
Regarding claim 6, the method of claim 1 is discussed above in Section 16.
Chiu et al. also teach the method has the added advantage of lacking undue experimental error (paragraph 0010). Thus, Chiu et al. teach the known techniques discussed above.
Chiu et al. do not teach the claimed number of partitions.
However, Colston et al. teach methods of counting signals from millions of partitions (i.e., droplets; paragraph 0856), as well as imaging partitions in an array of wells, which has the added advantage of using either a disposable of reusable plate for batch detection (Figure 33 and paragraph 0306-0307). Thus, Colston et al. teach the known techniques discussed above.
It is also reiterated that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists, and that the courts have also found that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Therefore, the claimed time and accuracy ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Chiu et al. and Colston et al. to arrive at the instantly claimed method with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in a method having the added advantages of lacking undue experimental error as explicitly taught by Chiu et al. (paragraph 0010) and using either a disposable or reusable plate for batch detection as explicitly taught by Colston et al. (paragraphs 0306-0307). In addition, it would have been obvious to the ordinary artisan that the known techniques of the cited prior art could have been combined with predictable results because the known techniques of the cited prior art predictably result in techniques useful for counting partitions.
19. Claims 5-6 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Shum et al. (Analytical Chemistry, Published 12 December 2022, Vol. 94, pp. 17868-17876).
Regarding claims 5-6 and 17, the method of claim 1 is discussed above in Section 16.
Chiu et al. also teach the method has the added advantage of lacking undue experimental error (paragraph 0010). Thus, Chiu et al. teach the known techniques discussed above.
Chiu et al. do not teach the limitations of claims 5-6 and 17.
However, Shum et al. teach a method of processing a biological (i.e., prenatal) sample (Abstract) comprising forming plurality of partitions in a container (i.e., tube), using an imaging system to scan the partitions across a set of optical channels (page 17890, column 2), and using the signals to count positive partitions (i.e., droplets) to detect biological target molecules (Abstract),.
Shum et al. further teach:
The scanning comprises scanning a sheet of the container using a light sheet imaging system (i.e., claim 5; Figure 2);
The number of partitions is greater than 1 million (i.e., claim 6; Abstract);
74 target molecules (i.e., between 1 and 1 million, as claimed in claim 17; page 17870, column 1); and
That the methods have the added advantage of being a low-cost screening assay (Abstract).
Thus, Shum et al. teach the known techniques discussed above.
It is also reiterated that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists, and that the courts have also found that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Therefore, the claimed time and accuracy ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Chiu et al. and Shum et al. to arrive at the instantly claimed methods with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in methods having the added advantages of lacking undue experimental error as explicitly taught by Chiu et al. (paragraph 0010) and being a low-cost screening assay as explicitly taught by Shum et al. (Abstract). In addition, it would have been obvious to the ordinary artisan that the known techniques of the cited prior art could have been combined with predictable results because the known techniques of the cited prior art predictably result in techniques useful for counting partitions.
20. Claims 5-6, 8, 11, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Shum et al. (U.S. Patent Application Publication No. US 2022/0389410 A1, published 8 December 2022).
Regarding claims 5-6, 8, 11, and 17, the method of claim 1 is discussed above in Section 16.
Chiu et al. also teach the method has the added advantage of lacking undue experimental error (paragraph 0010). Thus, Chiu et al. teach the known techniques discussed above.
Chiu et al. do not teach the limitations of claims 5-6, 8, 11, and 17.
However, Shum et al. teach a method of processing a biological sample (paragraph 0040) comprising forming plurality of partitions in a container (Abstract), using an imaging system to scan the partitions across a set of optical channels (paragraph 0118), and using the signals to count positive partitions (i.e., droplets) to detect biological target molecules (paragraph 0120).
Shum et al. also teach:
The scanning comprises scanning a sheet of the container using a light sheet imaging system (i.e., claim 5; paragraph 0118);
At least one million droplets (i.e., claim 6; paragraph 0011);
Counting within 5 seconds (i.e., claim 8; paragraph 0120);
The container has a compacity of 50 microliters (i.e., claim 11; paragraph 0011);
The target molecules are between 1 and 1 million (paragraph 0080); and
That the methods have the added advantage of allowing mapping of targets in a sample over time (paragraph 0018).
