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 .
Response to Election Requirement
Applicant’s election without traverse of claims 33 and 37-39 directed to ablation of oligonucleotide molecules in the boundary region in the reply filed on 2/27/2026 is acknowledged.
Status of the Claims
Claims 33-53 are pending.
Claims 34-36 are withdrawn subject to an election requirement.
Claims 33 and 37-53 are examined herein.
Acknowledgement is made of the amendments submitted on 2/27/2026.
Claim Interpretation
Claims 42-44 recite oligonucleotide molecules being in various states of protection. It is noted that there is no specific limitation recited that indicates at which step of the method of claim 33 the oligonucleotides are in these states. Therefore, the broadest reasonable interpretation is that the oligonucleotide molecules have the recited protection before, during, or after any step of the method of claim 33 and will be examined as such. Additionally, the broadest reasonable interpretation of oligonucleotide molecules being “protected from ligation” does not indicate that ligation to any other oligonucleotide occurs while they are in that state. For the purposes of examination, this limitation will be interpreted as the oligonucleotides being in a state where ligation could not occur, regardless of whether or not they are in that state at a recited ligation step.
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.
Kim et al., Barbee et al., and Steelig et al.
Claims 33-51 and 53 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US Pat No: 7,994, 098; cited in IDS of 2/27/2026) in view of Barbee et al. (Macromol. Biosci. (2011), 11(5): 607-617) and Seelig et al. (US Pat. No: 10,633,648).
Regarding claim 33, Kim discloses a method for providing an array comprising:
irradiating a substrate comprising a plurality of masked spot regions and an unmasked boundary region (col. 12, lines 34-37), whereby a photoresist (col. 9, lines 39-40) in the boundary region is degraded to render it available while the spot regions are protected (col. 6, lines 5-9);
blocking (col. 12, lines 43-61) oligonucleotides (col. 13, lines 47-49) in the boundary region;
irradiating the substrate to render selected oligonucleotides in the spot regions available (col. 13, lines 11-14); and
attaching a nucleotide to those available in the spot regions (col. 13, lines 14-17).
Kim does not disclose the elected species of ablating oligonucleotides in the boundary region in (b). Kim teaches a method of blocking (“capping”) the boundary region with a chemical modification (col. 12, lines 43-63). However, Kim also suggests that “any material that permanently deactivates the intended inactive areas of the substrate may be used as, or in place of, the capping reagents” (col. 12, lines 51-54).
Barbee discloses a method for ablating nucleotides in a boundary region (Fig. 1 (below); p. 3, first ¶). Additionally, Barbee teaches that this method “completely destroys” oligonucleotides in the unprotected region (p. 4, “Fabrication of Primer Arrays…”, line 9).
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As the methods of “inverse capping” from Kim and “destructive micropatterning” of Barbee differ by the specific inactivation step utilized (blocking vs. ablating), it is clear that the ablation step of Barbee can be substituted in for the blocking step of Kim. Additionally, these steps are known to serve the same purpose – namely, permanent inactivation of specific regions of a substrate – as evidenced by their teachings described above. Finally, one of ordinary skill in the art could have substituted the ablation step of Barbee for the blocking step of Kim with a reasonable expectation of success, as Kim indicates that other steps for permanent inactivation can be used in the “inverse capping” method.
Therefore, it would have been obvious to one of ordinary skill in the art by the effective filing date to substitute the step of ablation of oligonucleotides in the boundary region of Barbee for the step of blocking oligonucleotides in the boundary region of Kim.
Kim also does not disclose that an oligonucleotide of at least four nucleotides is attached to the available oligonucleotides in the spot region in (d). However, Kim states that the disclosed method “may be employed with other methods and systems for light directed DNA synthesis” (col. 6, lines 33-35), suggesting that other methods of DNA synthesis may be used besides the disclosed steps of standard phosphoramidite synthesis.
Seelig et al. discloses a method (Fig. 5) of attaching an oligonucleotide of eight nucleotides (col. 7, lines 62-67) to an oligonucleotide molecule immobilized in a spot region that has been rendered available for attachment by irradiation (col. 13, lines 21-50). Like that described in Kim, this is a method that utilizes photolithography techniques to synthesize a DNA sequence. The methods differ in that Kim discloses the addition of single nucleotides, while Seelig discloses the addition of short oligonucleotides. As Kim teaches that their method of DNA synthesis can be substituted for other methods of light directed DNA synthesis, one of ordinary skill in the art could have substituted the synthesis method of Kim with that of Seelig with predictable results.
