www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`
`15/602,991
`
`05/23/2017
`
`William BANYAI
`
`44854-701308
`
`5477
`
`WILSON, SONSINI, GOODRICH & ROSATI
`650 PAGE MILL ROAD
`PALO ALTO, CA 94304-1050
`
`ZHANG KAUIANG
`
`ART UNIT
`
`1639
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/28/2018
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`
`following e—mail address(es):
`
`patentdoeket@ wsgroom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Applicant-InitiatedInterview Summary
`
`Application No.
`15/602,991
`
`Examiner
`KAIJIANG ZHANG
`
`Applicant(s)
`BANYAI et al.
`
`Art Unit
`1639
`
`AIA Status
`Yes
`
`All participants (applicant, applicants representative, PTO personnel):
`
`(1) KAIJIANG ZHANG.
`
`(2) David Harburger.
`
`Date of Interview: 17 December 2018.
`
`Type:
`
`[:1 Video Conference
`Telephonic
`C] Personal [copy given to:
`[:1 applicant
`
`[3 applicant's representative]
`
`Exhibit shown or demonstration conducted:
`If Yes, brief description:
`
`Cl Yes
`
`No.
`
`.103 DOthers
`D112 D102
`IssuesDiscussed D101
`(For each of the checked box(es) above, please describe below the issue and detailed description of the discussion)
`
`Claim(s) discussed: 1—10 and 12—22.
`
`Identification of prior art discussed: prior art of record.
`
`Substance of Interview
`(For each issue discussed, provide a detailed description and indicate if agreement was reached. Some topics may include: identification or clarification of a
`reference or a portion thereof, claim interpretation, proposed amendments, arguments of any applied references etc...)
`
`Applicant's representative, David Harburger, initiated the telephonic interview to discuss the 103 reiection as presented
`in the most recent Office action. During the interview, Dr. Harburger proposed to amend claim 1 to specify that each of
`the at least 20,000 polynucleotides is "at least 75 bases in length". The examiner indicated that such amendment
`would reguire further search and consideration and thus might not be entered after—final. The examiner also noted that
`the error rate recitation in the currently presented claims does NOT impose any "structural" limitation on the
`polynucleotides in the claimed library because the structure of each polynucleotide is ONLY defined by its specific
`
`nucleotide seguence but NOT how it’s made. The examiner further indicated that should such error rate limitation be
`recited in a method claim instead of the currentl
`resented roduct claims , it would have to be considered for
`
`patentability determination. No specific agreement was reached during the interview..
`
`
`
`Applicant recordation instructions: The formal written reply to the last Office action must include the substance of the interview. (See MPEP
`section 713.04). If a reply to the last Office action has already been filed, applicant is given a non-extendable period of the longer of one month or
`thirty days from this interview date, or the mailing date of this interview summary form, whichever is later, to file a statement of the substance of the
`interview
`
`Examiner recordation instructions: Examiners must summarize the substance of any interview of record. A complete and proper recordation of
`the substance of an interview should include the items listed in MPEP 713.04 for complete and proper recordation including the identification of the
`general thrust of each argument or issue discussed, a general indication of any other pertinent matters discussed regarding patentability and the
`general results or outcome of the interview, to include an indication as to whether or not agreement was reached on the issues raised.
`
`C] Attachment
`
`/KAIJIANG ZHANG/
`
`Primary Examiner, Art Unit 1639
`
`US. Patent and Trademark Office
`
`PTOL-413 (Rev. 8/11/2010)
`
`Interview Summary
`
`Paper NO. 20181221
`
`

`

`Manual of Patent Examining Procedure (MPEP), Section 713.04, Substance of Interview Must be Made of Record
`A complete written statement as to the substance of any face-to-face, video conference, or telephone interview with regard to an application must be made of record in the
`application whether or not an agreement with the examiner was reached at the interview.
`
`Summary of Record of Interview Requirements
`
`Title 37 Code of Federal Regulations (CFR) 1.133 Interviews
`Paragraph (b)
`
`In every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as
`warranting favorable action must be filed by the applicant. An interview does not remove the necessity for reply to Office action as specified in §§ 1.111, 1.135. (35 U.S.C.
