MYR 1035
`Myriad Genetics, Inc. et al. (Petitioners) v. The Johns Hopkins University (Patent Owner)
`IPR For USPN 7,824,889
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`Page 1 of 18
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`IN THE CLAIMS
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`Please amendthe following claims as indicated by the status identifier. Patent claims
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`under reexamination but not amendedare indicated as “original.” Patent claims not subject to
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`reexamination are not shown.
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`1. (Amended) A method for determiningthe ratio of a selected genetic sequence in a
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`population of genetic sequences, comprisingthe stepsof:
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`diluting isolated nucleic acid template molecules[in] isolated from a biological sample to
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`form a set comprising a plurality of assay samples;
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`amplifying the template molecules within the assay samples to form a population of
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`amplified molecules in the assay samplesofthe set;
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`analyzing the amplified molecules in the assay samples of the set to determineafirst
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`numberof assay samples which contain the selected genetic sequence and a second numberof
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`assay samples which contain a reference genetic sequence;
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`comparing the first number to the second numberto ascertain a ratio whichreflects the
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`composition of the biological sample.
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`2. (Original) The method of claim 1 wherein the step of diluting is performed until at
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`least one-tenth of the assay samples in the set comprise a number (N) of molecules such that 1/N
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`is larger than the ratio of selected genetic sequencesto total genetic sequences required for the
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`step of analyzing to determine the presenceof the selected genetic sequence.
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`3. (Amended) The method of claim 1 wherein the step of diluting is performed until
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`between 0.1 and 0.9 of the assay samples yield an amplification product of at least one of the
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`selected and reference genetic sequences when subjected to a polymerase chain reaction.
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`4. (Original) The method of claim 1 wherein the step of diluting is performed until all of
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`the assay samples yield an amplification product when subjected to a polymerase chain reaction
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`and each assay sample contains less than 10 nucleic acid template molecules containing the
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`reference genetic sequence.
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`5. (Original) The method of claim 1 wherein the step of diluting is performed until all of
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`the assay samples yield an amplification product when subjected to a polymerase chain reaction
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`and each assay sample contains less than 100 nucleic acid template molecules containing the
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`reference genetic sequence.
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`6. (Original) The method of claim 1 wherein the biological sample is cell-free.
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`7. (Original) The method of claim 1 wherein the numberof assay samples within the setis
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`greater than 10.
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`8. (Original) The method of claim 1 wherein the numberof assay samples within the setis
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`greater than 50.
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`9, (Original) The method of claim 1 wherein the numberof assay samples within the set is
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`greater than 100.
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`10. (Original) The method of claim 1 wherein the numberof assay samples within theset
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`is greater than 500.
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`11. (Original) The method of claim 1 wherein the numberof assay samples within theset
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`is greater than 1000.
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`12. (Original) The methodof claim 1 wherein the step of amplifying and the step of
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`analyzing are performed on assay samplesin the samereceptacle.
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`13. (Not subject to reexamination)
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`14. (Original) The method of claim 1 wherein the step of analyzing employsgel
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`electrophoresis.
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`15. (Original) The methodof claim 1 wherein the step of analyzing employs hybridization
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`to at least one nucleic acid probe.
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`16. (Original) The method of claim 1 wherein the step of analyzing employs
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`hybridization to at least two nucleic acid probe.
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`17-18.
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`(Not subject to reexamination)
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`19. (Original) The methodof claim 1 wherein the step of amplifying employsa single pair
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`of primers.
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`20. (Original) The method of claim 1 wherein the step of amplifying employs a
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`polymerase whichis activated only after heating.
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`21. (Original) The method of claim 1 wherein the step of amplifying employsat least 40
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`cycles of heating and cooling.
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`22. (Original) The method of claim 1 wherein the step of amplifying employsat least 50
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`cycles of heating and cooling.
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`23. (Original) The method of claim 1 wherein the step of amplifying employsat least 60
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`cycles of heating and cooling.
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`24. (Original) The method of claim 1 wherein the biological sample is selected from the
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`group consisting of stool, blood, and lymph nodes.
