Prosecution Insights
Last updated: April 19, 2026
Application No. 18/191,864

METHOD FOR MODIFYING SURFACE OF SUBSTRATE AND METHOD FOR IMMOBILIZING OLIGONUCLEOTIDE

Non-Final OA §102§103
Filed
Mar 28, 2023
Examiner
RILEY, JEZIA
Art Unit
1681
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
Industrial Technology Research Institute
OA Round
1 (Non-Final)
83%
Grant Probability
Favorable
1-2
OA Rounds
2y 8m
To Grant
90%
With Interview

Examiner Intelligence

Grants 83% — above average
83%
Career Allow Rate
1080 granted / 1299 resolved
+23.1% vs TC avg
Moderate +7% lift
Without
With
+6.9%
Interview Lift
resolved cases with interview
Typical timeline
2y 8m
Avg Prosecution
21 currently pending
Career history
1320
Total Applications
across all art units

Statute-Specific Performance

§101
1.2%
-38.8% vs TC avg
§103
24.3%
-15.7% vs TC avg
§102
27.6%
-12.4% vs TC avg
§112
22.0%
-18.0% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1299 resolved cases

Office Action

§102 §103
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 of group I and species in the reply filed on 01/19/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claim Rejections - 35 USC § 102 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. Claim(s) 1-2, 5-6, 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by George et al. US 20200224020. George et al. discloses a support and a heteropolymer attached to the support. The heteropolymer includes an acrylamide monomer including an attachment group to react with a functional group attached to a primer, and a monomer including a stimuli-responsive functional group. The monomer including the stimuli-responsive functional group may be pH-responsive, temperature-responsive, saccharide-responsive, nucleophile-responsive, and/or salt-responsive (abstract). The stimuli-responsive functional group is capable of undergoing modification when exposed to a predetermined stimulus, wherein the modification changes the polarity and/or conformation of the switchable heteropolymer (Summary). George et al. discloses that any of the heteropolymers described herein may be random, block, linear, and/or branched copolymers comprising two or more recurring monomer units in any order or configuration, and may be linear, cross-linked, or branched, or a combination thereof. [0098]. George et al. discloses the functional group can be a hydroxyl, or an amino group (see for example [0011], [0014], [0027], claims). Brown et al. teaches a method of grafting the polymer to a support (Figures 1A-1D) and the oligonucleotide is linked to the polymer (Figure 1E) (which is viewed to be inclusive of instant claim 6) (see for example [0158], [0172];[0187]-[0188]). Claim(s) 1-2, 5-7, 10, and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brown et al. US 20160122816 A1. Brown et al. discloses a polymer for surface functionalization, comprising a recurring unit of Formula (II)/(IIa) comprising amine terminated acrylamide monomer (viewed to be inclusive of the instant Chemical formula 2) [0182-0184]. Brown et al. teaches “As used herein, the term “polymer” refers to a molecule composed of many repeated subunits or recurring units. Non-limiting examples of polymer structures include linear, branched, or hyper-branched polymers” [0176]. Brown et al. describes the attachment of a primer to the polymer [0268]. Brown et al. also discloses the attachment of such polymers to a substrate [0009-0033]. Brown et al. also discloses that a primer can be attached to the polymer coating [0240]. Brown et al. teaches processes for immobilizing a grafted polymer to a first surface of a substrate, comprising: providing a substrate having a first surface comprising a first plurality of functional groups covalently attached thereto; providing a grafted polymer comprising functionalized oligonucleotides covalently bonded to a polymer, wherein the polymer comprises a second plurality of functional groups; and reacting the first plurality functional groups of the first surface with the second plurality of functional groups of the polymer such that the polymer is covalently bonded to the first surface of the substrate. [0027-0028]. 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. Claim(s) 1-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. US 20160122816 A1 in view of Wen et al. US 20150359944 and Liu et al. (Nanoscale 2016, 8, 16819 cited in IDS filed 01/25/2024) . Brown et al. discloses a polymer for surface functionalization, comprising a recurring unit of Formula (II)/(IIa) comprising amine terminated acrylamide monomer (viewed to be inclusive of the instant Chemical formula 2) [0182-0184]. Brown et al. teaches “As used herein, the term “polymer” refers to a molecule composed of many repeated subunits or recurring units. Non-limiting examples of polymer structures include linear, branched, or hyper-branched polymers” [0176]. Brown et al. describes the attachment of a primer to the polymer [0268]. Brown et al. also discloses the attachment of such polymers to a substrate [0009-0033]. Brown et al. also discloses that a primer can be attached to the polymer coating [0240]. Brown et al. teaches processes for immobilizing a grafted polymer to a first surface of a substrate, comprising: providing a substrate having a first surface comprising a first plurality of functional groups covalently attached thereto; providing a grafted polymer comprising functionalized oligonucleotides covalently bonded to a polymer, wherein the polymer comprises a second plurality of functional groups; and reacting the first plurality functional groups of the first surface with the second plurality of functional groups of the polymer such that the polymer is covalently bonded to the first surface of the substrate. [0027-0028]. Brown et al. teaches