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 .
DETAILED ACTION
2. This action is in response to papers filed 1/12/2026.
3. Applicant’s election without traverse of the species EDC in the reply filed on 7/22/2024 is acknowledged.
4. Claims 1-5, 7-8, 10-13 are pending. Claim 6, 9 have been cancelled. Claim 13 is drawn as being drawn to a nonelected species.
5. The following rejections are maintained with response to arguments following.
6. This action is FINAL.
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.
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.
Claim(s) 1-2,4-5,7, 10,12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kumar et al. (Bioconjugate Chemistry Vol 2003 Vol. 14 p. 507-512 cited on the IDS) in view of Winter et al. (US Patent Application 2014/0349305 Nov 27, 2014).
With regard to claim 1, Kumar et al. teaches a method of immobilizing an oligonucleotide on a polypropylene surface (p. 507). Kumar et al. teaches oxidizing a portion of the polypropylene surface and binding an amine terminated oligonucleotide into contact with the oxidized polypropylene surface in the presence of a carbodiimide coupling agent that immobilizes the oligonucleotide to the oxidized polypropylene surface via the formation of amide bonds (scheme 1, p. 508 2nd column to p. 509 2nd column). Kumar et al. teaches that the polypropylene surface is on a slide (p. 508 2nd column 1st 2 paragraphs). However Kumar does not teach the carbodiimide coupling agent comprises an EDC.
With regard to claim 2, Kumar et al. teaches UV-ozone treatment for oxidizing (p. 508 2nd column 3rd parpaghra).
With regard to claims 4-5, Kumar et al. teaches a labelled DNA probe that is single stranded (p. 508 1st column last para).
With regard to claim 7, Kumar et al. teaches a step of contacting the amine terminated oligonucleotides with oxidized polypropene surface with a buffer (p. 508 2nd paragraph).
With regard to claim 10, Kumar et al. teaches that the method has a blocking agent for oligonucleotide immobilized surface (p. 510 1st column 1st para).
With regard to claim 12, Kumar et al. teaches a fluorescent labelled probe (table 2).
With regard to claim 1, Winter et al. teaches designing nanocomposites with amine terminated oligonucleotides that were attached by EDC chemistry (para 49).
Therefore it would be prima facie obvious to one of ordinary skill in the art at the time of the effective filing date to modify the method of using a carbodiimide couple agent with the specific one of EDC of Winter with a reasonable expectation of success of attaching a probe to the membrane. The ordinary artisan would have a reasonable expectation of success as EDC is one of the finite number of ways of attaching DNA.
Response to Arguments
The reply traverses the rejection. A summary of the arguments is provided below with response to arguments following.
The reply asserts that oligomers are disclosed only in reaction #3 and 4 of Kumar whereas the carbodiimide coupling agents is used only in reactions 1 and 2 (p. 5). These arguments are reviewed but have not been found fully persuasive. The reply appears to assert that the EDC is not in the presence of the recited oligomers. However, the slides used to attach the oligonucleotides have been treated with EDC agents and as such the immobilized oligonucleotides are “in the presence of” there’s chemicals as the agents would still be considered on the slide.
12. Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kumar et al. (Bioconjugate Chemistry Vol 2003 Vol. 14 p. 507-512 cited on the IDS) and Winter et al. (US Patent Application 2014/0349305 Nov 27, 2014) as applied to claims 1-2,4-5,7,10,12 in view of Ismagilov et al. (US Patent Application 2016/0266105 September 15, 2016).
Kumar et al. teaches a method of immobilizing an oligonucleotide on a polypropylene surface (p. 507). Kumar et al. teaches oxidizing a portion of the polypropylene surface and binding an amine terminated oligonucleotide into contact with the oxidized polypropylene surface in the presence of a carbodiimide coupling agent that immobilizes the oligonucleotide to the oxidized polypropylene surface via the formation of amide bonds (scheme 1, p. 508 2nd column to p. 509 2nd column). Kumar et al. teaches UV-ozone treatment for oxidizing (p. 508 2nd column 3rd parpaghra). Winter et al. teaches designing nanocomposites with amine terminated oligonucleotides that were attached by EDC chemistry (para 49).
Kumar et al. and Winter do not teach that the oxidizing step is carried out using oxygen plasma.
With regard to claim 3, Ismagilov et al. teaches etching polypropylene onto a solid support using oxygen plasma (para 480). Ismagilov et al. teaches that this polypropylene membrane can have attached DNA.
Therefore it would be prima facie obvious to one of ordinary skill in the art at the time of the effective filing date to modify the method of oxidizing to a known method of oxygen plasma as taught by Ismagilov et al. with a reasonable expectation of success of attaching polypropylene to the membrane. The ordinary artisan would have a reasonable expectation of success as oxygen plasma is one of the finite number of ways of attaching polypropylene to the membrane in order to attach DNA.
