DETAILED ACTION
Applicant’s response, filed Jun 29 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 Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn.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. They constitute the complete set presently being applied to the instant application.
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 .
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.
Claim Status
Claims 48-71 are pending.
Claims 1-47 and 72-92 are canceled.
Claims 48-71 are rejected.
Priority
This application is a CON of 17/317,547 filed May 11 2021 (now USP 11,306,353), which claims priority to US Provisional Applications 63/023,071 filed May 11 2020, 63/023,342 filed May 12 2020, 63/066,628 filed Aug 17 2020, and 63/165,559 filed Mar 24 2021. However, provisional applications 63/023,071 and 63/023,342 do not provide support for the instant claims, or for claim 49 which recites “wherein the proportionality constant is one”
Accordingly, each of claims 48 and 50-71 are afforded the effective filing date of Aug 17 2020, and claim 49 is afforded the effective filing date of Mar 14 2022.
Drawings
The replacement drawing sheets submitted Jun 29 2026 are accepted and the outstanding objections from the previous Office Action are withdrawn.
Specification
The amendments to the specification submitted Jun 29 2026 are accepted and the outstanding objections from the previous Office Action are withdrawn.
Claim Objections
The outstanding objections to the claims are withdrawn in view of the amendments submitted herein.
Claim Rejections- 35 USC § 112
35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 49-70 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The rejection pertains to new matter. The rejection is newly stated and is necessitated by claim amendment.
Claim 49 recites “wherein the proportionality constant is one”. The specification as published provides support for a proportionality constant at [0018; 020; 0180; 0182], providing an example of the proportionality constant being 200 at [0137]. However, the specification does not provide any other examples or disclosure of what the proportionality constant may be. However, there is not support within the specification, nor has Applicant provided such support, for the proportionality constant being one. Therefore, the limitation introduces new matter.
35 USC § 112(b)
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.
Claims 51-54 and 58-70 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention. The instant rejection is maintained from the Previous Office Action and any changes are necessitated by claim amendment.
Claims 51 and 53-54 recite to changes to “the number” caused by inputting the sample to an operation. However, it is not clear that such an operation of performing PCR as in claim 51, an aliquot in claim 53, and a mixing operation as in claim 54 to the sample would result in a change in the number because the number is part of the numerical data which is stored in the nucleic acids. It is not considered that actions performed on the nucleic acids would result in actual changes in the number of the numerical data, because the numerical data is separate from the nucleic acid sample. It is not clear if the claim actually intends for the number in the numerical data to be changed (i.e., recorded) by performance of the operation on the nucleic acid sample, or if the recited changes to the number is intended to be an intended outcome of the performance of the operation on the nucleic acid sample, where, for example, performance of a PCR cycle in claim 51 doubles the actual number of identifier nucleic acid molecules, as recited in claim 50, which approximates or represents a doubling of the number in the numerical data. For compact examination, it is assumed that the operation approximates or represents an operation on the number of the numerical data rather than requiring the actual change of the number by the operation. The rejection may be overcome by amending the limitations to recite “the actual number” to clearly limit what is being altered in the claim. Claim 52 is rejected based on its dependency from claim 51.
Claim 58 is similarly rejected and interpreted for the reasons stated above for its recitation of “performing a linear function on the vector”, as the number is a first element of a vector, as recited in claim 56. The rejection may be overcome by amending claim 58 to recite “[[the]] an output vector” in line 2 and “[[an]] the output vector” in line 6. Claims 59-70 are rejected based on their dependency from claim 58.
Response to Applicant Arguments
At p. 8-9, section 4, Applicant submits that the claims have been amended to overcome the rejections in the previous Office Action. It is respectfully submitted that this is not persuasive. The claims continue to recite “the number” and “the vector” which are interpreted as further limiting the numerical data but not the actual nucleic acids. Although Applicant has added limitations which further limit the actual and output numbers of the identifier nucleic acid molecules, there is no description of how such changes are reflected back to the number or vector of the numerical data. Applicant may amend the claims as suggested in the above rejections to clearly limit the scope to changing the actual or output numbers or vectors of the nucleic acid molecules, or may add a limitation directed to recording such changes in the numerical data in response to the recited physical steps.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 48-50, 55-57, and 71 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mills et al. (Soft Computing, 2001, 5(1):10-18; newly cited).