Therefore, it would have been obvious to one of ordinary skill in the art by the effective filing date to substitute the method of light directed DNA synthesis of Seelig for the phosphoramidite method disclosed in Kim.
Together, the method of Kim with the ablation step of Barbee and the DNA synthesis method of Seelig renders obvious the limitations as disclosed in claim 33.
Regarding claims 37-39, Barbee discloses ablating oligonucleotides in the boundary region by performing plasma etching to completely remove the exposed oligonucleotide molecules in the boundary region, as discussed previously (see Barbee Fig. 1, above).
Regarding claims 40-41, Seelig further discloses in the method of DNA synthesis that the oligonucleotides in some spot regions are protected from ligation prior to irradiation (Fig. 5, left) while oligonucleotides in other spot regions are protected during and after irradiation (Fig. 5, right).
Regarding claims 42 and 43, Kim discloses that the oligonucleotides are protected from ligation by a photoresist (col. 1, lines 58-61), and that the photoresist is removed in the irradiated spot regions and not in the masked spot regions (col. 12, lines 33-42).
Regarding claims 44-45, Seelig further discloses in the method of DNA synthesis that the oligonucleotides in the spot regions are protected from ligation by a photo-cleavable polymer (col. 11-12, lines 66-18; Fig. 5: a') and that the DNA synthesis method comprises irradiating the substrate in multiple cycles in different regions and attaching additional short oligonucleotides to those regions (col. 13, lines 48-50; col. 6, lines 18-38).
Regarding claims 46 and 47, Seelig further discloses in the method of DNA synthesis that the irradiating of (c) is performed using a photomask (col. 16, lines 15-27), which is translated from to different positions upon each cycle of irradiation and attachment (Fig. 8).
Regarding claims 48 and 53, Kim discloses that the oligonucleotides in the spot regions and boundary region are identical in sequence (col. 13, lines 47-49: identical short polynucleotides) and are applied to the substrate as a lawn (col. 13, lines 47-49: covered) prior to the irradiating in (a).
Regarding claims 49 and 50, Barbee discloses that the diameters of the spot regions created by the ablation of the boundary region are about 3 μm (Fig. 3C/3D).
Regarding claim 51, Kim and Barbee each disclose that the boundary region comprises the region of the substrate surrounding and between the spot regions (Kim: claim 1 and Fig. 1; Barbee: Fig. 1, above).
Kim et al., Barbee et al., Steelig et al., and Steel et al.
Claim 52 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al., Barbee et al., and Seelig et al. as applied to claims 33-51 and 53 above, and further in view of Steel et al. (Biophys. J. (2000), 79: 975-981). Kim discloses that the oligonucleotides are “short polynucleotides” (col. 13, lines 47-49), but is silent on the exact length in nucleotides. Steel teaches that the ideal length of oligonucleotides for coverage of a substrate is between 8-24 nucleotides (Fig. 3; p. 978, lines 14-20). Additionally, Steel teaches that this length has a higher density of oligonucleotides (Fig. 4), which is desirable in nucleotide arrays. Therefore, it would have been obvious to one of ordinary skill in the art by the effective filing date to use oligonucleotides with a length of 8-24 nucleotides as the “short polynucleotides” in Kim, based on the teachings of Steel, to produce a high density array.
Double Patenting
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.
Application 18/342,905
Claims 33, 37, 39, 42-46, 49, and 51 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 67, 69, 73, 75, 77, and 81-87 of copending Application No. 18342905 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they disclose the same subject matter, as described below.
