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
This Non-Final Office Action is responsive to the communication received 2/6/2023.
Claims 1-5, 9, 11-14, 17, 19, 21-25, 28 and 36-37 are pending.
Claims 1-5, 9, 11-14, 17, 19, 21-25, 28 and 36-37 are under examination in this Office Action.
Claim Rejections - 35 USC § 103(a)
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. § 103(a) 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.
5. Secondary considerations (objective evidence of nonobviousness): a) commercial success; b) long felt need; c) evidence of unexpected results; d) skepticism of experts; and e) copying.
Common Ownership of Claimed Invention Presumed
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the Examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the Examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
Claims 1-5, 9, 11-14, 17, 19, 21-25, 28 and 36-37 are rejected under 35 U.S.C. 103(a) as being unpatentable over Rodriguez-Meira et al. (03/01/2019) Molecular Cell volume 73 pages 1292 to 1305 cited in the 11/22/2024 IDS (hereinafter known as "Rodriguez-Meira") in view of Jiang et al. (01/10/2019) PCT International Patent Application Publication WO 2019/010486 A1 cited in the 8/24/2022 IDS corresponding to (04/30/2020) US Patent Application Publication 2020/0131564 A1 (hereinafter referred to as "Jiang").
With regards to claims 1 and 36-37, Rodriguez-Meira teaches:
a) as in claims 1 and 36-37, a method for generating a nucleic acid library, the method comprising: obtaining RNA and DNA from a single cell within a droplet; priming the RNA from the single cell using a primer within the droplet; generating cDNA comprising the primer from the primed RNA within the droplet; and sequencing at least the cDNA and the DNA of the single cell or sequences derived from the cDNA and the DNA of the single cell; wherein sequencing at least the cDNA of the single cell results in at least a 2-fold increase in percentage of mapped reads in comparison to a workflow process that implements oligo dT primers as opposed to digestible primers; wherein sequencing at least the cDNA of the single cell results in at least a 2-fold increase in percentage of reads with a valid barcode in comparison to a workflow process that implements oligo dT primers as opposed to digestible primers (see entire document especially Figure 1 and pages e4 to 38).
Rodriguez-Meira does not explicitly teach:
a) as in claims 1-5, 9, 11-14, 17, 19, 21-25 and 28, a method for generating a nucleic acid library, the method comprising: obtaining RNA and DNA from a single cell within a droplet; priming the RNA from the single cell using a digestible primer within the droplet; generating cDNA comprising the digestible primer from the primed RNA within the droplet; digesting the digestible primer; wherein the digestible primer comprises one or more ribonucleotide nucleobases; wherein the digestible primer comprises one or more ribonucleotide nucleobases; wherein the digestible primer comprises a combination of deoxyribonucleotide and ribonucleotide nucleobases; wherein the digestible primer comprises a ribonucleotide nucleobase every 2 nucleobases; wherein the digestible primer comprises at least 3 consecutive ribouridine nucleobases; wherein digesting the digestible primer comprises exposing the digestible primer to a RNase; wherein the RNase is one of RNase A; wherein the digestible primer comprises one or more uracil nucleobases; wherein the digestible primer comprises a uracil nucleobase every 3 nucleobases; wherein the digestible primer comprises at least 3 consecutive deoxyuridine nucleobases; wherein digesting the digestible primer comprises exposing the digestible primer to uracil-DNA glycosylase (UDG); wherein digesting the digestible primer occurs within a second droplet; wherein digesting the digestible primer occurs subsequent to a first cycle of nucleic acid amplification; wherein subsequent to generating cDNA and prior to digesting the digestible primer: synthesizing a nucleic acid product derived from the cDNA, the nucleic acid product further comprising a sequence derived from a sequence of the digestible primer; wherein digesting the digestible primer occurs prior to a first cycle of nucleic acid amplification; wherein subsequent to digesting the digestible primer: synthesizing a nucleic acid product derived from the cDNA, the nucleic acid product lacking a sequence derived from a sequence of the digestible primer; and priming the synthesized nucleic acid using a gene specific primer different from the digestible primer; wherein prior to digesting the digestible primer: priming the cDNA using a random primer; and synthesizing a nucleic acid product derived from the cDNA, the nucleic acid product further comprising a sequence derived from a sequence of the digestible primer.
With regards to claims 1-5, 9, 11-14, 17, 19, 21-25 and 28, Jiang teaches:
a) as in claims 1-5, 9, 11-14, 17, 19, 21-25 and 28, a method for generating a nucleic acid library, the method comprising: obtaining RNA and DNA from a single cell within a droplet; priming the RNA from the single cell using a digestible primer within the droplet; generating cDNA comprising the digestible primer from the primed RNA within the droplet; digesting the digestible primer; wherein the digestible primer comprises one or more ribonucleotide nucleobases; wherein the digestible primer comprises one or more ribonucleotide nucleobases; wherein the digestible primer comprises a combination of deoxyribonucleotide and ribonucleotide nucleobases; wherein the digestible primer comprises a ribonucleotide nucleobase every 2 nucleobases; wherein the digestible primer comprises at least 3 consecutive ribouridine nucleobases; wherein digesting the digestible primer comprises exposing the digestible primer to a RNase; wherein the RNase is one of RNase A; wherein the digestible primer comprises one or more uracil nucleobases; wherein the digestible primer comprises a uracil nucleobase every 3 nucleobases; wherein the digestible primer comprises at least 3 consecutive deoxyuridine nucleobases; wherein digesting the digestible primer comprises exposing the digestible primer to uracil-DNA glycosylase (UDG); wherein digesting the digestible primer occurs within a second droplet; wherein digesting the digestible primer occurs subsequent to a first cycle of nucleic acid amplification; wherein subsequent to generating cDNA and prior to digesting the digestible primer: synthesizing a nucleic acid product derived from the cDNA, the nucleic acid product further comprising a sequence derived from a sequence of the digestible primer; wherein digesting the digestible primer occurs prior to a first cycle of nucleic acid amplification; wherein subsequent to digesting the digestible primer: synthesizing a nucleic acid product derived from the cDNA, the nucleic acid product lacking a sequence derived from a sequence of the digestible primer; and priming the synthesized nucleic acid using a gene specific primer different from the digestible primer; wherein prior to digesting the digestible primer: priming the cDNA using a random primer; and synthesizing a nucleic acid product derived from the cDNA, the nucleic acid product further comprising a sequence derived from a sequence of the digestible primer (see [0087] to [0135]).
One of ordinary skill in the art before the time of the effective filing date of the claimed invention would have had a reasonable expectation of success in arriving at the Applicant's invention as claimed with the above cited references before them. One of ordinary skill in the art before the time of the effective filing date of the claimed invention would have recognized the advantages of substituting Jiang's method of generating cDNA using a digestible primer from the primed RNA within a droplet for Rodriguez-Meira's DNA cDNA generation method because using digestible primers both remove primer-dimers and reduce crosstalk between DNA and RNA and therefore improve the quality of cDNA generated. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the time of the effective filing date of the claimed invention.
Conclusion
No claim is allowed.
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/CHRISTIAN C BOESEN/Primary Examiner, Art Unit 1684