U.S. Serial No. 15/602,991
`Response to Final Office Action Filed December 19, 2018
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`Attorney Docket No. 44854-701308
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`REMARKS
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`Claims l-lO and 12-22 are currently pending in this application. With this amendment,
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`claims 1, l4 and 15 are currently amended, and claims 23-38 are new. Support for the
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`amendments to the claims can be found throughout the as-flled application and claims, including
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`paragraphs 50 and 264. No new matter is believed to be introduced.
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`Upon entry of this amendment, claims l-lO, 12-38 are pending and under examination.
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`Entry of the claim amendments and allowance of the application is respectfully requested.
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`1)
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`Applicant-Initiated Interview of December 17, 2018
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`Applicant thanks Examiner Zhang for the courteous telephonic interview of December
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`17, 2018 with Applicant’s representative David Harburger. Potential claim amendments were
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`discussed, along with the 103 rejections to the claims and the Tian reference. Applicant’s
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`representative proposed amending claim 1 to include the language of wherein each of the at least
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`20,000 polynucleotides is “at least 75 bases in length” and noted, in contrast, that the Tian
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`reference discloses enrichment of short sequences (50-mers) by selection hybridization.
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`Examiner Zhang suggested introduction of method claims into the claim set including such
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`language.
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`11)
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`Claim Rejections — 35 USC § 103
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`A) The Office Action rejects claims l-lO and 13-22 under 35 USC. § 103 as allegedly
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`being obvious over Tian et al. (Nature 2004, 432: 1050-1054) (hereafter “Tian”). This rejection
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`is respectfully traversed for at least the following reasons.
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`Amended claim 1 recites a polynucleotide cDNA library, “wherein the polynucleotide
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`cDNA library comprises at least 20,000 polynucleotides, wherein each of the at least 20,000
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`polynucleotides is at least 75 bases in length and synthesized based on instructions provided in a
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`computer readable non-transient medium for synthesis of preselected cDNA sequences, wherein
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`at least 80% of the at least 20,000 polynucleotides have no errors compared to the preselected
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`cDNA sequences received in the instructions provided in the computer readable non-transient
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`medium, wherein each of the at least 20,000 polynucleotides comprises a first overlap region
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`which is complementary to a second overlap region of another polynucleotide of the at least
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`20,000 polynucleotides, such that a plurality of genes are formed when a subset of the at least
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`

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`U.S. Serial No. 15/602,991
`Response to Final Office Action Filed December 19, 2018
`
`Attorney Docket No. 44854-701308
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`20,000 polynucleotides are assembled, and wherein the first overlap region comprises at least 10
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`bases in length.”
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`Applicant submits that the highlighted technical feature above of where each of the at
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`least 20,000 polynucleotides is “at least 75 bases in length wherein at least 80% of the at least
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`20,000 polynucleotides have no errors compared to the preselected cDNA sequences in the
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`instructions provided in the computer readable non-transient medium” is not taught or suggested
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`by Tian.
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`Moreover, Tian as a whole provides express guidance as to generation of an oligomer
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`library enriched for accuracy which are 50 bases in length —far shorter than that recited in claim
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`1. Tian describes enzymatic cleavage of a library of 90-mers to generate 50-mers for enrichment
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`by selective hybridization. See Figure 3 of Tian. It is not until after selection by hybridization of
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`the 50-mer construction oligomers of Tian that a library with improved accuracy is generated:
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`“[o]nly the correct upper 50-mer strand hybridizes well with left (L) then right (R) selection
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`oligonucleotides (immobilized on beads in grey)” Tian at 1052 (emphasis added). Tian also
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`describes that certain design constraints were employed using software for employment of the
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`described enrichment process:
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`Gene and oligonucleotide sequences were designed using the Java program CAD-
`PAM, to be described in detail elsewhere (J.T., H.G. and GO, manuscript in
`preparation). Basically, CAD-PAM uses constraints on the amino acid
`sequences, codon usage, messenger RNA secondary structure and restriction
`enzymes used to release the construction oligonucleotides in order to create
`nearly optimal, overlapping sets of n-mer
`(typically 50—mer) construction
`oligomers and shorter selection oligomers (typically 26-mer).
`Tian at 1063.
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`For at least these reasons, Applicant respectfully requests that this rejection to
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`independent claim 1 and dependent claims therefrom under 35 U.S.C. § 103 be withdrawn.
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`B) The Office Action rejects claim 12 under 35 U.S.C. § 103 as allegedly being obvious
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`over Tian as applied to claim 1 above, and further in view of Hodgson (US 2002/0025561 A1)
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`(hereafter “Hodgson”) and Kini et al. (US 2009/0285 825 Al) (hereafter “Kini”). This rejection
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`is respectfully traversed for at least the following reasons.
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`Applicant submits that the cited disclosures of Hodgson and Kini fail to cure for the
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`deficiencies of Tian as discussed above. For at least these reasons, Applicant respectfully
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`requests that this rejection to claim 12 under 35 U.S.C. § 103 be withdrawn.
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`-7-
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`U.S. Serial No. 15/602,991
`Response to Final Office Action Filed December 19, 2018
`
`Attorney Docket No. 44854-701308
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`CONCLUSION
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`Applicant respectfully solicits the Examiner to expedite examination of this application to
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`issuance. Should the Examiner have any questions, Applicant requests that the Examiner contact
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`the undersigned at 858-350-2322. The Commissioner is hereby authorized to charge any fees that
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`may be required, or credit any overpayment to Deposit Account No. 23-2415, referencing
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`Attorney Docket No. 44854-701308.
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`Respectfully submitted,
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`WILSON SONSINI GOODRICH & ROSATI
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`A Professional Corporation
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`Date: December 19 2018
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`By:
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`/DaVid S. Harburger/
`David S. Harburger
`Registration No. 65,159
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`650 Page Mill Road
`Palo Alto, CA 94304
`(858) 350—2322
`Customer No. 021971
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`