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 .
Response to Amendment
This is an office action in response to applicant’s arguments and remarks filed on December 22, 2025. Claims 1 and 3-21 are pending in the application. Claims 18-20 are withdrawn, and claims 1, 3-17, and 21 are being examined herein.
Status of Objections and Rejections
The objection to the claims is withdrawn in view of Applicant’s amendment.
New objections to the claims are necessitated.
The rejection of claim 1 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of Applicant’s amendment.
All other rejections from the previous office action are maintained and modified as necessitated by the amendments.
New grounds of rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, are necessitated by the amendments.
Claim Objections
Claim 1 is objected to because of the following informalities: in line 7, “an osmolarity” should read “an osmolality”. 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, 3-17, and 21 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.
Claim 1 recites the limitation “a single nanopore” in line 11 of the claim. It is unclear whether “a single nanopore” is one of the previously recited “at least one nanopore”. For the purpose of examination, Examiner interprets “a single nanopore” to be one of the previously recited “at least one nanopore”. Claims 3-17 and 21 are rejected as dependent thereon.
Claim 1 recites the limitation "the yield" in line 12 of the claim. There is insufficient antecedent basis for this limitation in the claim. Claims 3-17 and 21 are rejected as dependent thereon.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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, 3-6, 8-17, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Barrall et al. (US 2017/0369944 A1).
Regarding claim 1, Barrall teaches a method (a process 800, Fig. 8, para. [0024], [0124]; the process 800 is for an array of sensor cells 500, Figs. 5 & 8, para. [0136]), the method comprising:
filling a well reservoir of a well with a first buffer having a first osmolality (a well 505 is filled with an electrolyte 506 having an osmolarity, Figs. 5 & 8, para. [0060], [0124]-[0125]), the well comprising a working electrode (the well 505 comprises a working electrode 502, Figs. 5 & 8, para. [0057], [0060], [0124]), wherein the well is part of an array of wells in a flow cell (the well 505 is part of an array of wells in the array of sensor cells 500, Figs. 5 & 8, para. [0061], [0136]);
forming a membrane over the well to enclose the first buffer within the well reservoir (in step 802 of the process 800, a lipid bilayer membrane 514 is formed over the well 505 to enclose the electrolyte 506, Figs. 5 & 8, para. [0062], [0065], [0125]);
flowing a second buffer having a second osmolality over the membrane such that the membrane is between the first buffer and the second buffer, wherein at least one nanopore is disposed within the first buffer or the second buffer (in step 806, an electrolyte buffer solution 508 containing protein nanopore transmembrane molecular complexes 516 and having an osmolarity is flowed over the lipid bilayer membrane 514 such that the lipid bilayer membrane 514 is between the electrolyte 506 and the electrolyte buffer solution 508, Figs. 5 & 8, para. [0062], [0125]-[0126], [0137]);
bowing the membrane towards the first or second buffer that comprises the at least one nanopore in order to destabilize the membrane (the lipid bilayer membrane 514 bows towards the electrolyte buffer solution 508 that contains the protein nanopore transmembrane molecular complexes 516 and distorts the lipid bilayer membrane 514 to create a structural strain on the lipid bilayer membrane 514, Figs. 5, 7C, & 8, para. [0109], [0122], [0126]-[0127], [0130]); and
inserting a single nanopore into the bowed and destabilized membrane (in step 804, a single nanopore 516 from the electrolyte buffer solution 508 is inserted into the bowed lipid bilayer membrane 514, Figs. 5, 7C, & 8, para. [0062], [0109], [0122], [0125]-[0127], [0130], [0134]; in this embodiment, step 804 occurs after step 806 such that the nanopore 516 is inserted into the bowed lipid bilayer membrane 514 after the creation of the osmotic imbalance in step 806, Figs. 5, 7C, & 8, para. [0109], [0122], [0125]-[0127], [0130], [0134]).
Barrall teaches different concentrations (molarity) of the electrolyte buffer solution 508 in the external reservoir and of the electrolyte 506 in the well 505 (Fig. 5, para. [0143]). Barrall is silent with respect to osmolality values of the electrolyte buffer solution 508 in the external reservoir and of the electrolyte 506 in the well 505, and therefore fails to teach wherein an osmolality difference between the first buffer and the second buffer is at least 10 mOsm/kg.
