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
Acknowledgement is hereby made of receipt and entry of the communication filed on Jan. 02, 2026. Claims 1-9 are pending and are currently examined.
Claim Objection
(Previous objection- maintained) Claim 5 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). Accordingly, claim 5 has not been further treated on the merits.
Claim Rejections - 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.
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.
(Previous rejection- withdrawn) Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and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This rejection is withdrawn in view of the amendment filed on Jan. 02, 2026.
(Previous rejection- maintained) Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: the sample needs to be in contact with the GRD buffer for performing lysis, washing and elution, which is between the providing a sample; and extracting nucleic acid with the GRD buffer system.
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.
(New Rejection-necessitated by amendment) Claims 1 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Fisher-MagMAX-2018 (https://assets.fishersci.com/TFS-Assets/LSG/manuals/1835M_MM96_AIND_VirRNA_UG.pdf hereinafter, “Fisher”) as evidenced by Fisher-lysis buffer and Tan et al. (J Biomed Biotechnol. 2009) in view of Bouchard et al. (Anal Biochem. 2020 Jan 1; 588:113472. Hereinafter, “Bouchard”), and Yoshino et al. (Breed Sci. 2020 Sep;70(4):481-486. doi: 10.1270/jsbbs.19170. Epub 2020 Jul 3, Hereinafter “Yoshino”).
The amended claim 1 is directed to a GRD buffer system for extracting nucleic acid, the GRD buffer system comprising: a GRD lysis buffer (GRD-LB), wherein the GRD-LB comprises a first buffering agent and a first chaotropic agent; a GRD wash buffer (GRD-WB), wherein the GRD-WB comprises a second buffering agent, a second chaotropic agent, and an alcohol; a GRD elution buffer (GRD-EB), wherein the GRD-EB comprises a third buffering agent; wherein the first chaotropic agent is guanidinium thiocyanate at a concentration of 4 M, the second chaotropic agent is guanidinium thiocyanate at a concentration of 1.82 M, and the GRD-LB further comprises urea as a denaturant; and the GRD buffer system is free of proteinase K.
Fisher teaches a nucleic acid extraction buffer system, a MagMAX™-96 AI/ND Viral RNA Isolation Kit, which is designed for rapid high throughput purification of Avian Influenza (AI) and/or Newcastle Disease (ND) viral RNA from pharynx/tracheal and cloacal swab samples in 96-well plates (See page 5). At the same time, there is no proteinase K disclosure in the Fisher-MagMAX-2018.
Fisher further teaches that the MagMAX™-96 AI/ND Viral RNA Isolation Kit uses a classic method for disrupting viral particles in a guanidinium thiocyanate-based solution/buffer that rapidly releases viral RNA while simultaneously inactivating nucleases in the sample matrix (See page 7), where the guanidinium thiocyanate is the first chaotropic agent used in the DNA and RNA extraction lysis buffer and the guanidinium thiocyanate-based solution is the first buffer in the lysis buffer, which can be evidenced by the Fisher-Lysis Buffer. The Fisher-lysis buffer discloses that the composition of guanidinium thiocyanate-based solution/buffer is as the follow: 4 M Guanidinium thiocyanate (GITC), 55* mM Tris-HCl, 25 mM EDTA (Ethylenediaminetetraacetic acid), 3 % (v/v) Triton X-100 and 0.01 % (w/v) Bromophenol blue (*NOTE: calculated from the total amount of 0.1 M Tris pH 7.6 added, diluted by the degree of volume expansion observed when the GITC goes into solution) ) (See page 2), where the Tris-HCI is a buffering agent.
Accordingly, Fisher teaches a lysis buffer comprising a first buffer guanidinium thiocyanate-based solution with Tris and EDTA. Here the first chaotropic agent can be the “4M guanidinium thiocyanate” and the buffering agent can be “Tris”. However, Fisher is silent on the GRD-LB further comprises urea as a denaturant.
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Based on the Table 1 of Fisher (See Table 1, page 5 and below), it teaches that the wash solution/buffer contains ethanol that is described as step 3 at “add 80 mL 100% ethanol to the bottle labeled Wash Solution 2 Concentrate and mix well. Mark the label to indicate that the ethanol was added. The resulting mixture is called Wash Solution 2” (See page 10, steps 3), where the ethanol is also known as alcohol. Also, Fisher teaches that the wash buffer contains the isopropanol as described as “add 35 mL 100% isopropanol to the bottle labeled Wash Solution 1 Concentrate and mix well” (See page 10, step 2).
However, Fisher is silent on the second chaotropic agent is guanidinium thiocyanate at a concentration of 1.82 M and buffering agent.
For the third buffer, Fisher also does not disclose the components buffer (the third buffer) used for the Elution buffer. However, Fisher teaches that the TE buffer (10-mM Tris-HCl pH 8, 1 mM EDTA) can be used to dilute RNA (See page 13) It is a common knowledge in the art that the TE buffer is commonly used to elute and store DNA/RNA. It is reasonable to consider that the Elution buffer of Fisher can be a TE-based buffer, which can be considered the third buffer agent such as Tris in the elution buffer. This can be evidenced by Tan’s study. Tan teaches that TE buffer or water can be used to elute the nucleic acid (See page 4, left column, paragraph 5).