Claim 48 discloses a method for storing numerical data in nucleic acids, the method comprising: determining an expected copy count of an identifier nucleic acid sequence based on the numerical data and a proportionality constant, wherein the nucleic acids comprise double stranded DNA, and the numerical data is a number and the expected copy count is proportional to the number; and generating a sample containing an actual number of identifier nucleic acid molecules each having the identifier nucleic acid sequence, wherein the actual number approximates the expected copy count.
Mills discloses a model for a DNA analog neural network (abstract). Mills teaches a DNA hybridization chip as a means for interconverting a collection of DNA strands and a block of analog or digital data (i.e., storing data) (p. 11, col. 1, par. 3). Mills teaches that the DNA chip (i.e., generated sample) is available as an array of up 106 pixels, each of which is coated with a unique type of single stranded DNA (i.e., identifier nucleic acid) at a density of about 104 molecules per um2 (i.e., an actual number), where the single stranded DNA of the chip carry a set of strands Ei and is saturated with hybridized complementary strands, where each tethered DNA strand is bound to its complementary strand (i.e., double stranded DNA) (p. 11, col. 1, par. 3 through col. 2, par. 1). Mills teaches flashing an image corresponding to the a-th data vector on the chip to cause local heating of the double stranded DNA, thereby releasing a number ni of single stranded Ei molecules such that one or more bits of amplitude information can be encoded into the concentrations of Ei (p. 11, col. 2, par. 1). Mills teaches that a DNA sample containing Ei strands with concentrations [Ei] are proportional to the amplitudes of vector Vi (p. 11, col. 1, par. 1). As Mills teaches that the concentration of liberated single stranded DNA are proportional to the amplitudes of the vector or intensity scale of the flash, and that by suitable calibration of the image intensity scale allows for encoding of amplitude information into the concentrations of single stranded Ei (i.e., determining an expected copy count based on the numerical data and a proportionality constant) (p. 11, col. 1, par. 1 and col. 2, par. 1), it is considered that the actual number of double stranded DNA in the chip also approximates the expected copy number and is also proportional to the expected, and that Mills fairly teaches that the actual number of the double stranded DNA is proportional to the expected copy count.
Regarding claim 49, Mills teaches claim 48 as described above. Claim 49 further adds that the proportionality constant is one. Mills teaches that Ei is in a 1:1 correspondence with the basis vectors (p. 11, col. 1, par. 1), which reads on a proportionality constant of one as instantly claimed.
Regarding claims 50 and 55, Mills teaches the method of claim 48-49 as described above. Claim 50 further adds inputting the sample to an operation to produce an output sample having an actual number of output identifier nucleic acid molecules, wherein the actual number of output identifier nucleic acid molecules approximates an expected output copy count that is proportional to an output number. Claim 55 further adds inputting the output sample to a second operation.
Regarding claim 50, Mills teaches flashing an image (i.e., an operation) corresponding to the a-th data vector on the chip to cause local heating of the double stranded DNA, thereby releasing a number ni of single stranded Ei molecules (i.e., output sample) such that one or more bits of amplitude information can be encoded into the concentrations of Ei (p. 11, col. 2, par. 1). Mills teaches that a number ni (i.e., an actual number) of single stranded Ei molecules is released that depends on the temperature dependent rate of dissociation of the double stranded DNA at the i-th pixel, and that by suitable calibration of the image intensity scale the concentration of Ei can encode one or more bits of amplitude information (i.e., expected output number) (p. 11, col. 2, par. 1).
Mills teaches washing the chip following exposure to the image to collect the DNA representation of the data vector and forming an outer product matrix by joining the single-stranded DNA (i.e., a second operation as in claim 55) (p. 11, col. 2, par. 1-2).