Thus, Shum et al. teach the known techniques discussed above.
It is also reiterated that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists, and that the courts have also found that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Therefore, the claimed time and accuracy ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Chiu et al. and Shum et al. to arrive at the instantly claimed methods with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in methods having the added advantages of lacking undue experimental error as explicitly taught by Chiu et al. (paragraph 0010) and allowing mapping of targets in a sample over time as explicitly taught by Shum et al. (Abstract). In addition, it would have been obvious to the ordinary artisan that the known techniques of the cited prior art could have been combined with predictable results because the known techniques of the cited prior art predictably result in techniques useful for counting partitions.
21. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Maltezos et al. (U.S. Patent Application Publication No. US 2009/0275113 A1, published 5 November 2009).
Regarding claim 11, the method of claim 1 is discussed above in Section 16.
Chiu et al. also teach the method has the added advantage of lacking undue experimental error (paragraph 0010). Thus, Chiu et al. teach the known techniques discussed above.
While Chiu et al. teach tubes (paragraph 0055) and the use of a thermal cycler (paragraph 0033), Chiu et al. do not teach the claimed volume.
However, Maltezos et al. teach methods of performing PCR using a thermal cycler (Abstract) using samples vessels having 50 microliter volumes (paragraph 0077), and that the vessels have the added advantage of uniform temperature profiles (Abstract). Thus, Maltezos et al. teach the known techniques discussed above.
It is also reiterated that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists, and that the courts have also found that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Therefore, the claimed time and accuracy ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Chiu et al. and Maltezos et al. to arrive at the instantly claimed method with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in a method having the added advantages of lacking undue experimental error as explicitly taught by Chiu et al. (paragraph 0010) and using vessels having uniform temperature profiles as explicitly taught by Maltezos et al. (Abstract). In addition, it would have been obvious to the ordinary artisan that the known techniques of the cited prior art could have been combined with predictable results because the known techniques of the cited prior art predictably result in techniques useful for performing PCR assays.
22. Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 9 above, and further in combination with Held et al. (U.S. Patent Application Publication No. US 2018/0080755 A1, published 22 March 2018).
Regarding claim 14, the method of claim 9 is discussed above in Section 16.
Chiu et al. also teach the method has the added advantage of lacking undue experimental error (paragraph 0010). Thus, Chiu et al. teach the known techniques discussed above.
While Chiu et al. teach the optical property (i.e., fluorescence) is evaluated in a set of pixels depicting a partition (i.e., droplet; paragraph 0219), Chiu et al. do not teach the lateral intensity gradients.
However, Held et al. teach methods wherein lateral intensity gradients are utilized in pixel analysis (paragraph 0018), which has the added advantage of aiding in evaluation of the surface coordinates of the scanned article (i.e., workpiece measured; paragraph 0003). Thus, Held et al. teach the known techniques discussed above.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Chiu et al. and Held et al. to arrive at the instantly claimed method with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in a method having the added advantages of lacking undue experimental error as explicitly taught by Chiu et al. (paragraph 0010) and aiding in the evaluation of the surface coordinates of the scanned article as explicitly taught by Held et al. (paragraph 0003). In addition, it would have been obvious to the ordinary artisan that the known techniques of the cited prior art could have been combined with predictable results because the known techniques of the cited prior art predictably result in techniques useful for performing evaluating pixels.
23. Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 9 above, and further in combination with Chukka et al. (U.S. Patent Application Publication No. US 2019/0392578 A1, published 26 December 2019).
Regarding claim 15, the method of claim 9 is discussed above in Section 16.
Chiu et al. also teach the method has the added advantage of lacking undue experimental error (paragraph 0010). Thus, Chiu et al. teach the known techniques discussed above.
While Chiu et al. teach a shape criteria (i.e., the radii) is evaluated in a set of pixels (i.e., RIO; see paragraph 0034) depicting a partition (i.e., droplet; paragraph 0264), Chiu et al. do not teach eccentricity.
