DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/05/2026 has been entered.
Status of Claims
Claims 1, 3-5, 8-10, 13-14, 18, 20-22, 24, 27-28, 30 are pending, and claims 2, 6-7, 11-12, 15-17, 19, 23, 25-26, 29, 31-55 are canceled. Claims 1, 3-5, 8-10, 13-14, 18, 20-22, 24, 27-28, 30 are subject to examination.
Claim Objections
Claim 1 is objected to because of the following informalities: “and first” before “and the second…” in the last line of the claim appears to be an error. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-5, 8-10, 13-14, 18, 20-22, 24, 27-28, 30 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “radius of gyration of the DNA” in claim 1 is a relative term which renders the claim indefinite. The term “radius of gyration” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The real-world value of Radius of gyration (RG) is a relative term and is highly unpredictable. It is dependent on the DNA length, ionic strength of the salt solution, temperature, and protein-DNA interactions as taught by the following references. There is currently no consensus on how to ascertain the RG value of a given DNA under various conditions. The specification does not provide examples or teachings that can be used to measure a degree even without a precise numerical measurement. See MPEP 2173.05(b), part (I). Therefore, determination of the RG value is highly dependent on the experimental conditions, and because the claim doesn’t specify what those conditions are, then the metes and bounds of the claim are indefinite.
Furthermore, the term “radius of gyration of the DNA” is used in the claim to modify the cross-sectional dimension of the fluidic nanochannel. It is an ambiguous way of claiming the cross-sectional dimension of the fluidic nanochannel. Accordingly, applicant is advised to claim the cross-sectional dimension of the nanochannel in terms of its actual dimension.
Latulippe et al. (Page 140, right column, second ¶, lines 1-9; Radius of gyration of plasmid DNA isoforms from static light scattering. Biotechnol Bioeng. 2010 Sep 1;107(1):134-42; Hereinafter, Latulippe; Page 139, Table 1; Page 140, Figure 4);
Sim et al. (Salt dependence of the radius of gyration and flexibility of single-stranded DNA in solution probed by small-angle x-ray scattering. Phys Rev E Stat Nonlin Soft Matter Phys. 2012 Aug;86(2 Pt 1):021901; The formation of dCas9-DNA R-loop involves single stranded DNAs);
Driessen et al. (Effect of temperature on the intrinsic flexibility of DNA and its interaction with architectural proteins. Biochemistry. 2014 Oct 21;53(41):6430-8; Page 6435, right column, last¶),
Rawat et al. (Shape, flexibility and packing of proteins and nucleic acids in complexes. Phys Chem Chem Phys. 2011 May 28;13(20):9632-43; Page 9636, right column, first ¶, lines 5-6).
Claims 3-5, 8-10, 13-14, 18, 20-22, 24, 27-28, 30 are also rejected for depending from claim 1 but failing to remedy the indefiniteness therein.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Enzymatic motif labeling is already denoted as not required by reciting “not amenable to…” in claim 5, which claim 9 depends from. Further limitations on what “enzymatic motif labeling” is does not further limit the scope of claim 5. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-4, 13-14, 18, 20-22, 30 are rejected under 35 U.S.C. 103 as being unpatentable over Bulushev et al. (Single Molecule Localization and Discrimination of DNA-Protein Complexes by Controlled Translocation Through Nanocapillaries. Nano Lett. 2016 Dec 14;16(12):7882-7890; Hereinafter, Bulushev) in view of Wang et al. (Single-molecule studies of repressor-DNA interactions show long-range interactions. Proc Natl Acad Sci U S A. 2005 Jul 12;102(28):9796-801; Hereinafter, Wang), in further view of IDT (Archived product webpage from 01/25/2018 for Alt-RTM CRISPR products including fluorescently labeled tracrRNAs, see PTO-892 NPL listings), and Jinek et al. (A programmable dual-RNA-guided DNA endonuclease in adaptive bacterial immunity. Science. 2012 Aug 17;337(6096):816-21; Hereinafter, Jinek) and Latulippe (2010).