Regarding claim 56-57, Mills teaches the method of claim 48-49 as described above. Claim 56 further adds the number is a first element of a vector. Claim 57 further adds determining a second expected copy count of the identifier nucleic acid sequence based on a second element of the vector and the proportionality constant; and generating a second sample containing a second actual number of identifier nucleic acid molecules each having the identifier nucleic acid sequence, wherein the second actual number approximates the second expected copy count.
Regarding claim 56, Mills teaches that Ei is in a 1:1 correspondence with the basis vectors (p. 11, col. 1, par. 1).
Regarding claim 57, Mills teaches flashing an image corresponding to the a-th data vector on the chip to cause local heating of the double stranded DNA, thereby releasing a number ni of single stranded Ei molecules (i.e., generating a second sample) such that one or more bits of amplitude information can be encoded into the concentrations of Ei (p. 11, col. 2, par. 1). Mills teaches that a number ni (i.e., a second actual number) of single stranded Ei molecules is released that depends on the temperature dependent rate of dissociation of the double stranded DNA at the i-th pixel, and that by suitable calibration of the image intensity scale the concentration of Ei can encode one or more bits of amplitude information (i.e., a second expected copy count) (p. 11, col. 2, par. 1).
Regarding claim 71, Mills teaches the method of claim 48 as described above. Claim 71 further adds that at least a portion of each identifier nucleic acid molecule is configured to bind to one or more probes.
Mills teaches that the DNA strands are attached to DNA microplates by hybridization to complementary anchored strands (p. 11, col. 1, par. 3), which reads on a portion of each identifier nucleic acid molecule being configured to bind to one or more probes as instantly claimed.
Response to Applicant Arguments
With respect to Applicant’s arguments under 35 USC 102, the arguments have been fully considered but are moot in view of the new grounds of rejection set forth above as necessitated by claim amendment herein. Although Mills 2001 teaches a similar method as described in the previously cited Mills et al. (Nature Genetics, 1999, 23(3):63-63), Mills 2001 is more detailed about the amount of double stranded DNA in the microchip and the number of single stranded nucleic acids released, which is considered to read on the instant claims as amended, as described in the above rejection.
Claim Rejections - 35 USC § 103
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.
A. Claims 51-54 and 58-62 are rejected under 35 U.S.C. 103 as being unpatentable over Mills, as applied to claim 48-50 and 56-57 in the above 35 USC 102 rejection, and in view of Maley (Evolutionary Computation, 1998, 6(3):201-229; previously cited). The instant rejection is newly stated and is necessitated by claim amendment.
Regarding claims 51-54 and 58-59, Mills teaches the method of claim 48-50 and 56-57 as described above. Claim 51 further limits the operation to multiplying the number by a power of 2 by performing a polymerase chain reaction (PCR) with primers that bind to common regions on an edge of the identifier nucleic acid sequence to form the output sample containing a PCR product. Claim 52 further adds that the power of 2 corresponds to a number of PCR cycles. Claim 53 further limits the operation to multiplying the number by a fraction by performing an aliquot that isolates a fractional volume of the sample to form the output sample. Claim 54 further limits the operation to adding the number as a first number to a second number in a second input sample by a mixing operation that combines the sample and the second input sample to form the output sample. Claim 58 further adds performing a linear function on the vector by at least one of polymerase chain reaction (PCR), aliquoting, and mixing on the first and second samples to produce an output having an actual number of output identifier nucleic acid molecules, wherein the actual number of output identifier nucleic acid molecules approximates an expected output copy count that is proportional to an output first element of an output vector, and a second actual number of output identifier nucleic acid molecules, wherein the second actual number of output identifier nucleic acid molecules approximates a second expected output copy count that is proportional to a second element output vector. Claim 59 further adds converting a binary vector to a unary value in an output sample by performing the linear function.
Mills does not teach these operations or performing a linear function by at least one of PCR, aliquoting, and mixing.
