DETAILED ACTION
Notice of 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 .
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 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.
Status of the Claims
Claims 1-8 are pending.
Claims 2-4 and 6-8 are objected to.
Claims 1-8 are rejected.
Priority
This application US 18/309,775 (02/16/2024) claims benefit of US Application 63/337,044 (04/29/2022) as reflected in the filing receipt mailed on 08/11/2023. The claims to the benefit of priority are acknowledged and the effective filing date of claims 1-8 is 04/29/2022.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 03/05/2024 was considered.
Drawings
According to the recorded decision on 02/16/2024, the decision about color drawings was granted.
The 04/28/2023 drawings are objected to as failing to comply with 37 CPR 1.84(p)(5) because they include illegible labels: Fig. 2B, 10-11, 19, 35A-B, 36-37 and 38A-B.
The replacement 08/08/2023 drawings are objected to as failing to comply with 37 CPR 1.84(p)(5) because they include illegible labels: Fig. 19.
Corrected drawing sheets in compliance with 37 CPR 1.121 (d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as "amended." If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either "Replacement Sheet" or "New Sheet" pursuant to 3 7 CPR 1.121 (d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification Objections
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code – pg. 98 line 14 and pg. 171 line 31. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim objections
Claims 2-4 and 6-8 are objected to because of the following informality: the recited "wherein the modifying of one or more parameters" should read "wherein the modifying of the one or more parameters" for proper language agreement. Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The instant specification at pg. 27 lines 13-16 provides support for a "operably coupled refers to two objects positioned and/or configured to transmit light from one to the other. In some embodiments, operably coupled refers to two objects positioned and/or configured to transfer heat from one to the other … position may refer to absolute position (e.g., relative to an axis of a device or apparatus) or relative position." However, there is not support within the specification, nor has Applicant provided such support, for the device executing the function of "controlling" the light sources (claims 1 and 5). There is no description for the computer or instructions that can do these physical steps (i.e. the structure of the light sources in the system or operably connected to the CRM). Until the structure is claimed as part of the system or operably connected to the CRM, the steps are interpreted as instructions generated by the processor to perform the recited actions
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-8 are rejected under 35 USC § 101 because the claimed inventions are directed to one or more Judicial Exceptions (JEs) without significantly more. Regarding JEs, "Claims directed to nothing more than abstract ideas..., natural phenomena, and laws of nature are not eligible for patent protection" (MPEP 2106.04 §I). Abstract ideas include mathematical concepts and procedures for evaluating, analyzing or organizing information, which are a type of mental process (MPEP 2106.04(a)(2)).
101 background
MPEP 2106 organizes JE analysis into Steps 1, 2A (Prong One & Prong Two), and 2B as analyzed below. MPEP 2106 and the following USPTO website provide further explanation and case law citations: uspto.gov/patent/laws-and-regulations/examination-policy/examination-guidance-and-training-materials.
Step 1: Are the claims directed to a process, machine, manufacture, or composition of matter (MPEP 2106.03)?
Step 2A, Prong One: Do the claims recite a judicially recognized exception, i.e., a law of nature, a natural phenomenon, or an abstract idea (MPEP 2106.04(a-c))?
Step 2A, Prong Two: If the claims recite a judicial exception under Prong One, then is the judicial exception integrated into a practical application by an additional element (MPEP 2106.04(d))?
Step 2B: Do the claims recite a non-conventional arrangement of elements in addition to any identified judicial exception(s) (MPEP 2106.05)?
Analysis of instant claims
Step 1: Are the claims directed to a 101 process, machine, manufacture, or composition of matter (MPEP 2106.03)?
The instant claims are directed to a system (claims 1-4) and a CMR (claims 5-8); each of which falls within one of the categories of statutory subject matter. [Step 1: claims 1-8: Yes]
Step 2A, Prong One: Do the claims recite a judicially recognized exception, i.e., a law of nature, a natural phenomenon, or an abstract idea (MPEP 2106.04(a-c))?