Response to Arguments
The reply traverses the rejection. A summary of the arguments is provided below with response to arguments following. The reply asserts that Ismagilov only discloses oxygen plasma etching to obtain through holes (p. 6). The reply asserts that Ismagilov does not teach a conjugation reaction but rather creation of holes (p. 6-7). These arguments have been fully reviewed but have not been found persuasive. The claims do not require a conjugation reaction, but rather applying oxidizing to a portion of the surface. As Ismagilov et al. teaches such a step it would be obvious that Ismagilov teaching can be used to etch a surface for use of the substrate for attachment absent secondary considerations.
13. Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kumar et al. (Bioconjugate Chemistry Vol 2003 Vol. 14 p. 507-512 cited on the IDS) and Winter et al. (US Patent Application 2014/0349305 Nov 27, 2014) as applied to Claims 1-2, 4-5, 7, 10 and 12 in view of Bitner et al. (US Patent Application Publication 2011/0054161 March 3, 2011).
Kumar et al. teaches a method of immobilizing an oligonucleotide on a polypropylene surface (p. 507). Kumar et al. teaches oxidizing a portion of the polypropylene surface and binding an amine terminated oligonucleotide into contact with the oxidized polypropylene surface in the presence of a carbodiimide coupling agent that immobilizes the oligonucleotide to the oxidized polypropylene surface via the formation of amide bonds (scheme 1, p. 508 2nd column to p. 509 2nd column). Kumar et al. teaches a step of contacting the amine terminated oligonucleotides with oxidized polypropene surface with a buffer (p. 508 2nd paragraph). Winter et al. teaches designing nanocomposites with amine terminated oligonucleotides that were attached by EDC chemistry (para 49).
However, Kumar et al and Winter do not teach that the buffer used of CHAPS.
With regard to claim 8, Bitner et al. teaches using CHAPS as a buffer when contacting a polypropylene membrane to DNA (paragraph 175).
Therefore it would be prima facie obvious to one of ordinary skill in the art at the time of the effective filing date to modify the method of using a buffer with the specific one of CHAPS as taught by Bitner with a reasonable expectation of success of attaching a probe to the membrane. The ordinary artisan would have a reasonable expectation of success as CHAPS is one of the finite number of buffers using DNA attachment.
Response to Arguments
The reply traverses the rejection. A summary of the arguments is provided below with response to arguments following. The reply asserts that Bitner teaches CHAPs as part of a buffer for lysing HEK293 cells and isolating DNA (p. 7). These arguments have been reviewed but have not been found persuasive. The claims only requires a buffer that is capable of being a buffer in the presence of DNA. Bitner teaches such a buffer. The ordinary artisan would have a reasonable expectation of success as CHAPS is one of the finite number of buffers using DNA attachment.
14. Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kumar et al. (Bioconjugate Chemistry Vol 2003 Vol. 14 p. 507-512 cited on the IDS) and Winter et al. (US Patent Application 2014/0349305 Nov 27, 2014) as applied to claims 1-2,4-5,7, 10,12 in view of Chappa et al. (US Patent Application 2001/0014448 August 16, 2001).
Kumar et al. teaches a method of immobilizing an oligonucleotide on a polypropylene surface (p. 507). Kumar et al. teaches oxidizing a portion of the polypropylene surface and binding an amine terminated oligonucleotide into contact with the oxidized polypropylene surface in the presence of a carbodiimide coupling agent that immobilizes the oligonucleotide to the oxidized polypropylene surface via the formation of amide bonds (scheme 1, p. 508 2nd column to p. 509 2nd column). Kumar et al. teaches that the method has a blocking agent for oligonucleotide immobilized surface (p. 510 1st column 1st para). Winter et al. teaches designing nanocomposites with amine terminated oligonucleotides that were attached by EDC chemistry (para 49).
However, Kumar et al and Winter do not teach that the blocking agent is sodium borohydride.
With regard to claim 11, Chappa et al. teaches using blocking buffer of sodium borohydride (paragraph 7, 117).
Therefore it would be prima facie obvious to one of ordinary skill in the art at the time of the effective filing date to modify the method of using a blocking agent with the specific one of sodium borohydride as taught by Chappa with a reasonable expectation of success of attaching a probe to the membrane. The ordinary artisan would have a reasonable expectation of success as sodium borohydride is one of the finite number of blocking agents using DNA attachment.
Response to Arguments
The reply traverses the rejection. A summary of the arguments is provided below with response to arguments following. The reply asserts Chappa discloses a blocking buffer of ethanolamine and tris and the sodium borohydride in a step to reduce silylated slides (p. 8). The reply asserts that there was no motivation to ignore the blocking buffer and instead use sodium borohydride for success in a reaction with polypropylene slides comprising carboxyl groups (p. 8). These arguments have been reviewed but have not been found persuasive. Chappa et al. teaches using blocking buffer of sodium borohydride (paragraph 7, 117). Although Chappa does not teach all the method steps of claim 1, Chappa et al. teaches a known blocker buffer. It would be well within the skill of the ordinary artisan to use known buffers in methods of immobilizing oligonucleotides including the blocking buffer of Chappa to use it in method steps of blocking.
Conclusion
15. No claims are allowed.
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE D SALMON whose telephone number is (571)272-3316. The examiner can normally be reached 9-530.
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/KATHERINE D SALMON/Primary Examiner, Art Unit 1682