However, Barrall teaches that the osmotic imbalance due to the osmolarities (and thus osmolalities) of the electrolyte buffer solution 508 in the external reservoir and of the electrolyte 506 in the well 505 are result-effective variables. Specifically, Barrall teaches that the osmotic imbalance (and thus osmolalities of the electrolyte buffer solution 508 and the electrolyte 506) controls the diffusion of water through the lipid bilayer membrane 514 and the bowing of the lipid bilayer membrane 514 for nanopore insertion (para. [0109], [0121]-[0122], [0129]-[0130]). Since these particular parameters are recognized as result-effective variables, i.e. a variable which achieves a recognized result, the determination of the optimum or workable ranges of said variable can be characterized as routine experimentation. See In re Boesch, 617 F, 2d 272, 205 U.S.P.Q. 215 (C.C.P.A. 1980).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the osmolality difference between the electrolyte 506 in the well 505 and the electrolyte buffer solution 508 of Barrall to be at least 10 mOsm/kg through routine experimentation because doing so would yield the predictable desired diffusion of water through the lipid bilayer membrane 514 and bowing of the lipid bilayer membrane 514 for nanopore insertion.
The limitation “wherein the yield of said wells in said array with membranes having a single nanopore disposed therein is improved” is an intended result of a positively recited step, and does not further limit the method or steps. In method claims, it is the overall method steps that are given patentable weight and not the intended result thereof because the intended result does not materially alter the overall method. The court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)). MPEP 2111.04(I). In this case, Modified Barrall teaches the claimed structure, materials, and steps of claim 1 (see rejection supra), so Modified Barrall is expected to predictably yield the same intended result as claimed.
Regarding claims 3-5, Modified Barrall teaches wherein the first osmolality subtracted from the second osmolality is negative (the electrolyte 506 in the well 505 has a higher osmolarity than the electrolyte buffer solution 508, Figs. 5 & 8, para. [0124], [0126], [0130]; thus, the electrolyte 506 in the well 505 has a higher osmolality than the electrolyte buffer solution 508 since osmolarity and osmolality are proportional and are both dependent on the number of osmoles of solute in the solution; thus, the osmolality of the electrolyte 506 in the well 505 subtracted from the osmolality of the electrolyte buffer solution 508 is negative). Modified Barrall teaches wherein the osmolality difference between the electrolyte 506 in the well 505 and the electrolyte buffer solution 508 is at least 10 mOsm/kg (see modification supra). Modified Barrall fails to teach wherein the first osmolality subtracted from the second osmolality has a magnitude of: at least 50 mOsm/kg, of instant claim 3, at least 100 mOsm/kg, of instant claim 4, or at least 150 mOsm/kg, of instant claim 5.
However, Barrall teaches that the osmotic imbalance due to the osmolarities (and thus osmolalities) of the electrolyte buffer solution 508 in the external reservoir and of the electrolyte 506 in the well 505 are result-effective variables. Specifically, Barrall teaches that the osmotic imbalance (and thus osmolalities of the electrolyte buffer solution 508 and the electrolyte 506) controls the diffusion of water through the lipid bilayer membrane 514 and the bowing of the lipid bilayer membrane 514 for nanopore insertion (para. [0109], [0121]-[0122], [0129]-[0130]). Since these particular parameters are recognized as result-effective variables, i.e. a variable which achieves a recognized result, the determination of the optimum or workable ranges of said variable can be characterized as routine experimentation. See In re Boesch, 617 F. 2d 272, 205 U.S.P.Q. 215 (C.C.P.A. 1980).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the magnitude of the osmolality of the electrolyte 506 in the well 505 subtracted from the osmolality of the electrolyte buffer solution 508 of Modified Barrall to be at least 50 mOsm/kg, of instant claim 3, at least 100 mOsm/kg, of instant claim 4, or at least 150 mOsm/kg, of instant claim 5, through routine experimentation because doing so would yield the predictable desired diffusion of water through the lipid bilayer membrane 514 and bowing of the lipid bilayer membrane 514 for nanopore insertion.
