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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`
`15/991,992
`
`05/29/2018
`
`William Banyai
`
`44854-701310
`
`9089
`
`WILSON, SONSINI, GOODRICH & ROSATI
`650 PAGE MILL ROAD
`PALO ALTO, CA 94304-1050
`
`ZHANG KAUIANG
`
`ART UNIT
`
`1639
`
`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`03/10/2020
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`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`patentdoeket@ wsgroom
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`PTOL-90A (Rev. 04/07)
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`

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`017/09 A0170” Summary
`
`Application No.
`15/991,992
`Examiner
`KAIJIANG ZHANG
`
`Applicant(s)
`Banyai et al.
`Art Unit
`1639
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 2 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
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`1). Responsive to communication(s) filed on 10 May 2019.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)[:] This action is FINAL.
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`2b) D This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
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`4):] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s)
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`12—29 is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`
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`[:1 Claim(s)s_is/are allowed.
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`D Claim(ss)_ is/are rejected.
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`[:1 Claim(ss_) is/are objected to
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`) ) ) )
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`812)
`—29 are subject to restriction and/or election requirement
`Claim(s
`* If any claims have been determined atowabte. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
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`10)|:l The specification is objected to by the Examiner.
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`is/are: a)[] accepted or b)l:] objected to by the Examiner.
`11)[:] The drawing(s) filed on
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
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`12)D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)I:l All
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`b)|:] Some**
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`c)l:i None of the:
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`1C] Certified copies of the priority documents have been received.
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`2C] Certified copies of the priority documents have been received in Application No.
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`3D Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) [3 Notice of References Cited (PTO-892)
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`2) C] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20200306
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`

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`Application/Control Number: 15/991,992
`Art Unit: 1639
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`Page 2
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`DETAILED ACTION
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`Election/Restrictions
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`1.
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`Restriction to one of the following inventions is required under 35 U.S.C. 121:
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`Claims 12—22 and 27-29, drawn to a method of synthesizing
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`oligonucleotides, comprising: a. providing a solid substrate; b. depositing
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`droplets at a velocity of 5 m/s to 30 m/s on the substrate, wherein the
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`droplets comprise nucleosides for oligonucleotide synthesis; and c.
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`synthesizing a plurality of oligonucleotides, wherein each of the
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`oligonucleotides has a preselected sequence, classified in BO1J 19/0046
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`and 0408 50/14.
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`Claims 23-26, drawn to a device (m that the recitation “for
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`oligonucleotide synthesis” in the preamble is a mere recitation of an
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`intended use of the claimed device and does NOT impose any structural
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`limitation on the claimed device), comprising: a. a solid support; b. a
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`plurality of locations on a top surface of the solid support, wherein each of
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`the locations has a pitch of 0.5 mm or higher in length; and c. a plurality of
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`microwells within each of the locations, wherein each of the microwells
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`has a width of up to 500 um, classified in 0408 60/14.
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`The inventions are distinct, each from the other because of the following reasons:
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`2.
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`Inventions II and l are related as product and process of use. The inventions can
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`be shown to be distinct if either or both of the following can be shown: (1) the process
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`for using the product as claimed can be practiced with another materially different
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`product or (2) the product as claimed can be used in a materially different process of
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`

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`Application/Control Number: 15/991,992
`Art Unit: 1639
`
`Page 3
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`using that product. See MPEP § 806.05(h).
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`In the instant case, the product as claimed
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`can be used in a materially different process of using that product (e.g., the device of
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`Invention II can also be used for peptide synthesis or many types of array-based
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`biochemical assays).
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`3.
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`Restriction for examination purposes as indicated is proper because all these
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`inventions listed in this action are independent or distinct for the reasons given above
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`fl there would be a serious search and/or examination burden if restriction were not
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`required because one or more of the following reasons apply:
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`(a) the inventions have acquired a separate status in the art in view of their
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`different classification;
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`(b) the inventions require a different field of search (for example, searching
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`different classes/subclasses or electronic resources, or employing different search
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`quenesx
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`(c) the prior art applicable to one invention would not likely be applicable to
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`another invention;
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`(d) the inventions are likely to raise different non-prior art issues under 35 U.S.C.
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`101 and/or 35 U.S.C. 112, first paragraph.
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`Applicant is advised that the reply to this requirement to be complete must
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`include (i) an election of an invention to be examined even though the requirement
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`may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing
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`the elected invention.
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`The election of an invention may be made with or without traverse. To reserve a
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`right to petition, the election must be made with traverse. If the reply does not distinctly
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`

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`Application/Control Number: 15/991,992
`Art Unit: 1639
`
`Page 4
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`and specifically point out supposed errors in the restriction requirement, the election
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`shall be treated as an election without traverse. Traversal must be presented at the time
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`of election in order to be considered timely. Failure to timely traverse the requirement
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`will result in the loss of right to petition under 37 CFR 1.144. If claims are added after
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`the election, applicant must indicate which of these claims are readable upon the
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`elected invention.
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`Should applicant traverse on the ground that the inventions are not patentably
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`distinct, applicant should submit evidence or identify such evidence now of record
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`showing the inventions to be obvious variants or clearly admit on the record that this is
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`the case. In either instance, if the examiner finds one of the inventions unpatentable
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`over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C.
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`103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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`4.
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`The examiner has required restriction between product or apparatus claims and
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`process claims. Where applicant elects claims directed to the product/apparatus, and all
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`product/apparatus claims are subsequently found allowable, withdrawn process claims
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`that include all the limitations of the allowable product/apparatus claims should be
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`considered for rejoinder. All claims directed to a nonelected process invention must
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`include all the limitations of an allowable product/apparatus claim for that process
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`invention to be rejoined.
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`In the event of rejoinder, the requirement for restriction between the
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`product/apparatus claims and the rejoined process claims will be withdrawn, and the
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`rejoined process claims will be fully examined for patentability in accordance with 37
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`CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for
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`

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`Application/Control Number: 15/991,992
`Art Unit: 1639
`
`Page 5
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`patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all
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`claims to the elected product/apparatus are found allowable, an otherwise proper
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`restriction requirement between product/apparatus claims and process claims may be
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`maintained. Withdrawn process claims that are not commensurate in scope with an
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`allowable product/apparatus claim will not be rejoined. See MPEP § 821.04.
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`Additionally, in order for rejoinder to occur, applicant is advised that the process claims
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`should be amended during prosecution to require the limitations of the
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`product/apparatus claims. Failure to do so may result in no rejoinder. Further, note
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`that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply
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`where the restriction requirement is withdrawn by the examiner before the patent
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`issues. See MPEP § 804.01.
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`5.
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`Applicant is reminded that upon the cancellation of claims to a non-elected
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`invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one
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`or more of the currently named inventors is no longer an inventor of at least one claim
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`remaining in the application. A request to correct inventorship under 37 CFR 1.48(a)
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`must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that
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`identifies each inventor by his or her legal name and by the processing fee required
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`under 37 CFR 1.17(i).
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`6.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to KAIJIANG ZHANG whose telephone number is
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`(571)272-5207. The examiner can normally be reached on Monday - Friday, 8:30 am -
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`5 pm.
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`

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`Application/Control Number: 15/991,992
`Art Unit: 1639
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`Page 6
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Heather Calamita can be reached on 571-272—2876. The fax phone number
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`for the organization where this application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see https://ppair-
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`my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private
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`
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`to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-
`
`272-1000.
`
`/KAIJIANG ZHANG/
`
`Primary Examiner, Art Unit 1639
`
`