However, Chukka et al. teach methods wherein signals for pixels are evaluated bused on radial symmetry and eccentricity, which has the added advantage of allowing precise detection and localization of the signal generating entity (i.e., nuclei; paragraph 0079). Thus, Chukka et al. teach the known techniques discussed above.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Chiu et al. and Chukka et al. to arrive at the instantly claimed method with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in a method having the added advantages of lacking undue experimental error as explicitly taught by Chiu et al. (paragraph 0010) and allowing precise detection and localization of the partitions as explicitly taught by Chukka et al. (paragraph 0079). In addition, it would have been obvious to the ordinary artisan that the known techniques of the cited prior art could have been combined with predictable results because the known techniques of the cited prior art predictably result in techniques useful for performing evaluating pixels.
24. Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Yang et al. (Cell Reports, vol. 36, pages 1-15 and e1-e4, published 27 July 2021).
Regarding claim 18, the method of claim 1 is discussed above in Section 16.
Chiu et al. also teach the method has the added advantage of lacking undue experimental error (paragraph 0010). Thus, Chiu et al. teach the known techniques discussed above.
While Chiu et al. teach mapping signals to identify partitions (i.e., droplets; paragraph 0202) Chiu et al. do not teach UMAP.
However, Yang et al. teach methods if visualizing data in two-dimensional embedded space (page 2, column 1) and that UMAP has the added advantage of reinforcing sample heterogeneity analysis (Summary). Thus, Yang et al. teach the known techniques discussed above.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Chiu et al. and Yang et al. to arrive at the instantly claimed method with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in a method having the added advantages of lacking undue experimental error as explicitly taught by Chiu et al. (paragraph 0010) and reinforcing sample heterogeneity analysis as explicitly taught by Yang et al. (Summary). In addition, it would have been obvious to the ordinary artisan that the known techniques of the cited prior art could have been combined with predictable results because the known techniques of the cited prior art predictably result in techniques useful for performing evaluating data.
Double Patenting
25. 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.
26. Claims 1-2, 4-6, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 17-27 of copending Application No. 19/192,017 in view of Shum et al. (Analytical Chemistry, Published 12 December 2022, Vol. 94, pp. 17868-17876).
Both sets of claims include partitions, containers, channels, nucleic acid targets, etc. Any additional limitations of the ‘017 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘017 claims do not discuss the claimed imaging system.
However, the imaging system, the other claim limitations, and the motivation to combine are taught by Shum et al. as discussed above.
This is a provisional nonstatutory double patenting rejection.
27. Claims 1-2, 5, 9, 14, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 17-27 of copending Application No. 19/192,017 in view of Liao et al. (Proc. Nat. Acad. Sci. USA, vol. 117, pages 25628-25633, and Supporting Information, pages 1-37, published 30 September 2020).
Both sets of claims include partitions, containers, channels, nucleic acid targets, etc. Any additional limitations of the ‘017 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘017 claims do not discuss the claimed imaging system.
However, the imaging system, the other claim limitations, and the motivation to combine are taught by Liao et al. as discussed above.
This is a provisional nonstatutory double patenting rejection.
28. Claims 1-2, 4-6, 8, 11, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 17-27 of copending Application No. 19/192,017 in view of Shum et al. (U.S. Patent Application Publication No. US 2022/0389410 A1, published 8 December 2022).
Both sets of claims include partitions, containers, channels, nucleic acid targets, etc. Any additional limitations of the ‘017 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘017 claims do not discuss the claimed imaging system.
However, the imaging system, the other claim limitations, and the motivation to combine are taught by Shum et al. as discussed above.
This is a provisional nonstatutory double patenting rejection.
29. Claims 1-2, 4-6, 8, 11, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 17-27 of copending Application No. 19/192,017 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017).
Both sets of claims include partitions, containers, channels, nucleic acid targets, etc. Any additional limitations of the ‘017 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘017 claims do not discuss the claimed imaging system.
However, the imaging system, the other claim limitations, and the motivation to combine are taught by Chiu et al. as discussed above.
This is a provisional nonstatutory double patenting rejection.
30. Claims 5, 8, 10, 14, and 16-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 17-27 of copending Application No. 19/192,017 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claims 1 and 9 above, and further in combination with Liao et al. (Proc. Nat. Acad. Sci. USA, vol. 117, pages 25628-25633, published 30 September 2020) based on the citations and rationale presented above.
This is a provisional nonstatutory double patenting rejection.
31. Claim 6 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 17-27 of copending Application No. 19/192,017 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Colston et al. (U.S. Patent Application Publication No. US 2010/01273394 A1, published 8 July 2010) based on the citations and rationale presented above.
