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 .
Preliminary Amendment
Claims 11-12, 15-20, 23, & 25-26 have been amended and examined as such.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-6, 9-10, 17-21, & 23 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Hayashizaki (US 2005/0166782 A2).
As related to independent claim 1, Hayashizaki teaches a method for solid phase transfer of a reagent to a substrate[i.e. powder preparation comprising oligomer and or polymer mixed with a carrier] (Hayashizaki – Page 4, Paragraph 58 and Page 6, Paragraph 84), the method comprising: (a) providing at least a first composition comprising a solid phase, wherein the solid phase comprises a first reagent (Hayashizaki – Page 4, Paragraph 58 and Page 6, Paragraph 84); and (b) dispensing a first sample from the first composition onto a first coordinate on a substrate, whereby the first reagent is transferred to the substrate from the solid phase (Hayashizaki – Page 2, Paragraphs 45-46; Page 7, Paragraph 106; and Page 8, Paragraph 110).
As related to dependent claim 2, Hayashizaki teaches the solid phase comprises a powder, a bead or a combination thereof, wherein the first reagent is provided on the powder, the bead, or the combination thereof (Hayashizaki – Page 6, Paragraph 84).
As related to dependent claim 3, Hayashizaki teaches the substrate comprises a charge and/or the substrate comprises a reagent pre-loaded at one or more coordinates on the substrate (Hayashizaki – Page 4, Paragraphs 62-68 and Page 7, Paragraph 106).
As related to dependent claim 4, Hayashizaki teaches the first composition comprises a positively charged moiety or a negatively charged moiety [i.e. DNA, mRNA, Amino Acid Sequences] (Hayashizaki – Page 2, Paragraphs 45-48).
As related to dependent claim 5, Hayashizaki teaches the first reagent comprises a chemical entity selected from the group consisting of a polynucleotide, a polypeptide, a lipid, a small molecule organic chemical, a detectable moiety, an inorganic chemical entity, and a molecular hybrid of any of the foregoing groups, or comprises a cell (Hayashizaki – Page 2, Paragraphs 45-48 and Page 7, Paragraph 106).
As related to further dependent claim 6, Hayashizaki teaches the polynucleotide component comprises a first nucleic acid oligomer block (Hayashizaki – Page 3, Paragraph 54 – Page 4, Paragraph 64).
As related to dependent claim 9, Hayashizaki teaches providing at least a second composition comprising a solid phase, wherein the solid phase comprises a second reagent (Hayashizaki – Page 1, Paragraph 15; Page 6, Paragraph 84; Page 8, Paragraphs 110 & 119); and dispensing a second sample from the second composition onto a coordinate on a substrate (Hayashizaki – Page 7, Paragraph 106 and Page 8, Paragraph 110), wherein the coordinate is the first coordinate or is a second, different coordinate, whereby the second reagent is transferred to the substrate from the solid phase (Hayashizaki – Page 1, Paragraph 15; Page 7, Paragraph 106; Page 8, Paragraphs 110 & 119).
As related to further dependent claim 10, Hayashizaki teaches dispensing the first sample from the first composition onto a coordinate on the substrate and dispensing the second sample from the second composition onto the coordinate on the substrate, such that the first and second reagent are collocated on the substrate (Hayashizaki – Page 5, Paragraphs 73-74; Page 7, Paragraph 106; & Page 8, Paragraphs 110 & 119).
As related to further dependent claim 17, Hayashizaki teaches the solid phase comprises a powder, a bead or a combination thereof, wherein the first reagent and the second reagent are provided on the powder, the bead, or the combination thereof (Hayashizaki – Page 4, Paragraphs 59 & 61 and Page 6, Paragraphs 84 & 86).
As related to further dependent claim 18, Hayashizaki teaches the substrate comprises a charge and/or the substrate comprises a reagent pre-loaded at one or more coordinates on the substrate (Hayashizaki – Page 4, Paragraphs 62-68 and Page 7, Paragraph 106).
As related to further dependent claim 19, Hayashizaki teaches the first reagent and the second reagent each comprise a positively charged moiety or a negatively charged moiety [i.e. DNA, mRNA, Amino Acid Sequences] (Hayashizaki – Page 2, Paragraphs 45-48).
As related to further dependent claim 20, Hayashizaki teaches the first reagent and the second reagent can be the same or different, and each comprise a chemical entity selected from the group consisting of a polynucleotide, a polypeptide, a lipid, a small molecule organic chemical, a detectable moiety, an inorganic chemical entity, and a molecular hybrid of any of the foregoing groups, or a cell (Hayashizaki – Page 2, Paragraphs 45-48 and Page 7, Paragraph 106).
As related to further dependent claim 21, Hayashizaki teaches the polynucleotide component comprises a first nucleic acid oligomer block and a second nucleic acid oligomer block (Hayashizaki – Page 3, Paragraph 53 – Page 4, Paragraph 64).
