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 .
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 allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). 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, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 10 June 2026 has been entered.
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted on 10 June 2026 was received after the mailing date of the Notice of Allowance on 11 June 2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the Information Disclosure Statement was considered by the Examiner, annotated, and attached to the PTO-2300 mailed 13 July 2026.
Allowable Subject Matter
The indicated allowability of claims 1-7, 9-16, 19-21, 24-25, & 27-30 is withdrawn in view of the newly discovered reference(s) to Huang (US 2002/0136978 A1) of the patent family of WO 02/077194 A2, submitted with the IDS indicated above as FPD #5 and cited in the Extended European Search Report (EESR), submitted with the IDS indicated above as NPL #8. Rejection based on the newly cited reference(s) follow.
Response to Amendment
Claims 1-2, 9-15, 19-21, & 24-25, have been amended and examined as such.
Claims 8, 17-18, 22-23, & 26 have been cancelled as requested by the Applicant.
Claims 28-30 have been added and examined as such.
Claims 31-32 have been cancelled as addressed previously.
Claim Rejections - 35 USC § 103
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 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 1-6, 9-11, 19-20, 24-25, 27-28, & 30 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashizaki (US 2005/0166782 A2) in view of Huang (US 2002/0136978 A1).
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). Hayashizaki does not specifically teach a laser printer comprising at least a first toner. However, Huang teaches a method for producing a nucleic acid array with a laser printer on a substrate (Huang – Page 1, Paragraphs 7-8; Page 2, Paragraphs 18-21; Page 3, Paragraphs 43-47; and Figure 9, shown below) and specifically teaches dispensing, via a first toner cartridge of the laser printer, a first sample… the first reagent is transferred to the substrate from the solid phase, and wherein the laser printer is configured to provide a condition necessary to cause an interaction between the first reagent and one or more additional reagents (Huang – Page 1, Paragraphs 7-8; Page 2, Paragraphs 18-21; Page 3, Paragraphs 26-30 & 43-47; Page 5, Paragraphs 70-76; Page 6, Paragraphs 89-92; and Page 7, Paragraph 110). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Hayashizaki which focuses on ink-jet printing of compositions and reagents, though the concept of laser printing is allowed for by Hayashizaki (Hayashizaki – Page 7, Paragraph 106), with the specific use of laser printing using a first toner cartridge for the first composition and providing a condition necessary to cause an interaction between a first reagent and one or more additional reagents as taught by Huang in an effort to provide variations in the synthesis of arrays of chemical compounds using photolithographic, pulsejet, or dry composition dispensing which are suited for the challenges of industrial-scale production of oligonucleotide arrays at high speed, with great precision and low cost, without the requirements of photo or chemical masks (Huang – Page 1, Paragraphs 2-7 and Page 7, Paragraphs 94-96).
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As related to dependent claim 2, the combination of Hayashizaki and Huang remains as applied above and continues to teach teaches the solid phase comprises a powder, a bead or a combination thereof, and wherein the first reagent is provided on the powder, the bead, or any combination thereof (Hayashizaki – Page 6, Paragraph 84 and Huang – Page 1, Paragraphs 7-8 & Page 7, Paragraphs 110-111).
As related to dependent claim 3, the combination of Hayashizaki and Huang remains as applied above and continues to teach 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 & Page 7, Paragraph 106 and Huang – Page 1, Paragraphs 7-8; Page 2, Paragraphs 18-21; Page 3, Paragraphs 26-30 & 43-47).
As related to dependent claim 4, the combination of Hayashizaki and Huang remains as applied above and continues to teach 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 and Huang – Page 1, Paragraphs 7-8 & Page 2, Paragraphs 18-21).
As related to dependent claim 5, the combination of Hayashizaki and Huang remains as applied above and continues to teach 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 & Page 7, Paragraph 106 and Huang – Page 1, Paragraphs 7-8; Page 2, Paragraphs 18-21; & Page 3, Paragraphs 26-30 & 43-47).
As related to further dependent claim 6, the combination of Hayashizaki and Huang remains as applied above and continues to teach the polynucleotide component comprises a first nucleic acid oligomer block (Hayashizaki – Page 3, Paragraph 54 – Page 4, Paragraph 64 and Huang – Page 1, Paragraphs 7-8; Page 2, Paragraphs 18-21; Page 3, Paragraphs 26-30 & 43-47; & Page 4, Paragraph 54).
As related to dependent claim 9, the combination of Hayashizaki and Huang remains as applied above and continues to teach 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 Huang – Page 1, Paragraphs 7-8; Page 2, Paragraphs 18-21; Page 3, Paragraphs 26-30 & 43-47; Page 6, Paragraphs 89-92; & Figure 9, shown above); and dispensing a second sample from the second composition onto a second coordinate on the substrate (Hayashizaki – Page 7, Paragraph 106 and Page 8, Paragraph 110 and Huang – Page 1, Paragraphs 7-8; Page 2, Paragraphs 18-21; Page 3, Paragraphs 26-30 & 43-47; Page 6, Paragraphs 89-92; & Figure 9, shown above), wherein the second coordinate overlaps with the first coordinate or is a second, different coordinate, and wherein 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 and Huang – Page 1, Paragraphs 7-8; Page 2, Paragraphs 18-21; Page 3, Paragraphs 26-30 & 43-47; Page 6, Paragraphs 89-92; & Figure 9, shown above).