This is a provisional nonstatutory double patenting rejection.
32. Claims 5-6 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 17-27 of copending Application No. 19/192,017 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Shum et al. (Analytical Chemistry, Published 12 December 2022, Vol. 94, pp. 17868-17876) based on the citations and rationale presented above.
This is a provisional nonstatutory double patenting rejection.
33. Claims 5-6, 8, 11, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 17-27 of copending Application No. 19/192,017 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Shum et al. (U.S. Patent Application Publication No. US 2022/0389410 A1, published 8 December 2022) based on the citations and rationale presented above.
This is a provisional nonstatutory double patenting rejection.
34. Claim 11 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 17-27 of copending Application No. 19/192,017 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Maltezos et al. (U.S. Patent Application Publication No. US 2009/0275113 A1, published 5 November 2009) based on the citations and rationale presented above.
This is a provisional nonstatutory double patenting rejection.
35. Claim 14 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 17-27 of copending Application No. 19/192,017 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 9 above, and further in combination with Held et al. (U.S. Patent Application Publication No. US 2018/0080755 A1, published 22 March 2018) based on the citations and rationale presented above.
This is a provisional nonstatutory double patenting rejection.
36. Claim 15 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 17-27 of copending Application No. 19/192,017 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 9 above, and further in combination with Chukka et al. (U.S. Patent Application Publication No. US 2019/0392578 A1, published 26 December 2019) based on the citations and rationale presented above.
This is a provisional nonstatutory double patenting rejection.
37. Claim 18 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 17-27 of copending Application No. 19/192,017 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Yang et al. (Cell Reports, vol. 36, pages 1-15 and e1-e4, published 27 July 2021) based on the citations and rationale presented above.
This is a provisional nonstatutory double patenting rejection.
38. Claims 1-2, 4-6, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/049,943 in view of Shum et al. (Analytical Chemistry, Published 12 December 2022, Vol. 94, pp. 17868-17876).
Both sets of claims include partitions, containers, channels, nucleic acid targets, etc. Any additional limitations of the ‘943 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘943 claims do not discuss the claimed imaging system.
However, the imaging system, the other claim limitations, and the motivation to combine are taught by Shum et al. as discussed above.
This is a provisional nonstatutory double patenting rejection.
39. Claims 1-2, 5, 9, 14, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/049,943 in view of Liao et al. (Proc. Nat. Acad. Sci. USA, vol. 117, pages 25628-25633, and Supporting Information, pages 1-37, published 30 September 2020).
Both sets of claims include partitions, containers, channels, nucleic acid targets, etc. Any additional limitations of the ‘943 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘943 claims do not discuss the claimed imaging system.
However, the imaging system, the other claim limitations, and the motivation to combine are taught by Liao et al. as discussed above.
This is a provisional nonstatutory double patenting rejection.
40. Claims 1-2, 4-6, 8, 11, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/049,943 in view of Shum et al. (U.S. Patent Application Publication No. US 2022/0389410 A1, published 8 December 2022).
Both sets of claims include partitions, containers, channels, nucleic acid targets, etc. Any additional limitations of the ‘943 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘943 claims do not discuss the claimed imaging system.
However, the imaging system, the other claim limitations, and the motivation to combine are taught by Shum et al. as discussed above.
This is a provisional nonstatutory double patenting rejection.
41. Claims 1-2, 4-6, 8, 11, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/049,943 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017).
Both sets of claims include partitions, containers, channels, nucleic acid targets, etc. Any additional limitations of the ‘943 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘943 claims do not discuss the claimed imaging system.
However, the imaging system, the other claim limitations, and the motivation to combine are taught by Chiu et al. as discussed above.
This is a provisional nonstatutory double patenting rejection.
42. Claims 5, 8, 10, 14, and 16-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/049,943 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claims 1 and 9 above, and further in combination with Liao et al. (Proc. Nat. Acad. Sci. USA, vol. 117, pages 25628-25633, published 30 September 2020) based on the citations and rationale presented above.
This is a provisional nonstatutory double patenting rejection.
43. Claim 6 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/049,943 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Colston et al. (U.S. Patent Application Publication No. US 2010/01273394 A1, published 8 July 2010) based on the citations and rationale presented above.