Regarding claim 1, Bulushev (2016) teaches a method for “single molecule localization and discrimination of DNA-Protein complexes by controlled translocation through nanocapillaries” (Page 7882, Title). In the demonstration of the method, Bulushev teaches:
A method of labeling a DNA, comprising:
providing a DNA comprising a first target sequence and a second target sequence, and upto 5 different target binding site sequences along a 48.5kb λDNA (See graphic abstract below),
contacting the DNA with:
a first dCas9 protein; and a first single guiding RNA (sgRNA) with no label, wherein the sgRNA comprising a sequence region equivalent to crRNA and is complementary to the first target sequence or a portion thereof, and a region equivalent to a first tracrRNA sequence but without a label,
incubating the DNA, the first dCas9 protein, and the first sgRNA, whereby the first dCas protein, the DNA, and the first sgRNA form a complex wherein the first sgRNA is hybridized to the first target sequence or the portion thereof, thereby labeling the DNA at the first target sequence with the first dCas9/sgRNA complex, without a label;
and further contacting the DNA with: a second dCas9 protein; and a second sgRNA comprising a second region equivalent to crRNA and a second equivalent tracrRNA region, without a second label, wherein the second sgRNA comprises a region that is complementary to the second target sequence or a portion thereof,
incubating the DNA with the second dCas9 protein, the second sgRNA with no label, wherein the second dCas9 protein, the DNA, and the second sgRNA form a second complex, wherein the second sgRNA’s equivalent crRNA region is hybridized to the second target sequence or the portion thereof, thereby labeling the DNA at the second target sequence without a second label to form a DNA complexed with the second dCas9/sgRNA complex;
and linearizing the complexed DNA in a fluidic nanochannel, wherein the fluidic nanochannel has a cross-sectional dimension of 43-58nm (Page 7888, left column, lines 6-7), and wherein the complexed DNA comprises the DNA, the first dCas protein, the first sgRNA without a label, the second dCas protein, and the second gRNA without a label (See graphic abstract below).
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However, Bulushev does not teach using “labeled gRNA” with different dCas9/gRNA complexes intended for “labeling a DNA”.
Wang (2005) teaches linearizing labeled and protein-bound DNA in a fluidic nanochannel when performing “single-molecule studies of GFP-LacI repressor proteins bound to bacteriophage λDNA containing a 256 tandem lac operator insertion confined in nanochannels. …” (Page 9796, Abstract, lines 1-5). Wang further teaches “To understand protein–DNA interactions at the single-molecule level, … requires that the DNA be extended in a linear manner” (Page 9796, left column, first ¶, lines 3-8; Fig. 1 and Fig. 2 show a ~42kb DNA linearized in a 120 x 150nm nanochannel, see below; Fig. 10 shows a DNA linearized in a 150 x 200nm nanochannel, see further below). GFP is a label on the protein-DNA complex.
However, neither Bulushev nor Wang teaches fluorescent labeling/tagging of tracrRNAs using separate crRNA and tracrRNA to recruit dCas9.
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IDT (2018/01/25) teaches that fluorescent dye-labeled tracrRNAs and unlabeled crRNAs have been on the market for commercial distribution since January 2018 (Product website from IDT based on wayback machine archived webpage on 01/25/2018; See PTO-892 NPL listing; Page 7, Figure 3), before the effective filing date of the current application.
However, none of Bulushev, Wang, or IDT teaches that sgRNA is equivalent to crRNA:tracrRNA.
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Jinek teaches that “Cas9 can be programmed using a single engineered RNA molecule combining tracrRNA and crRNA features” (Page 819, right column, 2nd ¶, lines 2-7; Page 820, Fig. 5A).
However, none of Bulushev, Wang, IDT, or Jinek teaches nanochannels with a “cross-sectional dimension less than twice the radius of gyration of the DNA”.
Since the recited limitation “a cross-sectional dimension less than twice the radius of gyration of the DNA” is not defined in the claims, nor in the specification, coupled with the fact that a clear lack of consensus in the art regarding modeling-based predictions dictates the necessity to measure the actual RG value via experimental methods, an estimation based on the closest art below is used for reference below to advance prosecution despite the indefiniteness in the term “radius of gyration of the DNA”.
Latulippe teaches that a linearized 16.8kb DNA has an RG value of 242±3nm (Page 139, Table 1, see below). The 48.5kb linear λDNA used by Bulushev should in theory have a larger RG value. Hence, Bulushev teaches nanocapillaries with cross-sectional dimensions between 43-58nm (Page 7888, left column, lines 6-7), which is much narrower than twice the reference RG value estimate of 2x242nm.
