DETAILED ACTION
Notice of Pre-AIA or AIA Status and New Examiner
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Please note that the examiner for this application has changed. Please address future correspondence to Robert T. Crow (Art Unit 1683) whose telephone number is (571) 272-1113.
Continued Examination Under 37 CFR 1.114
3. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 26 June 2026 has been entered.
Amendments and Status of the Claims
4. This action is in response to papers filed 26 June 2026 in which claims 1, 10-12, and 25-26 were amended, claims 8-9 and 20-21 were canceled, and new claims 33-34 were added. All of the amendments have been thoroughly reviewed and entered.
All previous objections and/or rejections not reiterated below are withdrawn in view of the amendments.
Applicant’s arguments have been thoroughly reviewed and are addressed following the rejections necessitated by the amendments.
5. Claims 1-2, 4-6, 10-13, 18-19, 25-26, 28, and 31-34 are under prosecution.
Information Disclosure Statement
6. The Information Disclosure Statement filed 30 June 2026 is acknowledged and has been considered.
It is noted that the listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification
7. The use of trade names or marks used in commerce (including but not necessarily limited to Tween and Cy3), has been noted in this application. Any trade names or marks should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
8. Claims 2, 10-13, and 33-34 are objected to because of the following informalities:
A. Claims 2 and 13 each contain the text “each of the structural unit comprise,” which appears to be a typographic error.
B. Claims 10, 12, and 33 each contain the text “via reaction,” which is missing an article.
C. Claims 10, 11, 33, and 34 each contain the recitation “group,” each of which is missing an article
Appropriate correction is required.
Claim Rejections - 35 USC § 112
9. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
10. Claims 1-2, 4-6, 10-11, 13, 28, 31-32, and 34 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A. Claim 1 (upon which claims 2, 4-6, 10-11 and 31 depend) is indefinite in the recitation “a primary amino group and/or a secondary amino group.” It is unclear how the amino group can be both primary and secondary.
B. Claims 2 and 13 (upon which claim 32 depends) are each indefinite in the recitation “each of the structural unit,” which lacks antecedent basis in the previous recitation “at least one structural unit” in claims 1 and 12, respectively.
C. Claims 5 and 13 (upon which claim 32 depends) are each indefinite in the recitation “the structural unit,” which lacks antecedent basis in the previous recitation “at least one structural unit” in claims 1 and 12, respectively.
D. Claims 11 and 34 are each indefinite the recitation “the bonding,” which lacks antecedent basis because there is no previous recitation of “bonding.”
E. Claim 28 is indefinite in the recitation “the alkaline solution for covalent bonding,” which lacks antecedent basis because there is no previous recitation of an “alkaline solution for covalent bonding.”
Claim Rejections - 35 USC § 103
11. 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.
12. 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.
13. Claims 1-2, 6, 10-13, and 31-34 are rejected under 35 U.S.C. 103 as being unpatentable over Eeftens et al. (BMC Biophysics, vol. 8, Article No. 9, pages 1-7, published online 25 September 2015) and Utermohlen et al. (U.S. Patent Application Publication No. US 2006/0177855 A1, published 10 August 2006).
Regarding claim 1, Eeftens et al. teach a chip, in the form of an amine coated glass surface (Figure 3 and “Results and Discussion”), to which DBCO-modified nucleic acids are attached to the aminated chip surface using the claimed NHS-PEG-azide linkers (figure 3), which have the added advantage of withstanding very high magnetic forces (Abstract). Thus, Eeftens et al. teach the known techniques discussed above.
While Eeftens et al. teach the chip (i.e., coverslip) is coated with a silane (“Surface functionalization and flow cell assembly”), Eeftens et al. do not teach the chip has an epoxy coating to with an amine polymer is attached.
