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 .
Applicant previously canceled claims 12-14. Claims 1-11 and 15-20 are currently pending and under examination. Any objection or rejection of record in the previous Office Action, which is not addressed in this action has been withdrawn in light of Applicant’s amendments and/or arguments. This action is Final.
Information Disclosure Statement
The Information Disclosure Statement filed March 31, 2026 has been considered.
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.
Claim 1-2, 4-6, 11, 16 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al. (U.S. Patent Application Publication US 2018/0044668 A1, published February 15, 2018). This is a new rejection as necessitated by amendments.
Regarding claim 1, Jiang teaches a deoxyribonucleic acid (DNA) end repair reagent comprising a DNA end repair combinatorial enzyme and a single strand DNA-binding protein (SSB). (Page 1, [0003], Page 4, [0032], Page 13, [0109] and Page 19, [0180]-[0181]). Jiang teaches a concentration of the SSB in the DNA end repair reagent is in an increasing concentration range without limitation (Page 19, [0181]). Jiang teaches a higher concentration of SSB further increased the ligation efficiency and that SSB proteins binding to the single stranded region and stabilize the DNA (i.e., improving yield and conversion efficiency; Page 19, [0180]-[0181], Page 25, [0242] and Page 26, [0252]).
Regarding claim 2, Jiang teaches the SSB is a T4 gene 32 protein (Page 19, [0175]).
Regarding claim 4, Jiang teaches a concentration of the SSB in the DNA end repair reagent as discussed above.
Regarding claim 5, Jiang teaches the DNA end repair combinatorial enzyme includes an enzyme I having a 5'-3' DNA polymerase activity and a 3'-5' DNA exonuclease activity (Pages 12-13, [0107]-[0108]).
Regarding claim 6, Jiang teaches the enzyme I includes a Klenow fragment (Pages 12-13, [0107]-[0108]).
Regarding claim 11, Jiang teaches a deoxyribonucleic acid (DNA) end repair kit, comprising the DNA end repair reagent according to claims 1 (see Instant Claim 1 and Page 23, [0233]).
Regarding claim 16, Jiang teaches a method for constructing a deoxyribonucleic acid (DNA) library (Page 2, [0013]). Jiang teaches fragmenting the genomic DNA to obtain first DNA fragments (Page 4, [0032]). Jiang teaches treating the first DNA fragments by using the DNA end repair reagent according to any one of claim 1 to obtain second DNA fragments (see Instant Claim 1 and Page 4, [0032]). Jiang teaches the first and second DNA fragments being each a fragment with flush ends which is phosphorylated at 5' ends and with adenine (A) at 3' ends (Page 2, [0015]). Jiang teaches treating at 23°C for 15 mins and to 60-70°C for 10 min to 20 mins. (Page 14, [0130], Page 15, [0134], Page 16, [0147], Page 20, [0201] and Page 27, [0256]). Jiang teaches then treating at 60°C to 70°C for 10 min to 20 min (Page 7, Sixth Paragraph). Jiang teaches ligating sequencing adapters to the second DNA fragments to obtain adapter ligation products and purifying the adapter ligation products, and enriching the purified products (Abstract, Page 1, [0003], Pages 5-6, [0044]-[0045], Page 21, [0206], Pages 20-21, [0202] and Page 27, [0267]-[0268]).
Regarding claim 18, Jiang teaches a dNTP, and the DNA end repair combinatorial enzyme further includes an enzyme II that add A to a 3' end of DNA, and an enzyme III capable of phosphorylating a 5' end of the DNA (Page 2, [0015] and Page 4, [0032]).
Regarding claim 19, Jiang teaches the enzyme II includes a Taq DNA polymerase, and the enzyme Ill includes a T4 polynucleotide kinase (T4 PNK) (Page 2, [0015] and Page 12, [0107]).
Jiang does not explicitly teach the range of a concentration of the SSB in the DNA end repair reagent is explicitly in the range of 1.1 μg/μL to 2 μg/μL.
However, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the method Jiang to include a concentration of the SSB in the DNA end repair reagent that is in the range of 1.1 μg/μL to 2 μg/μL, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art and not considered inventive. (In re Aller, 105 USPQ 233 (CCPA 1955)). Additional motivation for doing so would to be to use an increased amount/range of the SSB since Jiang teaches using a higher concentration of SSB further increased the ligation efficiency and that SSB proteins bind to the single stranded region and stabilize the DNA, as well as the increasing concentration ranges of SSB tested by Jiang were also stated to be nonlimiting. Therefore one would be motivated to increase the optimum and workable range of SSB used to 1.1 μg/μL to 2 μg/μL to increase yield efficiency and stabilize the DNA as taught by Jiang (Page 19, [0180]-[0181], Page 25, [0242] and Page 26, [0252]).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al. (U.S. Patent Application Publication US 2018/0044668 A1, published February 15, 2018), as applied to claims 1-2, 4-6, 11, 16 and 18-19 above, in view of Fujita et al. (“Gene 32 product, partial [Tequatrovirus T4]-Protein”, GenBank: BAG54790.1, NCBI, published July 26, 2016), cited on the IDS filed April 24, 2023 and May 09, 2023. This is a new rejection as necessitated by amendments.