Regarding claim 6, Modified Barrall teaches wherein the membrane comprises a lipid (the lipid bilayer membrane 514, Figs. 5 & 8, para. [0062], [0065], [0125]).
Regarding claim 8, Modified Barrall teaches wherein the step of forming the membrane comprises flowing a membrane material dissolved in a solvent over the well (in step 802 of the process 800, the lipid bilayer membrane 514 is formed over the well 505 by flowing a lipid and solvent mixture over the well 505 as described in step 1004 of process 1000, Figs. 5, 8, & 10, para. [0062], [0125], [0141], [0144]; the process 1000 for forming the lipid bilayer membrane is used in step 802 of the process 800, Figs. 8 & 10, para. [0141]).
Regarding claim 9, Modified Barrall teaches wherein the step of flowing the second buffer comprises displacing the membrane material and the solvent in the flow cell with the second buffer to leave a layer of the membrane material over the well (in step 1006, the electrolyte buffer solution 508 is flowed through the cell to substantially fill the external reservoir after the step 1004 of flowing the lipid and solvent mixture through the cell to form the lipid bilayer membrane 514 spanning across the well 505, Figs. 5 & 10, para. [0144]-[0145]; flowing the electrolyte buffer solution 508 through the cell facilitates the formation of the lipid bilayer membrane 514 over the cell, Figs. 5 & 10, para. [0147]; the electrolyte buffer solution 508 flowed over the cell facilitates the removal of any excess lipid solvent such that the thick lipid membranes can be thinned out and transitioned into lipid bilayers 514 more efficiently, Figs. 5 & 10, para. [0147]).
Regarding claim 10, Modified Barrall teaches wherein the layer of membrane material is thinned into the membrane through the flow of the second buffer over the layer of the membrane material (the electrolyte buffer solution 508 flowed over the cell facilitates the removal of any excess lipid solvent such that the thick lipid membranes can be thinned out and transitioned into lipid bilayers 514 more efficiently, Figs. 5 & 10, para. [0147]).
Regarding claim 11, Modified Barrall teaches wherein the layer of membrane material is thinned into the membrane through an application of a voltage stimulus to the layer of the membrane material using the working electrode (in step 1008, a lipid bilayer initiating stimulus facilitates the creation of the small lipid bilayer on the thick lipid membrane, wherein the lipid bilayer initiating stimulus is an electrical stimulus, Figs. 5 & 10, para. [0146]-[0147]; an electric circuit 522 controls the electrical stimulation and is electrically connected to the working electrode 502, Fig. 5, para. [0058]; the electrical stimulus for forming the lipid bilayer 514 is a voltage stimulus that is applied across the lipid bilayer membrane 514, Figs. 5 & 8, para. [0081], [0125]).
Regarding claim 12, Modified Barrall teaches wherein the at least one nanopore in said first or second buffer comprises a plurality of nanopores (the electrolyte buffer solution 508 contains the protein nanopore transmembrane molecular complexes 516, Figs. 5 & 8, para. [0062], [0126], [0137]).
Regarding claim 13, Modified Barrall teaches wherein each nanopore of the plurality of nanopores is part of a molecular complex comprising a polymerase tethered to said each nanopore, and a nucleic acid associated with the polymerase (the protein nanopore transmembrane molecular complexes each comprise a nanopore 516, a polymerase attached to the nanopore 516, and a template of DNA held by the polymerase, Fig. 5, para. [0062], [0067]).