However, Utermohlen et al. teach chips comprising a substrate, in the form of glass slides (paragraph 150). Utermohlen et al. also teach the reactions described therein are performed on glasses (paragraph 0119), thus, it would have been obvious to perform the reactions performed therein on the chip. Utermohlen et al. further teach a substrate modified with an epoxide, in the form of a solid phase coated with an epoxy silane, wherein the coating is a primary layer for bonding to a second layer (paragraphs 0126-0127), wherein the second layer is a polyamine polymer comprising amino groups (e.g., polylysine, chitosan, or polyethyleneimine), and where the amino groups are linked with the epoxides (paragraph 0127). Utermohlen et al. also teach the substrates have the added advantage of allowing storage and retrieval of biopolymers in the solid state (paragraph 0189). Thus, Utermohlen et al. teach the known techniques discussed above.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the cited prior art to arrive at the instantly claimed composition with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in a composition having the added advantages of withstanding very high magnetic forces as explicitly taught by Eeftens et al. (Abstract) and allowing storage and retrieval of biopolymers in the solid state as explicitly taught by Utermohlen et al. (paragraph 0189). In addition, it would have been obvious to the ordinary artisan that the known techniques of the cited prior art could have been combined with predictable results because the known techniques of the cited prior art predictably result in useful substrates having biopolymers attached thereto.
Regarding claims 2, 6, and 31, the chip of claim 1 is described above. Utermohlen et al teach the polyamine polymer comprising amino groups is any of polylysine, chitosan, or polyethyleneimine (i.e., claim 6; paragraph 0129; see also paragraph 0150). Polylysine has one amino group per monomer, chitosan has two amino groups per monomer, and polyethyleneimine has one amino group per monomer (i.e., claims 2 and 31).
It is noted that the claims do not state whether the amino groups are available after reacting with the epoxides.
Regarding claim 10, the chip of claim 1 is discussed above. Eeftens et al. teach the linker group is NHS-PEG4-azide (“DNA Anchoring”), and the NHS groups is attached via reaction with the amine group (Figure 3).
It is also noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
The courts have also found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II.
Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is advised that MPEP 716.01(c) makes clear that “[t]he arguments of counsel cannot take the place of evidence in the record” (In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965)). Thus, Applicant should not merely rely upon counsel’s arguments in place of evidence in the record.
Regarding claim 11, the chip of claim 10 is discussed above. Eeftens et al. teach DBCO on the nucleic acid covalently binds to the azide group (Figure 3).
Regarding claim 12, Eeftens et al teach a method of forming a chip
in the form of an amine coated glass surface (Figure 3 and “Results and Discussion”), to which probes, in the form of DBCO-modified nucleic acids are attached to the aminated chip surface using the claimed NHS-PEG-azide linkers (figure 3), which have the added advantage of withstanding very high magnetic forces (Abstract). Thus, Eeftens et al. teach the known techniques discussed above.
While Eeftens et al. teach the chip (i.e., coverslip) is coated with a silane (“Surface functionalization and flow cell assembly”), Eeftens et al. do not teach the chip has an epoxy coating to with an amine polymer is attached.
However, Utermohlen et al. teach forming chips comprising a substrate, in the form of glass slides (paragraph 150). Utermohlen et al. also teach the reactions described therein are performed on glasses (paragraph 0119), thus, it would have been obvious to perform the reactions performed therein on the chip. Utermohlen et al. further teach a substrate modified with an epoxide, in the form of a solid phase coated with an epoxy silane, wherein the coating is a primary layer for bonding to a second layer (paragraphs 0126-0127), wherein the second layer is a polyamine polymer comprising amino groups (e.g., polylysine, chitosan, or polyethyleneimine), and where the amino groups are linked with the epoxides (paragraph 0127) which is added after epoxy coating (paragraph 0148). Utermohlen et al. also teach the substrates have the added advantage of allowing storage and retrieval of biopolymers in the solid state (paragraph 0189). Thus, Utermohlen et al. teach the known techniques discussed above.
In addition, with respect to the order of steps, it is noted that the courts have held that any order of performing process steps is prima facie obvious in the absence of new or unexpected results (In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930); Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959)). See MPEP §2144.04 IV C. Thus, any claimed order of steps is an obvious variant of the steps of the cited prior art.
Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the cited prior art to arrive at the instantly claimed method with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in a method having the added advantages of providing a chip that withstands very high magnetic forces as explicitly taught by Eeftens et al. (Abstract) and allows storage and retrieval of biopolymers in the solid state as explicitly taught by Utermohlen et al. (paragraph 0189). In addition, it would have been obvious to the ordinary artisan that the known techniques of the cited prior art could have been combined with predictable results because the known techniques of the cited prior art predictably result in useful substrates having biopolymers attached thereto.
