U.S. Serial No. 15/603,013
`Response to Final Office Action dated November7, 2018
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`Attorney Docket No. 44854-701.402
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`REMARKS
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`Claims 1-7, 9-10, 12-13, and 17-23 are currently pendingin this application. With this
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`amendment, claims 1, 5-7, 9 and 10 are currently amended; claims 2 and 17-21 are cancelled
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`without prejudice or disclaimer; and claims 24-35 are new. Support for the amendmentsto the
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`claims can be found throughoutthe as-filed application and original claims, including paragraphs
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`264, 274, and 429-430. No new matteris believed to be introduced.
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`Upon entry of this amendment, claims 1, 3-7, 9-10, 12-13 and 22-35 are pendingin this
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`application. Allowance of the application is respectfully requested.
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`I) Applicant Initiated Telephonic Interview Summary
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`Applicant thanks Examiner Hammell for the courteous telephonic interview on December
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`28, 2018, with Applicant’s representative David Harburger. During the interview, proposed
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`claim amendments and the 101, 112 and 103 rejections were discussed. Examiner Hammell
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`stated that the proposed claim amendments would overcomethe outstanding and that an
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`additional search would be required.
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`II) Claim Rejections — 35 USC § 101
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`The Office Action rejects claims 1-7, 9, 10, 12, 13 and 17-20, 22 and 23 under 35 U.S.C.
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`§ 101 because the claimed invention is allegedly directed to a judicial exception(i.e., a law of
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`nature, a natural phenomenon,or an abstract idea) without significantly more. Claims 2 and 17-
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`20 are cancelled. This rejection is respectfully traversed for at least the following reasons.
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`Solely to expedite prosecution, Applicant has amended claim 1 to incorporate the
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`language of now cancelled claim 21. Claim 21 was not rejected under this ground ofrejection
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`and is therefore conceded by the Office as directed to patent eligible subject matter.
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`Accordingly, withdrawal of the rejection to claim 1 and dependentclaim 3-7, 9, 10, 12-13, 22
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`and 23 under 35 U.S.C. § 101 is respectfully requested.
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`IID Claim Rejections — 35 USC § 112
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`The Office Action rejects claims 1-7, 9, 10, 12, 13 and 17-23 under 35 U.S.C. § 112(a) as
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`allegedly failing to comply with the written description requirement. Claims 2 and 17-20 are
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`cancelled. This rejection is respectfully traversed for at least the following reasons.
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`

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`U.S. Serial No. 15/603,013
`Response to Final Office Action dated November7, 2018
`
`Attorney Docket No. 44854-701.402
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`Applicant submits that the language cited by the Office Action forming the basis of the
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`rejection is no longerrecited in the claims. Accordingly, the rejection to claims 1, 3-7, 9, 10,
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`12-13, 22 and 23 under 35 U.S.C. § 112(a) is no longerrelevant.
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`IV) Claim Rejections — 35 USC § 103
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`A)=Claims 1-7, 9, 10, and 17-23 are rejected under 35 U.S.C. § 103 as allegedly being
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`obvious over Gao (Gaoet al. (2002) PNAS, 99(20):12612-12616) (hereinafter “Gao”) in view
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`of Hsieh (US 2010/0099103) (hereinafter “Hsieh”) as evidenced by Handa (US 6,472,147)
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`(hereinafter “Janda”). Claims 2 and 17-20 are cancelled. This rejection is respectfully traversed
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`for at least the following reasons.
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`Amended independentclaim 1 recites a nucleic acid cDNAlibrary comprising nucleic
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`acids encoding cDNA sequencesforat least 1000 genes, infer alia, “wherein a variation in
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`amount between each type of nucleic acid in the plurality of nucleic acids is less than 50%.”
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`Applicant submits that neither Gao or Hsieh disclose or suggest a nucleic acid cDNAlibrary
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`having this quoted feature recited in claim 1. In fact, Gao is directed to methods lacking such
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`control over a variation in amount between each of nucleic acid type in a large library. For
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`example, Gao discloses an enzymatic meansfor nucleic acid library synthesis (p.12613) and
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`vector assembly followed by electroporation into bacteria for phage display.
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`Forat least these reasons, Applicant respectfully requests that the rejection to
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`independent claim 1 and dependentclaims therefrom under 35 U.S.C. § 103 be withdrawn.
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`B)=Claims 1-7, 9, 10, 17, 19, and 21-23 are rejected under 35 U.S.C. § 103 as allegedly
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`being obvious over Baynes (US 2008/0287320) (hereinafter “Baynes “320”) in view of Gao,
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`and Hsieh. Claims 2, 17, and 18 are cancelled. This rejection is respectfully traversed for at
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`least the following reasons.
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`Amended independentclaim 1 recites a nucleic acid cDNAlibrary comprising nucleic
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`acids encoding cDNA sequencesforat least 1000 genes, infer alia, “wherein a variation in
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`amount between each type of nucleic acid in the plurality of nucleic acids is less than 50%.”
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`Applicant submits that none of Baynes, Gao and Hsieh alone or in combination disclose or
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`suggest a nucleic acid cDNAlibrary having the quoted feature recited in claim 1.
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`Forat least these reasons, Applicant respectfully requests that the rejection to
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`independent claim 1 and dependentclaims therefrom under 35 U.S.C. § 103 be withdrawn.
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`

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`U.S. Serial No. 15/603,013
`Response to Final Office Action dated November7, 2018
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`Attorney Docket No. 44854-701.402
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`C)
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`Claims 12 and 13 are rejected under 35 U.S.C. § 103 as being obvious over Baynes ‘320
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`in view of Gao, and Hsieh, as applied to claim 17, and in further view of Baynes (WO
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`2008/054543) (hereinafter “Baynes ‘543”).
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`Amended independentclaim 1 recites a nucleic acid cDNAlibrary comprising nucleic
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`acids encoding cDNA sequencesforat least 1000 genes, infer alia, “wherein a variation in
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`amount between each type of nucleic acid in the plurality of nucleic acids is less than 50%.”
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`Applicant submits that none of Baynes ‘320, Gao, Hsieh or Baynes ‘543 alone or in combination
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`disclose or suggest a nucleic acid cDNAlibrary having the quoted feature recited in claim 1.
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`Forat least these reasons, Applicant respectfully requests that the rejection to
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`independent claim 1 and dependentclaims therefrom under 35 U.S.C. § 103 be withdrawn.
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`D)
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`Claims 18 and 20 are rejected under 35 U.S.C. § 103 as being obvious over Baynes ‘320
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`in view of Gao, and Hsieh, as applied to claim 17, and in further view of Baynes ‘543.
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`Claims 18 and 20 are cancelled. Applicant submits that the rejection to these claims is no
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`longerrelevant.
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`E)
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`Claims 18 and 20 are rejected under 35 U.S.C. § 103 as being obvious over Baynes “320
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`in view of Gao, and Hsieh, as applied to claim 17, and in further view of Pirrung (Pirrung, M.C.
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`(2002) Angewandte Chemie International Edition, 41:1276-1289).
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`Claims 18 and 20 are cancelled. Applicant submits that the rejection to these claims is no
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`longerrelevant.
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`-7-
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`U.S. Serial No. 15/603,013
`Response to Final Office Action dated November7, 2018
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`Attorney Docket No. 44854-701.402
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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 Commissioneris 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. 44854-701.402.
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`Respectfully submitted,
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`WILSON SONSINI GOODRICH & ROSATI
`A Professional Corporation
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`Date: January 3, 2019
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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
`Direct Dial: (858) 350-2322
`Customer No. 021971
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