However, Maley discloses an assessment of different manipulations of DNA and the implementation of algorithms for realistic problems in DNA computation (abstract). Maley teaches the manipulation “Amplify”, where “Given a test tube of DNA, make multiple copies of a subset of the strands present. Copies are made with a polymerase chain reaction (PCR). PCR requires a beginning and an ending subsequence, called “primers,” which are usually about 20 base pairs long, to identify the sequence (called the “template”) to be replicated. Copies of these subsequences anneal to the single strands and polymerase enzymes build the complementary strands… Heat then melts apart the double strands, reducing them to single strands, and the process repeats, doubling the number of strands in the test tube each cycle (i.e., power of 2; claim 52).” (p. 202-203, 2.; p. 207, par. 6), which teaches claim 51 and PCR as instantly recited in claim 58. As “performing a linear function on the vector” in claim 58 and “converting a binary vector to a unary value in an output sample by performing the linear function” in claim 59 are interpreted as an intended result of performing at least one of PCR, aliquoting, and mixing in claim 58 (see the above 35 USC 112(b) rejection), it is considered that Maley fairly teaches the limitations of claims 58-59. Maley teaches the manipulation “Separate by Subsequence”, where DNA in a test tube is split into two test tubes, one with the sequences that contain the specified subsequence and the other with rest (p. 207, par. 7), which reads on performing an aliquot that isolates a fractional volume of the sample to form the output sample as in instant claim 53 and aliquoting in instant claim 58. Maley teaches the manipulations “Anneal”, “Ligate”, and “Merge”, where annealing occurs when complementary base pairs of single-stranded complementary DNA are brought into proximity, that ligation concatenates strands of DNA (p. 205, par. 3 and 5), and that two test tubes can be combined by pouring one into the other to merge samples (p. 207, par. 3), each of which read on a mixing operation that combines the sample and the second input sample to form the output sample as instantly recited in claim 54 and mixing in instant claim 58.
Regarding claim 60-61, Mills teaches the method of claim 48-50 and 56-57, and, in view of Maley, the method of claim 58. Claim 60 further adds that the linear function is a scoring function. Claim 61 further adds that the scoring function computes a higher output value for target vectors than for non-target vectors, such that copy counts for identifier sequences corresponding to target vectors are enriched in the output sample.
As “performing a linear function on the vector” in claim 58 and “the linear function is a scoring function” in claim 60 are interpreted as an intended result of performing at least one of PCR, aliquoting, and mixing in claim 58 (see the above 35 USC 112(b) rejection), it is considered that Maley fairly teaches the limitations of claim 60. Maley teaches that good paths (i.e., target vectors) can be replicated using PCR such that the proportion of good paths out-weigh the proportion of bad paths (p. 202-203, 2.), which read on copy counts for identifier sequences corresponding to target vectors being enriched in the output sample as instantly claimed in claim 61.
Regarding claim 62, Mills teaches the method of claim 48-50 and 56-57, and, in view of Maley, the method of claims 58 and 60-61. Claim 62 further adds that identifier sequences corresponding to target vectors are determined by sequencing the output sample, which Mills does not teach.
However, Maley teaches that sequencing DNA is performed by reading the order of nucleotides in a strand (p. 217, par. 3).
Regarding claims 51-54 and 58-62, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine, in the course of routine experimentation and with a reasonable expectation of success, the methods of Mills and Maley because both references teach methods for DNA computation. The motivation to use the manipulations taught by Maley would have been to use realizable processes for manipulating DNA in models built on a set of operations, as taught by Maley (p. 205, par. 2). Thus one of skill in the art would have realized that DNA which correspond to basis vectors as taught by Mills could be manipulated as taught by Maley for the expected result of altering the number of DNA strands. Specifically regarding claim 62, it would be obvious to read the output of the manipulations taught by Maley using sequencing, as taught by Maley at p. 217, par. 3, because such a combination represents the mere application of the known technique of sequencing to the method of Mills in view of Maley as described above.
B. Claims 63-68 are rejected under 35 U.S.C. 103 as being unpatentable over Mills, as applied to claim 48-50 and 56-57 in the above 35 USC 102 rejection, in view of Maley, as applied to claims 58-59 as above, and in further view of Cherry et al. (Nature, 2018; 559(7714):370-376; newly cited). The instant rejection is newly stated and is necessitated by claim amendment.