Regarding claims 13 and 32, the method of claim 12 is described above. Utermohlen et al. teach the polyamine polymer comprising amino groups is any of polylysine, chitosan, or polyethyleneimine (i.e., claim 13; paragraph 0129; see also paragraph 0150). Polylysine has one amino group per monomer, chitosan has two amino groups per monomer, and has one amino group per monomer (i.e., claims 13 and 32).
It is noted that the claims do not state whether the amino groups are available after reacting with the epoxides.
Regarding claim 33, the method of claim 12 is discussed above. Eeftens et al. teach the linker group is NHS-PEG4-azide (“DNA Anchoring”), and the NHS groups is attached via reaction with the amine group (Figure 3).
It is reiterated that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists, and that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record.
Regarding claim 34, the method of claim 33 is discussed above. Eeftens et al. teach DBCO on the nucleic acid covalently binds to the azide group (Figure 3).
14. Claims 4-5 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Eeftens et al. (BMC Biophysics, vol. 8, Article No. 9, pages 1-7, published online 25 September 2015) and Utermohlen et al. (U.S. Patent Application Publication No. US 2006/0177855 A1, published 10 August 2006) as applied to claims 1 and 123 above, and further in combination with Roy et al. (U.S. Patent Application Publication No. US 2009/0110719 A1, published 30 April 2009).
Regarding claims 4-5 and 13, the methods of claims and 12 are discussed above in Section 13.
None of the previously cited prior art teaches the claimed degree of polymerization.
However, Roy et al. teach methods comprising immobilization of nucleic acids on surfaces (paragraph 0013; see also paragraph 0040), using polyamine surfaces (Abstract), including polyethyleneimine (paragraph 0013) and chitosan (paragraph 0057). Roy et al. also teach degrees of polymerization of 50 (paragraph 0057), which is in the claimed range, and that the polyamine polymers have the advantage of providing steric stabilization (paragraphs 0043). Thus, Roy et al. teach the known techniques discussed above.
It is reiterated that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists.
It is also reiterated that the courts have held that optimization through routine experimentation.
Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Roy et al. with the previously cited prior art to arrive at the instantly claimed methods with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in methods having the added advantage of providing steric stabilization as explicitly taught by Roy et al. (paragraphs 0043). In addition, it would have been obvious to the ordinary artisan that the known techniques of Roy et al. could have been combined with the previously cited prior art with predictable results because the known techniques of Roy et al. predictably result in reliable polymers for coupling nucleic acids.
15. Claims 18-19 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Eeftens et al. (BMC Biophysics, vol. 8, Article No. 9, pages 1-7, published online 25 September 2015) and Utermohlen et al. (U.S. Patent Application Publication No. US 2006/0177855 A1, published 10 August 2006) as applied to claim 12 above, and further in combination with Zhao et al. (PCT International Patent Application Publication No. WO 2019/091207 A1, published 16 May 2019; English language translation provided by Applicant as listed on the Information Disclosure Statement filed 30 July 2024).
Regarding claims 18-19 and 25, the method of claim 12 is discussed above in Section 13.
None of the previously cited prior art teaches the claimed reaction conditions.
However, Zhou et al. teach methods wherein an epoxy coated substate is reacted with amino groups in a alkaline solutions at pH 8 (i.e., claims 18 and 25) at 25-60oC for 4 to 24 hours, which overlaps the ranges of claim 19, and which has the added advantage of providing the maximum extent of reaction (paragraphs 0036-0044). Thus, Zhou et al. teach the known techniques discussed above.
It is reiterated that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists.
It is also reiterated that the courts have held that optimization through routine experimentation, and in particular, when related to differences in temperature, do not support patentability (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Zhou et al. with the previously cited prior art to arrive at the instantly claimed methods with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in methods having the added advantage of providing the maximum extent of reaction as explicitly taught by Zhou et al. (paragraphs 0036-0044). In addition, it would have been obvious to the ordinary artisan that the known techniques of Zhou et al. could have been combined with the previously cited prior art with predictable results because the known techniques of Zhou et al. predictably result in reliable reaction conditions for coupling amines and epoxides.
16. Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Eeftens et al. (BMC Biophysics, vol. 8, Article No. 9, pages 1-7, published online 25 September 2015) and Utermohlen et al. (U.S. Patent Application Publication No. US 2006/0177855 A1, published 10 August 2006) as applied to claim 12 above, and further in combination with Gan et al. (Chinese Patent Application Publication No. CN101643321(a) A1, published 10 February 2009; English language translation provided by Applicant as listed on the Information Disclosure Statement filed 13 October 2023).
Regarding claim 26, the method of claim 12 is discussed above in Section 13.
None of the previously cited prior art teaches the claimed reaction conditions.
However, Gan et al. teach methods comprising grafting of amino-rich polymers, including polylysine (paragraph 0082), to epoxy coated substates (paragraph 0012-00013), wherein is reacted with amino groups 37oC (i.e., 10-50oC) for 30 to 90 minutes (i.e., 0.5-30 hours; paragraphs 0022-0023), which overlaps the ranges, and which has the added advantage of providing quick binding of molecules (paragraph 0032). Thus, Gan et al. teach the known techniques discussed above.
It is reiterated that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists.
It is also reiterated that the courts have held that optimization through routine experimentation, and in particular, when related to differences in temperature, do not support patentability.
Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Gan et al. with the previously cited prior art to arrive at the instantly claimed methods with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in methods having the added advantage of providing substates that quickly bind molecules as explicitly taught by Gan et al. (paragraphs 0032). In addition, it would have been obvious to the ordinary artisan that the known techniques of Gan et al. could have been combined with the previously cited prior art with predictable results because the known techniques of Gan et al. predictably result in reliable reaction conditions for coupling amines and epoxides.
17. Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Eeftens et al. (BMC Biophysics, vol. 8, Article No. 9, pages 1-7, published online 25 September 2015), Utermohlen et al. (U.S. Patent Application Publication No. US 2006/0177855 A1, published 10 August 2006), and Zhao et al. (PCT International Patent Application Publication No. WO 2019/091207 A1, published 16 May 2019; English language translation provided by Applicant as listed on the Information Disclosure Statement filed 30 July 2024) as applied to claim 19 above, and further in combination with Azizi et al. (Tetrahedron, vol. 63, pages 888-891, published 22 January 2007).
Regarding claim 28, the method of claim 19 is discussed above in Section 15.
None of the previously cited prior art teach the addition of a surfactant.
However, Azizi et al. teach methods of opening epoxides with amines in the presence of surfactants, including cetyltrimethylammonium bromide (i.e., CTAB; Table 2), which has the added advantage of allowing the reaction to take place in water with moderate to excellent yields (Abstract). Thus, Azizi et al. teach the known techniques discussed above.
It is noted that the courts have held that “[d]isclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971); see MPEP § 2123 II), and that a “reference is no less anticipatory if, after disclosing the invention, the reference then disparages it” (Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998); MPEP § 2131.05).
Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Azizi et al. with the previously cited prior art to arrive at the instantly claimed methods with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in methods having the added advantage of allowing the reaction to proceed in water with moderate to excellent yields as explicitly taught by Azizi et al. (paragraphs 0032). In addition, it would have been obvious to the ordinary artisan that the known techniques of Azizi et al. could have been combined with the previously cited prior art with predictable results because the known techniques of Azizi et al. predictably result in reliable reaction conditions for coupling amines and epoxides.
Interview Summary and Response to Arguments
18. The interview summary on page 8 of the remarks filed 26 June 2026 is acknowledged and the interview record is complete.
19. Applicant’s remaining arguments have been considered; however, new rejections necessitated by the amendments are presented above.
Conclusion
20. No claim is allowed.
21. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert T. Crow whose telephone number is (571)272-1113. The examiner can normally be reached M-F 8:00-4:30.
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Robert T. Crow
Primary Examiner
Art Unit 1683
/Robert T. Crow/Primary Examiner, Art Unit 1683
Prosecution Insights