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 04/06/2026.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/06/2026 has been entered.
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 57-75 are rejected under 35 U.S.C. 103(a) as being unpatentable over Estandian et al. (07/09/2020) US Patent Application Publication 2020/0217853 A1 cited in the 2/15/2023 IDS (hereinafter known as "Estandian") in view of Chichili et al. (2012) Protein Science volume 22 pages 153 to 167 (hereinafter known as "Chichili").
With regards to claims 57-75, Estandian teaches:
a) as in claims 57-75, a method for linearly expanding a peptide comprising: (a) contacting the peptide with a binding element that interacts with a terminal amino acid or a terminal amino acid derivative of the peptide to form an element-peptide complex; (b) tethering the element-peptide complex to a substrate; and (c) cleaving the element-peptide complex from the peptide resulting in an element-amino acid complex bound to the substrate, wherein the element-amino acid complex comprises a linker that provides an attachment point for a further element-peptide complex; wherein the further element-peptide complex is generated by contacting the peptide with a further binding element that interacts with a next amino acid of the peptide; further comprising repeating (a) through (c) one or more times; wherein (a) through (c) are repeated for all amino acids of the peptide; wherein, prior to (a), the peptide is affixed to a substrate; wherein the substrate comprises a functionalized surface; further comprising (d) contacting the next, now terminal amino acid of the peptide with a further binding element to form the further element peptide complex; (e) tethering the further element-peptide complex to the linker of the element-amino acid complex of (c); further comprising, (f) cleaving the further element-peptide complex from the peptide, thereby providing linked element-amino acid complexes bound to the substrate; wherein the distance between the amino acids has been increased; wherein the binding element comprises a terminal amino acid reactive group, a tetherable group, and the linker or an attachment point for the linker; wherein the terminal amino acid reactive group is an isothiocyanate; wherein the linker is a charged linker; further comprising detecting the amino acid of the element-amino acid complex; wherein the detecting comprises contacting the element-amino acid complex with an element-amino acid complex binder and detecting the element-amino acid complex binder bound to the element-amino acid complex; wherein the detecting comprises use of a nanopore; further comprising performing (a) through (c) on one or more additional peptides, thereby linearly expanding the two or more peptides; wherein, prior to (a), the two or more peptides are independently affixed to the substrate; wherein the linker is configured to couple two or more element-amino acid complexes (see Figures 1-2 and 4 and [0026] to [0141]).
Estandian does not explicitly teach:
a) as in claim 57, attaching the linker to the element of the element-amino acid complex.
With regards to claim 57, Chichili teaches:
a) as in claim 57, attaching the linker to the element of the element-amino acid complex (see entire article especially abstract).
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 combining Chichili's linker with Estandian's linearly expanding a peptide to generate peptides of greater length. 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.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Christian Boesen whose telephone number is 571-270-1321. The Examiner can normally be reached on Monday-Friday 9:00 AM to 5:00 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Heather Calamita can be reached at 571-272-2876. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice .
/CHRISTIAN C BOESEN/Primary Examiner, Art Unit 1684
Prosecution Insights