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It would have been obvious for persons with ordinary skill in the art (PHOSITAs) to have recognized, before the effective filing date of the instant application, that replacing the sgRNAs used by Bulushev with fluorescently labelled tracrRNA to couple with cognate crRNA to recruit dCas9 would enable optical imaging and measurement of multiple dCas9/gRNA complexes bound to linearized DNA in nanochannels with a cross-sectional dimension of less than twice the estimated RG of the DNA. By following the teachings, suggestions, and motivations provided by Bulushev, Wang, IDT, Jinek, and Latulippe, PHOSITAs would have achieved the same outcome as the claimed invention.
Regarding claim 3, Bulushev further teaches “In the case of dCas9, we performed experiments both with a single RNA guide present in the mixture as well as with several (two and three)” (Page 7884, right column, lines 10-12) indicating that dCas9 proteins and sgRNAs contacted the target DNA at the same time in the solution.
Regarding claim 4, Bulushev further teaches using catalytically inactive dCas9 with both D10A and H840A mutations (Page 7888, right column, 5th ¶, lines 1-2) and Bulushev shows that the DNA remains intact at least as long as needed to be detected in the method.
Regarding claim 13, Bulushev teaches using catalytically inactive dCa9 for the protein-DNA complexing and studies (Page 7888, right column, 5th ¶, lines 1-2) successfully detected the linearized DNA with the figure showing that it remains sufficiently intact for detection (Page 7884, left column, last line, right column first 3 lines).
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Regarding claim 14, Bulushev further teaches detecting a relative distance between the first dCas9 and the second dCas9, as well as relative distances between up to 5 different dCas9 proteins complexed simultaneously on the linearized DNA in the fluidic nanochannel (see Figure 2a above).
Regarding claim 18, Bulushev teaches catalytically inactive dCas9 with both of D10A/H840A mutations (Page 7888, right column, 5th ¶, lines 1-2). One with ordinary skill in the field would recognize that D10A and H840A mutations are in the HNH domain and/or RuvC-like domain.
Regarding claim 20-21, Bulushev teaches a non-optical imaging-based measurement method that does not require labeling for detection or localization of dCas9-gRNA-DNA complexes.
Regarding claim 22, Bulushev teaches “Five sgRNAs (single guide RNAs) were designed bearing complementarity to the 20bp 5’ adjacent PAM motif sites.” (Page 7888, right column, 6th¶, lines 3-5), comprising a complementary region between 10-40nt as claimed by the instant claim.
Regarding claim 30, IDT further teaches that the label used for tagging tracrRNA is a well known fluorophore in the art, ATTOTM550.
Claims 5 & 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Bulushev, in view of Wang, IDT, Jinek, Latulippe, and further in view of Ma et al. (Multiplexed labeling of genomic loci with dCas9 and engineered sgRNAs using CRISPRainbow. Nat Biotechnol. 2016 May;34(5):528-30; Hereinafter, Ma) and Sfeir et al. (Mammalian telomeres resemble fragile sites and require TRF1 for efficient replication. Cell. 2009 Jul 10;138(1):90-103; Hereinafter, Sfeir).
The teachings of Bulushev, Wang, IDT, Jinek, and Latulippe have been discussed above.
However, none of Bulushev, Wang, IDT, Jinek, and Latulippe teaches the DNA target characteristics.
Regarding claims 5 & 8-10, Ma teaches “a system for labeling DNA in living cells based on nuclease-dead (d) Cas9 combined with engineered single guide RNA (sgRNA) scaffolds that bind sets of fluorescent proteins. … simultaneous imaging of up to six chromosomal loci in individual live cells…” (Page 528, Abstract, lines 3-8), including “ … telomeres, … repeated sequences…” (Page 528, right column, 3rd ¶), which requires labeling techniques with no or minimal genotoxicity.
However, Ma does not teach “a region predicted to form or susceptible of forming a fragile site upon nick translation labeling”.
Sfeir teaches “…The telomeric repeats are maintained by telomerase, … the TTAGGG repeat arrays of mammalian telomeres pose a challenge to the DNA replication machinery, giving rise to replication-dependent defects that resemble … common fragile sites.” (Page 90, Abstract, lines 4-11).
Since conventional labeling strategies such as nick labeling is not available for sites demonstrating fragile site features such as high copies of tandem repeats, PHOSITAs would not choose to label those fragile sites for fear of failing the experiment, thereby having limited targeting choices. A person with ordinary skill in the art would recognize, based on Sfeir’s teaching, that telomeres contain high copies of tandem repeats and are not amenable to enzymatic nick labeling because the dependency on DNA replication machinery to fill the nick sites with labeled nucleotides.