Regarding claim 14, Barrall teaches a method (a process 800, Fig. 8, para. [0024], [0124]; the process 800 is for an array of sensor cells 500, Figs. 5 & 8, para. [0136]), the method comprising:
filling a well reservoir of a well with a first buffer having a first osmolality (a well 505 is filled with an electrolyte 506 having an osmolarity, Figs. 5 & 8, para. [0060], [0124]-[0125]), the well comprising a working electrode (the well 505 comprises a working electrode 502, Figs. 5 & 8, para. [0057], [0060], [0124]), wherein the well is part of an array of wells in a flow cell (the well 505 is part of an array of wells in the array of sensor cells 500, Figs. 5 & 8, para. [0061], [0136]);
forming a membrane over the well to enclose the first buffer within the well reservoir (in step 802 of the process 800, a lipid bilayer membrane 5 14 is formed over the well 505 to enclose the electrolyte 506, Figs. 5 & 8, para. [0062], [0065], [0125]);
flowing a second buffer having a second osmolality over the membrane such that the membrane is between the first buffer and the second buffer (in step 806, an electrolyte buffer solution 508 having an osmolarity is flowed over the lipid bilayer membrane 514 such that the lipid bilayer membrane 514 is between the electrolyte 506 and the electrolyte buffer solution 508, Figs. 5 & 8, para. [0062], [0125]-[0126], [0137]), wherein the first buffer has a higher osmolality than the second buffer and wherein the first osmolality subtracted from the second osmolality is negative (the electrolyte 506 in the well 505 has a higher osmolarity than the electrolyte buffer solution 508, Figs. 5 & 8, para. [0124], [0126], [0130]; thus, the electrolyte 506 in the well 505 has a higher osmolality than the electrolyte buffer solution 508 since osmolarity and osmolality are proportional and are both dependent on the number of osmoles of solute in the solution; thus, the osmolality of the electrolyte 506 in the well 505 subtracted from the osmolality of the electrolyte buffer solution 508 is negative);
flowing a third buffer comprising a plurality of nanopores over the membrane (in step 810, the flowing of the electrolyte solution 508 comprising nanopores 516 over the lipid bilayer membrane 514 is repeated, Figs. 5 & 8, para. [0062], [0125], [0133]);
bowing the membrane towards the third buffer comprising the plurality of nanopores in order to destabilize the membrane (the lipid bilayer membrane 514 bows towards the repeated electrolyte buffer solution 508 from step 810 that contains the protein nanopore transmembrane molecular complexes 516 and distorts the lipid bilayer membrane 514 to create a structural strain on the lipid bilayer membrane 514, Figs. 5, 7C, & 8, para. [0109], [0122], [0126]-[0127], [0130]); and
inserting a first nanopore from the third buffer into the bowed and destabilized membrane (in step 804, a nanopore 516 from the repeated electrolyte buffer solution 508 of step 810 is inserted into the bowed lipid bilayer membrane 514, Figs. 5, 7C, & 8, para. [0062], [0109], [0122], [0125]-[0127], [0130], [0134]; in this embodiment, step 804 occurs after step 810 such that the nanopore 516 is inserted into the bowed lipid bilayer membrane 514 after the creation of the osmotic imbalance in steps 806 and 810, Figs. 5, 7C, & 8, para. [0109], [0122], [0125]-[0127], [0130], [0133]-[0134]).
Barrall teaches different concentrations (molarity) of the electrolyte buffer solution 508 in the external reservoir and of the electrolyte 506 in the well 505 (Fig. 5, para. [0143]). Barrall is silent with respect to osmolality values of the electrolyte buffer solution 508 in the external reservoir and of the electrolyte 506 in the well 505, and therefore fails to teach wherein the first osmolality subtracted from the second osmolality has a magnitude of at least 10 mOsm/kg.
However, Barrall teaches that the osmotic imbalance due to the osmolarities (and thus osmolalities) of the electrolyte buffer solution 508 in the external reservoir and of the electrolyte 506 in the well 505 are result-effective variables. Specifically, Barrall teaches that the osmotic imbalance (and thus osmolalities of the electrolyte buffer solution 508 and the electrolyte 506) controls the diffusion of water through the lipid bilayer membrane 514 and the bowing of the lipid bilayer membrane 514 for nanopore insertion (para. [0109], [0121]-[0122], [0129]-[0130]). Since these particular parameters are recognized as result-effective variables, i.e. a variable which achieves a recognized result, the determination of the optimum or workable ranges of said variable can be characterized as routine experimentation. See In re Boesch, 617 F. 2d 272, 205 U.S.P.Q. 215 (C.C.P.A. 1980).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the magnitude of the osmolality of the electrolyte 506 in the well 505 subtracted from the osmolality of the electrolyte buffer solution 508 of Barrall to be at least 10 mOsm/kg through routine experimentation because doing so would yield the predictable desired diffusion of water through the lipid bilayer membrane 514 and bowing of the lipid bilayer membrane 514 for nanopore insertion.