Based on the description above, Fisher is silent on the GRD-LB further comprises urea as a denaturant, and is also silent on the second chaotropic agent is guanidinium thiocyanate at a concentration of 1.82 M and buffering agent. Here Bouchard and Yoshino can further teach the urea and the second chaotropic agent with buffering agent.
Bouchard describes an RNA isolation from corals and other cnidarian species using urea-LiCl as a denaturant (Abstract), and teaches that the urea-LiCl solution plays the dual roles of lysing tissues while preserving the RNA from RNAse degradation (See page 3, right column).
Yoshino teaches a washing buffer including 1 M GTC (guanidinium thiocyanate), 1 mM Tris-HCl, 0.05% Tween 20, 1 M NaCl, 40% IPA, pH 7.5 (See page 482, left column, paragraph 3), and discloses that the GTC-based commercial kits, such as RNeasy and the Agencourt Chloropure Kit (Beckman), include GTC in the wash buffer, but the concentration used is confidential. Given that GTC strongly denatures proteins, excessive carryover of GTC should be avoided. In addition, GTC carryover decreases the 260/230 absorbance ratio. In the comparison of GTC concentrations (0.5–2.0 M) without NaCl and with 2 M GTC for lysis buffer, the highest yields were obtained with 1 M GTC for the wash buffer (See page 483, left column). Yoshino also teaches that the 1 M GTC as the primary wash buffer can yield a higher amount of RNA (See page 483, right column, paragraph 1). Here the Tris-HCl is the buffering agent in the washing buffer.
It would have been prima facie obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to introduce the urea of Bouchard into Fisher’s lysis buffer and introduce the proper GTC concentration and a buffering agent Tris-HCI of Yoshino into Fisher’s washing buffer. One of skill in the art would have been motivated to do so based on the advantage Urea and a proper GTC concentration such as 1M provided. There would have been a reasonable expectation of success to develop a GRD buffer system for extracting nucleic acid as claimed.
As for the GTC taught by Yoshino, the optimal concentration of Yoshino is 1M, which is different from the 1.82 M as claimed in the instant application. According to section 2144.05 of the MPEP, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”). Since Yoshino also teaches that the concentration of GTC used is confidential, and in the comparison of GTC concentrations (0.5–2.0 M) without NaCl and with 2 M GTC for lysis buffer, the highest yields were obtained with 1 M GTC for the wash buffer (9.5 ± 2.7 for 2.0 M GTC, 13.2 ± 2.1 for 1.6 M GTC, 23.0 ± 6.3 for 1 M GTC, and 18.7 ± 4.6 for 0.5 M GTC) (See page 483, bridging left and right columns), which indicates different concentrations of GTC should be achieved with different condition. Therefore, one of ordinary skills would be able to test for an optimal GTC concentration in the washing buffer through routine experimentation. Therefore, the claimed GTC concentration of 1.82M in the washing buffer would have been obvious unless there is evidence showing that they produce unexpected results.
Therefore, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Regarding claims 6-9, they are directed to a method of extracting nucleic acid with the GRD buffer system of claim 1, the method comprising providing a sample; and extracting nucleic acid with the GRD buffer system.
Regarding claim 6, Fisher teaches a method composing acquiring samples from pharynx/tracheal and cloacal swab and then mix with the lysis buffer and going through the washing and elution steps to isolate the RNA (See Figure 1, page 7 and below). Fisher further teaches that The MagMAX™-96 AI/ND Viral RNA Isolation Kit is designed for rapid high throughput purification of Avian Influenza (AI) and/or Newcastle Disease (ND) viral RNA from pharynx/tracheal and cloacal swab [claim 7] samples in 96-well plates. This kit is validated by the National Veterinary Services Laboratories for use in their testing protocol for real-time RT-PCR detection of Avian Influenza A virus and Newcastle Disease virus in clinical samples [claim 9] (see page 5), where the Newcastle Disease virus and avian influenza virus are all respiratory virus [claim 8].
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(New Rejection-necessitated by amendment) Claim 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Fisher-MagMAX-2018 (https://assets.fishersci.com/TFS-Assets/LSG/manuals/1835M_MM96_AIND_VirRNA_UG.pdf) as evidenced by Fisher-lysis buffer and in view of Bouchard et al. (Anal Biochem. 2020 Jan 1; 588:113472. Hereinafter, “Bouchard”), and Yoshino et al. (Breed Sci. 2020 Sep;70(4):481-486. doi: 10.1270/jsbbs.19170. Epub 2020 Jul 3, Hereinafter “Yoshino”) as applied to the claims 1 and 6-9 above, and further in view of Genetic Education at (https://geneticeducation.co.in/importance-of-tris-edta-te-buffer-in-dna-extraction/).
Regarding claims 2-4, it requires that the GRD-LB further comprises a first chelating agent, a first detergent, a first denaturant, and a dye; the GRD-WB further comprises a second chelating agent; and the GRD-EB further comprises a third chelating agent.