Background
With respect to Step 2A, Prong One, the claims recite judicial exceptions in the form of abstract ideas. MPEP § 2106.04(a)(2) further explains that abstract ideas are defined as:
• mathematical concepts (mathematical formulas or equations, mathematical relationships
and mathematical calculations) (MPEP 2106.04(a)(2)(I));
• certain methods of organizing human activity (fundamental economic principles or practices, managing personal behavior or relationships or interactions between people) (MPEP 2106.04(a)(2)(II)); and/or
• mental processes (concepts practically performed in the human mind, including observations, evaluations, judgments, and opinions) (MPEP 2106.04(a)(2)(III)).
Analysis of instant claims
With respect to the instant claims, under the Step 2A, Prong One evaluation, the claims are found to recite abstract ideas that fall into the grouping of mathematical concepts (in particular mathematical relationships and formulas) and mental processes (in particular procedures for observing, analyzing and organizing information) are as follows.
Mathematical concepts (in particular mathematical relationships and formulas) include:
• "(ii) processing a fluorescence signal to identify protected nucleotides incorporated in the sequencing primers, the fluorescence signal corresponding to a first fluorescence light emitted as a result of incorporation of protected nucleotides in the sequencing primers" (independent claims 1 and 5);
• "(iv) determining one of both of: a percentage of the sequencing primers that incorporated a protected nucleotide and a percentage of the detectable moieties cleaved from the incorporated protected nucleotides" (independent claims 1 and 5); and
• "(v) modifying, based on one or both of: the percentage of the sequencing primers that incorporated a protected nucleotide and the percentage of the detectable moieties cleaved from the incorporated protected nucleotides, one or more parameters of a sequencing primer extension or a protected nucleotide cleavage" (independent claims 1 and 5).
The claims identified above read on math. The abstract ideas recited in the claims are evaluated under the Broadest Reasonable Interpretation and determined each element performed by mathematical operation. The step directed to executing algorithmic steps to "control light sources and process the received light signal to modify parameters” requires mathematical techniques as the only supported embodiments because it describes a mathematical technique (MPEP 2106.04(a)(2) pertains). Further support for the mathematical techniques used in the claims is provided in the specification at pg. 30 para. 2, which discloses operational instructions [hence via a code] for controlling light source; and at pg. 30 para. 1 which discloses operational instructions [hence via a code] for processing the signal received and quantify nucleotides. Thus, the recited terms correspond to verbal equivalents of mathematical concepts because they constitute actions executed by a group of mathematical steps in a form of a mathematical algorithm; thus mathematical concepts (MPEP 2106.04(a)(2)). A mathematical concept need not be expressed in mathematical symbols, because "words used in a claim operating on data to solve a problem can serve the same purpose as a formula." In re Grams, 888 F.2d 835, 837 and n.1, 12 USPQ2d 1824, 1826 and n.1 (Fed. Cir. 1989). MPEP 2106.04(a)(2) pertains.
Mental processes, defined as concepts or steps practically performed in the human mind such as steps of observations, evaluations, judgments, analysis, opinions or organizing information include:
• "(i) controlling a first light source to emit a first light into a substrate on which substrate polynucleotides are immobilized, wherein a plurality of substrate polynucleotides are each annealed to a sequencing primer and bound with a polymerase, wherein the substrate polynucleotides are in a presence of a pool of protected nucleotides, and wherein each protected nucleotide comprises a detectable moiety and a photocleavable terminating moiety" (independent claims 1 and 5);
• "(iii) controlling a second light source to emit a second light into the substrate to cleave the detectable moieties from the incorporated protected nucleotides" (independent claims 1 and 5);
The abstract ideas recited in the claims are evaluated under the Broadest Reasonable Interpretation (BRI) and determined to each cover performance either in the mind (i.e. concepts practically performed in the human mind, including observations, evaluations, judgments, and opinions) or because the method only requires a user to manually determine action based on an added number. Under the BRI, the recited limitations are mental processes because a human mind is also sufficiently capable of providing instructions to control light sources – See 112(a) write-up about the interpretating of the recited "controlling" steps.