Regarding claim 33, in claims 67, the reference application discloses irradiating a substrate comprising masked spot regions and an unmasked boundary region (claim 67c), whereby a photoresist in the boundary region is degraded to render it available (claim 75); ablating (“removing”) oligonucleotide molecules in the boundary region (claim 67c); irradiating the substrate to render oligonucleotides in some spot regions available while other spot regions are not (claims 81-87); and attaching an oligonucleotide to those rendered available by the irradiation (claim 67a/b). However, in claim 67a (and b), the reference application discloses attachment of first and second oligonucleotide molecules but does not specifically teach that the oligonucleotides are at least four nucleotides in length. Despite this, one of ordinary skill in the art would understand that the term “oligonucleotide molecule” means a nucleic acid molecule with 4+ nucleotides. In fact, typical custom oligo ordering services sell oligonucleotide molecules ranging from 5-100 nucleotides, indicating that standard oligonucleotides have a length of 4+ nucleotides. (Integrated DNA Technologies (2019). PRODUCTS & SERVICES [Brochure]).
Regarding claims 37 and 39, the reference application discloses ablating (“removing”) oligonucleotides in the boundary region to completely remove the exposed oligonucleotide molecules in the boundary region (claims 67, 73, and 78).
Regarding claims 40-43, the reference application further discloses that the oligonucleotides in some spot regions are protected from ligation prior to irradiation (claims 67, 75, 77, 81-87) while oligonucleotides in other spot regions are protected during and after irradiation (claims 81-87). Additionally, the reference application discloses that the oligonucleotides are protected from ligation by a photoresist (claims 75, 77, and 81-87), and that the photoresist is removed in the irradiated spot regions and not in the masked spot regions (claims 81-87).
Regarding claims 44-46, the reference application discloses that the oligonucleotides in the spot regions are protected from ligation by a photo-cleavable protective group or polymer (claim 81), the method comprises irradiating the substrate in multiple cycles in different regions and attaching additional short oligonucleotides to those regions (claims 83 and 85-87), and that the irradiating of (c) is performed using a photomask (claim 67c: “mask”).
Regarding claim 49 and 51, the reference application discloses that the diameters of the spot regions created by the ablation of the boundary region are between 2 and 20 μm (claim 69) and that the boundary region comprises the region of the substrate surrounding and between the spot regions (claim 67c).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Application 17/565,028
Claims 33, 40-41, 44-46, 48, and 53 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 25-27, 37, and 140-141 of copending Application No. 17565028 in view of Barbee et al. and Kim et al.
Regarding claim 33, the reference application discloses a method for providing an array comprising irradiating a substrate to render oligonucleotides in some spot regions available (“first polynucleotide”) while other spot regions (“second polynucleotide”) are not (claim 1); and attaching an oligonucleotide of 4+ nucleotides (“barcode”) to those rendered available by the irradiation (claim 1). The reference application fails to disclose an unmasked boundary region that is deprotected by irradiation and that oligonucleotide molecules in the boundary region are ablated.
Barbee et al. discloses a method comprising irradiating an unmasked boundary region to render it available and that the oligonucleotide molecules in that region are subsequently ablated (Fig. 1, above). Additionally, Kim et al. teaches that permanently disabling the intended inactive areas of a substrate can reduce synthesis errors on a microarray, resulting in a higher-quality array (col. 3, lines 46-60).
Therefore, it would have been obvious to one of ordinary skill in the art to apply the method of ablating oligonucleotides in a boundary region to the method of the reference application with a reasonable expectation of success.
Regarding claims 40-41, the reference application further discloses that the oligonucleotides in some spot regions are protected from ligation prior to irradiation (claim 1) while oligonucleotides in other spot regions are protected during and after irradiation (claim 1).
Regarding claims 44-46, the reference application discloses that the oligonucleotides in the spot regions are protected from ligation by a photo-cleavable protective group or polymer (claims 25-27), the method comprises irradiating the substrate in multiple cycles in different regions and attaching additional short oligonucleotides to those regions (claim 2), and that the irradiating of (c) is performed using a photomask (claim 37).
Regarding claims 48 and 53, Kim discloses that the oligonucleotides in the spot regions and boundary region are identical in sequence (claim 141) and are applied to the substrate as a lawn (claim 140) prior to the irradiating in (a).
This is a provisional nonstatutory double patenting rejection.
Application 17/565,047
Claims 33, 40-43, 45-46, and 49 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 36, 39-40, 51, 60, and 66 of copending Application No. 17565047 in view of Barbee et al. and Kim et al.