This is a provisional nonstatutory double patenting rejection.
44. Claims 5-6 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/049,943 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Shum et al. (Analytical Chemistry, Published 12 December 2022, Vol. 94, pp. 17868-17876) based on the citations and rationale presented above.
This is a provisional nonstatutory double patenting rejection.
45. Claims 5-6, 8, 11, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/049,943 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Shum et al. (U.S. Patent Application Publication No. US 2022/0389410 A1, published 8 December 2022) based on the citations and rationale presented above.
This is a provisional nonstatutory double patenting rejection.
46. Claim 11 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/049,943 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Maltezos et al. (U.S. Patent Application Publication No. US 2009/0275113 A1, published 5 November 2009) based on the citations and rationale presented above.
This is a provisional nonstatutory double patenting rejection.
47. Claim 14 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/049,943 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 9 above, and further in combination with Held et al. (U.S. Patent Application Publication No. US 2018/0080755 A1, published 22 March 2018) based on the citations and rationale presented above.
This is a provisional nonstatutory double patenting rejection.
48. Claim 15 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/049,943 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 9 above, and further in combination with Chukka et al. (U.S. Patent Application Publication No. US 2019/0392578 A1, published 26 December 2019) based on the citations and rationale presented above.
This is a provisional nonstatutory double patenting rejection.
49. Claim 18 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/049,943 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Yang et al. (Cell Reports, vol. 36, pages 1-15 and e1-e4, published 27 July 2021) based on the citations and rationale presented above.
This is a provisional nonstatutory double patenting rejection.
50. Claims 1-2, 4-6, and 8-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9,12-14, 16, 18-20, and 22-24 of copending Application No. 18/589,701 in view of Shum et al. (Analytical Chemistry, Published 12 December 2022, Vol. 94, pp. 17868-17876).
Both sets of claims include partitions, containers, light sheet scanning, etc. Any additional limitations of the ‘701 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘701 claims do not discuss the claimed nucleic acids molecules, wells, or imaging system.
However, the nucleic acids, wells, and imaging system, as well as the other claim limitations, and the motivation to combine are taught by Shum et al. as discussed above.
This is a provisional nonstatutory double patenting rejection.
51. Claims 1-2, 4-6, and 8-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9,12-14, 16, 18-20, and 22-24 of copending Application No. 18/589,701 in view of Liao et al. (Proc. Nat. Acad. Sci. USA, vol. 117, pages 25628-25633, and Supporting Information, pages 1-37, published 30 September 2020).
Both sets of claims include partitions, containers, light sheet scanning, etc. Any additional limitations of the ‘701 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘701 claims do not discuss the claimed nucleic acids molecules, wells, or imaging system.
However, the nucleic acids, wells, and imaging system, as well as the other claim limitations, and the motivation to combine are taught by Liao et al. as discussed above.
This is a provisional nonstatutory double patenting rejection.
52. Claims 1-2, 4-6, and 8-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9,12-14, 16, 18-20, and 22-24 of copending Application No. 18/589,701 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017).
Both sets of claims include partitions, containers, light sheet scanning, etc. Any additional limitations of the ‘701 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘701 claims do not discuss the claimed nucleic acids molecules, wells, or imaging system.
However, the nucleic acids, wells, and imaging system, as well as the other claim limitations, and the motivation to combine are taught by Shum et al. as discussed above.
This is a provisional nonstatutory double patenting rejection.
53. Claims 1-2, 4-6, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,447,817 in view of Shum et al. (Analytical Chemistry, Published 12 December 2022, Vol. 94, pp. 17868-17876).
Both sets of claims include partitions, nucleic acids, channels, nucleic acid targets, containers, etc. Any additional limitations of the ‘817 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘817 claims do not discuss the claimed imaging system.
However, the imaging system, the other claim limitations, and the motivation to combine are taught by Shum et al. as discussed above.
54. Claims 1-2, 5, 9, 14, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,447,817 in view of Liao et al. (Proc. Nat. Acad. Sci. USA, vol. 117, pages 25628-25633, and Supporting Information, pages 1-37, published 30 September 2020).
Both sets of claims include partitions, containers, channels, nucleic acid targets, etc. Any additional limitations of the ‘817 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘817 claims do not discuss the claimed imaging system.