Dependent claims 2-4 and 6-8 recite further steps that limit the judicial exceptions in independent claims 1 and 5 and, as such, also are directed to those abstract ideas. For example, claims 2-4 and 6-8 recite further details about the step of modifying parameters of a sequencing primer extension or a protected nucleotide cleavage.
[Step 2A Prong One: claims 1-8: Yes ]
Step 2A, Prong Two: If the claims recite a judicial exception under Prong One, then is the judicial exception integrated into a practical application by an additional element (MPEP 2106.04(d))?
Background
MPEP 2106.04(d).I lists the following example considerations for evaluating whether a judicial exception is integrated into a practical application:
An improvement in the functioning of a computer or an improvement to other technology or another technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);
Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);
Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c); and
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP § 2106.05(e).
Analysis of instant claims
Claims found to recite a judicial exception under Step 2A, Prong 1 are then further analyzed to determine if the claims as a whole integrate the recited judicial exception into a practical application or not (Step 2A, Prong 2).
Instant claims 1-8 recite additional elements that are not abstract ideas:
• "computer hardware processor" (independent claims 1 and 5) and
• "non-transitory computer-readable storage medium" (independent claims 1 and 5).
Considerations under Step 2A, Prong Two
The recited limitations in claims 1-8 are interpreted as requiring the use of a computer. Hence, the claims explicitly recite steps executed by computers and therefore can be described as computer functions or instructions to implement on a generic computer.
Further steps directed to additional non-abstract elements of a computing device/computer do not describe any specific computational steps by which the "computer parts" perform or carry out the judicial exceptions, nor do they provide any details of how specific structures of the computer are used to implement these functions. The claims state nothing more than a generic computer which performs the functions that constitute the judicial exceptions.
The judicial exceptions in the claims are considered to perform the claimed abstract idea with a computer, which is not sufficient to integrate an abstract idea into a practical application (see MPEP 2106.05(f)); since steps that can be performed mentally and merely performing the mental process in a computer environment do not negate the fact that something that can be carried out in the human mind. See MPEP 2106.04(a)(2).III.C.
Hence, these are mere instructions to apply the abstract idea using a computer and insignificant extra-solution activity and therefore the claims do not integrate that abstract idea into a practical application (see MPEP 2106.04(d) § I; 2106.05(f); and 2106.05(g)).
In Step 2A, Prong One above, claim steps and/or elements were identified as part of one or more judicial exceptions (JEs).
In this Step 2A, Prong Two immediately above claim steps and/or elements were identified as part of one or more additional elements. Additional elements are further discussed in Step 2B below.
Here in Step 2A, Prong Two, no additional step or element clearly demonstrates integration of the JE(s) into a practical application.
[Step 2A Prong Two: claims 1-8: No]
Step 2B: Do the claims recite a non-conventional arrangement of elements in addition to any identified judicial exception(s) (MPEP 2106.05)?
According to analysis so far, the additional elements described above do not provide significantly more than the judicial exception. A determination of whether additional elements provide significantly more also rests on whether the additional elements or a combination of elements represents other than what is well-understood, routine, and conventional. Conventionality is a question of fact and may be evidenced as: a citation to an express statement in the specification or to a statement made by an applicant during examination that demonstrates a well-understood, routine or conventional nature of the additional element(s); a citation to one or more of the court decisions as discussed in MPEP 2106(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s); a citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s); and/or a statement that the examiner is taking official notice with respect to the well-understood, routine, conventional nature of the additional element(s).
Claims 1-8 recite a computer or computer functions, interpreted as instructions to apply the abstract idea using a computer, where the computer does not impose meaningful limitations on the judicial exceptions; which can be performed without the use of a computer (MPEP 2106.04(d) § I; and MPEP 2106.05(f)).
When the claims are considered as a whole, they do not integrate the abstract idea into a practical application; they do not confine the use of the abstract idea to a particular technology; they do not solve a problem rooted in or arising from the use of a particular technology; they do not improve a technology by allowing the technology to perform a function that it previously was not capable of performing; and they do not provide any limitations beyond generally linking the use of the abstract idea to a broad technological environment. See MPEP 2106.05(a) and 2106.05(h).
