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 .
Election/Restrictions
Applicant's election with traverse of Group V (claims 44-48 and amended claims 2-26) in the reply filed on 15 December 2025 is acknowledged. The traversal is on the ground(s) that there is no serious search and examination burden. This is not found persuasive because the inventions have acquired a separate status in the art in view of their different classification; the inventions have acquired a separate status in the art due to their recognized divergent subject matter; and the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
The requirement is still deemed proper and is therefore made FINAL.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore,
the device that synthesize a single stranded DNA oligomer that encodes a set of information; and
the reading device that interprets the single standard DNA oligomer by decoding the interpreted single stranded DNA oligomer into the set of information, recited in claim 44
must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
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.
Claims 16 and 48 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.
Claim 16 is indefinite because the claim does not properly identify the claim upon which it depends. The claim should be corrected to begin with --The information storage system of claim 44--.
Claim 48 is indefinite because the claim does not properly identify the claim upon which it depends. The claim should be corrected to begin with --The information storage system of claim 44--.
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.
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 2, 7, 9, 10, 12, 15, 17-25, and 44-48 are rejected under 35 U.S.C. 103 as being unpatentable over Merriman et al. (US 2019/0355442) in view of Strauss et al. (US 2022/0023820).
Regarding claim 44, the reference Merriman et al. discloses an information storage system (see Abstract), comprising:
a device that synthesizes a single stranded DNA oligomer that encodes a set of information (see paras. [0013]; [0016]; [0072]; [00197]); and
a reading device that interprets the single stranded DNA oligomer by decoding the interpreted single stranded DNA oligomer into the set of information (see paras. [0007]; [0009]; [0013]),
wherein the reading device comprises a molecular electronics sensor that produces distinguishable signals in a measurable electrical parameter of the molecular electronics sensor, when interpreting the single stranded DNA oligomer (see para. [0013]).
The reference Merriman et al. is, however, silent with respect to the device that synthesizes the single stranded DNA oligomer comprising an initiator particle, wherein the initiator particle comprises: a substrate comprising: silver; gold; glass; iron; or a combination thereof; a linker molecule functionalized to the substrate; and an initiator oligonucleotide sequence functionalized to the linker molecule.
The reference Strauss et al. discloses an initiator particle for DNA synthesis (see paras. [0004]; [0061]; [0116]; Fig. 1), wherein the initiator particle comprises: a substrate (102)(see paras. [0061]; [0062]); a linker molecule (104) functionalized to the substrate (see paras. [0007]; [0008]; [0031]; [0032]); and an initiator oligonucleotide sequence (106) functionalized to the linker molecule (see paras. [0031]; [0032]; Fig. 1). The reference Strauss et al. further teaches that the substrate can be a bead or microsphere formed from silicon, glass, polystyrene, or polymeric resins (see para. [0061]). The reference Strauss et al. further teaches that a magnetic bead containing ferrite crystals may be used as the substrate (see para. [0061]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Merriman et al. and Strauss et al., and employed an initiator particle as taught by Strauss et al., and claimed by applicant, within the DNA synthesis device of Merriman et al. to synthesis the single stranded DNA by a solid-phase synthesis technique because, as taught by Strauss et al. (paras. [0025]; [0026]; [0028]), solid-phase synthesis techniques provide for more rapid synthesis of oligonucleotides. Furthermore, the reference Strauss et al. teaches that the initiator particle as taught by Strauss et al. advantageously provides selectively-cleavable linkers which can control the release of newly-synthesized DNA strands from the substrate in a way that corresponds to the digital information encoded by the DNA strands (see paras. [0008]; [0030]; [0109]).
Regarding claim 45, the references Merriman et al. and Strauss et al. teach the information storage system, wherein the set of information is binary (see Merriman et al.: para. [0014]).
Regarding claim 46, the references Merriman et al. and Strauss et al. teach the information storage system, further comprising at least one of error detecting schemes or error correction schemes for minimizing errors within the single stranded DNA oligomer (see Merriman et al.: para. [0015]).
Regarding claim 47, the references Merriman et al. and Strauss et al. teach the information storage system, wherein the error detecting schemes are selected from repetition code, parity bits, checksums, cyclic redundancy checks, cryptographic hash functions and hamming codes, and the error correction schemes are selected from automatic repeat request, convolutional codes, block codes, hybrid automatic repeat request and Reed-Solomon codes (see Merriman et al.: para. [0015]).