It would have been obvious to PHOSITAs to modify the in-cell strategies of Ma in view of the teachings about the fragile DNA sites taught by Sfeir and apply the dCas9/sgRNA complex-based labeling strategy taught by Ma on targets with predicted fragile sites features along a linearized DNA. It would also be obvious, based on the teachings of Bulushev, Wang, IDT, Jinek, and Latulippe on labeling and optical mapping of DNAs linearized in nanochannels within the desired cross-sectional dimension, to expand the choice of DNA sites and genomic loci for versatile labeling and optimized optical mapping. The ability to label fragile sites, similar to telomeres or regions with high copy tandem repeats, demonstrated by Ma, would have motivated broader applications of the teachings of Bulushev, Wang, IDT, Jinek, and Latulippe to target DNA sites previously thought to be too fragile for linearized mapping in nanochannels with small cross-sectional dimensions. The obviousness based on the combined teachings, suggestions, and motivations by Bulushev, Wang, IDT, Jinek, Latulippe, Ma, and Sfeir would have led PHOSITAs to the same invention as claimed.
Claims 24, 27-28 are rejected under 35 U.S.C. 103 as being unpatentable over Bulushev, in view of Wang, IDT, Jinek, Latulippe, and further in view of McCaffrey et al. (CRISPR-CAS9 D10A nickase target-specific fluorescent labeling of double strand DNA for whole genome mapping and structural variation analysis. Nucleic Acids Res. 2016 Jan 29;44(2):e11; Hereinafter, McCaffrey) and Sriram et al. (Direct optical mapping of transcription factor binding sites on field-stretched λ-DNA in nanofluidic devices. Nucleic Acids Res. 2014 Jun;42(10):e85; Hereinafter, Sriram).
The teachings of Bulushev, Wang, IDT, Jinek, and Latulippe have been discussed above.
However, none of Bulushev, Wang, IDT, Jinek, and Latulippe teaches direct enzymatic labeling, or nick labeling.
McCaffrey teaches a method of enzymatic nick labeling that “…uses the Cas9 D10A protein, which contains a nuclease disabling mutation in one of the two nuclease domains of Cas9, to create a guide RNA-directed DNA nick in the context of an in vitro-assembled CRISPR-CAS9 DNA complex. Fluorescent nucleotides are then incorporated adjacent to the nicking site with a DNA polymerase to label the guide RNA-determined target sequences.” (Page 1 of 8, Abstract, lines 5-13).
Regarding claims 24-28, McCaffrey further teaches Cas9n fluorescent nick-labeling of fosmids, plasmid, and BAC clone without repair (Page 2 of 8, right column, last ¶), as well as with repair by reciting “The nicks were repaired with 500µM NAD+,…” (Page 3 of 8, left column, last ¶, lines 9-10).
The benefit of using a dCas protein/gRNA complex to label DNA is to ensure the DNA is not denatured. A benefit of using nick labeling is for targeting repetitive regions without fully denaturing the DNA. Both the dCas protein and nick labeling method are useful and one skilled in the art would be motivated to use both options to label DNA to ensure various genomic loci can be labeled successfully. McCaffrey teaches that “Such Cas9n fluorescent nick-labeling based sequence-specific labeling methods can be used to target repetitive regions which often lack appropriate restriction site motifs” (Page 2 of 8, left column, 2nd¶, lines 26-29).
Furthermore, McCaffrey teaches the technique of removing sgRNA and dCas9 prior to linearization of the labeled DNA in nanochannels by reciting “the sample was digested with RNAseA” (Page 3, left column, last ¶, lines 2-3) and “…was then treated with … Protease…” (Page 3, left column, last ¶, lines 11-12).
However, McCaffrey does not explicitly teach the benefit of nick labeling without protein attachment.
Sriram (2014) teaches “a method adopting bioconjugation, nanofluidic confinement and fluorescence single molecule imaging for direct mapping of TF (RNA polymerase) binding sites on field-stretched single DNA molecules” (Page 1, Abstract, lines 4-8). Sriram further teaches that “Mapping megabase long DNA molecules using nanochannel devices has been demonstrated … One such work involves … nanochannels to map 4.7-Mb long, nick-labeled bacterial artificial chromosomes…. However, DNA–protein complex[es] were tried using similar devices but without much success. This is because while negatively charged DNA repelled from channel walls like SiO2, proteins tend to adsorb non-specifically to the channels.…” (Page 6 of 9, right column, 2nd ¶, lines 1-11). This teaching would have cautioned PHOSITAs to consider removing proteins as an option to avoid the potential for lack of success recited above when attempting to map DNAs in nanochannels.
