SerialNe.:
`l2;/'72tl,482
`Attorney Decltet: 2895 l .5423 Cl
`
`REMAR
`
`Claim l,
`
`as- amendedt remains herein. The amendments to claim l are suppeitetl
`
`threughcut applicant’s original riiselcsure, including. the original claims and specii‘icaticn. See,
`
`fer example, applicant’s speciiicatlcn at page l, lines l5*l7, and the pages noted in point 5,
`
`helew.
`
`Auplicant’s undersigned attorneys appreciate the telephone conversation with Examiner
`
`Sisscn en Nevemher 25, 2014 cementing the acceptability cf the prunesed drawing corrections,
`
`and the subsequent telephone interview on Decemher :33, 20%. During that interview a prepesed
`
`amended claim, similar to amended claim l et‘tlie instant Amendment, was discussed, including
`
`the suppcrt therefore in applicant‘s disclosure. The Examiner also explained that the substance of
`
`the tiit‘tice Actien is haseti upen the March Zillél lJSlYlD guidelines. The Examiner indicated.
`
`that the March 2M4 USPTQ guidelines tended tc suggest that the claim Should be limited t0 a
`
`method Starting with a group cl” nuclectirle chains er nucleic acids that themselvea have knewn
`
`utility, which are then reacted in same unique way to produce a product which has specified
`
`utility. Applicant’s attorneys; peinted cut that applicantls claimed inethecl first modifies a nucleic
`
`acid and then reacts the tnedit‘ied nucleic acid (which is net a naturally occurring material), in
`
`produce a pretluct which has disclosed utility.
`
`lrlcwever, no agreement en allewahility of a claim
`
`wan reached during that interview.
`
`
`l2;/'72tl,482
`Attorney Decltet: 2895 l .5423 Cl
`
`REMAR
`
`Claim l,
`
`as- amendedt remains herein. The amendments to claim l are suppeitetl
`
`threughcut applicant’s original riiselcsure, including. the original claims and specii‘icaticn. See,
`
`fer example, applicant’s speciiicatlcn at page l, lines l5*l7, and the pages noted in point 5,
`
`helew.
`
`Auplicant’s undersigned attorneys appreciate the telephone conversation with Examiner
`
`Sisscn en Nevemher 25, 2014 cementing the acceptability cf the prunesed drawing corrections,
`
`and the subsequent telephone interview on Decemher :33, 20%. During that interview a prepesed
`
`amended claim, similar to amended claim l et‘tlie instant Amendment, was discussed, including
`
`the suppcrt therefore in applicant‘s disclosure. The Examiner also explained that the substance of
`
`the tiit‘tice Actien is haseti upen the March Zillél lJSlYlD guidelines. The Examiner indicated.
`
`that the March 2M4 USPTQ guidelines tended tc suggest that the claim Should be limited t0 a
`
`method Starting with a group cl” nuclectirle chains er nucleic acids that themselvea have knewn
`
`utility, which are then reacted in same unique way to produce a product which has specified
`
`utility. Applicant’s attorneys; peinted cut that applicantls claimed inethecl first modifies a nucleic
`
`acid and then reacts the tnedit‘ied nucleic acid (which is net a naturally occurring material), in
`
`produce a pretluct which has disclosed utility.
`
`lrlcwever, no agreement en allewahility of a claim
`
`wan reached during that interview.
`
`
`
`Serial Ne; 12/720,482
`Attorney Becket: 2895 l D5423 Cl
`
`1.
`
`in the Replacement Sheets filed herewith? Figs,
`
`l»3 and 5 are new efpreper size,
`
`unilbrm density and well defined, and the sheets of Figs, 4 and 63% are more properly labeled.
`
`Ne new matter is added in any el’tlie Replaeemenl‘ Sheets.