However, the imaging system, the other claim limitations, and the motivation to combine are taught by Liao et al. as discussed above.
55. Claims 1-2, 4-6, 8, 11, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,447,817 in view of Shum et al. (U.S. Patent Application Publication No. US 2022/0389410 A1, published 8 December 2022).
Both sets of claims include partitions, containers, channels, nucleic acid targets, etc. Any additional limitations of the ‘817 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘817 claims do not discuss the claimed imaging system.
However, the imaging system, the other claim limitations, and the motivation to combine are taught by Shum et al. as discussed above.
56. Claims 1-2, 4-6, 8, 11, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,447,817 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017).
Both sets of claims include partitions, containers, channels, nucleic acid targets, etc. Any additional limitations of the ‘817 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘817 claims do not discuss the claimed imaging system.
However, the imaging system, the other claim limitations, and the motivation to combine are taught by Chiu et al. as discussed above.
57. Claims 5, 8, 10, 14, and 16-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,447,817 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claims 1 and 9 above, and further in combination with Liao et al. (Proc. Nat. Acad. Sci. USA, vol. 117, pages 25628-25633, published 30 September 2020) based on the citations and rationale presented above.
58. Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,447,817 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Colston et al. (U.S. Patent Application Publication No. US 2010/01273394 A1, published 8 July 2010) based on the citations and rationale presented above.
59. Claims 5-6 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,447,817 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Shum et al. (Analytical Chemistry, Published 12 December 2022, Vol. 94, pp. 17868-17876) based on the citations and rationale presented above.
60. Claims 5-6, 8, 11, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,447,817 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Shum et al. (U.S. Patent Application Publication No. US 2022/0389410 A1, published 8 December 2022) based on the citations and rationale presented above.
61. Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,447,817 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Maltezos et al. (U.S. Patent Application Publication No. US 2009/0275113 A1, published 5 November 2009) based on the citations and rationale presented above.
62. Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,447,817 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 9 above, and further in combination with Held et al. (U.S. Patent Application Publication No. US 2018/0080755 A1, published 22 March 2018) based on the citations and rationale presented above.
63. Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,447,817 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 9 above, and further in combination with Chukka et al. (U.S. Patent Application Publication No. US 2019/0392578 A1, published 26 December 2019) based on the citations and rationale presented above.
64. Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,447,817 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Yang et al. (Cell Reports, vol. 36, pages 1-15 and e1-e4, published 27 July 2021) based on the citations and rationale presented above.
65. Claims 1-2, 4-6, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,242,558 in view of Shum et al. (Analytical Chemistry, Published 12 December 2022, Vol. 94, pp. 17868-17876).
Both sets of claims include partitions, nucleic acids, nucleic acid targets, containers, etc. Any additional limitations of the ‘558 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘558 claims do not discuss the claimed imaging system.
However, the imaging system, the other claim limitations, and the motivation to combine are taught by Shum et al. as discussed above.
66. Claims 1-2, 5, 9, 14, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,242,558 in view of Liao et al. (Proc. Nat. Acad. Sci. USA, vol. 117, pages 25628-25633, and Supporting Information, pages 1-37, published 30 September 2020).
Both sets of claims include partitions, containers, channels, nucleic acid targets, etc. Any additional limitations of the ‘558 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘558 claims do not discuss the claimed imaging system.
However, the imaging system, the other claim limitations, and the motivation to combine are taught by Liao et al. as discussed above.
67. Claims 1-2, 4-6, 8, 11, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,242,558 in view of Shum et al. (U.S. Patent Application Publication No. US 2022/0389410 A1, published 8 December 2022).
Both sets of claims include partitions, containers, channels, nucleic acid targets, etc. Any additional limitations of the ‘558 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘558 claims do not discuss the claimed imaging system.
However, the imaging system, the other claim limitations, and the motivation to combine are taught by Shum et al. as discussed above.
68. Claims 1-2, 4-6, 8, 11, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,242,558 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017).
Both sets of claims include partitions, containers, channels, nucleic acid targets, etc. Any additional limitations of the ‘558 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘558 claims do not discuss the claimed imaging system.
However, the imaging system, the other claim limitations, and the motivation to combine are taught by Chiu et al. as discussed above.
