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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`www.uspto.gov
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`APPLICATION NO.
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` F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`
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`CONF {MATION NO.
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`12/446,115
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`11/09/2010
`
`Norman J. Moore
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`ISA—12701
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`3529
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`63767
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`7590
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`11/08/2013
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`FOLEY H0AG,LLp(w/ISA)
`PATENT GROUP
`155 SEAPORT BLVD.
`BOSTON, MA 02210-2600
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`LAM, ANN Y
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`PAPER NUMBER
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`ART UNIT
`1641
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`NOT 7ICATION DATE
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`DELIVERY MODE
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`11/08/2013
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`ELECTRONIC
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`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
`following e—mail address(es):
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`Patent @ foleyhoag.com
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`PTOL—90A (Rev. 04/07)
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`

`

`
`
`Applicant(s)
`Application No.
` 12/446,115 MOORE, NORMAN J.
`
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`1641ANN LAM its“
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`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 1MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, 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 () MONTHS from the mailing date of this communication.
`If 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)IZI Responsive to communication(s) filed on 4/17/09.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|Z| This action is non-final.
`2a)|:I This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; 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
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims
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`5)IZI Claim(s) 1-21 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
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`6)I:I Claim(s)
`7)|:| Claim(s)
`8)|:I Claim(s)
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`is/are allowed.
`is/are rejected.
`is/are objected to.
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`
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`are subject to restriction and/or election requirement.
`El Claim s)
`* If any claims have been determined allowable, 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
`hit
`:/'I’vaIW.usnI‘.0. ovI’ atentS/init events/
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`
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`hI/index.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
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`Application Papers
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`10)I:l The specification is objected to by the Examiner.
`11)I:l The drawing(s) filed on
`is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`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)I:| 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)|:l Some * c)I:l None of the:
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`1.I:I Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
`* 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) E Notice of References Cited (PTO-892)
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`3) D Interview Summary (PTO-413)
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`Paper N°ISI/Ma" Date' —
`PTO/SB/Os
`t
`t
`St
`I
`D'
`I'
`f
`2 I] I
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`4) I:I Other:
`a emen (s) (
`Isc osure
`n orma Ion
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`Paper No(s)/Mai| Date
`U.S. Patent and Trademark Office
`PTOL—326 (Rev. 08-13)
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`Part of Paper No./Mai| Date 20131104
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`Office Action Summary
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`

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`Application/Control Number: 12/446,115
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`Page 2
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`Art Unit: 1641
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`The present application is being examined under the pre-AIA first to invent
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`provisions.
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`Election/Restrictions
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`REQUIREMENT FOR UNITY OF INVENTION
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`As provided in 37 CFR 1.475(a), a national stage application shall relate to one
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`invention only or to a group of inventions so linked as to form a single general inventive
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`concept (“requirement of unity of invention”). Where a group of inventions is claimed in
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`a national stage application, the requirement of unity of invention shall be fulfilled only
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`when there is a technical relationship among those inventions involving one or more of
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`the same or corresponding special technical features. The expression “special technical
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`features” shall mean those technical features that define a contribution which each of
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`the claimed inventions, considered as a whole, makes over the prior art.
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`The determination whether a group of inventions is so linked as to form a single
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`general inventive concept shall be made without regard to whether the inventions are
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`claimed in separate claims or as alternatives within a single claim. See 37 CFR
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`1.475(e).
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`

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`Application/Control Number: 12/446,115
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`Page 3
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`Art Unit: 1641
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`WHEN CLAIMS ARE DIRECTED TO MULTIPLE CATEGORIES OF
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`INVENTIONS
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`As provided in 37 CFR 1.475(b), a national stage application containing claims to
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`different categories of invention will be considered to have unity of invention if the
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`claims are drawn only to one of the following combinations of categories:
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`(1) A product and a process specially adapted for the manufacture of said
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`product; or
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`(2) A product and process of use of said product; or
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`(3) A product, a process specially adapted for the manufacture of the said
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`product, and a use of the said product; or
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`(4) A process and an apparatus or means specifically designed for carrying out
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`the said process; or
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`(5) A product, a process specially adapted for the manufacture of the said
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`product, and an apparatus or means specifically designed for carrying out the said
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`process.
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`Otherwise, unity of invention might not be present. See 37 CFR 1.475(c).
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`Restriction is required under 35 U.S.C. 121 and 372.
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`This application contains the following inventions or groups of inventions which
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`are not so linked as to form a single general inventive concept under PCT Rule 13.1.
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`In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to
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`elect a single invention to which the claims must be restricted.
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`Group |, claim(s) 1-15, drawn to a method of detecting a polypeptide.
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`

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`Application/Control Number: 12/446,115
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`Page 4
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`Art Unit: 1641
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`Group II, claim(s) 16-21, drawn to a device.
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`The inventions listed as Groups | and II do not relate to a single general inventive
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`concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or
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`corresponding special technical features for the following reasons:
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`The technical feature linking groups | and II appears to be that they both relate to
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`the structural device of claim 16.
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`However, such a device is disclosed by Puglisi (US 20030219783) in paragraph
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`0028, which discloses that ribosomes are attached to a solid support surface at a
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`specific attachment site, where the attachment site is one of a specific binding pair.
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`Therefore, the technical feature linking the inventions of groups | and II does not
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`constitute a special technical feature as defined by PCT Rule 13.2, as it does not
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`define a contribution over the prior art.
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`The special technical feature of Group | is considered to be a method
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`comprising contacting a support comprising a binding agent capable of binding a
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`ribosome to a sample and determining the presence of a polypeptide.
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`The special technical feature of Group II is considered to be the structural
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`elements comprising a support comprising a binding agent capable of binding a
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`ribosome.
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`Accordingly, Groups | and II are not so linked by the same or a corresponding
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`special technical feature as to form a single general inventive concept.
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`

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`Application/Control Number: 12/446,115
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`Page 5
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`Art Unit: 1641
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`The examiner has required restriction between product and process claims.
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`Where applicant elects claims directed to the product, and the product claims are
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`subsequently found allowable, withdrawn process claims that depend from or otherwise
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`require all the limitations of the allowable product claim will be considered for rejoinder.
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`fl claims directed to a nonelected process invention must require all the limitations of
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`an allowable product claim for that process invention to be rejoined.
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`In the event of rejoinder, the requirement for restriction between the product
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`claims and the rejoined process claims will be withdrawn, and the rejoined process
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`claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to
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`be allowable, the rejoined claims must meet all criteria for patentability including the
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`requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product
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`are found allowable, an otherwise proper restriction requirement between product
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`claims and process claims may be maintained. Withdrawn process claims that are not
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`commensurate in scope with an allowable product claim will not be rejoined. See MPEP
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`§ 821 .04(b). Additionally, in order to retain the right to rejoinder in accordance with the
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`above policy, applicant is advised that the process claims should be amended during
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`prosecution to require the limitations of the product claims. Failure to do so may result
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`in a loss of the right to rejoinder. Further, note that the prohibition against double
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`patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement
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`is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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`

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`Application/Control Number: 12/446,115
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`Page 6
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`Art Unit: 1641
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to ANN LAM whose telephone number is (571 )272—0822.
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`The examiner can normally be reached on Mon-Thurs. 9-7:30.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Mark Shibuya can be reached on 571-272—0806. The fax phone number for
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`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.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
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`/Ann Y. Lam/
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`Primary Examiner, Art Unit 1641
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`