Of
`
`Application No.
`
`13/366,351
`Examiner
`
`App|icant(s)
`
`WACH ET AL.
`Art Unit
`
`DANIEL PETKOVSEK
`
`2874
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`All claims being allowable, PROSECUTION ON THE MERITS IS (OR REMAINS) CLOSED in this application.
`If not included
`herewith (or previously mailed), a Notice of Allowance (PTOL—85) or other appropriate communication will be mailed in due course. THIS
`NOTICE OF ALLOWABILITY IS NOT A GRANT OF PATENT RIGHTS. This application is subject to withdrawal from issue at the initiative
`of the Office or upon petition by the applicant. See 37 CFR 1.313 and MPEP 1308.
`
`1. IX This communication is responsive to the amendment filed September 6, 2012.
`
`2. I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`the restriction requirement and election have been incorporated into this action.
`
`2:
`
`3. IX The allowed cIaim(s) is/are L3.
`
`4. El Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119( )—(d) or (f).
`a) I:I All
`b) I:I Some*
`c) I:I None
`of the:
`
`1. I:I Certified copies of the priority documents have been received.
`
`2. I:I Certified copies of the priority documents have been received in Application No.
`
`3. I:I Copies of the certified copies of the priority documents have been received in this national stage application from the
`
`International Bureau (PCT Rule 17.2( )).
`
`* Certified copies not received:
`
`Applicant has THREE MONTHS FROM THE “MAILING DATE” of this communication to file a reply complying with the requirements
`noted below. Failure to timely comply will result in ABANDONMENT of this application.
`THIS THREE-MONTH PERIOD IS NOT EXTENDABLE.
`
`5. |:I A SUBSTITUTE OATH OR DECLARATION must be submitted. Note the attached EXAMINER’S AMENDMENT or NOTICE OF
`INFORMAL PATENT APPLICATION (PTO—152) which gives reason(s) why the oath or declaration is deficient.
`
`6. I:I CORRECTED DRAWINGS (as “replacement sheets”) must be submitted.
`
`(a) I] including changes required by the Notice of Draftsperson’s Patent Drawing Review ( PTO—948) attached
`
`1) I:| hereto or 2) I] to Paper No./Mail Date
`
`(b) I] including changes required by the attached Examiner’s Amendment / Comment or in the Office action of
`Paper No./Mail Date
`Identifying indicia such as the application number (see 37 CFR 1.84(c)) should be written on the drawings in the front (not the back) of
`each sheet. Replacement sheet(s) should be labeled as such in the header according to 37 CFR 1.121(d).
`
`7. El DEPOSIT OF and/or INFORMATION about the deposit of BIOLOGICAL MATERIAL must be submitted. Note the
`attached Examiner’s comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.
`
`Attachment(s)
`1. El Notice of References Cited (PTO—892)
`
`2. El Notice of Draftperson‘s Patent Drawing Review (PTO—948)
`
`3. IX Information Disclosure Statements (PTO/SB/08),
`Paper No./Mail Date 9/6/12
`4. I:I Examiner’s Comment Regarding Requirement for Deposit
`of Biological Material
`
`5. I:I Notice of Informal Patent Application
`
`6. I:I Interview Summary (PTO—413),
`Paper No./Mail Date
`.
`7. El Examiner’s Amendment/Comment
`
`8. E Examiner’s Statement of Reasons for Allowance
`
`9. I:| Other
`
`U.S. Patent and Trademark Office
`
`PTOL-37 (Rev. 03-11)
`Page 1
`
`Notice of Allowability
`
`Part of Paper No./Mail Date 20120910
`ILLUMINA, INC. EXHIBIT 1018
`
`Page 1
`
`

`
`Application/Control Number: 13/366,351
`
`Page 2
`
`Art Unit: 2874
`
`DETAILED ACTION
`
`This office action is in response to the amendment and response filed September
`
`6, 2012. The amendments to the specification are acknowledged.
`
`Claims 1-3 are pending, each claim being in independent form.
`
`Information Disclosure Statement
`
`1.
`
`The prior art documents submitted by Applicant in the Information Disclosure
`
`Statements filed on September 6, 2012, have been considered and made of record
`
`(note attached copy of forms PTO-1449).
`
`Terminal Disclaimer
`
`2.
`
`The terminal disclaimer filed on September 6, 2012, disclaiming the terminal
`
`portion of any patent granted on this application which would extend beyond the
`
`expiration date of U.S.P. No. 8,135,250, has been reviewed and is accepted. The
`
`terminal disclaimer has been recorded.
`
`Allowable Subject Matter
`
`3.
`
`Claims 1-3 are allowed. The following is an examiner’s statement of reasons for
`
`allowance: independent claims 1-3 are not taught or reasonably suggested, lg
`
`combination, by the relevant prior art of record. Each combined claim is narrower than
`
`the allowed independent claim 1 of the parent patent 8,135,250 B2. Since claim 1 of
`
`the '250 patent was allowed over the prior art, these new claims 1-3 are also allowed for
`
`Page 2
`
`Page 2
`
`

`
`Application/Control Number: 13/366,351
`
`Page 3
`
`Art Unit: 2874
`
`the same reasons. Note that a terminal disclaimer was filed September 6, 2012
`
`regarding newindependent claim 1.
`
`Any comments considered necessary by applicant must be submitted no later
`
`than the payment of the issue fee and, to avoid processing delays, should preferably
`
`accompany the issue fee. Such submissions should be clearly labeled “Comments on
`
`Statement of Reasons for Allowance.”
`
`In ventorship
`
`4.
`
`This application currently names joint inventors.
`
`In considering patentability of
`
`the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of
`
`the various claims was commonly owned at the time any inventions covered therein
`
`were made absent any evidence to the contrary. Applicant is advised of the obligation
`
`under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was
`
`not commonly owned at the time a later invention was made in order for the examiner to
`
`consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g)
`
`prior art under 35 U.S.C. 103(a).
`
`Conclusion
`
`5.
`
`A terminal disclaimer was timely filed on September 6, 2012 regarding pending
`
`claim 1, in relation to claim 1 of the '25O parent patent. As such, there are no pending
`
`rejections remaining to claims 1-3. These claims 1-3 are now in condition for allowance.
`
`Page 3
`
`Page 3
`
`

`
`Application/Control Number: 13/366,351
`
`Page 4
`
`Art Unit: 2874
`
`6.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to DANIEL PETKOVSEK whose telephone number is
`
`(571) 272-4174. The examiner can normally be reached on M-F 8:30-5PM.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Uyen Chau Le can be reached on (571) 272-2397. 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 http://pair-direct.uspto.gov. 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.
`
`/Daniel Petkovsek/
`
`Primary Examiner, Art Unit 2874
`September 10, 2012
`
`Page 4
`
`Page 4