As related to dependent claim 23, Hayashizaki teaches providing one or more additional compositions, each additional composition comprising an additional reagent, wherein each of the additional reagent can independently be the same or different from the first or the second reagent (Hayashizaki – Page 1, Paragraph 15; Page 6, Paragraph 84; Page 8, Paragraphs 110 & 119); and dispensing a sample from each of the one or more additional compositions onto a coordinate on a substrate (Hayashizaki – Page 7, Paragraph 106 and Page 8, Paragraph 110), wherein the coordinate is the first coordinate, is the second coordinate, or is one or more different coordinates, whereby the each of the additional reagents is transferred to the substrate from the solid phase (Hayashizaki – Page 1, Paragraph 15; Page 7, Paragraph 106; Page 8, Paragraphs 110 & 119).
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.
Claims 7, 8, 11, 22, 25, & 26 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashizaki (US 2005/0166782 A2) in view of DeSimone et al. (US 2009/0220789 A1).
As related to further dependent claim 7, Hayashizaki teaches the first oligomer block comprises letters (Hayashizaki – Page 3, Paragraph 54), but does not specifically teach the first oligomer block comprises a codeword. However, DeSimone et al. teaches a method for fabricating taggants incorporated in printing inks and toners (DeSimone et al. – Page 21, Paragraph 298) and specifically teaches oligomer block(s) comprising a codeword [i.e. unique group of marks including a code with up to millions of letters numbers or shapes] (DeSimone et al. – Page 20, Paragraph 291). It would have been obvious to one of ordinary skill in the art at the time of filing to specify the use of toner as the vehicle for the compositions used in the laser printer of Hayashizaki and specify the printed letters of Hayashizaki to form a code as taught by DeSimone et al. in an effort to provide a unique mark or group of marks on an article or substrate for identification purposes (Desimone et al. – Page 20, Paragraphs 291-292).
As related to dependent claim 8, the combination of Hayashizaki and DeSimone et al. remains for the reasons indicated above and continues to teach step (b) comprises providing a laser printer comprising at least a first toner cartridge for the first composition, wherein the laser printer is configured to dispense the first sample from the first toner cartridge onto the coordinate on the substrate (Hayashizaki – Page 7, Paragraph 106 and DeSimone et al. – Page 21, Paragraph 298).
As related to further dependent claim 11, the combination of Hayashizaki and DeSimone et al. remains for the reasons indicated above and continues to teach providing a laser printer comprising at least a first toner cartridge for the first composition and a second toner cartridge for the second composition, wherein the laser printer is configured to dispense the first sample from the first toner cartridge onto the first coordinate on the substrate and to dispense a second sample from the second toner cartridge onto the first or the second coordinate on the substrate (Hayashizaki – Page 7, Paragraph 106 and DeSimone et al. – Page 21, Paragraph 298).
As related to further dependent claim 22, the combination of Hayashizaki and DeSimone et al. remains for the reasons indicated above and continues to teach the first oligomer block and the second oligomer each comprise a codeword [i.e. unique group of marks including a code with up to millions of letters numbers or shapes] (Hayashizaki – Page 3, Paragraph 54 and DeSimone et al. – Page 20, Paragraph 291).
As related to further dependent claim 25, the combination of Hayashizaki and DeSimone et al. remains for the reasons indicated above and continues to teach providing a laser printer comprising one or more additional toner cartridge for the one or more additional compositions, wherein the laser printer is configured to dispense a sample from each of the one or more additional toner cartridges onto a coordinate on the substrate, optionally wherein the first, second, and one or more additional reagents are collocated on the substrate (Hayashizaki – Page 5, Paragraphs 73-74; Page 7, Paragraph 106; & Page 8, Paragraphs 110 & 119 and DeSimone et al. – Page 21, Paragraph 298).
As related to dependent claim 26, the combination of Hayashizaki and DeSimone et al. remains for the reasons indicated above and continues to teach a system suitable for use in carrying out the process (Hayashizaki – Page 7, Paragraph 106 and DeSimone et al. – Page 21, Paragraph 298 and Figure 2F, shown below).
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Claims 12-14 & 24 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashizaki (US 2005/0166782 A2) in view of Hayward et al. (US 2009/0042191 A1).
As related to further dependent claim 12, Hayashizaki teaches providing a condition necessary to cause an interaction between the first and second reagent (Hayashizaki – Page 4, Paragraphs 56-68) but does not specifically teach a reaction to physically link the first and second reagent. However, Hayward et al. teaches a method of dispensing components from a printer or toner cartridges which specifically cause a reaction to physically link the first and second reagent (Hayward et al. – Page 1, Paragraphs 6-11 and Page 15, Paragraph 280). It would have been obvious to one of ordinary skill in the art at the time of filing to specify the use of toner as the vehicle for the compositions used in the laser printer of Hayashizaki and specify the components of Hayashizaki to cause a reaction between the first and second reagent to physically link them as in Hayward et al. in an effort to provide a unique mark on an article or substrate for identification and authentication purposes (Hayward et al. – Page 1, Paragraph 6).