`
`2
`
`Claim l was rejected under 35 USC €91.12, seeend paragraph Claim l is amended
`
`fer better clarity,
`
`thereby meeting the rejection, Reeensideralien and withdrawal of this
`
`rejection are reepectfully requested
`
`3.
`
`4.
`
`Claim 1 was rejected under 35 USC §lfll fer alleged lack of utility; and,
`
`Claim l was rejected under 35 U863. §l l2, first paragraph fer allegedly failing to
`
`diseleses enabling utiliiy
`
`Applicant was urged tie consider amending the claims le nucleic acids that de have utility
`
`under-35 USC § lOl and which are adequately suppeited by the eriginal disclesure, Claim l is
`
`amended tl’ireuglieui by replacing “uueleetide chain” with “iiueleie field,” and specifying that Elie
`
`targel nucleic acid is “Selected from the greup eeusistieg 0f 21 DNA“ RNA and eligeuucleetidea”
`
`The claimed meilied ‘l’er modifying a nucleic acid has utility? because a nucleic acid, can
`
`be directly modified te label 01‘ conjugate the nucleic acid and, the nucleic acid is completely
`
`conserved without. being decempcsed and Wiiheut incerpemtieii (if any uimeceesaify nucleotide
`
`elieiin The pi‘eeluet of the claimed methed is a medil‘led nuclei»: acid which is useful as a
`
`detection probe er a target in gene analysie. See appiieeutls specification, page 18, lines 6137‘
`
`Recensidei'etien and withdrawal ei‘these reieclicns are respectfully requested.
`
`'“5
`
`
`
`Seriai No; 12/720,432
`Attorney Becket: 289515423 C1
`
`5, Claim 1 was rejected under 35 USC £1112, first paragraph, as aiiegedty faiiirig to
`
`eompiy‘ with the written description. requirement. Claim 1 is amended t0 recite “type 11,”
`
`3~methyiadetiirie DNA giyeesyiase type 11 is supported in appiieaittfis diseiesttre, 'i‘abie 1, page
`
`15;, page 21, title 11; page 27, time 21; page 28, times it?» and 21; page '35, times 916; page 36,
`
`times 15~17g page 40, times 18-49; and page 42, lines 1941, as admitted it} the Office Action,
`
`paragraph 24. Reeehsideratiea and. withdra wai Of this rej eetion are respectfttiiy requested.
`
`{1. Claim 1 was rejeeted under 35 USC {3:101 as allegedly not directed te patent etigihie
`
`subject matter.
`
`See, Office Aetiett, paragraphs 38 and 57,
`
`While the rejectieh as discussed throughout paragraphs 37-67 at the Office Aetien refers
`
`not oniy to 35 USC § 1131, but 21130 MPEP 9114.01 and 2111 et seq, the “Basis of Evaiuavtieh”
`
`stated in paragraphs 44—56 of the 01.11% Aetien is, in faet iargeiy based upon the 13711:} hiiareh
`
`2014 “Guidance fer Detertrtinieg Subject Matter Eligibiiity .
`
`.
`
`..” See again, Office Action,
`
`paragraph 44. Hewever, en Eileeemher 16, 21114, the 1’10 pttbiished and 11121116: effective as of
`
`that date “2014 interim (ihtidaiiee or; Feterit Subject Matter Ehgihiiity,” 7‘} Fed. Reg, Ne. 241,
`
`pages 74518~33 (Dec. 16, 2014’). Net ehiy was that interim Eiigibiiityfiuidance effeetive aset
`
`
`
`evaiuatioh ahaiysis stated in paragraphs 44-56 ef the Office Aetiert
`
`is based upon new--
`
`superseded guidance,
`
`the rejeetiert discussed therein must he eensidered te he. meet, and
`
`eppiieant respectfuhy requests that the rejection, as stated in that {fifties-r Aetien, he withdrawal.