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`25. (Original) The method of claim 1 wherein the biological sample is blood or bone
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`marrow of a leukemia or lymphomapatient who hasreceived anti-cancertherapy.
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`26. (Original) The method of claim 1 wherein the selected genetic sequence is a
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`translocated allele.
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`27. (Original) The method of claim 1 wherein the selected genetic sequenceis a wild-
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`type allele.
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`28. (Original) The method of claim 1 wherein the selected genetic sequence is within an
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`amplicon which is amplified during neoplastic development.
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`29. (Original) The method of claim 1 wherein the selected genetic sequenceis a rare exon
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`sequence.
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`30. (Original) The method of claim 1 wherein the nucleic acid template molecules
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`comprise cDNA of RNAtranscripts and the selected genetic sequenceis present on a cDNA of a
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`first transcript and the reference genetic sequence is present on a cDNA ofa secondtranscript.
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`31. (Original) The method of claim 1 wherein the selected genetic sequence comprises a
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`first mutation and the reference genetic sequence comprises a second mutation.
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`32. (Original) The method of claim 1 wherein the selected genetic sequence and the
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`reference genetic sequence are on distinct chromosomes.
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`33-37. (Not subject to reexamination)
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`38. (Twice amended) A method for determiningthe ratio of a selected genetic sequence in
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`a population of genetic sequences, comprisingthestepsof:
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`distributing cell-free nucleic acid template molecules from a biological sample to form a
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`set comprising a plurality of assay samples;
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`amplifying the nucleic acid template molecules [within a set comprising a plurality of assay
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`samples] to form a population of amplified molecules in [each of the] individual assay samples of
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`the set;
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`analyzing the amplified molecules in the assay samples of the set to determineafirst
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`5
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`numberof assay samples which contain the selected genetic sequence and a second numberof
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`assay samples which contain a reference genetic sequence, wherein at least one-fiftieth of the
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`assay samples in the set comprise a number (N) of molecules such that 1/N is larger than the ratio
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`of selected genetic sequencesto total genetic sequences required to determine the presence of the
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`selected genetic sequence;
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`comparing the first number to the second numberto ascertain a ratio whichreflects the
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`composition of the biological sample.
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`39. (Original) The method of claim 38 wherein the number of assay samples within the
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`set is greater than 10.
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`40. (Original) The method of claim 38 wherein the number of assay samples within the
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`set is greater than 50.
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`41. (Original) The method of claim 38 wherein the number of assay samples within the
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`set is greater than 100.
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`42. (Original) The method of claim 38 wherein the number of assay samples within the
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`set is greater than 500.
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`43. (Original) The method of claim 38 wherein the numberof assay samples within the
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`set is greater than 1000.
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`44. (Original) The methodof claim 38 wherein the step of amplifying and the step of
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`analyzing are performed on assay samplesin the samereceptacle.
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`45.
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`(Not subject to reexamination)
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`46. (Original) The method of claim 38 wherein the step of analyzing employs gel
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`electrophoresis.
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`47. (Original) The methodof claim 38 wherein the step of analyzing employs
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`hybridization to at least one nucleic acid probe.
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`48. (Amended) The methodof claim 38 wherein the step of analyzing employs
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`hybridization to at least two nucleic acid [probe] probes.
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`49-50.
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`(Not subject to reexamination)
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`51. (Original) The method of claim 38 wherein the step of amplifying employsa single
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`pair of primers.
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`52. (Original) The methodof claim 38 wherein the step of amplifying employs a
`
`polymerase whichis activated only after heating.
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`53. (Original) The methodof claim 38 wherein the step of amplifying employsat least 40
`
`cycles of heating and cooling.
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`54. (Original) The method of claim 38 wherein the step of amplifying employsat least 50
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`cycles of heating and cooling.
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`55. (Original) The method of claim 38 wherein the step of amplifying employsat least 60
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`cycles of heating and cooling.
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`56. (Original) The method of claim 38 wherein the template molecules are obtained from
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`a body sample selected from the group consisting of stool, blood, and lymph nodes.
