Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
OBJECTION
2. The specification is objected to because of the following informality: the continuation information must be updated to indicate the current status of the parent applications.
3. Claims 28 and 43 are objected to because of the following informality: “particles comprises’ should be ‘particles comprise’. Correction is required.
NON-PRIOR ART REJECTIONS
4. 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.
Claim 33 is 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. This claim is indefinite because of the relative language ‘long’ and ‘short’ nucleic acid strand(s), as it cannot be determined what is encompassed. The specification does not define this language, and one or ordinary skill in the art would not be apprised of its meaning. Clarification is required.
5. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
6. Claims 28-43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 11,203,612 in view of Niemeyer et al. (US 2016/0102344). The difference between the patented claims and the pending claims is that the patented claims recite attachment of a generic protein to a nucleic acid origami, whereas the pending claims recite attachment of the protein species ‘antibody’ to a nucleic acid origami. One of ordinary skill in the art considering the patented claims would have been motivated to use the species ‘antibody’ as the protein attached to the origami because Niemeyer disclosed the use of antibody-attached nucleic acid origami in microarray analysis. See paragraphs 0002-0042, 0049-0051, and 0067-0068. It would have been prima facie obvious to one of ordinary skill in the art considering the patented claims to carry out the pending claims in light of Neimeyer.
PRIOR ART REJECTIONS
7. 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.
8. 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 28-43 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Gremyachinskiy et al. (WO 2019/195633, effective filing date 04/04/2018).
The applied reference has a common inventor (Mallick and Patel) with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding independent claims 28 and 43, Gremyachinskiy discloses an array of spatially separated nucleic acid origami structures, each attached to a protein, wherein the protein is an antibody, and methods of preparing such an array. See paragraphs 0003-0025, 0051-0070, 0081, and 00219. The claimed solid support and method of preparing cannot be distinguished from that of Gremyachinskiy. Regarding dependent claims 29-42, the further limitations are also disclosed in the cited portions of Gremyachinskiy.
9. Claims 28-32 and 43 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Niemeyer et al. (US 2016/0102344).
Regarding independent claims 28 and 43, Niemeyer discloses an array of spatially separated nucleic acid origami structures, each attached to an object of interest, wherein the object of interest is a protein, or more specifically an antibody, and methods of preparing such an array. See paragraphs 0002-0039 and 0049-0068. The claimed solid support and method of preparing cannot be distinguished from that of Niemeyer. Regarding dependent claims 29-32, the further limitations are also disclosed in the cited portions of Niemeyer.
10. 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.
11. 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.
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 33-42 are rejected under 35 U.S.C. 103 as being unpatentable over Niemeyer as applied to claims 28-32 and 43 above, and further in view of Gremyachinskiy.
As noted above, Niemeyer discloses the method and array of claims 28-32 and 43, but does not disclose the further limitations of claims 33-42.
However, Gremyachinskiy discloses these further limitations; see paragraphs 0003-0025, 0051-0070, 0081-00189, and 00216-00226.
One of ordinary skill in the art would have been motivated to modify the method of Niemeyer in the manner of these claims because the further limitations were disclosed by Gremyachinskiy. It would have been prima facie obvious to one of ordinary skill in the art at the time the application was filed to carry out the claimed methods.
CONCLUSION
14. No claims are free of the prior art.
15. Chang et al. (US 2011/0275702) is made of record by the Office as a reference of interest.
16. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH R HORLICK whose telephone number is (571)272-0784. The examiner can normally be reached Mon. - Thurs. 8:30 - 6:30.
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, Gary Benzion can be reached at 571-272-0782. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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07/23/26
/KENNETH R HORLICK/ Primary Examiner, Art Unit 1681
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