`
`5
`
`2
`
`
`
`Seriali‘io.: 12:”?20ASZ
`Attorney Docket: 289515423 Cl
`
`Under the December 16, 20M interim Eligibility Guidance, appliesntk claim is (l) to a
`
`process? and is not (2) directed to a law of nature, a natural phenomenom or an abstract idea.
`
`Therefore applicant’s claim qualifies as eligible suhjeet matter under 35 USC § till. See, Steps
`
`1 and 2A in the Subject Matter Eligibility Test outlined at page 74621 of the interim Eligibility
`
`Guidance.
`
`Further,
`
`the interim Eligibility Guidance expressly states that a “process that recites
`
`meaningful
`
`limitations along with a judieial exception may sufficiently limit
`
`its practical
`
`application so that a fall eligibility analysis is net. needed,” id. at 7462.5, so that “Streamlined
`
`Eligibility Analysis” may he used This is further emphasized, id. at ”E4623, by the statement that
`
`“when the natnre~hased prodnet is produced by combining multiple components, the markedly
`
`different eltaraeteristies analysis should he applied to the resultant natui‘enhased combination,
`
`rather than it’s component parts.” And, “a process claim is not subject to the markedly different
`
`analysis fer naturevhased products used in the process.” id.
`
`in applicant’s claim, “degrading the added nucleetide sequence by reacting a 3-
`
`methyladenine DNA glyecsylase type ll with the hypexanthine,” {the degrading step) uses
`
`nucleic acid and 3—niethylailenine DNA glyeosylase type ll, which are alleged in the Oilee
`
`Action to he judicial exceptions. But, the degrading step imposes meaningful limits on the
`
`claimed invention, and other persons are not foreclosed tlrern using those starting materials.
`
`because the degrading step is a new and unconventional step and others can use the starting
`
`materials in ermventional steps. For example, others can form an aldehyde group at the 3k
`
`terminal at a nucleic acid by chemical synthesis.
`
`
`
`Seriale 12/?28,432
`Attorney Docket; 28%}.5423 C1
`
`Fer ail 0f the foregoing reasons? applicant’s claimed Subject matter is significantly
`
`different fmm the judieizfl exceptiensg and is patent eligible. Aecerdingly, reconsideration and
`
`withdrewaji 0f the § 101 rejection are respectfuily requeetedu
`
`With regard to paragraph 56 ofihe Office Aetien, CaetamwAnelies US. 1733mm 6&7438‘3 8
`
`m to diselese er suggest fermaiien 0f en aidehyde greup by reacting hypmxanthine and 3-
`
`methyE-adenine DNA giyeesylase type H. The ‘8 i 8 patent 311m digelese {he Steps, eiemems
`
`and results- ef applicant’s eiaimed invention. Indeed? there is me rej eetien based on prim 8.171 and
`
`35 USC §§ 102 or 103 staied in the Qffiee Aetien,
`
`-30"
`
`
`
`Serial Ne; 121720, 482
`Attemey Docket: 28951. 5243 C1
`
`For 31}. the feregeing reasons, claim 1 is new fully in condition for allowaneea which is
`
`respectfiiiiy requested. The PTO is hereby authorized te charge or credit any neeessary fees :0
`
`Depesit Aeeeumt No. 19—4293. Should the Examiner deem that any further amendments weeid
`
`be desira‘bie in placing this appiieatiee in even better eenditien fer igsue? he is invited to
`
`teiephone applicant’s undereigned representative at. the number listed belew.
`
`Respectfully submitted,
`
`SI‘EPTQE 52 JOHNSON LL?
`
`Date:
`
`January 5, 2014
`
`Reg:No. 239177
`
`Li Gee
`
`Reg. No. 67,33”?
`
`STEPTOE 3c .E'QE-INSON LL?
`
`1336 Connecticut Ave.g NW.
`Waehingten, 13.43. 20636
`Tel:
`(1202) 4223000
`Faesimiie: (202) 4293902
`
`Attorney Becket: 728.951.5423 C1
`
`"11.
`
`
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