Regarding claim 33, the reference application discloses a method for providing an array comprising irradiating a substrate to render oligonucleotides in some spot regions available while other spot regions are not (claim 1a); and attaching an oligonucleotide of 4+ nucleotides to those rendered available by the irradiation (claim 1c and 39-40). The reference application fails to disclose an unmasked boundary region that is deprotected by irradiation and that oligonucleotide molecules in the boundary region are ablated. However, Barbee and Kim render these steps obvious, as discussed previously.
Regarding claims 40-43, the reference application further discloses that the oligonucleotides in some spot regions (“first region”) are protected from ligation prior to irradiation (claim 1) while oligonucleotides in other spot regions (“second region”) are protected during and after irradiation (claim 1). Additionally, the reference application discloses that the oligonucleotides are protected from ligation by a photoresist (claim 1), and that the photoresist is removed in the irradiated spot regions and not in the masked spot regions (claim 1).
Regarding claims 45-46, the reference application discloses that the method comprises irradiating the substrate in multiple cycles in different regions and attaching additional short oligonucleotides to those regions (claims 51 and 66) and that the irradiating of (c) is performed using a photomask (claim 36: “patterned mask”).
Regarding claim 49, the reference application discloses that the diameters of the spot regions are no more than 10 μm (claim 60).
This is a provisional nonstatutory double patenting rejection.
Application 18/215,299
Claims 33, 40-43, and 45-46 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 109-110, 119, and 126 of copending Application No. 18215299 in view of Barbee et al. and Kim et al.
Regarding claim 33, the reference application discloses a method for providing an array comprising irradiating a substrate to render oligonucleotides in some spot regions available while other spot regions are not (claim 1a); and attaching an oligonucleotide of 4+ nucleotides to those rendered available by the irradiation (claim 1b/c and 126). The reference application fails to disclose an unmasked boundary region that is deprotected by irradiation and that oligonucleotide molecules in the boundary region are ablated. However, Barbee and Kim render these steps obvious, as discussed previously.
Regarding claims 40-43, the reference application further discloses that the oligonucleotides in some spot regions (“first region”) are protected from ligation prior to irradiation (claim 1a) while oligonucleotides in other spot regions (“second region”) are protected during and after irradiation (claim 1a). Additionally, the reference application discloses that the oligonucleotides are protected from ligation by a photoresist (claim 1a), and that the photoresist is removed in the irradiated spot regions and not in the masked spot regions (claim 1a).
Regarding claims 45-46, the reference application discloses that the method comprises irradiating the substrate in multiple cycles in different regions and attaching additional short oligonucleotides to those regions (claims 109-110 and 119) and that the irradiating of (c) is performed using a photomask (claim 1a: “masked”).
This is a provisional nonstatutory double patenting rejection.
Application 18/342,906
Claims 33 and 40-46 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 96, 99-100, and 107 of copending Application No. 18342906 in view of Barbee et al. and Kim et al.
Regarding claim 33, the reference application discloses a method for providing an array comprising irradiating a substrate to render oligonucleotides in some spot regions (“sub-region”) available while other spot regions are not (claim 100); and attaching an oligonucleotide of 4+ nucleotides to those rendered available by the irradiation (claim 96). The reference application fails to disclose an unmasked boundary region that is deprotected by irradiation and that oligonucleotide molecules in the boundary region are ablated. However, Barbee and Kim render these steps obvious, as discussed previously.
Regarding claims 40-43, the reference application further discloses that the oligonucleotides in some spot regions are protected from ligation prior to irradiation (claim 96) while oligonucleotides in other spot regions are protected during and after irradiation (claim 96). Additionally, the reference application discloses that the oligonucleotides are protected from ligation by a photoresist (claim 99), and that the photoresist is removed in the irradiated spot regions and not in the masked spot regions (claim 100).
Regarding claims 44-46, the reference application discloses that the oligonucleotides in the spot regions are protected from ligation by a photo-cleavable protective group or polymer (claim 107), the method comprises irradiating the substrate in multiple cycles in different regions and attaching additional short oligonucleotides to those regions (claim 96), and that the irradiating of (c) is performed using a photomask (claim 100).
This is a provisional nonstatutory double patenting rejection.
Application 18/342,948
Claims 33 and 40-47 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 44, 47-48, 55-56, and 58 of copending Application No. 18342948 in view of Barbee et al. and Kim et al.