As related to further dependent claim 13, the combination of Hayashizaki and Hayward et al. remains as applied above and continues to teach dispensing a reaction mix onto the first coordinate on the substrate to provide a condition necessary to cause an interaction between the first and second reagent, such as a reaction between the first and second reagent, such as a reaction to physically link the first and second reagent (Hayashizaki – Page 5, Paragraph 74 and Hayward et al. – Page 1, Paragraphs 6-11 and Page 15, Paragraph 280).
As related to further dependent claim 14, the combination of Hayashizaki and Hayward et al. remains as applied above and continues to teach the reaction mix comprises a ligase, a polymerase, a recombinase, an exonuclease, a restriction endonuclease, a nickase, or any combination thereof (Hayashizaki – Page 5, Paragraph 74 and Hayward et al. – Page 1, Paragraphs 6-11 and Page 15, Paragraph 280).
As related to further dependent claim 24, the combination of Hayashizaki and Hayward et al. remains for the reasons indicated above and continues to teach a sample from each of the one or more additional compositions onto a coordinate on the substrate, such that the first, second, and one or more additional reagents are collocated on the substrate (Hayashizaki – Page 5, Paragraphs 73-74; Page 7, Paragraph 106; & Page 8, Paragraphs 110 & 119); and optionally providing a condition necessary to cause an interaction between the first, second, and one or more additional reagents, such as a reaction between the first, second, and one or more additional reagents, such as a reaction to physically link the first, second, and one or more additional reagents (Hayashizaki – Page 4, Paragraphs 56-68 and Hayward et al. – Page 1, Paragraphs 6-11 and Page 15, Paragraph 280).
Claims 15 & 16 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Hayashizaki (US 2005/0166782 A2) and DeSimone et al. (US 2009/0220789 A1) in further view of Hayward et al. (US 2009/0042191 A1).
As related to further dependent claim 15, the combination of Hayashizaki and DeSimone et al. remains for the reasons indicated above and continues to teach the laser printer, or a system comprising the laser printer, comprises a component configured to provide a condition necessary to cause an interaction between the first and second reagent (Hayashizaki – Page 4, Paragraphs 56-68) but does not specifically teach a reaction to physically link the first and second reagent. However, Hayward et al. teaches a method of dispensing components from a printer or toner cartridges which specifically cause a reaction to physically link the first and second reagent (Hayward et al. – Page 1, Paragraphs 6-11 and Page 15, Paragraph 280). It would have been obvious to one of ordinary skill in the art at the time of filing to specify the use of toner as the vehicle for the compositions used in the laser printer of the combination of Hayashizaki and DeSimone et al. and specify the components of Hayashizaki and DeSimone et al. to cause a reaction between the first and second reagent to physically link them as in Hayward et al. in an effort to provide a unique mark on an article or substrate for identification and authentication purposes (Hayward et al. – Page 1, Paragraph 6).
As related to further dependent claim 16, the combination of Hayashizaki, DeSimone et al., and Hayward et al. remains as applied above and continues to teach the component comprises a third toner cartridge, an incubator, pin array, or any combination thereof (Hayashizaki – Page 7, Paragraph 106; DeSimone et al. – Page 21, Paragraph 298; Hayward et al. – Page 15, Paragraph 280).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Church et al. (US 6,326,489 B1) teaches ink-jet printing of a first and second polymer and then using a reaction mix including polymerase or endonuclease. Hayashizaki (US 2005/0032061 A1) teaches printing oligomers and polymers and then printing a reaction mix comprising endonuclease. Cook (US 7,160,996 B1) teaches patterning a substrate using printing and detection of nucleic acids and amplifying the printed compositions using polymerase, exonuclease, and ligase. Lee et al. (US 2019/0112626 A1) teaches inkjet printing of immobilized nucleic acid molecules and then printing a reaction or enzymatic mix. FREIJE et al. (US 2022/0073987 A1) teaches using a printing system as a reagent delivery system and causing an interaction between reagents using a mix including recombinase, polymerase, ligase, etc..
Examiner's Note: Examiner has cited particular Figures & Reference Numbers, Columns, Paragraphs and Line Numbers in the references as applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses, to fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JOHN P ZIMMERMANN whose telephone number is (571)270-3049. The Examiner can normally be reached Monday-Thursday 0700-1730 EST.
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If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Stephen Meier can be reached at (571) 272-2149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/John P Zimmermann/Primary Examiner, Art Unit 2853