Regarding claim 3, Jiang teaches using a single-chain binding protein T4GP32 derived from T4 phage (Page 4, Eighth Paragraph).
Jiang does not teach or suggest the amino acid sequence of the SSB is specifically SEQ ID NO: 1.
Fujita teaches a SSB T4 gene 32 product with the amino acid sequence of SEQ ID NO: 1.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the method of Jiang by substituting the specific SEQ ID NO: 1 as taught by Fujita because it has been held that the simple substitution of one known element for another to obtain predictable results is obvious. In re Fout, 213 USPQ 532 (CCPA 1982), In re O'Farrell, 7 USPQ2d 1673 (Fed. Cir. 1988). Simply substituting the sequence of the SSB of Jiang with the specific sequence of Fujita’s SSB would obtain predictable results because both Jiang and Fujita teach using a single-chain binding protein T4GP32 derived from T4 phage.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al. (U.S. Patent Application Publication US 2018/0044668 A1, published February 15, 2018), as applied to claims 1-2, 4-6, 11, 16 and 18-19 above, in view of Nikiforov (WIPO International Application Publication WO 2010/111686 A2, published September 30, 2010), previously cited in the October 27, 2025 Office Action. This is a new rejection as necessitated by amendments.
Regarding claim 7, Jiang teaches the Klenow fragment as discussed above.
Jiang does not teach or suggest a mutant of the Klenow fragment. Jiang does not teach or suggest an amino acid sequence of the mutant of the Klenow fragment is SEQ ID NO: 2.
Nikiforov teaches labels conjugated to both SSBs and polymerases (Page 73, [00363] and Page 84, [00409]). Nikiforov teaches Nikiforov teaches a mutant of Klenow DNA polymerase with the amino acid sequence of instant SEQ ID NO: 2 (Page 86, [00415]-[00416], Page 87, [00426], Page 88, [00428] and Nikiforov SEQ ID NO: 2). Nikiforov teaches using a known concentration of polymerase and the concentration may be user’s choice (Page 167, [00673]). Nikiforov teaches using the mutant of the Klenow polymerase improves the performance of the polymerase (Page 78, [00386]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the teachings of Jiang with the teachings of Nikiforov to using a mutant of Klenow DNA polymerase with the amino acid sequence of Nikiforov’s SEQ ID NO: 2 because using the mutant of the Klenow polymerase would improve the performance of the polymerase as taught by Nikiforov (Page 78, [00386]).
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al. (U.S. Patent Application Publication US 2018/0044668 A1, published February 15, 2018), and Nikiforov (WIPO International Application Publication WO 2010/111686 A2, published September 30, 2010), as applied to claim 7 above, in view of Lubiene et al. (U.S. Patent Application Publication US 2015/0087557 A1, published March 26, 2015), previously cited in the October 27, 2025 Office Action. This is a new rejection as necessitated by amendments.
Regarding claim 8, Jiang teaches in a case where the enzyme I in the DNA end repair combinatorial enzyme includes the Klenow fragment, a concentration of the Klenow fragment in the DNA end repair reagent is in a range of 0.02 U/μL to 0.15 U/μL. (Page 27, [0256]).
Regarding claim 9, Jiang teaches a polyethylene glycol (PEG), the PEG being PEG-8000 (Page 27, [0258]).
Regarding claim 10, Jiang teaches a mass percentage of the PEG in the DNA end repair reagent is in a range of 8% to 25%, inclusive (Page 27, [0258]).
Jiang and Nikiforov do not teach or suggest the specific concentration of the mutant of the Klenow fragment in the DNA end repair reagent is in a range of 0.02 U/μL to 0.15 U/μL.
Lubiene teaches enzyme compositions for end repair, adenylation and phosphorylation (Title). Lubiene teaches single stranded DNA binding proteins (Page 2, [0011]). Lubiene teaches generating fragments prior to end repair using genomic DNA and creating DNA library by joining adapters (Page 3, [0034] and Page 4, [0040]). Lubiene teaches enzyme I includes a Klenow fragment and a mutant of the Klenow fragment (Abstract, Page 2, [0009] and [0011]-[0012], Page 3, [0035]-[0036] and Page 5, [0044]). Lubiene teaches a concentration of the Klenow Fragment is in the range of 0.02 U/μL to 0.15 U/μL and a concentration of the mutant of the Klenow fragment is in a range of 0.02 U/μL to 0.15 U/μL (Page 5, [0044], Page 2, [0023] and Page 3, [0035]-[0036]). Lubiene teaches using these methods and compositions enables efficient one tube blunting, phosphorylation and dA-tailing of DNA fragments, which results in the yield of dATP-extended DNA fragments exceeding 75% as well as reduces reaction times and minimizes errors (Page 4, [0040]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the teachings of Jiang with the teachings of Lubiene to use a concentration of the of the Klenow fragment in a range of 0.02 U/μL to 0.15 U/μL. This would enable efficient one tube blunting, phosphorylation and dA-tailing of DNA fragments, which results in the yield of dATP-extended DNA fragments exceeding 75% as well as reduces reaction times and minimizes errors as taught by Lubiene (Page 4, [0040]).