Regarding claim 15, Modified Barrall teaches wherein the third buffer has the same osmolality as the second buffer (the concentration and osmolarity of the repeated electrolyte solution 508 in step 810 is identical to that of step 806, Fig. 8, para. [0133]; thus, the third buffer in step 810 has the same osmolality as the second buffer in step 806).
Regarding claim 16, Modified Barrall teaches wherein the third buffer has a different osmolality as the second buffer (the concentration and osmolarity of the repeated electrolyte solution 508 in step 810 is different from that of step 806, Fig. 8, para. [0133]; thus, the third buffer in step 810 has a different osmolality than the second buffer in step 806).
Regarding claim 17, Modified Barrall teaches measuring an electrical signal with the working electrode to detect the first nanopore insertion into the bowed and destabilized membrane (a tag threads the inserted nanopore 516 aided by an electric field gradient produced by the voltage between counter electrode 510 and the working electrode 502, Fig. 5, para. [0067], [0110]; the tag partially blocks the inserted nanopore 516 and procures a measurable change in the ionic current through the nanopore 516 inserted in the lipid bilayer membrane 514, Fig. 5, para. [0067], [0110]).
Regarding claim 21, Modified Barrall teaches wherein said inserting step is performed by passive insertion (in step 804, a single nanopore 516 from the electrolyte buffer solution 508 is inserted into the bowed lipid bilayer membrane 514, Figs. 5, 7C, & 8, para. [0062], [0109], [0122], [0125]-[0127], [0130], [0134]; in this embodiment, step 804 occurs after step 806 such that the nanopore 516 is inserted into the bowed lipid bilayer membrane 514 after the creation of the osmotic imbalance in step 806, Figs. 5, 7C, & 8, para. [0109], [0122], [0125]-[0127], [0130], [0134]; the nanopore is inserted when a solution containing the nanopore is flowed through the cells of the nanopore based sequencing chip via the flow chamber such that the solution is flowed above the lipid bilayers, para. [0125]).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Barrall as applied to claim 1 above, and further in view of Ivanov et al. (US 2018/0230531 A1).
Regarding claim 7, Modified Barrall teaches the lipid bilayer membrane 514 (Barrall, Figs. 5 & 8, para. [0062], [0065], [0125]). Modified Barrall alternatively teaches that the membrane can be formed of a polymeric material (Barrall, para. [0038]), but fails to teach wherein the membrane comprises a tri-block copolymer.
Ivanov teaches a measurement module 108 including a first volume 107 and a second volume 108 separated by a lipid bilayer 110 having a nanopore complex 111 disposed therein (Ivanov, Fig. 1, para. [0052]). Ivanov teaches that the membrane may be a lipid bilayer or formed of a polymeric material (Ivanov, para. [0021]). Ivanov teaches that the polymeric material of the membrane may comprise a triblock copolymer, which can withstand high voltages and biological degradation (Ivanov, para. [0035]-[0037]).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to substitute the lipid bilayer membrane of Modified Barrall with a triblock copolymer membrane as taught by Ivanov in order to yield the predictable result of a membrane that can withstand high voltages and biological degradation (Ivanov, para. [0035]-[0037]). Simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727, 82 U.S.P.Q.2d 1385 (2007); MPEP § 2143(I)(B). Furthermore, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. MPEP § 2144.07.
Response to Arguments
Applicant's arguments filed December 22, 2025 have been fully considered but they are not persuasive.