Regarding claim 48, the references Merriman et al. and Strauss et al. teach the information storage system, wherein the device comprises a CMOS chip based array of actuator pixels for DNA synthesis, the actuator pixels directing voltage/current or light-mediated deprotection within an enzymatic DNA synthesis reaction comprising phosphoramidite chemistries (see Merriman et al.: para. [0016]).
Regarding claim 2, the references Merriman et al. and Strauss et al. teach the information storage system, wherein the initiator particle is a microscale particle (see Strauss et al.: para. [0061]).
Regarding claim 7, the references Merriman et al. and Strauss et al. teach the information storage system, wherein the initiator particle is substantially spherical (see Strauss et al.: para. [0061]).
Regarding claim 9, the references Merriman et al. and Strauss et al. teach the information storage system, wherein the substrate comprises iron as part of a magnetic compound (i.e., magnetic material such as ferrite crystals may be included in the substrate) (see Strauss et al.: para. [0061]).
Regarding claim 10, the references Merriman et al. and Strauss et al. do not specifically specify that the magnetic compound comprises magnetite, maghemite, or a combination thereof. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the substrate of Merriman et al. and Strauss et al. to include any suitable magnetic compound including magnetite, maghemite, or a combination thereof, since the reference Strauss et al. teaches that it may be advantageous to provide the substrate with magnetic properties to provide additional handling and manipulation options for the substrate (see para. [0061]).
Regarding claim 12, the references Merriman et al. and Strauss et al. teach the information storage system, wherein the linker molecule comprises a biotin, a thiol, an amine, or a combination thereof (see Strauss et al.: paras. [0037]; [0038]).
Regarding claim 15, the references Merriman et al. and Strauss et al. teach the information storage system, wherein the substrate comprises iron (see Strauss et al.: para. [0061]) and the linker molecule comprises biotin (Strauss et al.: para. [0038]).
Regarding claim 17, the references Merriman et al. and Strauss et al. teach the information storage system, wherein the substrate comprises a plurality of initiator oligonucleotides (106) functionalized thereto (see Strauss et al. paras. [0061]; [0071]; [0103]).
Regarding claim 18, the references Merriman et al. and Strauss et al. are silent with respect to each of the plurality of the initiator oligonucleotides (106) comprising at least 95% sequence identity with respect to each other. However, the reference Strauss et al. teaches that the plurality of polymer chains (i.e., oligonucleotides 106, 202) attached to the substrate may be associated with one or more different groups, which may be based on a common feature possessed by the polymers (see paras. [0071]; [0072]; [0103]). The reference Strauss et al. further teaches that all polymers synthesized on the substrate that belong to the same group should be attached to the substrate by surface linkers that have the same sequence or a similar sequence that is cleaved by the same enzyme (see para. [0082]). Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the plurality of the initiator oligonucleotides comprise at least 95% sequence identity with respect to each other, since the reference Strauss et al. teaches that all polymers synthesized on the substrate that belong to the same group should be attached to the substrate by surface linkers that have the same sequence or a similar sequence that is cleaved by the same enzyme (see para. [0082]).
Regarding claim 19, the references Merriman et al. and Strauss et al. are silent with respect to each of the plurality of the initiator oligonucleotides (106) comprising about 99% sequence identity with respect to each other. However, the reference Strauss et al. teaches that the plurality of polymer chains (i.e., oligonucleotides 106, 202) attached to the substrate may be associated with one or more different groups, which may be based on a common feature possessed by the polymers (see paras. [0071]; [0072]; [0103]). The reference Strauss et al. further teaches that all polymers synthesized on the substrate that belong to the same group should be attached to the substrate by surface linkers that have the same sequence or a similar sequence that is cleaved by the same enzyme (see para. [0082]). Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the plurality of the initiator oligonucleotides comprise about 99% sequence identity with respect to each other, since the reference Strauss et al. teaches that all polymers synthesized on the substrate that belong to the same group should be attached to the substrate by surface linkers that have the same sequence or a similar sequence that is cleaved by the same enzyme (see para. [0082]).
