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
All the references cited in the International Search Report have been considered. None is anticipatory to amended claims that are supported by the original disclosure.
Election/Restrictions
The applicant has elected Group II (amended claims 1-4, 6, 9, and 12-14) and the species of p-aminophenylacetic acid, sodium nitrite, and succinic anhydride modified based monomer without traverse. The previous election of species requirement in claim 14 has been withdrawn in view of allowance.
This restriction is made FINAL. See previous action for the reasons of applying restriction.
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.
Claim(s) 1-4, 6, and 12-13 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Choi et al. (KR1020120071463, machine translation provided).
As to claims 1-4, 6, and 12-13, Choi (claims, abs., pg. 2-4) discloses a biosensor produced on a glassy carbon electrode supporting surface (meets the claimed chip surface, according to instant pgpub [0038]):
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p-aminophenylacetic acid (meets the bonding molecule of claims 1-3) is bonded to the surface first, then avidin (comprising diamino groups, meets the claimed arms of claims 1 and 12-13) are attached to p-aminophenylacetic acid moiety via N-Hydroxysuccinimide. Biotinylated probe DNA (meets the functional molecule of claims 1 and 12), which inherently comprises hydroxyl and ester groups as at once envisaged by one of ordinary skill in the art, is finally attached to avidin:
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The resultant
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meets the claimed chip surface linker.
Choi is silent on the process limitations of “direct current voltage”, “acid”, “nitrite”, “sodium nitrite” in claims 1, 4, and 6. However, claim(s) 1-4, 6, and 12-13 is(are) product-by-process claims that are limited by and defined by the product. Determination of patentability is based on the product itself, not on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F. 2d 695, 698,277 USPQ 964,966 (Fed. Cir. 1985). See MPEP § 2113. In this particular case, the disclosed and claimed chip surface linkers show no structurally difference. The claimed process limitation merely enables anchoring p-aminophenylacetic acid to the supporting surface, which is performed via a materially different process of Choi.
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 of this title, 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.
Claim(s) 9 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Choi et al. (KR1020120071463, machine translation provided) in view of Geoghegan et al. (Curr. Protoc. Protein Sci. 86:15.2.1-15.2.20).
Disclosure of Choi is adequately set forth in ¶1 and is incorporated herein by reference.
Choi is silent on the claimed succinic anhydride modified base monomers. Instant pgpub indicates those base monomers include adenine, thymine, guanine, or cytosine, which are contained in DNA molecules, as known to one of ordinary skill in the art.
In the same area of endeavor of producing biosensors, Geoghegan (Introduction) teaches amino group modification is now valued mainly as a key to the preparation of biosensors. Geoghegan discloses succinylation of an amino group on protein (Fig.15.2.4, 15.2.11-12):
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At acidic, neutral, or mildly basic pH (<pH 8.5), most protein amino groups (same amino groups on DNA from adenine, thymine, guanine, or cytosine) are protonated and carry a positive charge. Succinic anhydride reacts with amino groups to give a stable, modified derivative with a negative charge at all pH values where its carboxylic group is not protonated, i.e., at pH>5. This modification can radically alter the solubility of a protein, its ability to participate in intermolecular associations, or its digestibility by a protease.
Therefore, as to claim 9, it would have been obvious to one of ordinary skill in the art to have modified the Choi’s chip surface linker and replaced biotinylated probe DNA with succinic anhydride modified biotinylated probe DNA (having amino groups) in view of Geoghegan, because the resultant biosensor would yield improved stability and solubility.
Allowable Subject Matter
The following is an examiner's statement of reasons for allowance:
Claim(s) 14 is(are) objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim(s) 14 is(are) allowable over the closest prior art: Choi et al. (KR1020120071463, machine translation provided).
Choi fails to teach the claimed arm molecule of the claimed diamines and diols.
Therefore, claims 14 is(are) allowable.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766
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