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 .
Receipt and entry of the response dated 1/2/2026 is acknowledged.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 2, 4, 5, 7, 11-14, 17, 25, 26, 29, 35, 37 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al (ACS Nano, Feb. 11, 2020). This rejection is maintained for reasons made of record in the Office Action dated 10/2/2025 and for reasons set forth below.
Response to Arguments
Applicant's arguments filed 1/2/2026 have been fully considered but they are not persuasive. Applicants essentially assert that Wang et al teach a labeled sgRNA or an labeled sgRNA/Cas9 complex, not a labeled Cas9.
Such is not convincing. The Cas9 of Wang et al is considered to comprise a label because the Cas9 protein, or Cas9/gRNA complex, was detectable by such labels. That is, the Cas9 binds the label in a non-covalent manner and thus “comprises” the label. The claims do not recite a specific label attachment to the Cas9 protein, e.g. “covalently labeled”, as applicants appear to argue. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a label “directly conjugated” to the Cas9) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 2, 4, 5, 7, 11-14, 17, 20-22, 25, 26, 29, 35, 37, 42-44 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al (ACS Nano, Feb. 11, 2020) in view of Zhang et al (US 20210292824 A1, e.f.d. 3/23/2020). This rejection is maintained for reasons made of record in the Office Action dated 10/2/2025 and for reasons set forth below.
Response to Arguments
Applicant's arguments filed 1/2/2026 have been fully considered but they are not persuasive. Applicants essentially assert that neither Wang or Zhang et al teach a labeled sgRNA or an labeled sgRNA/Cas9 complex, not a labeled Cas9.
Such is not convincing. The Cas9 of Wang et al is considered to comprise a label because the Cas9 protein, or Cas9/gRNA complex, was detectable by such labels. That is, the Cas9 binds the label in a non-covalent manner and thus “comprises” the label. The claims do not recite a specific label attachment, e.g. “covalently labeled”, as applicants appear to argue. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a label “directly conjugated” to the Cas9) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Conclusion
THIS ACTION IS MADE FINAL. 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 Michael Burkhart whose telephone number is (571)272-2915. The examiner can normally be reached M-F 8-5.
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/MICHAEL D BURKHART/Primary Examiner, Art Unit 1638