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 III, claims 16-20 (and newly added claims 20-25) in the reply filed on February 16, 2026 is acknowledged. The traversal is on the ground(s) that claim 7 has been amended to include features from claim 16, and, based on overlap between features of dependent claims from Group II and Group III, there would be no serious search or examination burden with respect to claims from Group II and Group III. This is not found persuasive because, while inventions II and III are directed to related methods, the inventions as claimed and amended still utilize different steps. Specifically, the method of claim 7 requires the steps of providing a substrate with one or more electrodes disposed on a substrate and contacting the one or more electrodes with a coating solution that has an acid content and a monomer content, the monomer content including a number of aniline monomer units, which the method of claim 16 does not require. Additionally, the method of claim 16 requires applying a voltage to an electrode disposed on a surface of a reaction vessel of an oligonucleotide synthesizer apparatus, wherein the electrode already has a coating that includes a polyaniline-containing material and a plurality of intermediate oligonucleotide chains coupled to the electrode, which varies from the method of claim 7. Also, the applicant has not specified why it is likely that a search for group II would likely yield results applicable to the other groups beyond mere conclusory statements. As such, the search and/or examination burden still exists and the requirement for restrictions is maintained.
The requirement is still deemed proper and is therefore made FINAL.
Claims 7-15 and 26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on February 16, 2026.
Drawings
The drawings were received on February 24, 2023. These drawings are acceptable.
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.
Claim(s) 16, 17, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Blackburn et al (US 2005/0003399 A1) in view of Qing et al (US 2021/0291137 A1).
With respect to claim 16 Blackburn discloses a method comprising:
Applying a voltage to an electrode (electrophoretic electrodes 10 and 15 and 12 and 17 have voltage applied between each respective set, See Para. 0065) disposed on the surface of a reaction vessel of an oligonucleotide synthesizer apparatus (See Para. 0079 for discussion of how the substrates comprising the electrodes can be part of a larger device comprising a detection chamber that exposes a given volume of sample to the detection electrode), the electrode having a coating that includes a polyaniline containing material (See Fig. 2 Para. 0083 for discussion of methods of making a substrate comprising a plurality of gold electrodes, wherein said methods comprise coating an adhesion metal, such as nickel or palladium (optionally with brightener), onto the substrate, preferably via electroplating. The electrode metal, preferably gold, is then coated (again, with electroplating preferred) onto the adhesion metal; Para. 0085 discusses how gold coated polyaniline can be used) and a plurality of intermediate oligonucleotide chains being coupled to the electrode (See Para. 0104 for discussion of oligonucleotide probes that can be bound to areas around the individual electrodes).
While Blackburn does disclose the application of a voltage to the electrode, Blackburn fails to disclose that the applied voltage causes a protecting group coupled to a terminal nucleotide of an intermediate oligonucleotide chain of the plurality of intermediate oligonucleotide chains to separate from the terminal nucleotide and form an unprotected intermediate oligonucleotide chain.
Qing teaches an apparatus and method for synthesizing a biopolymer, the apparatus comprising a top surface and a plurality of wells, wherein each of the plurality of wells comprises a first electrode disposed on the bottom of the well and a linker attached to the sides of the well (see abstract). In a method of synthesizing an oligonucleotide, the method comprises: (a) providing an apparatus according to any one of the above 1 to 15; (b) introducing a solution comprising a first nucleoside phosphoramidite monomer into the well, wherein the first phosphoramidite monomer comprises a 5′-protecting group, an acid sensitive protecting group and optionally a base sensitive protecting group, and wherein the first phosphoramidite monomer reacts with the linker attached to the side walls of the well to form a linked nucleoside through a phosphite triester; (c) removing the solution from step (b) from the well; (d) introducing a solution comprising a capping reagent into the well, wherein the capping reagent reacts with any unreacted linker from step (b) to form a capped linker; (e) removing the solution from step (d) from the well; (f) introducing a solution comprising an oxidant into the well, wherein the oxidant converts the phosphite triester of the linked nucleoside to a phosphate triester; (g) removing the solution from step (f) from the well; (h) introducing a solution comprising a first deprotecting reagent into the well, wherein the deprotecting reagent is electrochemically activated and removes the 5′-protecting group; in one embodiment, this activation involves the oxidation of hydroquinone to locally generate protons inside the well. (i) removing the solution from step (h) from the well; (j) repeating steps (b) through (i) to synthesize a protected oligonucleotide; and (k) introducing a solution comprising a second deprotecting reagent into the well, wherein the second deprotecting agent removes the protecting groups on the oligonucleotide (See Paras. 0060-0071). A potential is applied to the working electrode when the first deprotecting reagent solution is introduced (See Para. 0120). In an additional step, a solution comprising a second deprotecting reagent is introduced into the well (FIG. 9H). The second deprotecting agent removes the protecting groups on the oligonucleotide (See Para. 0130). The application of the various potentials under the taught conditions shows the successful demonstration of the ability to conduct DNA synthesis with electrochemical control, wherein the yield/intensity of the apparatus was comparable with standard chemical controlled synthesis (See Para. 0139).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the method of synthesizing an oligonucleotide taught by Qing into the method of Blackburn to improve DNA synthesis via electrochemical control (See Para. 0139 of Qing).
With respect to claim 17, the combination of Blackburn and Qing teach:
responsive to the voltage being applied to the electrode, causing an oxidation state of the coating to change from a reduced state to an oxidized state (See Para. 0133 of Qing); and
adding a synthesis solution to the reaction vessel, the synthesis solution including a nucleoside phosphoramidite, wherein the nucleoside phosphoramidite couples to the unprotected intermediate oligonucleotide chain (See Para. 0133 of Qing);
wherein a deblocking solution is disposed in the reaction vessel during the voltage being applied to the electrode, the deblocking solution including at least one of an amount of benzoquinone or an amount of hydroquinone (See Paras. 0120 and 0133 of Qing).