69. Claims 5, 8, 10, 14, and 16-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,242,558 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claims 1 and 9 above, and further in combination with Liao et al. (Proc. Nat. Acad. Sci. USA, vol. 117, pages 25628-25633, published 30 September 2020) based on the citations and rationale presented above.
70. Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,242,558 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Colston et al. (U.S. Patent Application Publication No. US 2010/01273394 A1, published 8 July 2010) based on the citations and rationale presented above.
71. Claims 5-6 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,242,558 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Shum et al. (Analytical Chemistry, Published 12 December 2022, Vol. 94, pp. 17868-17876) based on the citations and rationale presented above.
72. Claims 5-6, 8, 11, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,242,558 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Shum et al. (U.S. Patent Application Publication No. US 2022/0389410 A1, published 8 December 2022) based on the citations and rationale presented above.
73. Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,242,558 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Maltezos et al. (U.S. Patent Application Publication No. US 2009/0275113 A1, published 5 November 2009) based on the citations and rationale presented above.
74. Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,242,558 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 9 above, and further in combination with Held et al. (U.S. Patent Application Publication No. US 2018/0080755 A1, published 22 March 2018) based on the citations and rationale presented above.
75. Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,242,558 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 9 above, and further in combination with Chukka et al. (U.S. Patent Application Publication No. US 2019/0392578 A1, published 26 December 2019) based on the citations and rationale presented above.
76. Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,242,558 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Yang et al. (Cell Reports, vol. 36, pages 1-15 and e1-e4, published 27 July 2021) based on the citations and rationale presented above.
77. Claims 1-2, 4-6, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,265,088 in view of Shum et al. (Analytical Chemistry, Published 12 December 2022, Vol. 94, pp. 17868-17876).
Both sets of claims include partitions, nucleic acids, nucleic acid targets, containers, etc. Any additional limitations of the ‘088 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘088 claims do not discuss the claimed imaging system.
However, the imaging system, the other claim limitations, and the motivation to combine are taught by Shum et al. as discussed above.
78. Claims 1-2, 5, 9, 14, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,265,088 in view of Liao et al. (Proc. Nat. Acad. Sci. USA, vol. 117, pages 25628-25633, and Supporting Information, pages 1-37, published 30 September 2020).
Both sets of claims include partitions, containers, channels, nucleic acid targets, etc. Any additional limitations of the ‘088 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘088 claims do not discuss the claimed imaging system.
However, the imaging system, the other claim limitations, and the motivation to combine are taught by Liao et al. as discussed above.
79. Claims 1-2, 4-6, 8, 11, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,265,088 in view of Shum et al. (U.S. Patent Application Publication No. US 2022/0389410 A1, published 8 December 2022).
Both sets of claims include partitions, containers, channels, nucleic acid targets, etc. Any additional limitations of the ‘088 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘088 claims do not discuss the claimed imaging system.
However, the imaging system, the other claim limitations, and the motivation to combine are taught by Shum et al. as discussed above.
80. Claims 1-2, 4-6, 8, 11, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,265,088 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017).
Both sets of claims include partitions, containers, channels, nucleic acid targets, etc. Any additional limitations of the ‘088 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘088 claims do not discuss the claimed imaging system.
However, the imaging system, the other claim limitations, and the motivation to combine are taught by Chiu et al. as discussed above.
81. Claims 5, 8, 10, 14, and 16-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,265,088 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claims 1 and 9 above, and further in combination with Liao et al. (Proc. Nat. Acad. Sci. USA, vol. 117, pages 25628-25633, published 30 September 2020) based on the citations and rationale presented above.
82. Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,265,088 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Colston et al. (U.S. Patent Application Publication No. US 2010/01273394 A1, published 8 July 2010) based on the citations and rationale presented above.
83. Claims 5-6 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,265,088 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Shum et al. (Analytical Chemistry, Published 12 December 2022, Vol. 94, pp. 17868-17876) based on the citations and rationale presented above.
84. Claims 5-6, 8, 11, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,265,088 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Shum et al. (U.S. Patent Application Publication No. US 2022/0389410 A1, published 8 December 2022) based on the citations and rationale presented above.
85. Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,265,088 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Maltezos et al. (U.S. Patent Application Publication No. US 2009/0275113 A1, published 5 November 2009) based on the citations and rationale presented above.
86. Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,265,088 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 9 above, and further in combination with Held et al. (U.S. Patent Application Publication No. US 2018/0080755 A1, published 22 March 2018) based on the citations and rationale presented above.
87. Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,265,088 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 9 above, and further in combination with Chukka et al. (U.S. Patent Application Publication No. US 2019/0392578 A1, published 26 December 2019) based on the citations and rationale presented above.
88. Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,265,088 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Yang et al. (Cell Reports, vol. 36, pages 1-15 and e1-e4, published 27 July 2021) based on the citations and rationale presented above.
89. Claims 1-2, 4-6, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,540,948 in view of Shum et al. (Analytical Chemistry, Published 12 December 2022, Vol. 94, pp. 17868-17876).
Both sets of claims include partitions, nucleic acids, nucleic acid targets, containers, etc. Any additional limitations of the ‘948 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘948 claims do not discuss the claimed imaging system.
However, the imaging system, the other claim limitations, and the motivation to combine are taught by Shum et al. as discussed above.
90. Claims 1-2, 5, 9, 14, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,540,948 in view of Liao et al. (Proc. Nat. Acad. Sci. USA, vol. 117, pages 25628-25633, and Supporting Information, pages 1-37, published 30 September 2020).
Both sets of claims include partitions, containers, channels, nucleic acid targets, etc. Any additional limitations of the ‘948 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘948 claims do not discuss the claimed imaging system.
However, the imaging system, the other claim limitations, and the motivation to combine are taught by Liao et al. as discussed above.
91. Claims 1-2, 4-6, 8, 11, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,540,948 in view of Shum et al. (U.S. Patent Application Publication No. US 2022/0389410 A1, published 8 December 2022).
Both sets of claims include partitions, containers, channels, nucleic acid targets, etc. Any additional limitations of the ‘948 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘948 claims do not discuss the claimed imaging system.
However, the imaging system, the other claim limitations, and the motivation to combine are taught by Shum et al. as discussed above.
92. Claims 1-2, 4-6, 8, 11, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,540,948 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017).
Both sets of claims include partitions, containers, channels, nucleic acid targets, etc. Any additional limitations of the ‘948 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘948 claims do not discuss the claimed imaging system.
However, the imaging system, the other claim limitations, and the motivation to combine are taught by Chiu et al. as discussed above.
93. Claims 5, 8, 10, 14, and 16-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,540,948 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claims 1 and 9 above, and further in combination with Liao et al. (Proc. Nat. Acad. Sci. USA, vol. 117, pages 25628-25633, published 30 September 2020) based on the citations and rationale presented above.
94. Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,540,948 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Colston et al. (U.S. Patent Application Publication No. US 2010/01273394 A1, published 8 July 2010) based on the citations and rationale presented above.
95. Claims 5-6 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,540,948 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Shum et al. (Analytical Chemistry, Published 12 December 2022, Vol. 94, pp. 17868-17876) based on the citations and rationale presented above.
96. Claims 5-6, 8, 11, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,540,948 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Shum et al. (U.S. Patent Application Publication No. US 2022/0389410 A1, published 8 December 2022) based on the citations and rationale presented above.
97. Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,540,948 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Maltezos et al. (U.S. Patent Application Publication No. US 2009/0275113 A1, published 5 November 2009) based on the citations and rationale presented above.
98. Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,540,948 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 9 above, and further in combination with Held et al. (U.S. Patent Application Publication No. US 2018/0080755 A1, published 22 March 2018) based on the citations and rationale presented above.
99. Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,540,948 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 9 above, and further in combination with Chukka et al. (U.S. Patent Application Publication No. US 2019/0392578 A1, published 26 December 2019) based on the citations and rationale presented above.
100. Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,540,948 in view of Chiu et al. (U.S. Patent Application Publication No. US 2017/0175174 A1, published 22 June 2017) as applied to claim 1 above, and further in combination with Yang et al. (Cell Reports, vol. 36, pages 1-15 and e1-e4, published 27 July 2021) based on the citations and rationale presented above.
Conclusion
101. No claim is allowed.
102. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert T. Crow whose telephone number is (571)272-1113. The examiner can normally be reached M-F 8:00-4:30.
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Robert T. Crow
Primary Examiner
Art Unit 1683
/Robert T. Crow/Primary Examiner, Art Unit 1683