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`57. (Original) The method of claim 38 wherein the template molecules are obtained from
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`a body sample of a leukemia or lymphomapatient whohas received anti-cancer therapy, said
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`body sample being selected from the group consisting of blood and bone marrow.
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`58. (Original) The method of claim 38 wherein the selected genetic sequenceis a
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`translocatedallele.
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`59. (Original) The method of claim 38 wherein the selected genetic sequenceis a wild-
`
`type allele.
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`60. (Original) The methodof claim 38 wherein the selected genetic sequence is within an
`
`amplicon which is amplified during neoplastic development.
`
`61. (Original) The method of claim 38 wherein the selected genetic sequenceis a rare
`
`exon sequence.
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`62. (Original) The method of claim 38 wherein the nucleic acid template molecules
`
`comprise cDNA of RNAtranscripts and the selected genetic sequenceis present on a cDNA of a
`
`first transcript and the reference genetic sequenceis present on a cDNAofa secondtranscript.
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`63. (Original) The method of claim 38 wherein the selected genetic sequence comprises a
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`first mutation and the reference genetic sequence comprises a second mutation.
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`64. (Original) The method of claim 38 wherein the selected genetic sequence and the
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`reference genetic sequence are on distinct chromosomes.
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`Status of claims
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`Remarks
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`Claims 1-12, 14-16, 19-32, 38-44, 46-48, and 51-64 are pending and subject to re-
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`examination. Claims 1, 3, 38, and 48 are amended.
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`Claims 13, 17, 18, 33-37, 45, 49, and 50 are not subject to re-examination.
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`Amendments do not expand the scope of the patent claims
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`The amendedclaims do not enlarge the scope of the patent claims because they each
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`includeall limitations of an issued patent claim.
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`Clams 1| and 38 are amended to clarify the nucleic acid template molecules previously
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`recited. Claim 38 has been amendedto include an additionalinitial step. Claim 3 has been amended
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`to add a clarifying recitation regarding the amplification products produced. Claim 48 is amended to
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`correct a grammatical error. No claim recitations have been removed, obviated, or vitiated.
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`Therefore all claims are narrower than at least one patent claim.
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`Support for amendments
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`The amendmentto claim 1 to recite isolated nucleic acid template molecules is supported
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`at col. 6, lines 45-49. The amendmentto claim 3 is supportedat col. 3, lines 27-32, at col. 4, lines
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`12-32, and col. 6, lines 3-8. The amendmentto claim 38 to recite distribution ofcell-free nucleic
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`acid template molecules is supported at col. 4, lines 12-32 and col. 6, lines 45-49.
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`All amendments are supported fully by the specification and do not add new matter
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`Wethank the re-examination examiners for agreeing to the interview scheduled for July
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`Interview
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`10, 2014.
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`1. Novelty
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`a.
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`Li (Nature 225:414-417, 1988)
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`Claims 1-3, 7-9, 15, 16, 19, 21, 22, 27, 32, 38-41, 47, 48, 51, 53, 54, 59 and 64 stand
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`rejected under §102(b) as anticipated by Li. Claims 1 and 38 are the only independent claims of the
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`rejected claim set.
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`The Patent and Trademark Office cites Li’s experiment with lymphocytes described at
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`pages 414-415 as anticipating claim 1. (Final office action at page 7.) Li micromanipulated an
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`artificial mixture of tissue culture cells from twoindividuals to isolate individual cells. The
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`individual cells were separately lysed, their nucleic acids templates amplified and analyzed. Li does
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`not teach dilution of isolated nucleic acid template molecules that are isolated from a biological
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`sample in order to form a set comprising a plurality of assay samples, as recited in claim 1, step 1, as
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`amended.
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`Moreover, Li does not teach step 4 of claim 1. Li does not teach any comparison ofthe
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`numberof assay samples of a selected genetic sequence to a reference genetic sequence to ascertain a
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`ratio which reflects the composition of the biological sample. With the benefit of hindsight
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`knowledge gained from the present invention, the Patent and Trademark Office may have produced
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`such a comparisonorratio, but Li did not teach it. Li was merely showing that: DNA contamination
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`wasinsignificant, and no sample hybridized with both probes(indicating that a single cell only was
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`introduced into each tube, and that DNA from lysed cells present in the co-cultivation mixture did
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`not adhereto individual cells.) Page 414,col. 2, lines 21-26.