Regarding claim 63-64, Mills teaches the method of claim 48-50 and 56-57, and, in view of Maley, the method of claims 58 and 60-62. Claim 63 further adds that a ratio of copy counts between two identifier sequences in the output sample is increased by using a double-stranded DNA selection operation to form a new output sample where identifier sequences corresponding to target vectors are even more enriched in the output sample. Claim 64 further adds the double-stranded DNA selection operation, or a repeated application thereof, corresponds to an activation function in a neural network. Mills and Maley do not teach these limitations.
However, the prior art to Cherry discloses DNA winner-take-all neural networks (title). Cherry teaches implementation through DNA-strand-displacement reactions (abstract; Figure 1) where weight multiplications occur through double-stranded displacement (i.e., a double-stranded DNA selection operation) reaction to produce intermediate products which result in the annihilation of other weighted-sum species until only a single winner remains (p. 370, col. 1, par. 3 through col. 2, par. 1). It is considered that the method of Cherry would result in the increase of the copy count of identifier sequence over the others as instantly claimed. Cherry teaches activation of weight molecules and specific set of wires using their method (i.e., claim 64) (p. 375, col. 2, par. 2).
Regarding claim 65, Mills teaches the method of claim 48-50 and 56-57, and, in view of Maley, the method of claims 58 and 60-62, and, in view of Cherry, the method of claims 63-64. Claim 65 further adds that the double-stranded DNA selection operation corresponds to a quadratic function, which neither Mills nor Maley teach.
However, Cherry teaches implementation through DNA-strand-displacement reactions (abstract; Figure 1) where weight multiplications occur through double-stranded displacement (i.e., a double-stranded DNA selection operation) reaction to produce intermediate products which result in the annihilation of other weighted-sum species until only a single winner remains (p. 370, col. 1, par. 3 through col. 2, par. 1). Cherry teaches the number of annihilators grows quadratically with the number of patterns (p. 374, col. 2, par. 2), which reads on a quadratic function as instantly claimed).
Regarding claim 66, Mills teaches the method of claim 48-50 and 56-57, and, in view of Maley, the method of claims 58 and 60-62, and, in view of Cherry, the method of claims 63-65. Claim 66 further adds letting the output sample go to equilibrium prior to the double stranded DNA selection operation, which Mills does not teach.
However, Maley teaches allowing manipulations to finish their work (p. 219, par. 1), which reads on a sample going to equilibrium as instantly claimed.
Regarding claim 67, Mills teaches the method of claim 48-50 and 56-57, and, in view of Maley, the method of claims 58 and 60-62, and, in view of Cherry, the method of claims 63-66. Claim 67 further adds changing the temperature or adding cofactors to the output sample prior to double stranded DNA selection operation, which neither Mills nor Maley teach.
However, Cherry teaches adding fuel strands (i.e., cofactors) to the reaction during the DNA-strand-displacement procedure (p. 370; col. 2, par. 3; Fig. 1).
Regarding claim 68, Mills teaches the method of claim 48-50 and 56-57, and, in view of Maley, the method of claims 58 and 60-62, and, in view of Cherry, the method of claims 63-67. Claim 68 further adds that the double stranded DNA selection operation is at least one of chromatography, gel electrophoresis, mass spectrometry, flow cytometry, fluorescent-activated sorting, membrane capture, silica column capture, silica bead capture, or affinity capture, which neither Mills nor Maley teach.
However, Cherry illustrates that the DNA-strand-displacement process occurs by sequence complementarity (i.e., affinity capture) (Fig. 1d).
Regarding claims 63-68, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine, in the course of routine experimentation and with a reasonable expectation of success, the method of Mills in view of Maley with Cherry because Mills and Cherry both teach methods for DNA-based neural networks. The motivation to perform the operation of Cherry would have been to use a DNA-based neural network which can be trained to recognize patterns, as taught Cherry (abstract).