Based on the description above, Fisher teaches a comparable GRD buffer system: 4 M Guanidinium thiocyanate (GITC)
55 mM* Tris-HCl
25 mM EDTA (Ethylenediaminetetraacetic acid)
3 % (v/v) Triton X-100
% (w/v) Bromophenol blue.
Here it teaches a first chelating agent EDTA, a first detergent Triton X-100 and a dye of Bromophenol blue. Also, Fisher in view of Bouchard teaches a first denaturant of urea.
For the GRD-EB solution, Fisher teaches a TE elution buffer that (10-mM Tris-HCl pH 8, 1 mM EDTA), where the EDTA is the third chelating agent.
Fisher is silent on a second chelating agent in the washing buffer. However, Genetic Education teaches the importance of Tris-EDTA (TE) Buffer in DNA Extraction and teaches that Tris and EDTA are used throughout the DNA extraction protocol as components of lysis buffer, elution buffer and washing buffer and helps to achieve the final goal that is to get pure DNA (See page 3). Genetic Education further teaches that TE (Tris-EDTA) buffer system consists of Tris and EDTA and has a significant role in DNA extraction to dissolve the DNA precipitate and maintains the constant pH of the reaction and thus protects the biomolecule (See page 1), and protect the DNA from harmful chemical degradation (See page 3). Genetic Education also teaches that the EDTA works as a chelating agent in DNA extraction and deactivates DNase or RNase enzymes which digest DNA or RNA, respectively. (See page 4). Accordingly, the Genetic Education teaches that the washing and elution buffer can be Tris-based EDTA buffer that teaches the second chelating agent can include EDTA.
It would be obvious for one of ordinary skill in the art to combine the teachings of Fisher and Genetic Education to arrive at an invention as claimed. One of skill in the art would have been motivated to do so because Genetic Education teaches that Tris and EDTA can protect the nucleic acids from harmful chemical degradation. There would have been a reasonable expectation of success based on the nature of the chelating agents, detergent and denaturant and the dyes, and the composition taught by Fisher and Genetic Education.
Based on the description above, they also teach claim 3 and claim 4 with the buffering agent is Tris, the chelating agent is EDTA, the dye is bromophenol blue, the detergent is Triton X-100 and the alcohol is ethanol or isopropanol (See Fisher, page 10).
Responses to Applicant’s Remarks
Applicant’s arguments filed on Jan. 02, 2026 has been received and fully considered.
Applicant does not response to the objection issued on July 01, 2025. The objection is maintained.
Applicant’s amendment on rejections under 35 U.S.C. § 112(b) regarding claims 1-9 is considered. The rejection is withdrawn.
Applicant’s argument on rejection under 35 U.S.C. § 112(b) regarding claim 6 for omitting essential steps is not found persuasive (See Remarks, bridging pages 6-7) because the claim does not recite complete steps for a method. Thus, the rejection is maintained.
Applicant’s argument on the rejection under 35 U.S.C. § 103(a) is not persuasive.
1). Applicant argued that “the Examiner's assertion that isopropanol in the wash buffer of Fisher-MagMAX-2018 constitutes the second chaotropic agent is incorrect. Isopropanol is an alcohol, not a chaotropic agent” (See Remarks, page 8).
The argument is moot. Based on the amendment, Ku in view of the newly added prior art teaches a second chaotropic agent is guanidinium thiocyanate.
2). Applicant argued that Fisher-MagMAX-2018 does not disclose
guanidinium thiocyanate at a concentration of 1.82M in the wash buffer, nor does it disclose urea as a denaturant in the lysis buffer composition (See Remarks, page 8).
The argument is not persuasive. The newly added prior art teaches using urea as a denaturant in the lysis buffer (Bouchard et al.) and a washing buffer including the guanidinium thiocyanate (Yoshino et al.). Although the concentration of guanidinium thiocyanate (1M) taught is different from the claimed concentration, according to section 2144.05 of the MPEP, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”). One of ordinary skills would be able to test for an optimal guanidinium thiocyanate concentration as claimed in the washing buffer through routine experimentation. Therefore, the claimed guanidinium thiocyanate concentration in the washing buffer would have been obvious unless there is evidence showing that they produce unexpected results.
3). Applicant argued that Genetic Education does not teach or suggest guanidinium thiocyanate at a concentration of 1.82M in a wash buffer, nor does it teach urea as a denaturant in a lysis buffer (See page 8).
The argument is moot. The teaching of the amended 1.82 M guanidinium thiocyanate in a washing buffer and urea in the lysis buffer are cited to other prior arts as “new Rejection-necessitated by amendment”.
4). Applicant’s arguments on claims 2-4 (See pages 8 and 9) are moot because the previous art, Patsos et al., is removed from the current office action.
Also, claims 6-9 are taught by Fisher and are rejected in the current office action.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIXUE WANG whose telephone number is (571)272-7960. The examiner can normally be reached Monday-Friday 8:00 am-5:00 pm, EST.
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/RUIXUE WANG/ Examiner, Art Unit 1672
/NICOLE KINSEY WHITE/ Primary Examiner, Art Unit 1672
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