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`The Patent and Trademark Office similarly asserts that Li’s experiment with single human
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`sperm anticipates claim 1. Individual sperm were micromanipulated, their nucleic acids released,
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`and amplified. For the same reasons as with the lymphocyte experiment, this teaching of Li does not
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`discloseall limitations of claim 1 as amended. Li does not teach diluting isolated nucleic acid
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`template molecules isolated from a biological sample to form a plurality of assay samples, as recited
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`in claim 1, step 1.
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`Li also does not anticipate independent claim 38 because Li does not teach distributing
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`10
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`cell-free nucleic acid template molecules to form a set comprising a plurality of assay samples, as
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`recited in step 1. Li’s multiple assays are formed by distribution of whole cells, rather than cell-free
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`nucleic acid template molecules. Li therefore does not disclose distributing cell-free nucleic acid
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`template molecules to form a set comprising a plurality of assay samples.
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`For these reasons, none of independent claims 1 and 38 or their dependent claims 2-3, 7-9,
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`15, 16, 19, 21, 22, 27, 32, 39-41, 47, 48, 51, 53, 54, 59 and 64 are anticipated by Li.
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`Please withdraw this rejection.
`
`b.
`
`Zhang (Proc. Natl. Academy Sciences USA 89:5847-51, 1992)
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`Claims 1, 2, 7, 14, 19, 27, 32, 38, 39, 46, 51, 59 and 64 stand rejected under §102(b) as
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`anticipated by Zhang. Zhang,like Li, separated human sperm andthen lysed single, isolated sperm
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`to yield nucleic acid molecules. Thus, as for Li, Zhang fails to teach step 1 of claim 1 (diluting
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`isolated nucleic acid template molecules isolated from a biological sample) as amended. Similarly,
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`as for Li, Zhang fails to teach step | of claim 38 which requires distribution of cell-free nucleic acid
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`template molecules from a biological sample to form a set comprising a plurality of assay samples.
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`None of dependentclaims 2, 7, 14, 19, 27, 32, 39, 46, 51, 59 and 64 are anticipated by
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`Zhangfor at least the same reasonsas for independent claims 1 and 38.
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`Please withdraw this rejection.
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`2. Non-obviousness
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`a.
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`Li or Zhangin view of Jeffreys (Nucleic Acid Research 16:10953-71, 1988)
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`Claims 4-6 stand rejected under §103(a) as obvious over either Li or Zhang and further in
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`view of Jeffreys. All three of the rejected claims are dependent on claim 1.
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`Claims 4 and5 recite dilution until all assay samples yield an amplification product, and
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`that each assay sample contains less than 10 (claim 4) or less than 100 (claim 5) nucleic acid
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`template molecules containing the reference sequence. Claim 6 recites that the biological sample is
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`11
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`cell-free.
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`Li and Zhang are both cited as teaching micromanipulation of single cells into separate
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`assay samples. Both fail to teach dilution of isolated nucleic acid template molecules as recited in
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`step | of claim 1.
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`Jeffreys is cited as teaching dilution of DNA fromacell-free sample.
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`To establish a proper prima facie case of obviousness, the following criteria must be
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`established:
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`(1) the prior art reference, or references when combined, mustdisclose or suggest all the
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`claim limitations (See In re Vaeck, 947 F.2d 488 (Fed. Cir. 1991)); (2) the Patent Office must provide
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`an apparent reason to combine the known elements in the claims (See KSR International Co.v.
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`Teleflex Inc., 550 U.S. 398 (2007)); and (3) there must be a reasonable expectation of success in
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`combining the teachings of the reference(s) (See id.) However, it is impermissible to use the
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`claimed invention as an instruction manual or “template” to piece together the teachings of the prior
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`art so that the claimed invention is rendered obvious. /n re Fritch, 972 F.2d 1260, 1266 (Fed. Cir.