C. Claims 69-70 are rejected under 35 U.S.C. 103 as being unpatentable over Mills, as applied to claim 48-50 and 56-57 in the above 35 USC 102 rejection, in view of Maley, as applied to claims 58 as above, and in further view of De Silva et al. (BioMed Research International, 2016(1), p.8072463; newly cited). The instant rejection is newly stated and is necessitated by claim amendment.
Regarding claims 69-70, Mills teaches the method of claim 48-50 and 56-57, and, in view of Maley, the method of claim 58. Claim 69 further adds that the vector is a compressed representation of a larger data object, the compressed representation being a hash, a bloom filter, a signature, a structural array, or a fingerprint of the larger data object. Claim 70 further adds that the larger data object is retrieved using the corresponding identifier nucleic acid sequence as a key. Neither Mills nor Maley teach these claims.
However, De Silva discloses methods for encoding and encrypting data onto DNA (abstract). De Silva teaches that many methods exist for compressing data to be stored in DNA sequences (p. 4, col. 1, par. 4; p. 5, col. 1, par. 4 through p. 6, col. 2, par. 4), which reads on at least a signature, structural array, or fingerprint of the larger data object as recited in instant claim 69. De Silva teaches retrieval of DNA encoded data by PCR based amplification (p. 4, col. 1, par. 2), including the use of keys to retrieve certain data (Figure 3; p. 3, col. 1, par. 4 through col. 2, par. 2), each of which reads on retrieving the larger data object using the corresponding identifier nucleic acid sequence as a key as recited in instant claim 70.
Regarding claims 69-70, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine, in the course of routine experimentation and with a reasonable expectation of success, the method of Mills in view of Maley with De Silva because each reference teaches methods for storing information in DNA. The motivation would have been to employ a DNA computer using the methods as taught by De Silva (p. 2, col. 1, par. 3 through col. 2, par. 1). It would have been obvious to compress a larger data object and retrieve it with a key because such a combination represents the mere application of the known techniques of data compression and retrieval in DNA as taught by De Silva to the known method of DNA neural networks as taught by Mills in view of Maley.
Response to Applicant Arguments
At p. 10-11, section 6., Applicant submits that the previously cited Mills et al. (Nature Genetics, 1999, 23(3):63-63) does not teach or suggest every technical feature of independent claim 48, and neither Maley or Cherry remedy the deficiencies of Mills. Further, Applicant submits that Maley fails to teach any methods that employ copy counts as recited in the claimed methods, and that Maley teaches away from piecemeal modification by disparaging each of the approaches reviewed by disparaging each of the approaches reviewed. Applicant also submits that Cherry fails to teach any methods that employ copy counts as recited in the instant claims.
Applicant’s arguments regarding the previously cited Mill have been fully considered but are moot in view of the new grounds of rejection set forth above as necessitated by claim amendment herein, as discussed above in regards to the 35 USC 102 rejection.
Regarding Applicant’s remarks that neither Maley nor Cherry to teach any methods that employ copy counts as recited in the instant claims, it is noted that Maley and Cherry are not relied upon to teach this feature. Mills 2001 is relied upon to teach these limitations which produce single stranded nucleic acids, as well as using the nucleic acid chip as a neural network. As set forth in MPEP 2145.IV., one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. As discussed in the above rejections, it is considered that one of ordinary skill in the art would find it obvious to modify the known method of Mills in view of Maley and Cherry.
Regarding Applicant’s remarks that Maley teaches away from piecemeal modification by disparaging DNA computing, it is noted that MPEP 2141.02VI also sets for that “the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed”. The sections pointed to by Applicant that disparage the field of DNA computation are presented to set forth the state of the field. The objective of the reference to Maley is assess the practicality of the different manipulations of DNA and the implementation of algorithms for realistic problems in order for the field to make progress (abstract). When considering Maley as a whole, the reference sets forth the state of the nascent field of DNA computing and the common DNA manipulation techniques employed therein and proposes potential solutions from the field of DNA manipulation which could be applied to DNA computing. It is therefore considered that Maley does not teach away from modifying DNA computation references, but rather motivates those modifications in the hope of enabling progress.
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 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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/JANNA NICOLE SCHULTZHAUS/Examiner, Art Unit 1685
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