Claim 15, 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al. (U.S. Patent Application Publication US 2018/0044668 A1, published February 15, 2018), as applied to claims 1-2, 4-6, 11, 16 and 18-19 above, in view of Poon et al. (People’s Republic of China Patent Application Publication CN 113026113 A), cited on the IDS filed April 24, 2023 and May 09, 2023. This is a new rejection as necessitated by amendments.
Regarding claim 15, Jiang teaches a deoxyribonucleic acid (DNA) library construction kit, comprising the DNA end repair kit according to claim 11 (see Instant Claim 11 above). Jiang teaches a DNA adapter ligation kit wherein the DNA adapter ligation kit includes a DNA adapter ligation reagent (Pages 1-2, [0011]-[0013] and Pages 23-24, [0232]-[0233]).
Regarding claim 17, Jiang teaches the method for constructing the DNA library according to claim 16 as discussed above.
Regarding claim 20, Jiang teaches the library construction kit as discussed above.
Jiang does not teach or suggest using a DNA adapter ligation reagent including a polvethyleneglycol - 4000 (PEG-4000), so as to ligate the sequencing adapters to the second DNA fragments. Jiang does not teach or suggest a mass percentage of the PEG-4000 in the DNA adapter ligation reagent is in a range of 8% to 25%.
Poon teaches constructing a library with DNA joint connection reagents PEG 4000-8000, and has the PEG 4000 has a mass percentage of 5-15% (Abstract, Page 3, Ninth Paragraph and claims 1-11). Poon teaches using Klenow fragment as well as T4 PNK (Page 7, Second to last Paragraph). Poon teaches using the concentration of 5-15% PEG in the connection buffer system increases the connection efficiency and reduces the mismatch rate (Page 8, First-Third Paragraph, Page 2, Seventh Paragraph and Page 5, Sixth Paragraph).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the teachings of Jiang with the teachings of Poon, using DNA adapter ligation reagents including PEG- 4000 and the PEG-4000 is in the range of 8% to 25%. Using the concentration of 5-15% PEG in the connection buffer system increases the connection efficiency and reduces the mismatch rate as taught by Poon (Page 8, First-Third Paragraph, Page 2, Seventh Paragraph and Page 5, Sixth Paragraph).
Response to Arguments
Applicant’s arguments and amendments filed January 21, 2026, with respect to the
rejections under 35 U.S.C. § 102 have been fully considered and are persuasive. Therefore, this
rejection has been withdrawn.
However, upon further consideration, new grounds of rejection under 35 U.S.C. § 103 are made in view of Applicant’s amendments.
As discussed above, newly cited Jiang discloses a deoxyribonucleic acid (DNA) end repair reagent comprising a DNA end repair combinatorial enzyme and a single strand DNA-binding protein (SSB) as well as a concentration of the SSB in the DNA end repair reagent is in an increasing concentration range without limitation. Jiang additionally discloses a higher concentration of SSB further increased the ligation efficiency and that SSB proteins bind to the single stranded region and stabilize the DNA (i.e., improving yield and conversion efficiency). It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the method Jiang to include a concentration of the SSB in the DNA end repair reagent that is in the range of 1.1 μg/μL to 2 μg/μL, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art and not considered inventive. (In re Aller, 105 USPQ 233 (CCPA 1955)). Additional motivation for doing so would to be to use an increased amount/range of the SSB since Jiang discloses using a higher concentration of SSB would further increase the ligation efficiency and that SSB proteins bind to the single stranded region and stabilize the DNA, as well as the increasing concentration ranges of SSB tested by Jiang were also directly stated to be nonlimiting. Therefore one would be motivated to increase the optimum and workable range of SSB used to 1.1 μg/μL to 2 μg/μL to increase yield efficiency and stabilize the DNA as taught by Jiang (Page 19, [0180]-[0181], Page 25, [0242] and Page 26, [0252]).
Applicant asserts the newly amended concentration range of claim 1, has shown a significant and unexpected technical advantage of improving library yield and conversion efficiency in DNA library construction. However as discussed above, Jiang’s teachings do disclose this benefit and therefore it would not be considered and unexpected technical advantage. Furthermore, it has been long held that "even though applicant's modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art, unless the claimed ranges 'produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art." In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) (quoting In re Aller, 220 F.2d 454, 456 (1955), and citing In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)).
Therefore, for these reasons and those listed above, Jiang, Jiang in view of Fujita, Jiang in view of Nikiforov, Jiang and Nikiforov in view of Lubiene as well as Jiang in view of Poon, are deemed to render the instant invention obvious.
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 JESSICA DANIELLE PARISI whose telephone number is (571)272-8025. The examiner can normally be reached Mon - Friday 7:30-5:00 Eastern with alternate Fridays off.
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/JESSICA D PARISI/Examiner, Art Unit 1684
/HEATHER CALAMITA/Supervisory Patent Examiner, Art Unit 1684
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