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`1992).
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`Contrary to the assertion of the Patent and Trademark Office, it would have not have been
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`obvious to combine Jeffreys with either Li or Zhang to meet the limitations of any of claims 4-6.
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`The combination has been made improperly using hindsight knowledge obtained from the present
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`invention. The proposed combination would have destroyed the intended purpose of each of Li and
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`Zhang. Zhang and Li both teach micromanipulation ofisolated, single cells or sperm to form
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`individual assay samples. This micromanipulation method serves to ensure that all chromosomes
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`within a cell or sperm remain together throughout the assay in a single assay sample. For example,
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`Zhang teaches typing individual sperm cells for 12 loci (Table 2) located on multiple chromosomes.
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`Li focuses on the benefits of a single cell analysis to achieve accurate measurements of genetic
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`distances of less than 1 cM,(page 416, col. 2, lines 7-11) to genetically map species that cannot be
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`bred or have long generation times (page 417, sentence spanning col. 1 and 2). Similarly, Li teaches
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`the benefit of single-cell analysis for studying cell-to-cell variations in development. (Page 417, col.
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`2, lines 12-15). The focus on the benefits of single-cell analysis would have led one of ordinary skill
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`in the art away from combining Li or Zhang’s teachings with Jeffreys’ technique using a cell-free
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`sample. Jeffreys’ technique would have obviated the advantages that Li and Zhang taught for their
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`12
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`single-cell methods by separating the chromosomesofa single sperm orcell and mixing them with
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`the chromosomesof other sperm orcells.
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`Zhang explicitly articulates concerns associated with using a cell-free sample. Page 5850,
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`col. 2, lines 60-70. Zhang expresses concern over samplingerrors, particularly in the context of
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`small, cell-free, forensic or ancient DNA samples.
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`Thus one of ordinary skill in the art would not have intentionally destroyed the primary
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`references’ intentional functional “linkage” of chromosomes(i.e., keeping a single cell’s set of
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`chromosomestogether in a single assay sample) by diluting cell-free nucleic acid templates as the
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`rejection proposes. This proposed modification would destroy the information that Li and Zhang
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`were trying to collect. January 27, 2014 declaration of Jay Shendure, MD, PhD, (“Shendure
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`Declaration’) at 412.
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`Jeffreys also does not teach the specific limitation of claims 4 and 5 in which each sample
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`yields an amplification product. Jeffreys teaches thatonly 46% of PCR reactions were successful.
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`Although the Patent and Trademark Office asserts that it would have been obvious to one of ordinary
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`skill in the art to double ortriple the amount of DNAto achievethis recitation, this is not supported
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`by the facts. Although the Patent and Trademark Office’s asserted motivation was to save time and
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`reagents, doubling or tripling the amount of DNA would not be possible in the case of rare forensic
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`samples (part of the Patent and Trademark Office’s asserted motivation). Moreover, doubling and
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`tripling would contradict the very purpose of primary references Li and Zhang, who scrupulously
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`worked to have just one cell’s DNA in each sample. Shendure Declaration at 413. Thus one of
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`ordinary skill in the art would not have been motivated to combine Jeffreys with Li or Zhangorto
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`increase the amount of DNA template in each sample.
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`Please withdraw this rejection
`
`b.
`
`Li or Zhang in view of Kalinina (Nucleic Acid Research 25:1999-2004, 1997)
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`Claims 12 and 44 stand rejected under §103(a) as obviousovereither Li or Zhang and
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`further in view of Kalinina. Claims 12 and 44 are dependent on claims 1| and 38, respectively.
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`Claims 12 and 44 further recite amplification and analysis in the same receptacle.
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`13
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`Li and Zhang teach analysis of single cells, not dilution of isolated template molecules
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`from a biological sample, or distribution of cell-free nucleic acid template molecules from a
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`biological sample to form a plurality of assay samples, as recited in claims | and 38, respectively.