`132)
`
`37 CFR §1.2 Business to be transacted in writing.
`All business with the Patent or Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and
`Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any
`alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.
`
`The action of the Patent and Trademark Office cannot be based exclusively on the written record in the Office if that record is itself
`incomplete through the failure to record the substance of interviews.
`It is the responsibility of the applicant or the attorney or agent to make the substance of an interview of record in the application file, unless
`the examiner indicates he or she will do so. It is the examiners responsibility to see that such a record is made and to correct material inaccuracies
`which bear directly on the question of patentability.
`
`Examiners must complete an Interview Summary Form for each interview held where a matter of substance has been discussed during the
`interview by checking the appropriate boxes and filling in the blanks. Discussions regarding only procedural matters, directed solely to restriction
`requirements for which interview recordation is otherwise provided for in Section 812.01 of the Manual of Patent Examining Procedure, or pointing out
`typographical errors or unreadable script in Office actions or the like, are excluded from the interview recordation procedures below. Where the
`substance of an interview is completely recorded in an Examiners Amendment, no separate Interview Summary Record is required.
`
`The Interview Summary Form shall be given an appropriate Paper No., placed in the right hand portion of the file, and listed on the
`"Contents" section of the file wrapper. In a personal interview, a duplicate of the Form is given to the applicant (or attorney or agent) at the conclusion of
`the interview. In the case of a telephone or video-conference interview, the copy is mailed to the applicants correspondence address either with or prior
`to the next official communication. If additional correspondence from the examiner is not likely before an allowance or if other circumstances dictate, the
`Form should be mailed promptly after the interview rather than with the next official communication.
`
`The Form provides for recordation of the following information:
`- Application Number (Series Code and Serial Number)
`- Name of applicant
`- Name of examiner
`- Date of interview
`- Type of interview (telephonic, video-conference, or personal)
`- Name of participant(s) (applicant, attorney or agent, examiner, other PTO personnel, etc.)
`- An indication whether or not an exhibit was shown or a demonstration conducted
`- An identification of the specific prior art discussed
`-
`An indication whether an agreement was reached and if so, a description of the general nature of the agreement (may be by
`attachment of a copy of amendments or claims agreed as being allowable). Note: Agreement as to allowability is tentative and does
`not restrict further action by the examiner to the contrary.
`- The signature of the examiner who conducted the interview (if Form is not an attachment to a signed Office action)
`
`It is desirable that the examiner orally remind the applicant of his or her obligation to record the substance of the interview of each case. It
`should be noted, however, that the Interview Summary Form will not normally be considered a complete and proper recordation of the interview unless
`it includes, or is supplemented by the applicant or the examiner to include, all of the applicable items required below concerning the substance of the
`interview.
`
`A complete and proper recordation of the substance of any interview should include at least the following applicable items:
`1) A brief description of the nature of any exhibit shown or any demonstration conducted,-
`2) an identification of the claims discussed,
`3) an identification of the specific prior art discussed,
`4)
`an identification of the principal proposed amendments of a substantive nature discussed, unless these are already described on
`the Interview Summary Form completed by the Examiner,
`5) a brief identification of the general thrust of the principal arguments presented to the examiner,
`(The identification of arguments need not be lengthy or elaborate. A verbatim or highly detailed description of the arguments is not
`required. The identification of the arguments is sufficient if the general nature or thrust of the principal arguments made to the
`examiner can be understood in the context of the application file. Of course, the applicant may desire to emphasize and fully
`describe those arguments which he or she feels were or might be persuasive to the examiner.)
`6) a general indication of any other pertinent matters discussed, and
`7)
`if appropriate, the general results or outcome of the interview unless already described in the Interview Summary Form completed
`by the examiner.
`Examiners are expected to carefully review the applicants record of the substance of an interview. If the record is not complete and accurate,
`the examiner will give the applicant an extendable one month time period to correct the record.
`
`Examiner to Check for Accuracy
`
`If the claims are allowable for other reasons of record, the examiner should send a letter setting forth the examiners version of the statement
`attributed to him or her. If the record is complete and accurate, the examiner should place the indication, Interview Record OK on the paper recording
`the substance of the interview along with the date and the examiners initials.
`
`