As related to further dependent claim 10, the combination of Hayashizaki and Huang remains as applied above and continues to teach dispensing the first sample from the first composition onto the first coordinate on the substrate and dispensing the second sample from the second composition onto the second coordinate on the substrate, such that the first reagent and the second reagent are collocated on the substrate (Hayashizaki – Page 5, Paragraphs 73-74; Page 7, Paragraph 106; & Page 8, Paragraphs 110 & 119 and Huang – Page 1, Paragraphs 7-8; Page 2, Paragraphs 18-21; Page 3, Paragraphs 26-30 & 43-47; Page 6, Paragraphs 89-92; & Figure 9, shown above).
As related to further dependent claim 11, the combination of Hayashizaki and Huang remains for the reasons indicated above and continues to teach wherein the laser printer comprises the first toner cartridge configured to dispense the first composition and a second toner cartridge configured to dispense 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 coordinate or the second coordinate on the substrate (Hayashizaki – Page 7, Paragraph 106 and Huang – Page 3, Paragraphs 26-30 & 43-47; Page 6, Paragraphs 89-92; & Figure 9, shown above).
As related to dependent claim 19, the combination of Hayashizaki and Huang remains for the reasons indicated above and continues to teach the first reagent comprises a positively charged moiety and the one or more additional reagents each comprise a negatively charged moiety [i.e. DNA, mRNA, Amino Acid Sequences] (Hayashizaki – Page 2, Paragraphs 45-48 and Huang – Page 1, Paragraphs 7-8 & Page 2, Paragraphs 18-21).
As related to dependent claim 20, the combination of Hayashizaki and Huang remains for the reasons indicated above and continues to teach the first reagent and the one or more additional reagents are 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 and Huang – Page 1, Paragraphs 7-8; Page 2, Paragraphs 18-21; & Page 3, Paragraphs 26-30 & 43-47).
As related to dependent claim 24, the combination of Hayashizaki and Huang remains for the reasons indicated above and continues to teach a respective sample from each of the one or more additional reagents onto a second coordinate on the substrate, such that the first reagents and the one or more additional reagents are collocated on the substrate ((Hayashizaki – Page 1, Paragraph 15; Page 7, Paragraph 106; Page 8, Paragraphs 110 & 119 and Huang – Page 1, Paragraphs 7-8; Page 2, Paragraphs 18-21; Page 3, Paragraphs 26-30 & 43-47; Page 6, Paragraphs 89-92; & Figure 9, shown above).
As related to further dependent claim 25, the combination of Hayashizaki and Huang remains for the reasons indicated above and continues to teach providing a laser printer comprising one or more additional toner cartridges configure to dispense the one or more additional reagents, wherein the laser printer is configured to dispense a sample from each of the one or more additional toner cartridges onto a respective coordinate on the substrate (Hayashizaki – Page 1, Paragraph 15; Page 7, Paragraph 106; Page 8, Paragraphs 110 & 119 and Huang – Page 1, Paragraphs 7-8; Page 2, Paragraphs 18-21; Page 3, Paragraphs 26-30 & 43-47; Page 6, Paragraphs 89-92; & Figure 9, shown above).
As related to dependent claim 27, the combination of Hayashizaki and Huang remains for the reasons indicated above and continues to teach the interaction between the first reagent and one or more additional reagents form a set of DNA sequences configured to be rehydrated from the substrate (Huang – Page 4, Paragraphs 59-60 and Page 6, Paragraphs 78-80).
As related to dependent claim 28, the combination of Hayashizaki and Huang remains for the reasons indicated above and continues to teach controlling the first toner cartridge of the laser printer to electrostatically transfer the first sample to the first coordinate of the substrate; and controlling a second toner cartridge of the laser printer to electrostatically transfer a second sample to the first coordinate of the substrate; wherein transfer of the first sample and the second sample are configured to facilitate molecular assembly of one or more DNA sequences on the substrate (Hayashizaki – Page 1, Paragraph 15; Page 7, Paragraph 106; Page 8, Paragraphs 110 & 119 and Huang – Page 1, Paragraphs 7-8; Page 2, Paragraphs 18-21; Page 3, Paragraphs 26-30 & 43-47; Page 6, Paragraphs 89-92; & Figure 9, shown above).