Regarding claim 33, the reference application discloses a method for providing an array comprising irradiating a substrate to render oligonucleotides in some spot regions available while other spot regions are not (claim 44c); and attaching an oligonucleotide of 4+ nucleotides to those rendered available by the irradiation (claim 44a). The reference application fails to disclose an unmasked boundary region that is deprotected by irradiation and that oligonucleotide molecules in the boundary region are ablated. However, Barbee and Kim render these steps obvious, as discussed previously.
Regarding claims 40-43, the reference application further discloses that the oligonucleotides in some spot regions (“first region”) are protected from ligation prior to irradiation (claim 44c) while oligonucleotides in other spot regions (“second region”) are protected during and after irradiation (claim 44c). Additionally, the reference application discloses that the oligonucleotides are protected from ligation by a photoresist (claim 47), and that the photoresist is removed in the irradiated spot regions and not in the masked spot regions (claim 48).
Regarding claims 44-47, the reference application discloses that the oligonucleotides in the spot regions are protected from ligation by a photo-cleavable protective group or polymer (claim 47-48), the method comprises irradiating the substrate in multiple cycles in different regions and attaching additional short oligonucleotides to those regions (claim 56), and that the irradiating of (c) is performed using a photomask (claim 55), which is translated from to different positions upon each cycle of irradiation and attachment (claim 58).
This is a provisional nonstatutory double patenting rejection.
Application 18/343,108
Claims 33, 40-42, 45-46, 48-50, and 53 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 88 and 104-106 of copending Application No. 18343108 in view of Barbee et al. and Kim et al.
Regarding claim 33, the reference application discloses a method for providing an array comprising irradiating a substrate to render oligonucleotides in some spot regions available while other spot regions are not (claim 88a); and attaching an oligonucleotide of 4+ nucleotides to those rendered available by the irradiation (claim 88a). The reference application fails to disclose an unmasked boundary region that is deprotected by irradiation and that oligonucleotide molecules in the boundary region are ablated. However, Barbee and Kim render these steps obvious, as discussed previously.
Regarding claims 40-42, the reference application further discloses that the oligonucleotides in some spot regions (“first region”) are protected from ligation prior to irradiation (claim 105) while oligonucleotides in other spot regions (“second region”) are protected during and after irradiation (claim 105). Additionally, the reference application discloses that the oligonucleotides are protected from ligation by a photoresist (claim 105).
Regarding claims 45-46, the reference application discloses that the method comprises irradiating the substrate in multiple cycles in different regions and attaching additional short oligonucleotides to those regions (claim 88b/c) and that the irradiating of (c) is performed using a photomask (claim 88a).
Regarding claims 48 and 53, Kim discloses that the oligonucleotides in the spot regions and boundary region are identical in sequence (claim 104: “universal”) and are applied to the substrate as a lawn (claim 88 and 104) prior to the irradiating in (a).
Regarding claim 49 and 50, the reference application discloses that the diameters of the spot regions are no more than 5 μm (claim 106).
This is a provisional nonstatutory double patenting rejection.
Application 18/343,190
Claims 33 and 40-43 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 37 of copending Application No. 18343190 in view of Barbee et al. and Kim et al.
Regarding claim 33, the reference application discloses a method for providing an array comprising irradiating a substrate to render oligonucleotides in some spot regions available while other spot regions are not (claim 37a); and attaching an oligonucleotide of 4+ nucleotides to those rendered available by the irradiation (claim 37c). The reference application fails to disclose an unmasked boundary region that is deprotected by irradiation and that oligonucleotide molecules in the boundary region are ablated. However, Barbee and Kim render these steps obvious, as discussed previously.
Regarding claims 40-43, the reference application further discloses that the oligonucleotides in some spot regions (“first region”) are protected from ligation prior to irradiation (claim 37a) while oligonucleotides in other spot regions (“second region”) are protected during and after irradiation (claim 37a). Additionally, the reference application discloses that the oligonucleotides are protected from ligation by a photoresist (claim 37a), and that the photoresist is removed in the irradiated spot regions and not in the masked spot regions (claim 37a).
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claims are allowed.
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/ALEXANDRA OLSON/Examiner, Art Unit 1684
/JEREMY C FLINDERS/Primary Examiner, Art Unit 1684
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