the crafted polymer can undergo cross-linked reaction (see Example 1). Brown et al. does not teach the use of dopamine structure capable of binding to the substrate. Wen et al. teaches the coating agents comprise at least three main components, namely polymer, one or more latent reactive groups, and one or more noncovalent linking groups, wherein the noncovalent linking groups are selected to interact with a substrate to which the coating agent is applied. The coating agents are useful for providing a coating that can be further functionalized (see abstract; [0007]). Wen et al. teaches the non-covalent linking groups can comprise a catechol-based group that is capable of interacting with a surface. For example, a non-covalent linking group can comprise catecholamine (that is, dopamine, or 4-(2-aminoethyl)benzen-1,2-diol) [0053]; …In some embodiments the non-covalent linking group can include siloxane groups, dopamine [0131]. Wen et al. teaches said substrate uses include non-implanted biomedical devices such as, but are not limited to, diagnostic slides such as gene chips, DNA chip arrays, microarrays, protein chips, and fluorescence in situ hybridization (FISH) slides; arrays including cDNA arrays, and oligonucleotide arrays; chromatographic support materials, cell culture devices, biosensors, and the like [0138]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the dopamine coating of Wen et al. for the substrate of Brown et al. because Wen et al. teaches: “Advantageously, a substrate coated with inventive coating agents described herein can retain physical, chemical or biological characteristics longer than comparative substrates coated with conventional surface primers or coating agents. …. In some embodiments a polymeric composition wherein the latent reactive group is covalently bonded to the polymer provides for more robust and durable coating layer than when a “free” latent reactive group is mixed with the coating formulation … a silicon-containing substrate can be coated with a coating agent in accordance with inventive concepts without the need for pretreatment of the silicon substrate. …. this can result in a robust and durable coated layer on the silicon substrate. Optionally, the coated layer can then be further reacted with another coating layer, or an overcoat layer to impart desirable characteristics, for example such as lubricity or wettability, to the substrate …when applied, inventive coating agents can form a coated layer on a surface of a support material. This layer, in turn, can be stably retained upon the surface and can serve as an attachment site for binding additional compositions (such as polymeric formulations, active agents, and the like) to the surface … the coating agents can function as a surface priming agent. … , subsequent coating compositions can be applied to achieve a desired surface characteristic, such as, for example, hydrophilicity, hydrophobicity, and the like. Such final coatings can in turn provide desired characteristics to the substrate [0026]-[0029]. See also Liu et al. stating that “it has been demonstrated that dopamine, a small molecule containing both amine and catechol groups, could be self-polymerized into PDA (polydopamine) thin films in aqueous solution in weakly alkaline aqueous environments (Fig. 1). These PDA thin films can strongly attach to almost any inorganic or organic material surface (noble metals, oxides, semiconductors, ceramics and polymers) regardless of its shape and size. More importantly, the formed PDA thin films can further react with many other compounds through secondary reactions. Thus, different functional components, such as biomacromolecules, long-chain molecules, and metal films, can be introduced onto these PDA films to form functional ad-layers. Therefore, multifunctional coatings can be facilely introduced on various material surfaces, taking advantage of the universal adhesion capability and high reactivity of PDA films” (page 16821, col.2). Hence, the embodiments set forth in claims 3-4, 8-9,11-12 are merely some of the several straightforward possibilities which the skilled person would select, in accordance with circumstances, without requiring any inventive skill in order to solve the problem posed. One of ordinary skill in the art would have been motivated to modify the primary references in the manner of the claims to achieve the expected benefits, optimizations and/or expanded applications as this is well known practice in the art. MPEP states wherein the “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Alter, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Routine optimization is not considered inventive and no evidence has been presented that the coating with dopamine was other than routine, that the products resulting from the optimization have any unexpected properties, or that the results should be considered unexpected in any way as compared to the closest prior art. Thus, an ordinary practitioner would have recognized that the method could be adjusted to maximize the desired results. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEZIA RILEY whose telephone number is (571)272-0786. The examiner can normally be reached 7:30-6:00pm. 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JEZIA RILEY/Primary Examiner, Art Unit 1681 2 March 2026
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Prosecution Timeline

Mar 28, 2023
Application Filed
Mar 03, 2026
Non-Final Rejection — §102, §103 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
83%
Grant Probability
90%
With Interview (+6.9%)
2y 8m
Median Time to Grant
Low
PTA Risk
Based on 1299 resolved cases by this examiner. Grant probability derived from career allow rate.

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