In the arguments presented on pages 7-9 of the amendment, Applicant argues that Barrall lacks any indication that osmolarity control is relevant to the desired property or functional result of the invention, which is to increase the yield of cells in an array having a membrane with a single pore disposed therein and/or improve nanopore insertion ability. Applicant asserts that the result effective variable analysis requires that the cited reference recognize that the relevant property or result of the invention is affected by the particular claimed variable or parameter. Applicant asserts that Barrall, on the other hand, describes a method designed to mitigate or remediate membrane instability caused by the net ion influx into or efflux out of a well caused by an electrical bias and leading to undesirable outcomes, such as nanopore ejection and additional nanopore insertion. Applicant asserts that Barrall teaches that the osmotic imbalance caused by the ionic influx and efflux is counterbalanced via introduction of electrolyte solutions with specific osmolarities.
Examiner respectfully disagrees. The result effective variable analysis does not require the cited reference to recognize the same result as the instant invention. A result-effective variable is a variable which achieves a recognized result, so the cited reference must teach that the variable affects a recognized result, not necessarily the same exact result as the instant invention. A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective. MPEP § 2144.05(II)(B), 2144.05(III)(C). In this case, Barrall teaches that the osmotic imbalance due to the osmolarities (and thus osmolalities) of the electrolyte buffer solution 508 in the external reservoir and of the electrolyte 506 in the well 505 are result-effective variables. Specifically, Barrall teaches that the osmotic imbalance (and thus osmolalities of the electrolyte buffer solution 508 and the electrolyte 506) controls the diffusion of water through the lipid bilayer membrane 514 and the bowing of the lipid bilayer membrane 514 for nanopore insertion (para. [0109], [0121]-[0122], [0129]-[0130]). Since these particular parameters are recognized as result-effective variables, i.e. a variable which achieves a recognized result, the determination of the optimum or workable ranges of said variable can be characterized as routine experimentation. See In re Boesch, 617 F, 2d 272, 205 U.S.P.Q. 215 (C.C.P.A. 1980). Additionally, in response to applicant's argument that Barrall is silent with respect to improving the yield of cells in an array having a membrane with a single pore disposed therein, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In the arguments presented on pages 9-12 of the amendment, Applicant argues that the only description in Barrall for purposefully inserting a single nanopore into the lipid bilayer is in para. [0062] which teaches using electroporation to insert this single nanopore, and there is no mention of a relationship between control of osmolarities or osmolalities in the wells and nanopore insertion or improvement in the yield of cells with a single nanopore disposed. Applicant asserts that the object of Barrall is to stabilize the nanopore that was inserted via electroporation only (with no osmolarity control or consideration of the same). Applicant asserts that Barrall does not teach that nanopore insertion is dependent on or caused by changes to or control of osmolarities by introduction of the electrolyte solutions. Applicant asserts that the introduction of electrolyte solutions in Barrall is performed to generate an initial osmotic imbalance that acts to stabilize the membrane in a neutral conformation by counterbalancing later ion exchange and water diffusion caused during normal sequencing procedures.
Examiner respectfully disagrees. Barrall teaches that it is desirable to have a single nanopore in each cell (para. [0106]). Barrall also teaches that in step 804, a single nanopore 516 from the electrolyte buffer solution 508 is inserted into the bowed lipid bilayer membrane 514 (Figs. 5, 7C, & 8, para. [0062], [0109], [0122], [0125]-[0127], [0130], [0134]), and step 804 occurs after step 806 such that the nanopore 516 is inserted into the bowed lipid bilayer membrane 514 after the creation of the osmotic imbalance in step 806 (Figs. 5, 7C, & 8, para. [0109], [0122], [0125]-[0127], [0130], [0134]). Barrall teaches that different techniques can be used to insert nanopores in the cells of the nanopore based sequencing chip, including when a solution containing a nanopore is flowed through the cells of the nanopore based sequencing chip via the flow chamber such that the solution is flowed above the lipid bilayers (Fig. 8, para. [0125]). Barrall also teaches that a nanopore may be inserted when the volume of water inside the well increases and causes the lipid bilayer membrane to bow outward due to osmotic imbalance (Fig. 7C, para. [0109], [0122]). Therefore, Barrall teaches that osmotic imbalance is able to cause insertion of a nanopore into the lipid bilayer membrane. In response to applicant's argument that Barrall does not mention improvement in the yield of cells with a single nanopore disposed, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In the arguments presented on page 11 of the amendment, Applicant argues that bowing is not wanted or desired in Barrall because it may lead to "additional nanopore insertion" beyond the single nanopore that was inserted, and inward distortion is not wanted or desired because it may lead to the single nanopore inserted to eject. Applicant asserts that Barrall wants a stable membrane in a neutral conformation that keeps the single nanopore disposed therein.
