Page i
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`Illumina Ex. 1065
`IPR Petition - USP 10,435,742
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`.
`,
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`First AcI/on lnIerV/ew Pilot Program
`Pr9"”19’”5"” Communication
`
`Application No.
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`16/150,191
`
`Applicant(s)
`
`Ju etal.
`
`Examiner
`JEZIA RILEY
`
`Art Unit
`1637
`
`AIA (FITF) Status
`No
`
`- The MAILING 0/? N077F/CA 770/V DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`
`THE SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE ONE MONTH OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING OR NOTIFICATION DATE OF THIS COMMUNICATION.
`
`This time period for reply is extendable under 37 CFR 1.136(a) for only ONE additional MONTH.
`
`This communication constitutes notice under 37 CFR 1.136(a)(1)(i).
`Applicant must, within the time period for reply, file: (1) A letter requesting n_ot to have a first action interview; (2) A reply under 37 CFR
`1.111 waiving the first action interview and First Action Interview Office Action; or (3) An Applicant Initiated Interview Request Form (PTOL-
`413A) electronically via EFS-Web, accompanied by a proposed amendment or arguments, and schedule the interview within 2 months from
`the filing of the request. A failure to respond to this communication will be treated as a request not to have an interview. If applicant waives
`the First Action Interview Office Action, the instant Pre-lnterview Communication is deemed the first Office Action on the Merits. The next
`subsequent Office action may be made final if appropriate. See MPEP 706.07( ).
`
`Status
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`1) CI Responsive to communication(s) filed on
`
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`.
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`Disposition of Claims
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`2) El Claim(s) fl is/are pending in the application.
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`2a) Of the above Claim(s) _ is/are withdrawn from consideration.
`
`:I Claim(s)
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`is/are allowed.
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`2] Claim 3 1—4 is/are rejected.
`(
`)
`
`:I Claim(s)
`
`:I Claim(s)
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`is/are objected to.
`
`are subject to restriction and/or election requirement.
`
`) ) ) )
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`
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`
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`Application Papers
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`7) :I The specification is objected to by the Examiner.
`8) El The drawing(s) filed on 10/2/18 is/are: a)
`accepted or b) [3 objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`
`9) CI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119( )-(d) or (f).
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`a) CI AII b) [:I Some * c) C] None of:
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`1. CI Certified copies of the priority documents have been received.
`
`2. [:1 Certified copies of the priority documents have been received in Application No.
`
`3. CI 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( )).
`
`*See the attached detailed Office action for a list of the certified copies not received.
`
`Contact Information
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`Examiner's Telephone Number: g571)272—0786
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`Examiner's Typical Work Schedule: 7:30—6:009m
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`Supervisor's Name: Gary Benzion
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`Attachment(s)
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`1) [:1 Notice of References Cited (PTO-892)
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`2)
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`Information Disclosure Statement(s) (PTO/SB/OB)
`Paper No(s)/Mail Date See Continuation Sheet .
`U.S.Patent and Trademark Office
`
`Supervisor's Telephone Number:
`571—272—0782
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`3) D Interview Summary (PTO-413)
`Paper No(s)/Mail Date.
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`4) D Other:
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`PTOL-413FP (Rev. 08-13)
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`First Action Interview Pilot Program - Pre-lnterview Communication
`
`Part Of Paper No./Mail Date 20190305
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`Page1 of3
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`Page 1
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`Page 1
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`Continuation Sheet (PTOL-413FP)
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`Application No. 16/150,191
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`Continuation of Attachment(s) 2) 2/7/19;11/15/18;10/2/18
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`Page 2 of 3
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`Page 2
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`Page 2
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`,
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`,
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`FlfSI Act/on Inferi/Iew Pl/OI Program
`Pfe./”fefyiew Communicafl'ofl
`
`Application No.
`
`Applicant(s)
`
`16/150,191
`
`Ju etal.
`
`Examiner
`JEZIA RILEY
`
`Art Unit
`1637
`
`AIA (FITF) Status
`N0
`
`Notification of Reiection(s) and/or 0b]ection(s)
`Fle'ection
`.
`.
`.
`.
`Statutlory Basis
`Brief Explanation of Rejection
`Claims 1—4 are rejected on the ground of nonstatutory double patenting as being
`unpatentable over claims 1—2 of US. Patent No.9868985. Although the claims at issue are
`not identical, they are not patentably distinct from each other (see below)
`The term "small" in claims 1 and 3 is a relative term which renders the claim indefinite. The
`term "small" is not defined by the claim, the specification does not provide a standard for
`ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably
`
`35 USC § 112(b)
`
`Double Patenting
`
`
`
`.
`fl Claim(s)
`
`Reference 5
`(if applicab(le))
`
`1
`
`1—4
`
`US 9868985
`
`_
`1 4
`
`_
`1 4
`
`2
`
`3
`
`N/A
`
`N/A
`
`35 USC § 112(a)
`
`Variables R and Y in claims 1 and 3 are defined functionally but lack a clear—cut indication of
`the scope of the subject matter embraced by the claims. In this case, the specification does
`not provide the particular structures that accomplish the functions recited in the claims (see
`
`Expanded Discussion/Commentary
`
`because they both claim a method for sequencing a nucleic acid which comprises detecting the identity of a nucleotide analogue incorporated
`into the end of a growing strand of DNA in a polymerase reaction, wherein the nucleotide analogue are of identical formula where R can be
`MOM (see Figure 7) and therefore not CHZCH=CH2 group; and OR is not a methoxy group, and an ester group; and comprising identical steps.
`
`apprised of the scope of the invention. The specification does not define "small" and provides only two examples: MOM ether and allyl. The
`skilled artisan would not know which other groups meet the limitation “small."
`The definition of R in claim 49 is unclear. The claim also recites some functional characteristics for R and Y. These functional limitations do not
`set forth well—defined boundaries of the invention because they only state a problem solved or a result achieved.
`
`with the exception of two examples of R and one example on. The skilled artisan would not be apprised that the inventors had possession of
`the full scope of the claimed invention at the time the application was filed because the scope of the claims is much larger than the examples
`given and the specification does not provide structure—function relationships or guidance for compounds other than those exemplified.
`
`DATE:
`11 Marc“ 2019
`
`/JEZIA RILEY/
`Primary Examiner, Art Unit 1637
`
`U.S.Patent and Trademark Office
`
`PTOL-413FP (Rev. 08-13)
`
`First Action Interview Pilot Program - Pre-lnterview Communication Part of Paper NoJMaiI Date 20190305
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`Page 3 of 3
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`Page 3
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`Page 3
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