DETAILED ACTION
Status of the Claims
Claims 1, 3-6, and 17-28 are currently pending.
Claims 17-28 have been withdrawn as being drawn to non-elected subject matter (see below).
Claims 1 and 4 have been amended.
Claims 2 and 7-16 have been canceled by Applicant.
Claims 1 and 3-6 are examined herein.
The following Office Action is in response to Applicant’s communication dated 10/15/2025. Rejection(s) and/or objection(s) not reiterated from previous office actions are hereby withdrawn. The following rejection(s) and/or objection(s) are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Restriction Requirement
Applicant’s election of Group I (claims 1 and 3-6) in the reply filed on 08/21/2023 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
New Claim Rejections – 35 U.S.C. 103(a)
Necessitated by Amendments
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 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.
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Wu et al., Fischer, and IDT
Claims 1 and 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (J. Biomed. Mater. Res., 2008, 87B:67-72, cited in IDS of 01/30/2020) in view of Fischer ("Amine coupling through EDC/NHS: a practical approach" in Surface plasmon resonance: methods and protocols. Totowa, NJ: Humana Press, 2010. 55-73) further in view of IDT (5’ Amino Modifier C6, 2016).
Regarding claims 1 and 3-6, Wu teaches a solid support (e.g., glass slide as per the Preparation of the Activated Acrylic Acid-co-Acrylamide Copolymer Surface section on page 68), comprising covalently surface-bonded polymers comprising a compound of Formula I (e.g., polyacrylamide as per Figure 1, a portion of which is reproduced below, wherein R1 is the Capture Probe, R3 and R4 are each H, p and q are 1-20, and T1 and T2 are absent or methyl), wherein Capture Probe is a DNA oligonucleotide and the polymer of Formula I is covalently bonded to the surface via an amide bond (e.g., as per Fig. 1):
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446
444
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However, Wu is silent on the identity of R1 that are not coupled to the Capture Probe, that is, when the EDC/NHS moiety is not reacted with the amino-modified oligonucleotide.
Similar to Wu, Fischer discloses methods of immobilizing amine-functionalized biomolecules to surfaces via EDC/NHS coupling (e.g., as per Fig. 3.3):
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600
810
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Such a quenching reaction would result in the unreacted EDC/NHS groups becoming R1 groups from Formula I:
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42
146
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wherein a=5 and b=0.
It would have been prima facie obvious to a person of ordinary skill in the art prior to the effective filing date of the application to quench the unreacted EDC/NHS groups using ethanolamine as per Fischer in the immobilization strategy of Wu. One of ordinary skill in the art would have been motivated to do so since as Fischer states on page 72:
Not all active NHS esters react with a ligand and it is therefore crucial to eliminate unreacted esters by deactivation, else they could attack amino groups in buffer or analyte during the interaction experiment. The deactivation step with a high concentration of ethanolamine changes the active ester into an inactive hydroxyethyl amide (emphasis added)
One of ordinary skill in the art would have had a reasonable expectation of success as of the application’s effective filing date in combining the teachings of the prior art references to arrive at the invention as presently claimed since, as taught by Fischer, this merely involves the addition of a solution of ethanolamine under conditions detailed therein (e.g., as per p. 65).
In addition, while Wu discloses that the oligonucleotide is modified with a 5’-terminal amino group, the reference is silent as to the precise linker used.
IDT, a prominent supplier of custom oligonucleotides, offers for sale custom oligonucleotide with a 5’-terminal amino group attached via a six-carbon linker, as per the website capture from 2016 (attached).
It would have been prima facie obvious to a person of ordinary skill in the art prior to the effective filing date of the application to use a 5’-terminal amino modified oligonucleotide as per IDT for the immobilization strategy of Wu. One of ordinary skill in the art would have been motivated to do so since IDT discloses that such a 5’-terminal amino modification is common and commercially available for order. Further, as per MPEP 2143(I)(A), the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art.
One of ordinary skill in the art would have had a reasonable expectation of success as of the application’s effective filing date in combining the teachings of the prior art references to arrive at the invention as presently claimed since IDT makes such modified oligonucleotides commercially available.
***
Response to Arguments
The 10/15/2025 remarks argue: not all elements are taught.
Applicant's arguments have been fully considered but they are not persuasive for at least the following reasons.
The remarks assert that Wu does not disclose the limitations as per the newly amended claims. In response, it is noted that the rejection has been amended to address each of Applicants arguments.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMY FLINDERS whose telephone number is (571)270-1022. The examiner can normally be reached M-F 10-6:00 EST.
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/JEREMY C FLINDERS/Primary Examiner, Art Unit 1684