It would have been obvious for PHOSITAs before the effective filing date of the current application to have modified the dCas9/gRNA/DNA complex labeling strategy, nanochannel-based linearizing, and optical DNA mapping methods taught by Bulushev, Wang, IDT, Jinek, and Latulippe by considering the nick-labeling methods described by McCaffrey in view of the caution warmed by Sriram and an alternative for optimally labeling and linearizing DNA in nanochannels, and combine the aforementioned teachings, suggestions for optimization, and motivations of Bulushev, Wang, IDT, Jinek, Latulippe, McCaffrey, and Sriram to successfully label and linearize DNA molecules in nanochannels and would have arrived at the same method as the claimed invention.
Response to Arguments
Applicant argues:
“… … Claims 1 and 32 and the claims dependent therefrom are rejected under 35 U.S.C. § 103 as allegedly being unpatentable over Deng et al. (Proc Natl Acad Sci U S A. 2015 Sep 22;112(38):11870-5, "Deng") in view of Turk et al. (W02018111946, "Turk") as previously applied to claim 1 and further in view of McCaffrey et al. (Nucleic Acids Res. 2016 Jan 29;44(2):el1, "McCaffrey") as previously applied to claim 13. Advisory Action, Continuation Sheet. In maintaining the obviousness rejection, the Advisory Action states that Applicant's remarks have not explained why a DNA labeled according to the proposed combination of Deng and Turk could not have been reasonably linearized using a fluidic nanochannel as described by McCaffrey. See id.
Applicant respectfully disagrees with the obviousness rejections. However, solely to expedite prosecution, independent claim 32 has been canceled, which renders moot the rejection over claim 32. In addition, independent claim 1 has been amended to recite, in part, a labeled DNA comprises or is formed by the DNA molecule with "the first dCas protein, the first labeled gRNA, the second dCas protein, and the second labeled gRNA," and "wherein the fluidic nanochannel has a cross-sectional dimension of less than twice the radius of gyration" of the DNA molecule.
As described in paragraph [0023] of the specification, in order to linearize the DNA, the
nanochannel needs to be configured such that it can exert entropic confinement of the freely extended, fluctuating DNA coils. One of skill in the art would understand that, during entropic confinement, a DNA molecule confined to nanoscale fluidic channels extend along the channel axis in order to minimize their conformational free energy. In order for the entropic confinement to be effective, the cross-sectional dimension needs to be small, such as "less than twice the radius of gyration of the DNA molecule" as recited in the present claims. Thus, without any reasons to the contrary, one of skill in the art would not have expected a large complex comprising DNA, dCas protein and labeled gRNA would fit into such a small dimension of the nanochannels and still not impact the extension of the labeled DNA in the nanochannels.
Although McCaffrey discloses a fluidic nanochannel, it does not provide any teaching for one of skill in the art to have a different expectation. On the contrary, McCaffrey teaches removal of the Cas protein before loading the labeled DNA into nanochannels. Specifically, as shown in Figure 2 of McCaffrey, Cas9 protein is dissociated with the DNA before the DNA is incubated with Taq polymerase. Moreover, McCaffrey also teaches treating the sample with protease before loading the DNA into nanochannels. See McCaffrey, p. 3. Since a protease treatment would remove any protein, including the Cas9 protein, from the sample, one of skill in the art would have been taught away by McCaffrey from linearizing DNA that is in a complex with Cas proteins and gRNAs as taught in Deng and Turk in the nanochannels taught by McCaffrey.
For at least the reasons discussed above, Applicant respectfully submits that claim 1 is patentable over Deng, Turk and McCaffrey, either separately or in combination. Claims 3-5, 8-10, 13-14, 18, 20-22, 24, 27-28, and 30 depend, either directly or indirectly, from claim 1, and thus claims 3-5, 8-10, 13-14, 18, 20-22, 24, 27-28, and 30 are also not obvious over the cited references for the features that they receive from claim 1 and because of their own features.
Applicant respectfully requests the obviousness rejections be withdrawn.”
Applicant’s arguments with respect to claims 1, 3-5, 8-10, 13-14, 18, 20-22, 24, 27-28, 30 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
No claims are allowable.
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/DELPHINUS DOU YI YU/Examiner, Art Unit 1636
/NEIL P HAMMELL/Supervisory Patent Examiner, Art Unit 1636