Examiner respectfully disagrees. The undesirable distortion of the membrane in Barrall is caused when a voltage is applied across the membrane during the nucleic acid sequencing (Figs. 6-7, para. [0109]-[0122]). Barrall teaches that it is desirable to create an initial osmotic imbalance to counterbalance the subsequent osmotic imbalance which occurs during nucleic acid sequencing (para. [0124]), so the bowing created during the initial osmotic imbalance is an improved technique taught by Barrall, and can cause a nanopore to be inserted into the bowed and destabilized lipid bilayer membrane. Although Fig. 7C of Barrall teaches that more than one nanopore can be inserted into the lipid bilayer membrane when it is pushed outward, this also means that a single nanopore can be inserted into the outwardly bowed membrane. Barrall teaches multiple embodiments including a single nanopore disposed in the membrane (Figs. 1-5). Barrall also teaches that creating the initial osmotic imbalance increases the yield (the percentage of cells in the nanopore based sequencing chip with properly formed lipid bilayers and nanopores) of the nanopore based sequencing chip (para. [0124], [0146]), the desired sequencing cells having a well with a single nanopore (para. [0106]).
In the arguments presented on pages 12-13 of the amendment, Applicant argues that para. [0109], [0121]-[0122], [0129]-[0130] of Barrall describe net ion efflux and influx, water diffusion, and effects on membranes, and that these unmitigated states or conditions from osmolarity changes produce membrane instability, non-functional membranes, a loss of the nanopore inserted, and/or the insertion of additional nanopores which are undesirable outcomes. Applicant asserts that these paragraphs would deter one of ordinary skill in the art from attempting to optimize osmolality parameters in order to improve nanopore insertion ability and/or the yield of cells with membrane having a single nanopore disposed therein. Applicant asserts that Barrall teaches away from the use of osmolarity control to improve single nanopore insertion and/or improved yield of cells with membranes having a single nanopore disposed therein.
Examiner respectfully disagrees. Barrall at para. [0109], [0121]-[0122], [0129]-[0130] teaches that the osmotic imbalance (and thus osmolalities of the electrolyte buffer solution 508 and the electrolyte 506) controls the diffusion of water through the lipid bilayer membrane 514 (net ion efflux and influx) and the bowing of the lipid bilayer membrane 514 for nanopore insertion. Barrall teaches that it is desirable to counterbalance the expected osmotic imbalance (from the application of voltages during sequencing operations) by creating an initial osmotic imbalance from the flowing electrolyte solution (Fig. 8, para. [0128]-[0130]). Therefore, Barrall teaches that the initial osmotic imbalance from the flowing electrolyte (osmolalities) achieves the recognized result of bowing the lipid bilayer membrane to counterbalance the expected subsequent osmotic imbalance during sequencing operations. Since these particular parameters are recognized as result-effective variables, i.e. a variable which achieves a recognized result, the determination of the optimum or workable ranges of said variable can be characterized as routine experimentation. See In re Boesch, 617 F. 2d 272, 205 U.S.P.Q. 215 (C.C.P.A. 1980). In response to applicant's argument that Barrall does not teach improving nanopore insertion ability and/or the yield of cells with membrane having a single nanopore disposed therein, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Furthermore, Barrall teaches that creating the initial osmotic imbalance increases the yield (the percentage of cells in the nanopore based sequencing chip with properly formed lipid bilayers and nanopores) of the nanopore based sequencing chip (para. [0124], [0146]), the desired sequencing cells having a well with a single nanopore (para. [0106]).
Conclusion
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 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 VIVIAN A TRAN whose telephone number is (571)272-3232. The examiner can normally be reached Mon - Fri 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/V.T./ Examiner, Art Unit 1794
/JAMES LIN/ Supervisory Patent Examiner, Art Unit 1794