`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant
`
`The Trustees of Columbia University in the City
`of New York
`
`Inventors :
`
`Jingyue Ju et al.
`
`Serial No.:
`
`16/150,185
`
`Examiner: Jezia Riley
`
`Filed
`
`October 2, 2018
`
`Art Unit: 1637
`
`Con£. No.
`
`9501
`
`For
`
`MASSIVE PARALLEL METHOD FOR DECODING DNA AND RNA
`
`30 Rockefeller Plaza
`20 th Floor
`New York, New York 10112
`February 26, 2019
`
`BY EFS
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`COMMUNICATION IN RESPONSE TO FEBRUARY 15, 2019 FIRST ACTION INTERVIEW
`PILOT PROGRAM PRE-INTERVIEW COMMUNICATION
`
`This Communication
`
`is submitted
`
`in
`
`response
`
`to
`
`the First Action
`
`Interview Pilot Program Pre-Interview Communication mailed February 15,
`2019 in connection with the above-identified application. A response is
`
`due March 15, 2019. Accordingly,
`
`this Communication is being timely
`
`filed.
`
`Illumina Ex. 1135
`IPR Petition - USP 10,435,742
`
`
`
`Applicant :
`Serial No. :
`Filed
`Page 2 of
`
`The Trustees of Columbia University in the City of New York
`16/150,185
`October 2, 2018
`3 of Communication in Response to February 15, 2019 First
`Action
`Interview
`Pilot
`Program
`Pre-Interview
`Communication
`
`I. STATUS OF CLAIMS
`
`REMARKS
`
`The claims pending in this application are previously pending claims 1
`
`and 2.
`
`II. OBVIOUSNESS-TYPE DOUBLE PATENTING
`
`In response to
`
`the obviousness-type double patenting rejection set
`
`fo;rth in the February 15, 2019 First Action Interview Pilot Program
`applicant, without
`the
`conceding
`is concurrently filing an eTerminal
`
`Pre-Interview
`correctness of this rejection,
`
`Communication,
`
`Disclaimer with respect to the reference patent cited in the rejection,
`
`i.e., U.S. Patent No. 9,719,139. Accordingly, applicant submits that an
`
`interview with the Examiner is no longer necessary.
`
`IV. SUMMARY
`
`Applicant maintains that all grounds of rejection set forth in the
`
`February 15, 2019 First Action Interview Pilot Program Pre-Interview
`
`Communication have been overcome and earnestly solicits allowance of
`
`the claims pending in the application.
`
`
`
`The Trustees of Columbia University
`Applicant
`Serial No.: 16/150,185
`Filed
`October 2, 2018
`Page 3 of 3 of Communication in Response to
`Action
`Interview
`Pilot
`Communication
`
`in the City of New York
`
`February
`Program
`
`15, 2019 First
`Pre-Interview
`
`If
`
`a
`
`telephone
`
`prosecution of
`
`interview would be of
`subject application,
`
`the
`
`assistance
`
`in
`
`advancing
`
`applicant's
`
`undersigned
`
`attorney invites the Examiner to telephone him at the number provided
`
`below.
`
`No fee, other than the $160.00 fee for E-filing the Terminal Disclaimer
`
`for which-authorization to charge Deposit Account No. 03-3125 was given
`
`in connection with the separate E-filing of the Terminal Disclaimer, is
`
`deemed necessary
`
`in connection with
`
`the filing of
`
`this Response.
`
`However, if any further fee is due, authorization is hereby given to
`
`charge the amount of any such fee to Deposit Account No. 03-3125.
`
`Respectfully submitted,
`
`Certificate of Transmission
`hereby
`certify
`that
`this
`I
`correspondence
`is
`being
`transmitted via
`the Electronic
`Filing System
`(EFS)
`to
`the U.S.
`Patent and Trademark Office on
`February 26, 2019.
`
`Regis ation No. 28,678
`Attorney for Applicant
`Cooper & Dunham LLP
`30 Rockefeller Plaza
`20 th Floor
`New York, New York 10112
`(212) 278-0400
`
`P. White
`. No. 28,678
`
`
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