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`Kalininais cited to teach amplifying and analyzing in the same receptacle single molecules of
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`template DNA
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`It is improper for the Patent and Trademark Office to use the claims as a framework and to
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`employ individual naked parts of separate prior art references as a mosaic to recreate a facsimile of
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`the claimed invention. See W.L. Gore & Assoc. v. Garlock, 721 F.2d 1550, 1552-53 (Fed. Cir. 1983).
`
`The combination of Kalinina with the methods of Li and Zhang doesnot in any event
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`remedy the deficiencies of Li and Zhang. Kalinina does not suggest comparing two different
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`numbers of two different template molecules by determining a numberof assay samples. The Patent
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`and Trademark Office’s combination of reference teachingsis the result of selective extraction of
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`portions of the references with the benefit of hindsight, using the subject claims as a model.
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`Please withdraw this rejection.
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`Cc.
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`Li or Zhang in view of Chou (Nucleic Acids Research 20: 1717-23, 1992)
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`Claims 20 and 52 stand rejected under §103(a) as obviousovereither Li or Zhang and
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`further in view of Chou. Claims 20 and 52 depend from claims | and 38 , respectively, and further
`
`recite use of a heat-activatable polymerase. Chouis cited as teaching a heat-activatable polymerase.
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`Chou does not, however, remedy the deficiencies of Li or Zhang in teaching the elements of
`
`independent claims | and 38 from which claims 20 and 52 depend. Noneofthe three references
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`teaches the dilution and/or distribution of isolated or cell-free nucleic acid template molecules from a
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`biological sample to form a set comprising a plurality of assay samples.
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`Please withdraw this rejection.
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`Page 14 of 18
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`14
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`d.
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`Li or Zhangin view of Burg (J. Clin. Microbiol. 27:1787-92, 1989)
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`Claims 23 and 55 stand rejected under §103(a) as obviousovereither Li or Zhang and
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`further in view of Burg. Claims 23 and 55 depend from claims | and 38 respectively and further
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`recite at least 60 cycles of heating and cooling. Burgis cited as teaching at least 60 cycles of heating
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`and cooling to amplify DNA of a single cell of Toxoplasma. Burg does not, however, remedy the
`
`deficiencies of Li or Zhang in teaching the elements of independent claims 1 and 38, in particular, in
`
`step 1. None of the three references teaches the dilution and/or distribution of isolated or cell-free
`
`nucleic acid template molecules to form a set comprising a plurality of assay samples.
`
`Please withdraw this rejection.
`
`e.
`
`Li or Zhang in view of Triimper (Blood 8/:3097-4115, 1993)
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`Claims 24, 29, 30, 56, 61 and 62 stand rejected under §103(a) as obvious overeither Li or
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`Zhang and further in view of Triimper. These claims, dependent on claims | and 38, further recite a
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`biological sample whichis stool, blood, or lymph nodes (claims 24 and 56), a selected sequence
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`whichis a rare exon (claims 29 and 61), and the template molecules are cDNA molecules (claims 30
`
`and 62).
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`Trtimperis cited as teaching lysis of isolated cells from lymph nodes followed by RT-PCR
`
`to detect a p53 mutation.
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`Because Triimper taughtisolating single cells, it does not remedythe deficiency of Li and
`
`Zhang, whoalso taught isolating single cells. None of the references teach diluting isolated nucleic
`
`acid template molecules isolated from a biological sample, or distributing cell-free nucleic acid
`
`template molecules from a biological sample, as recited in independent claims 1 and 38. Thus the
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`combination of references does not render anyof claims 24, 29, 30, 56, 61 and 62 obvious due to
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`failure to teach or suggest a non-single cell, nucleic acid analysis.
`
`Please withdraw this rejection.
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`Page 15 of 18
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`15
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`f.
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`Li or Zhang in view of Pontén (Mut. Res. Genomics 382:44-55, 1997)
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`Claims 31 and 63 stand rejected under §103(a) as obviousovereither Li or Zhang and
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`further in view of Pontén. Claims 31 and 63, dependent on claims 1 and 38, respectively, further
`
`recite that the two analyzed sequences comprisea first and a second mutation. Pontén is cited as
`
`teaching single-cell PCR analysis of tumor cells and detection of two different point mutations in
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`p53, at codon 245 and at codon 266.
