Application No. 15/952,203
`Response to Restriction Requirement filed: October 21, 2019
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`1.
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`Status of the claims
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`REMARKS
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`In response to the Restriction Requirement mailed August 20, 2019, Applicants respectfully
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`request consideration of the claims provided herein. Claims 115-151 are currently pending. Claim
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`117 is amended. The amendments are supported by the specification as filed, including, inter alia,
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`the claims as filed. No new matter has been added.
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`11.
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`Group Election
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`The Office has indicated that the claims are allegedly drawn to multiple inventions. Office
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`Action at p.2. The Office has restricted Applicant to one of the following inventions:
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`Group 1.
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`Claims 115-136, drawn to a method for performing a primer extension
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`reaction on RNA and DNA. .., classified in C12Q 1/6855,
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`Group 11.
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`Claims 137-143, drawn to a method of performing an amplification
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`reaction on a first RNA and a first DNA. .., classified in C12Q 1/6806,
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`Group III.
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`Claim 144, drawn to a method of sequencing nucleic acids. ..,
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`classified in C12Q 1/6869,
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`Group IV.
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`Claim 145, drawn to a method for concurrent processing of a different
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`nucleic acid forms in a sample. .., classified in C12Q 1/6809,
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`Group V.
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`Claims 146 and 148, drawn to a reaction mixture composition and a
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`kit. .., classified in C12N 9/93,
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`Group VI.
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`Claims 147 and 149, drawn to a reaction mixture and a kit. ..,
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`classified in C12N 19/1247,
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`Group VII. Claim 150, drawn to a method of sequencing different nucleic acids
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`forms..., classified in C12Q 1/6869, or
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`Group VIII. Claim 151, drawn to a method for processing different nucleic acid
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`forms in a sample. .., classified in C12Q 1/6844.
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`Applicant hereby elects, without traverse, Group 1. Applicant submits that Group 1
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`encompasses at least claims 115-136. Applicant reserves the right pursuant to 35 U.S.C. § 121 to
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`file one or more divisional applications directed to the non-elected inventions.
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`-8-
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`Atty. Docket No. 47697-709201
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`

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`Application No. 15/952,203
`Response to Restriction Requirement filed: October 21, 2019
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`III.
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`Species Election — Group I
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`The Office has indicated that Group I is directed to patentably distinct species. Office
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`Action at p. 7. The Office has indicated that an election of a single species is required according to
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`the following:
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`A.
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`Species of a ligase for the first adapter
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`0 CircLigase 11 (claim 117),
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`o Thermostable App-DNA/RNA ligase (claim 117),
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`0 T4 RNA ligase (claim 117),
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`0 T4 RNA Ligase 2 truncated (claim 117),
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`o A combination of ligases (claim 117).
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`Applicant hereby elects Thermostable APP DNA/RNA ligase with traverse. Applicant
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`hereby traverses the requirement for the election of species of ligases for the first adapter on the
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`grounds that the number of ligase species in the Markush group is sufficiently few in number such
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`that the claim can be examined without undue burden.
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`B.
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`Species of a sample
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`0 Blood (claim 122),
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`0 Plasma (claim 122),
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`0
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`Serum (claim 122),
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`o Cerebrospinal fluid (claim 122),
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`o
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`Synovial fluid (claim 122),
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`o Bronchio-alveolar lavage (claim 122),
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`o Urine (claim 122),
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`o
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`o
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`Stool (claim 122),
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`Saliva (claim 122),
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`o Nasal swab (claim 122),
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`Atty. Docket No. 47697-709201
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`

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`Application No. 15/952,203
`Response to Restriction Requirement filed: October 21, 2019
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`o A combination of samples (claim 122).
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`Applicant hereby elects plasma with traverse. Applicant hereby traverses the requirement for
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`the election of species of sample on the grounds that the number of sample species in the Markush
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`group is sufficiently few in number such that the claim can be examined without undue burden.
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`Furthermore, the species are all biological sample types.
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`C.