Regarding claim 20, the references Merriman et al. and Strauss et al. are silent with respect to each of the plurality of the initiator oligonucleotides (106) comprising about 30% to about 100% sequence identity with respect to each other. However, the reference Strauss et al. teaches that the plurality of polymer chains (i.e., oligonucleotides 106, 202) attached to the substrate may be associated with one or more different groups, which may be based on a common feature possessed by the polymers (see paras. [0071]; [0072]; [0103]). The reference Strauss et al. further teaches that all polymers synthesized on the substrate that belong to the same group should be attached to the substrate by surface linkers that have the same sequence or a similar sequence that is cleaved by the same enzyme (see para. [0082]). Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the plurality of the initiator oligonucleotides comprise about 30% to about 100% sequence identity with respect to each other, since the reference Strauss et al. teaches that all polymers synthesized on the substrate that belong to the same group should be attached to the substrate by surface linkers that have the same sequence or a similar sequence that is cleaved by the same enzyme (see para. [0082]).
Regarding claim 21, the references Merriman et al. and Strauss et al. are silent with respect to each of the plurality of the initiator oligonucleotides (106) comprising about 70% to about 95% sequence identity with respect to each other. However, the reference Strauss et al. teaches that the plurality of polymer chains (i.e., oligonucleotides 106, 202) attached to the substrate may be associated with one or more different groups, which may be based on a common feature possessed by the polymers (see paras. [0071]; [0072]; [0103]). The reference Strauss et al. further teaches that all polymers synthesized on the substrate that belong to the same group should be attached to the substrate by surface linkers that have the same sequence or a similar sequence that is cleaved by the same enzyme (see para. [0082]). Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the plurality of the initiator oligonucleotides comprise about 70% to about 95% sequence identity with respect to each other, since the reference Strauss et al. teaches that all polymers synthesized on the substrate that belong to the same group should be attached to the substrate by surface linkers that have the same sequence or a similar sequence that is cleaved by the same enzyme (see para. [0082]).
Regarding claim 22, the references Merriman et al. and Strauss et al. teach the information storage system, further comprising a coded oligomer sequence bonded to the initiator oligonucleotide (see Strauss et al.: paras. [0030]; [0109]) (e.g., on completion of synthesis of a particular coded oligomer sequence).
Regarding claim 23, the references Merriman et al. and Strauss et al. do not specifically specify that the coded oligomer sequence comprises 10 to 90 bases. However, the reference Merriman et al. teaches that a large range of DNA molecular lengths having coded oligomer sequence can be synthesized to store data in the DNA molecules (see para. [0008]). The reference Merriman et al. further teaches that the coded oligomer sequence may comprise 10’s to 100’s of bases (see para. [0008]). Accordingly, it would have been obvious to have having ordinary skill in the art before the effective filing date of the claimed invention to have the coded oligomer sequence comprise 10 to 90 bases, since Merriman et al. teaches that coded oligomer sequence may comprise 10’s to 100’s of bases (see para. [0008]).
Regarding claim 24, the references Merriman et al. and Strauss et al. do not specifically specify that the coded oligomer sequence comprises 20 to 80 bases. However, the reference Merriman et al. teaches that a large range of DNA molecular lengths having coded oligomer sequence can be synthesized to store data in the DNA molecules (see para. [0008]). The reference Merriman et al. further teaches that the coded oligomer sequence may comprise 10’s to 100’s of bases (see para. [0008]). Accordingly, it would have been obvious to have having ordinary skill in the art before the effective filing date of the claimed invention to have the coded oligomer sequence comprise 20 to 80 bases, since Merriman et al. teaches that coded oligomer sequence may comprise 10’s to 100’s of bases (see para. [0008]).
Regarding claim 25, the references Merriman et al. and Strauss et al. teach the information storage system, wherein the coded oligomer sequence is a single stranded DNA oligomer (see Strauss et al. paras. [0024]; [0031]).
Claims 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Merriman et al. in view of Strauss et al. as applied to claim 44 above, and further in view of Peterson et al. (US 2013/0109596).
Regarding claims 3-6, the references Merriman et al. and Strauss et al. are silent with respect to the initiator particle size having a particle size in a range from about 0.5 nm to about 10,000 nm, as recited in claim 3; a particle size in a range from about 10 nm to about 100 nm, as recited in claim 4; a particle size in a range from about 0.5 µm to about 10,000 µm, as recited in claim 5; or a particle size in a range from 10 µm to about 100 µm, as recited in claim 6. However, the reference Peterson et al. teaches that synthesis of oligonucleotides may be performed on solid supports (substrates) having various shapes and sizes (see paras. [0006]; [0083]; [0109]). The reference Peterson et al. further teaches that the solid support on which synthesis of oligonucleotide may be performed can be in a particle form, including beads, microparticles, and nanoparticles (see para. [0083]). The reference Peterson et al. further teaches that factors which determine the amount of nucleic acid which can be synthesized on the solid support include surface area and size of the solid support, and that the size of the solid support can be adjusted to alter the amount of nucleic acid which may be synthesized on the support (see paras. [0109]; [0113]; Table 2). The reference Peterson et al. further teaches that the solid support can be a solid particle having a size in ranges from about 0.005 µm to about 100 µm, from about 0.01 µm to about 1000 µm, or from about 2 µm to about 200 µm in average diameter (see paras. [0006]; [0109]).
Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the initiator particle of Merriman et al. and Strauss et al. such that the particle has a particle size within the ranges as taught by Peterson et al., and claimed by applicant, through a mere routine experimentation and optimization based on the teachings of Peterson et al., since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955). See MPEP § 2144.05.
Claims 8, 11, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Merriman et al. in view of Strauss et al. as applied to claim 44 above, and further in view of Nguyen et al. (US 2021/0371891).
Regarding claim 8, the references Merriman et al. and Strauss et al. are silent with respect to the substrate comprising gold, and wherein the gold is elemental gold or an alloy of gold. However, the reference Nguyen et al. teaches that solid substrates useful for synthesizing oligonucleotides by solid phase synthesis technique may be formed from any suitable material including from silicon dioxide, glass, an insoluble polymer, a non-reactive metal such as gold, silver, or platinum, or other material (see paras. [0031]; [0032]). Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the substrate from any suitable material including elemental gold or an alloy of gold, since the reference Nguyen et al. teaches that the substrate for solid phase synthesis of oligonucleotides can be made from any suitable material including a non-reactive metal such as gold, silver, or platinum, or other material (see paras. [0031]; [0032]).
Regarding claim 11, the references Merriman et al. and Strauss et al. are silent with respect to the substrate comprising silver, and wherein the silver is elemental silver or an alloy of silver. However, the reference Nguyen et al. teaches that solid substrates useful for synthesizing oligonucleotides by solid phase synthesis technique may be formed from any suitable material including from silicon dioxide, glass, an insoluble polymer, a non-reactive metal such as gold, silver, or platinum, or other material (see paras. [0030]; [0032]). Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the substrate from any suitable material including elemental silver or an alloy of silver, since the reference Nguyen et al. teaches that the substrate for solid phase synthesis of oligonucleotides can be made from any suitable material including a non-reactive metal such as gold, silver, or platinum, or other material (see paras. [0031]; [0032]).
Regarding claim 13, the references Merriman et al. and Strauss et al. do not specifically disclose wherein the substrate is gold and the linker molecule is a thiol. However, the reference Nguyen et al. teaches that substrate can be gold (see para. [0031]) and the linker molecule for the oligonucleotide can be a thiol (see para. [0113]).
Regarding claim 14, the references Merriman et al. and Strauss et al. do not specifically disclose wherein the substrate is glass and the linker molecule is a thiol. However, the reference Nguyen et al. teaches that substrate can be glass (see para. [0031]) and the linker molecule can be a thiol (see para. [0113]).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Merriman et al. in view of Strauss et al. as applied to claim 44 above, and further in view of Boland et al. (US 2004/0217345).
Regarding claim 16, the reference Merriman et al. and Strauss et al. do not specifically disclose wherein the initiator oligonucleotide sequence is modified with a thiol group functionalized to the 5’ end of the oligonucleotide sequence. However, the reference Strauss et al. teaches that the initiator oligonucleotide sequence (106) can have a covalent connection to the linker molecule (104) (see para. [0031]). The reference Boland et al. teaches that one end of an oligonucleotide can be functionalized to contain a sulfhydryl (thiol) group so as to immobilize the oligonucleotide to a solid substrate via a disulfide bond to an anchoring compound functionalized to the substrate (see paras. [0068]-[0069]). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the initiator oligonucleotide sequence (106) modified with a thiol group functionalized to the 5’ end of the oligonucleotide sequence so as to immobilize the initiator oligonucleotide sequence to the solid substate via a disulfide bond as taught by Boland et al., since the reference Strauss et al. teaches that oligonucleotide synthesis may begin with either a template ssDNA or with a linker, and that synthesis of the oligonucleotide can proceed in the 5′ to 3′ direction by enzymatic DNA synthesis method (see Strauss et al. paras. [0104]; [0114]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lessanework T Seifu whose telephone number is (571)270-3153. The examiner can normally be reached M-T 9:00 am - 6:30 pm; F 9:00 am - 1:00 pm.
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/LESSANEWORK SEIFU/Primary Examiner, Art Unit 1774