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 without traverse of the invention of Group I (claims 1-5 drawn to kits) in the reply filed on 04/30/2026 is acknowledged.
Claims 6-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/30/2026.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lim et al (US PG Pub 20130040842) in view of Nilsson et al (1997) (cited on the IDS of 02/02/2024 and Ahern (1995).
Relevant to the limitations of claims 1 and 3, Lim et al teaches reagents for the amplification of a target nucleic acid including a first oligonucleotide primer and a second oligonucleotide primer that are complementary to a target and attached to a bead by a photocleavable linker (e.g.: para 0034).
Lim et al teaches that a pair of primers can be on a bead or on separate bead (relevant to claim 2), and teaches that reagents may include a plurality of primer pairs (relevant to claim 4) (e.g.: para 0034-0037; para 0319).
Further relevant to the limitations of the claims, Lim et al teaches that the primers attached to a bead by a photocleavable linker may be used in nucleic acid amplification reactions with a polymerase (e.g.: para 0037).
Relevant to the limitations of claim 5, Lim et al teaches photocleavable linkers that comprise a 2-nitrobenzyl (i.e.: o-nitrobenzyl) moiety.
Lim et al does not provide for a polymerase enzyme attached to a bead (claims 1 and 2), or specifically with a thermally cleavable linker (claim 3).
However, a polymerase enzyme attached to a bead with a thermally cleavable linker was known in the prior art and is taught by Nilsson et al.
Nilsson et al PCR reagents including a DNA-polymerase immobilized on polymer particle beads by means of a thermolabile compound (p.748 - Hot-Start PCR).
It would have been prima facie obvious to someone with ordinary skill in the relevant art before the effective filing date of the rejected claims to have include the bead-bound polymerase of Nilsson et al with the bead-bound primers of Lim et al. the Skilled artisan would have been motivated to include the bead-bound polymerase of Nilsson et al based on the expressed teachings of Nilsson et al that bead-bound polymerase allows for hot-start PCR with improved amplification performance. With regard to the claims as they are directed to a kit-of-parts, it would have been prima facie obvious to one of ordinary skill in the art to have packaged the reagents of Lim et al and Nilsson et al in a kit as taught by Ahern. One would have been motivated to provide a kit based on the assertion of Ahern that kits of reagents are convenient and save time (p.20 - The kit concept), and the skilled artisan would recognize that such a kit comprising the reagents of the Lim et al and Nilsson et al would be convenient in performing the analyses of Lim et al.
Conclusion
No claim is allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Wendell, et al (2015) provides that the terms 2-nitrobenzyl and o-nitrobenzyl are synonymous (e.g.: p.897 “The 2-nitrobenzyl protecting group (o-NB) is photolabile and removable under mild conditions).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN THOMAS KAPUSHOC whose telephone number is (571)272-3312. The examiner can normally be reached M-F, 8am-5pm.
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, Anne Gussow can be reached at 571-272-6047. 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.
Stephen Kapushoc
Primary Examiner
Art Unit 1683
/STEPHEN T KAPUSHOC/Primary Examiner, Art Unit 1683
Prosecution Insights