With respect to claim 22 the combination of Blackburn and Qing teaches that the coating has an electrical conductivity at 20°C of no greater than 6 x 106 siemens per meter (S/m) (See Para. 0135 of Blackburn).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Blackburn et al (US 2005/0003399 A1) and Qing et al (US 2021/0291137 A1) in view of Mathies et al (US 6,361,671 B1).
With respect to claim 18 the combination of Blackburn and Qing teaches that the deblocking solution (deprotecting reagent) includes an amount of acetonitrile (See Para. 0120); and
The nucleoside phosphoramidite corresponds to a nucleotide to add to the intermediate oligonucleotide chain (See Para. 0133).
The combination of Blackburn and Qin fails to teach that the correspondence between the oligonucleotide sequence and the oligonucleotide chain encodes an amount of digital information.
Mathies teaches a method of selectively labeling analytes for simultaneous electrochemical detection of multiple label-analyte conjugates after electrophoretic or chromatographic separation (See abstract), wherein the method uses a “signed binary coding” scheme. The method allows selective detection of multiple labels simultaneously after an electrophoretic or chromatographic separation. A specific application with four different electroactive labels is detailed, which can be used to identify four different bases in DNA-sequencing by CE-EC. It is apparent that the method and the microchip can be adapted to any number of different electroactive labels by increasing the number of working electrodes. Additionally, the method is easily extended to RNA, PNA, peptides, proteins, amino acids, carbohydrates and other compounds as they can also be labeled with redox-active labels or, in select cases, where the analytes themselves have unique redox properties. Signals are effectively distinguished from each other by using a coding matrix, with each label having a unique matrix value. This method insures a very accurate approach for the simultaneous detection and identification of multiple electrochemical labels. Thus, detection of multiple analytes in a single separation can be done with very high selectivity and confidence and without the drawbacks of optical detection (See Col. 12, lines 22-52).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the signed binary coding scheme taught by Mathies into the method of combined Blackburn and Qing to ensure that the method of synthesizing oligonucleotides is very accurate for the simultaneous detection and identification of multiple electrochemical labels, thus enabling the detection of multiple analytes in a single separation to be done with very high selectivity and confidence without the drawbacks of optical detection (See Col. 12, lines 22-52 of Mathies).
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Blackburn et al (US 2005/0003399 A1) and Qing et al (US 2021/0291137 A1) in view of Alamry et al (US 11,459,427 B1).
Refer above for the combined teachings of Blackburn and Qing.
With respect to claim 21 the combination of Blackburn and Qing fails to teach that the polyaniline containing material includes an emeraldine salt form of polyaniline.
The background of Alamry teaches that polyaniline has emerged as one of the most promising conductive polymers (CP) due to its usefulness in a variety of applications, such as electronics and medical applications. Polyaniline has been widely considered as a versatile CP due to its excellent redox characteristics, variable oxidation states, reversibility in the de-doping/doping process, simple polymerization mechanism, and chemical stability. The emeraldine salt form of polyaniline is found to be useful for the application of electrode material owing to its high conductivity and superb capacity for the charge storage [4]. Furthermore, some of the foremost practical advantages of polyaniline include cost-efficiency, high electrical conductivity, high environmental stability, and relatively easy preparation by electrochemical or chemical oxidation of aniline (See Col. 1, lines 25-51).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the emeraldine salt form of polyaniline, as taught by Alamry, into the polyaniline containing material of the coating of combined Blackburn and Qing to take advantage of its high conductivity and super capacity for charge storage (See Col. 1, lines 25-51 of Alamry).
Allowable Subject Matter
Claims 19, 20, and 23-25 are objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closet cited prior art of reference fails to disclose or fairly teach:
applying the voltage to the electrode includes applying the voltage to a first group of electrodes of the array of electrodes; the first group of electrodes being coupled to a first number of intermediate oligonucleotide chains; a first nucleotide is to be added to the first number of intermediate oligonucleotide chains to encode a first set of digital information using a sequence of the first number of intermediate oligonucleotide chains; and the nucleoside phosphoramidite corresponds to the first nucleotide (claim 19); Claim 20 is dependent upon claim 19 and inherits the same deficiencies; and
that the coating is formed on the electrode by: contacting the electrode with a coating solution, the coating solution having an acid content and a monomer content, the monomer content including a number of aniline monomer units; and applying one or more voltage cycles to the electrode to form the coating on the electrode (claim 23); Blackburn teaches coating the electrode by means of electroplating gold coated polyaniline (See Para. 0085). Claims 24-25 are dependent upon claim 23 and inherit the same status.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Yun et al (US 2014/0154785 A1) teaches a method of fabricating polymer single nanowires, comprising the steps of: spin coating a polymethylmethacrylate resist onto a silicon wafer patterned with at least one gold electrode pair; creating a nanochannel using e-beam lithography between each pair of the at least one gold electrode pairs; placing the silicon wafer into an aniline monomer polymerization solution; reacting the polymerization solution to give a coated wafer and a polyaniline film; and cleaning the coated wafer of polymethylmethacrylate resist and polyaniline film to give at least one gold electrode pair with a connecting polymer single nanowire (See abstract).
Conclusion
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/BRITTANY I FISHER/Examiner, Art Unit 1796 May 29, 2026
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