DETAILED ACTION
Applicant’s response filed 07/16/2026 has been fully considered. Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied.
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 .
Status of the Claims
Claims 1-4, 6-12, 14-19, and 21-27 are pending. Claims 1-4, 6-12, 14-15, and 23-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention.
Claims 16-19, 21-22, and 26-27 are examined herein.
Priority
The instant application is 371 of PCT/EP2020/066800, filed 6/17/2020, which claims priority to U.S. Provisional Application number 62/863,516, filed 6/19/2019 as reflected in the filing receipt mailed 8/29/2022. The claim for domestic benefit for claims 16-19, 21-22, and 26-27 is acknowledged. As such, the effective filing date of claims 16-19, 21-22, and 26-27 is 6/19/2019.
Nucleotide and/or Amino Acid Sequence Disclosures
The specific deficiencies to identify nucleotide sequences in the Specification and drawings with sequence identifiers have been withdrawn in view of Applicant’s submission of a new sequence listing in the response filed 07/16/2026 (Applicant’s Remarks, Pg. 11).
Specification
Withdrawn Objections
The objection to the Specification for containing an embedded hyperlink and/or other form of browser-executable code is withdrawn in view of Applicant’s amendments to the Specification filed 07/16/2026.
The objection to the Specification for missing the “Cross-reference to related applications” is withdrawn in view of Applicant’s amendments to the Specification filed 07/16/2026.
Newly Recited Objections
The disclosure is objected to because of the following informalities: The amendment to Para. [0011], discloses the changes to include the sequence identifiers for Fig. 4A and 4B should be appended to Para. [0012] instead of Para. [0011], as Para. [0011] describes Fig. 3, and Para. [0012] describes Figs. 4A-4C. Appropriate correction is required.
Drawings
The objection to Figs. 2 and 8 for being blurry is withdrawn in view of Applicant’s submission of replacement drawings in the amendment filed 07/16/2026.
Claim Objections
Withdrawn Objections
The objections to claims 16 and 22 are withdrawn in view of Applicant’s amendments to the claims filed 07/16/2026 (Applicant’s Remarks, Pg. 11).
Newly Recited / Maintained Objections
Claims 22 is objected to because of the following informalities:
Claim 22 contains bullet points, which should be corrected to remove the bullet points, as it is not standard U.S. practice.
Appropriate correction is required.
Response to Arguments Regarding Claim Objections
1. Applicant argues that claims 16 and 22 have been amended to address objections identified by the Office (Applicant’s Remarks, Pg. 11).
It is respectfully submitted that this is not persuasive for the following reasons:
While Examiner agrees that claim 16 (as well as withdrawn claims) have been amended to remove bullet points, it appears the bullet points in claim 22 were not removed. Therefore, the objection to claim 22 is maintained.
Claim Rejections - 35 USC § 112(b)
Withdrawn Rejections
The rejection of claims 16-19 and 21-22 under 35 U.S.C. 112(b) as being indefinite is withdrawn in view of Applicant’s amendments to the claims filed 07/16/2026 and Applicant’s Remarks were found persuasive (Applicant’s Remarks, Pg. 11-12). Specifically, when read in view of the Specification, the “data storage medium” recites a physical material for data storage including a plurality of particles, rather than a computer program product.
Newly Recited Rejections
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 22 and 26 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.
This rejection is newly recited and necessitated by claim amendment.
Claim 22 recites “…wherein the plurality of particles comprises silica beads; and/or the plurality of particles; the plurality of particles have a concentration of at most 2mg/g of DNA; and/ or the thermo-polymer comprises polycaprolactone (PCL), polymethylmethacrylate (PMMA), polylactic acid (PLA), acrylonitrile butadiene styrene (ABS) or poly(lactic-coglycolic acid) (PLGA) or a combination thereof”. The metes and bounds of the claim are rendered indefinite due to the lack of clarity. The second description of “the plurality of particles” does not contain a complete description of the particles. In the amendment, the description of the “plurality of particles” was removed, but it is unclear if the “plurality of particles” is intended to have a new descriptor, or alternatively if the phrase was meant to be removed completely. This rejection can be overcome by amendment of claim 22 to clarify the description of the “plurality of particles” or remove the phrase from the claim. Claim 26 is also rejected due to its dependency from claim 22.
Claim Rejections - 35 USC § 103
The rejection of claims 16-18 and 21-22 under 35 U.S.C. 103 as being unpatentable over Grass et al. in view of Kyratsis et al. is withdrawn in view of Applicant’s persuasive remarks (Applicant’s Remarks, Pg. 12-16). Specifically, Grass et al. teaches a method for storing digital information on DNA by encapsulating DNA in silica spheres. However, Grass et al. does not teach the subsequent homogeneous embedding of the silica spheres in a thermo-polymer. Kyratsis et al. teaches a method for embedding silica in acrylonitrile butadiene styrene (a thermo-polymer) for 3D printing but does not provide motivation or teachings for encapsulating a sequence-controlled polymer (e.g., DNA) in the embedded silica. Therefore, neither Grass et al. nor Kyratsis et al. teaches the encapsulation of a sequence-controlled polymer in a particle that is embedded within a thermo-polymer with a homogeneous distribution.
The rejection of claim 19 under 35 U.S.C. 103 as being unpatentable over Grass et al. in view of Kyratsis et al. and Erlich et al. is withdrawn for the same reasons as described above for claims 16-18 and 21-22 (Applicant’s Remarks, Pg. 16). Erlich et al. also does not teach the encapsulation of DNA in a particle which is homogeneously distributed in a thermo-polymer.
Conclusion
Claims 16-19, 21, and 27 are allowed.
Claims 22 and 26 are rejected.
Claims 16-19, 21-22, and 26-27 appear to be free from the prior art because the prior art does not fairly suggest or teach the encapsulation of sequence-controlled polymers that are homogeneously distributed within a thermo-polymer. The closest prior art is Grass et al. (Robust Chemical Preservation of Digital Information on DNA in Silica with Error-Correcting Codes. Angew. Chem. Int. Ed. 54: 2552-2555 (2015); published 2/4/2015; cited in the IDS dated 12/16/2021; previously cited). Grass et al. discloses a method for storing digital information on DNA by encapsulating DNA in silica spheres and employing error-correcting codes to correct storage-related errors (Abstract; and Pg. 2552, Scheme 1). However, Grass et al. does not teach that the silica spheres are then embedded within a thermo-polymer with a homogeneous distribution, as disclosed in instant claim 16. Claims 17-19, 21-22, and 26-27 appear to be free from the prior art due to their dependency on claim 16.
Note: Examiner notes that once claims 16-19, 21-22, and 26-27 are all found allowable, withdrawn claims 1-4, 6-12, 14-15, and 23-25, considered for rejoinder, will recite objections and/or 112(b) rejections as follows: (i) Objections for grammatical informalities (Claims 1, 7-8, 10, and 15); and (ii) 112(b) rejections for recitation of “particularly” and definition of “the data”, e.g. input data vs. data containing feedstock (claim 8).
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.
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/D.P.S./Examiner, Art Unit 1687
/Lori A. Clow/Primary Examiner, Art Unit 1687