`
`Sinceall three cited references used a single-cell isolation
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`technique, none of them teaches or suggests the dilution of isolated nucleic acid templates from a
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`biological sample to form a plurality of samples, nor the distribution of cell free nucleic acid
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`templates from a biological sample to form a plurality of assay samples. Such single-cell methods as
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`taught by the references are antipodal to the claimed method. The claimed methods would not have
`
`been obvious.
`
`Please withdraw this rejection.
`
`g.
`
`Li or Zhang in view of Kanzler (Blood §7:3429-36, 1996)
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`Claims 10, 11, 25, 28, 42, 43, 57 and 60 stand rejected under §103(a) as being
`
`unpatentable over either Li or Zhang and further in view of Kanzler. Claims 10, 11, 42 and 43 are
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`dependent on claims | and 38 andfurther recite use of sets of assay samples of at least 500 or at least
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`1000 samples. Claims 25 and 57 are dependent on claims | and 38 and further recite blood or bone
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`marrow of a leukemia or lymphomapatient who received anti-cancer therapy as the biological
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`sample. Claims 28 and 60 are dependent on claims | and 38 and further recite a selected genetic
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`sequence which is within an amplicon amplified during neoplastic development.
`
`Kanzleris cited as teaching, like Li and Zhang,single-cell analysis. Kanzler taught
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`micromanipulation of single cells. Kanzler does not remedythe deficiencies of Li and Zhang. None
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`of the three references teach diluting isolated nucleic acid template molecules isolated from a
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`biological sample or distributing cell-free nucleic acid template molecule from a biological sample to
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`form a plurality of assay samples.
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`Please withdraw this rejection.
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`Page 16 of 18
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`Page 16 of 18
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`h.
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`Li or Zhang in view of Gravel (Blood 9/:2866-74, 1998)
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`Claims 26 and 58 stand rejected under §103(a) as being unpatentable overeither Li or
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`Zhang and further in view of Gravel. These claims depend from claims | and 38, respectively, and
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`further recite that the selected sequenceis a translocatedallele.
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`Gravel, like Li and Zhang,is cited as teaching a single-cell analysis. Thus Gravel does not
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`cure the defect of Li and Zhang in teaching the methodsof independent claims | and 38, particularly
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`the first steps of each of them.
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`Thus Gravel’s analysis of a translocated allele in combination with Li or Zhang are not
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`sufficient to render the subject matter of dependent claims 26 and 58 obvious. Noneof the
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`references, alone or in the asserted combination teaches or suggests the dilution of isolated nucleic
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`acid template molecules isolated from a biological sample or the distribution of cell-free nucleic acid
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`template molecules from a biological sample to form a plurality of assay samples.
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`Please withdraw this rejection.
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`1.
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`Li or Zhang in view of Schwab (Bioessays 20:473-479, 1998)
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`Claims 28 and 60 stand rejected under §103(a) as being unpatentable overeither Li or
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`Zhang and further in view of Schwab.
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`Claims 28 and 60 depend on claims | and 38, respectively. Additionally, they recite an
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`amplicon which is amplified during neoplastic development. Schwabis cited for teaching amplified
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`MYCNand ERBB2 as prognostic markers. However, the combinations of cited teachings would not
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`render the claimed invention obvious. Li and Zhang teach single-cell analysis. They do not teach
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`step | of either claim 1 or claim 38, as amended, because they both employa step of single-cell
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`dilution or distribution. The Schwabreference does not remedy the basic deficiency of the primary
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`references.
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`Please withdraw this rejection.
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`Page 17 of 18
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`Page 17 of 18
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`Respectfully submitted,
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`By: /Sarah A. Kagan/
`Sarah A. Kagan
`Registration No. 32,141
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`Dated: July 9, 2014
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`Banner & Witcoff, Ltd.
`Customer No. 11332
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`Page 18 of 18
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