United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Vnginia 22313-1450
FIRST NAMED INVENTOR
ATTORNEY DOCKET NO.
Elizabeth A. Wang
22852 7590 09/20/2005
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
DATE MAILED: 09/20/2005
Please find below and/or attached an Office communication concerning this application or proceeding.
PTO-90C (Rev. 10/03)
Before the Filing of an Appeal Brief
A n n 1 i fat i nn Mn
WANG ET AL.
David S. Romeo
-The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -
THE REPLY FILED 02 August 2005 FAILS TO PLACE THIS APPLICATION IN CONDITION FOR ALLOWANCE.
1. 13 The reply was filed after a final rejection, but prior to or on the same day as filing a Notice of Appeal. To avoid abandonment of
this application, applicant must timely file one of the following replies: (1) an amendment, affidavit, or other evidence, which
places the application in condition for allowance; (2) a Notice of Appeal (with appeal fee) in compliance with 37 CFR 41.31; or
(3) a Request for Continued Examination (RCE) in compliance with 37 CFR 1.114. The reply must be filed within one of the
following time periods:
a) S The period for reply expires 3_months from the mailing date of the final rejection.
b) The period for reply expires on: (1 ) the mailing date of this Advisory Action, or (2) the date set forth in the final rejection, whichever is later. In no
event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of the final rejection.
Examiner Note: If box 1 is checked, check either box (a) or (b). ONLY CHECK BOX (b) WHEN THE FIRST REPLY WAS FILED WITHIN TWO
MONTHS OF THE FINAL REJECTION. See MPEP 706.07(f).
Extensions of time may be obtained under 37 CFR 1 .136(a). The date on which the petition under 37 CFR 1 .136(a) and the appropriate extension fee have
been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. The appropriate extension fee under 37
CFR 1 .1 7(a) is calculated from: (1 ) the expiration date of the shortened statutory period for reply originally set in the final Office action; or (2) as set forth in (b)
above, if checked. Any reply received by the Office later than three months after the mailing date of the final rejection, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1 .704(b).
NOTICE OF APPEAL
2. CD The Notice of Appeal was filed on . A brief in compliance with 37 CFR 41 .37 must be filed within two months of the date
of filing the Notice of Appeal (37 CFR 41.37(a)), or any extension thereof (37 CFR 41 .37(e)), to avoid dismissal of the appeal.
Since a Notice of Appeal has been filed, any reply must be filed within the time period set forth in 37 CFR 41.37(a).
3. □ The proposed amendment(s) filed after a final rejection, but prior to the date of filing a brief, will not be entered because
(a) Q They raise new issues that would require further consideration and/or search (see NOTE below);
(b) D They raise the issue of new matter (see NOTE below);
(c) D They are not deemed to place the application in better form for appeal by materially reducing or simplifying the issues for
(d) Q They present additional claims without canceling a corresponding number of finally rejected claims.
NOTE: . (See 37 CFR 1.116 and 41.33(a)),
4. D The amendments are not in compliance with 37 CFR 1.121. See attached Notice of Non-Compliant Amendment (PTOL-324).
5. IS Applicant's reply has overcome the following rejection(s): See Continuation Sheet .
6. □ Newly proposed or amended claim(s) would be allowable if submitted in a separate, timely filed amendment canceling
the non-allowable claim(s).
7. CD For purposes of appeal, the proposed amendment(s): a) Q will not be entered, or b) [3 will be entered and an explanation of
how the new or amended claims would be rejected is provided below or appended.
The status of the claim(s) is (or will be) as follows:
Claim(s) allowed: 24.26.30,35.38 and 41 .
Ciaim(s) objected to: .
Claim(s) rejected: 33.36.39 and 42 .
Claim(s) withdrawn from consideration: .
AFFIDAVIT OR OTHER EVIDENCE
8. □ The affidavit or other evidence filed after a final action, but before or on the date of filing a Notice of Appeal will not be entered
because applicant failed to provide a showing of good and sufficient reasons why the affidavit or other evidence is necessary
and was not earlier presented. See 37 CFR 1.116(e).
9. □ The affidavit or other evidence filed after the date of filing a Notice of Appeal, but prior to the date of filing a brief, will not be
entered because the affidavit or other evidence failed to overcome all rejections under appeal and/or appellant fails to provide a
showing a good and sufficient reasons why it is necessary and was not earlier presented. See 37 CFR 41.33(d)(1).
10. □ The affidavit or other evidence is entered. An explanation of the status of the claims after entry is below or attached.
REQUEST FOR RECONSIDERATION/OTHER
1-1. 13 The request for reconsideration has been considered but does NOT place the application in condition for allowance because:
See Continuation Sheet.
12. □ Note the attached Information Disclosure Statement(s). (PTO/SB/08 or PTO-1449) Paper No(s).
13. □ Other: .
David S Romeo
Art Unit: 1647
U.S. Patent and Trademark Office
PTOL-303 (Rev. 7-05) -
Advisory Action Before the Filing of an Appeal Brief
Part of Paper No. 200509
Continuation Sheet (PTOL-303)
Continuation of 5. Applicant's reply has overcome the following rejection(s): The rejection of claims 24, 25, 29, 35, 38 under 35 U.S.C.
102(b) as being anticipated by Wozney (Science. 1988 Dec 16;242(4885): 1528-34).
Continuation of 11. does NOT place the application in condition for allowance because: Applicants argue that the hybridization
conditions are disclosed in U. S. Patent No. 5,013,649, that the identical disclosure was provided in U. S. Application No. 07/179,100,
that the standard hybridization buffer is defined in Maniatis, the relevant pages of which were provided in the response filed 09/09/2004,
and therefore the claims are entitled to the 04/08/1988 priority date. Applicant's arguments have been fully considered but they are not
persuasive. There is no disclosure of the recited hybridization conditions in the present application or in any of the earlier filed
applications. Moreover, the relevant pages of Maniatis provided in the response filed 09/09/2004 are not the pages of Maniatis referred
to in the specification(s).