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`Species of further method steps
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`0
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`further comprising adding at least one non-templated nucleotide to a first primer
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`extension strand (claims 126-132),
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`0
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`further comprising adding at least one second non-templated nucleotide to a second
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`primer extension strand forming a second overhang (claim 133),
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`0
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`further comprising hybridizing a third adapter to said first overhang and a fourth adapter
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`to said second overhang (claim 134),
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`0
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`further comprising sequencing said third adapter and said fourth adapter and
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`sequences attached to said third adapter and said fourth adapter (claim 135),
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`0
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`further comprising (i) identifying sequences associated with said third adapter as
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`originating from said DNA in said mixture of single-stranded DNA and single-stranded
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`RNA and (ii) identifying sequences associated with said fourth adapter as originating from
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`said RNA in said mixture of single-stranded DNA and single-stranded RNA (claim 136).
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`Applicant hereby elects, without traverse, further comprising adding at least one non-
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`templated nucleotide to a first primer extension strand.
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`D.
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`Species of at least one non-templated nucleotide gif species Q is elected — further
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`comprising adding a least one non-templated nucleotide to a first primer extension strand (claims
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`126-132)
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`0
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`0
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`0
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`said at least one non-templated nucleotide is a deoxycytidine (claim 127),
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`said at least one non-templated nucleotide is added to a 3' end (claim 128),
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`said at least one non-templated nucleotide is up to eight nucleotides (claim 129),
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`Atty. Docket No. 47697-709201
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`Application No. 15/952,203
`Response to Restriction Requirement filed: October 21, 2019
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`said at least one non-templated nucleotide is three non-templated nucleotides (claim 130),
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`said at least one non-templated nucleotide is four non-templated nucleotides (claim 130),
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`said at least one non-templated nucleotide is five non-templated nucleotides (claim 130),
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`said at least one non-templated nucleotide is one non-templated nucleotide (claim 131),
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`said at least one non-templated nucleotide forms a first overhang (claim 132).
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`Applicant hereby elects, without traverse, said at least one non-templated nucleotide forms
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`a first overhang (claim 132).
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`With regard to the species election related to Group I, at least claims 115-136 are believed
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`to be encompassed by the elected species. When the elected species are found allowable, the
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`examiner is respectfully requested to enlarge her search and examination to encompass the non-
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`elected species.
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`111.
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`Species Election — Group II
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`The Office has indicated that Group II is directed to patentably distinct species. Office
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`Action at p. 9. The Office has indicated that an election of a single species is required according to
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`the following:
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`A.
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`Species of first DNA
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`single-stranded DNA (claim 138),
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`double-stranded DNA (claim 138),
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`triple-stranded DNA (claim 138),
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`a Holliday junction (claim 138),
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`cell-free DNA (claim 140).
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`Species of first RNA
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`single-stranded RNA (claim 139),
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`double-stranded RNA (claim 139),
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`a ribozyme (claim 139).
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`Species of a sample
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`Atty. Docket No. 47697-709201
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`Application No. 15/952,203
`Response to Restriction Requirement filed: October 21, 2019
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`0
`
`0
`
`0
`
`o
`
`o
`
`o
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`0
`
`o
`
`o
`
`o
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`o
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`blood (claim 141),
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`plasma (claim 141),
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`serum (claim 141),
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`cerebrospinal fluid (claim 141),
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`synovial fluid (claim 141),
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`bronchio-alveolar lavage (claim 141),
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`urine (claim 141),
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`stool (claim 141),
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`saliva (claim 141),
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`nasal swab (claim 141),
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`a combination of samples (claim 141).
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`Applicant respectfully submits that Group I is elected. Therefore, an election with regard to
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`species of Group II is not made.
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`Atty. Docket No. 47697-709201
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`Application No. 15/952,203
`Response to Restriction Requirement filed: October 21, 2019
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`CONCLUSION
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`The Commissioner is hereby authorized to charge any required fees due in connection with
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`this submission, including petition and extension of time fees, and to credit any overpayment, to
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`Deposit Account No. 23-2415 (Attorney Docket No. 47697-709201).
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`Date: October 21 2019
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`Respectfully submitted,
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`By:
`
`/Derrick D. Rowe/
`Derrick Rowe, JD, PhD
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`Reg. No. 73674
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`WILSON SONSINI GOODRICH & ROSATI
`
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`Phone:
`(202) 973-8893
`Client No. 021971
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`Atty. Docket No. 47697-709201
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