As related to further dependent claim 30, the combination of Hayashizaki and Huang remains for the reasons indicated above and continues to teach the substrate comprises one or more coordinates including the first coordinate, wherein the one or more coordinates include a charged moiety of a first type; and wherein the first reagent comprises a charged moiety of a second type different from the first type of charged moiety of the substrate (Hayashizaki – Page 2, Paragraphs 45-48 and Huang – Page 1, Paragraphs 7-8 & Page 2, Paragraphs 18-21).
Claims 7 & 21 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Hayashizaki (US 2005/0166782 A2) and Huang (US 2002/0136978 A1) in view of DeSimone et al. (US 2009/0220789 A1).
As related to further dependent claim 7, the combination of Hayashizaki and Huang remains for the reasons indicated above and continues to teach 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 the combination of Hayashizaki and Huang and specify the printed letters of the combination of Hayashizaki and Huang 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 further dependent claim 21, the combination of Hayashizaki; Huang; and Desimone et al. remains for the reasons indicated above and continues to teach the first reagent comprises a polynucleotide component (Hayashizaki – Page 3, Paragraph 53 – Page 4, Paragraph 64 and Huang – Page 1, Paragraphs 7-8; Page 2, Paragraphs 18-21; Page 3, Paragraphs 26-30 & 43-47; & Page 4, Paragraph 54) comprises a first codeword and the one or more additional reagents comprises a second codeword, and wherein the first codeword and the second codeword are different (Hayashizaki – Page 3, Paragraph 54 and DeSimone et al. – Page 20, Paragraph 291 & Page 21, Paragraph 298).
Claims 12-16 & 29 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Hayashizaki (US 2005/0166782 A2) and Huang (US 2002/0136978 A1) in view of Hayward et al. (US 2009/0042191 A1).
As related to further dependent claim 12, the combination of Hayashizaki and Huang remains for the reasons indicated above and continues to teach providing a condition necessary to cause an interaction between the first reagent and the second reagent (Hayashizaki – Page 4, Paragraphs 56-68 and Huang – Page 1, Paragraphs 7-8; Page 2, Paragraphs 18-21; Page 3, Paragraphs 26-30 & 43-47; Page 6, Paragraphs 89-92; & Figure 9, shown above) 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 reagent 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 Huang and specify the components of the combination of Hayashizaki and Huang 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, Huang, and Hayward et al. remains as applied above and continues to teach wherein activating the reaction to physically link the first reagent and second reagent comprises dispensing a reaction mixture onto the first coordinate on the substrate to promote Gibson, recombination mediated assembly to physically link the first reagent and the second reagent (Hayashizaki – Page 5, Paragraph 74 and Hayward et al. – Page 1, Paragraphs 6-11 & Page 15, Paragraph 280 and Huang – Page 1, Paragraphs 7-8; Page 2, Paragraphs 18-21; Page 3, Paragraphs 26-30 & 43-47; Page 6, Paragraphs 89-92; & Figure 9, shown above).
As related to further dependent claim 14, the combination of Hayashizaki, Huang, 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; Huang – Page 3, Paragraphs 26-30; and Hayward et al. – Page 1, Paragraphs 6-11 & Page 15, Paragraph 280).
As related to further dependent claim 15, the combination of Hayashizaki, Huang, and Hayward et al. remains as applied above and continues to teach the laser printer comprises a component configured to provide a condition necessary to cause an interaction between the first reagent and a second reagent of the one or more additional reagents to cause a reaction between the first and second reagents (Hayashizaki – Page 4, Paragraphs 56-68 and Huang – Page 1, Paragraphs 7-8; Page 2, Paragraphs 18-21; Page 3, Paragraphs 26-30 & 43-47; Page 6, Paragraphs 89-92; & Figure 9, shown above) to physically link the first reagent and the second reagent of the one or more additional reagents (Hayward et al. – Page 1, Paragraphs 6-11 & Page 15, Paragraph 280; and Huang – Page 1, Paragraphs 7-8; Page 2, Paragraphs 18-21; Page 3, Paragraphs 26-30 & 43-47; Page 6, Paragraphs 89-92; & Figure 9, shown above) .
As related to further dependent claim 16, the combination of Hayashizaki, Huang, and Hayward et al. remains as applied above and continues to teach continues to teach the component comprises a third toner cartridge, an incubator, pin array, or any combination thereof (Hayashizaki – Page 7, Paragraph 106; Huang – Figure 9, shown above; Hayward et al. – Page 15, Paragraph 280).
As related to further dependent claim 29, the combination of Hayashizaki, Huang, and Hayward et al. remains as applied above and continues to teach and continues to teach rehydrating, via a reaction mixture, the DNA sequences assembled on the substrate, wherein the reaction mixture comprises a ligase, a polymerase, a recombinase, an exonuclease, a restriction endonuclease, a nickase, or any combination thereof (Hayashizaki – Page 4, Paragraphs 58-59 and Hayward et al. – Page 1, Paragraphs 8-9).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Blanchard (US 6,028,189 A) teaches a method for solid phase transfer of a reagent using a laser printer.
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.
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.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Ricardo Magallanes can be reached at (571) 272-5960. 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
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