The instant claims constitute insignificant extra solution activity, and when considered individually, are insufficient to constitute inventive concepts that would render the claims significantly more than an abstract idea (see MPEP 2106.05(g)). Hence, these elements, when considered individually, are insufficient to constitute inventive concepts that would render the claims significantly more than an abstract idea (see MPEP 2106.05(d)).
[Step 2B: claims 1-8: No]
Conclusion: Instant claims are directed to non-statutory subject matter
For the reasons above, the claims in this instant application, when the limitations are considered individually and as a whole, are directed to an abstract idea and lack an inventive concept not clearly anything significantly more.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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.
A. Claims 1-8 are rejected under 35 U.S.C. 103(a) as being unpatentable over Seo ("Four-color DNA sequencing by synthesis on a chip using photocleavable fluorescent nucleotides." Proceedings of the National Academy of Sciences 102.17:5926-5931 (2005)) in view of Fuller ("The challenges of sequencing by synthesis." Nature biotechnology 27.11:1013-1023 (2009)), as cited on the attached Form PTO-892.
Claim 1 recites a device, comprising: at least one computer hardware processor; and at least one non-transitory computer-readable storage medium storing processor executable instructions that, when executed by the at least one computer hardware processor, cause the at least one computer hardware processor to perform a method for nucleic acid sequencing, wherein the method comprising steps. Claim 5 recites non-transitory computer-readable storage medium storing code that, when executed by a processing system comprising at least one computer processor, causes the processing system to perform a method for nucleic acid sequencing, wherein the method comprising said steps.
The prior art to Seo discloses a method and a system related to an generative adversarial network to generate diverse three-dimensional ligand shapes complementary to the pocket to discover effective bioactive molecules (pg. 4282 Abstract); wherein a non-transitory computer-readable medium is provided via software for docking compounds (pg. 4287 col. 2 para. 1) and a network architecture using Nvidia GTX 1080TI GPU (pg. 4284 col. 2 para. 2).
Claim 1 recites a device, comprising: at least one computer hardware processor; and at least one non-transitory computer-readable storage medium storing processor executable instructions that, when executed by the at least one computer hardware processor, cause the at least one computer hardware processor to perform a method for nucleic acid sequencing, wherein the method comprising steps. Claim 5 recites non-transitory computer-readable storage medium storing code that, when executed by a processing system comprising at least one computer processor, causes the processing system to perform a method for nucleic acid sequencing, wherein the method comprising said steps.
The prior art to Seo discloses a method and a system related to an generative adversarial network to generate diverse three-dimensional ligand shapes complementary to the pocket to discover effective bioactive molecules (pg. 4282 Abstract). Additionally, the prior art to Fuller discloses a review of DNA sequencing-by-synthesis systems (pg. 1017 col. 1 para. 7) where the instrumentation required includes electronics, optics, mechanical (static and dynamic design), packaging, embedded software and graphical user interface software (pg. 1020 col. 2 para. 3) (i.e. reading on non-transitory computer-readable storage medium).
The steps performed by the device of claim 1 and a non-transitory computer-readable storage medium of claim 5 comprise:
(i) controlling a first light source to emit a first light into a substrate on which substrate polynucleotides are immobilized, wherein a plurality of substrate polynucleotides are each annealed to a sequencing primer and bound with a polymerase, wherein the substrate polynucleotides are in a presence of a pool of protected nucleotides, and wherein each protected nucleotide comprises a detectable moiety and a photocleavable terminating moiety
• Seo teaches four-color DNA sequencing by synthesis (SBS) on a chip using photocleavable fluorescent nucleotides (pg. 5926 Title); wherein each cycle of SBS consists of the incorporation of the photocleavable fluorescent nucleotide into the DNA, detection of the fluorescent signal (i.e. reading on controlling a first light source to emit a first light into a substrate on which substrate polynucleotides are immobilized), and photocleavage of the fluorophore (pg. 5926 col. 1 para. 1) wherein four nucleotide analogues, dGTP-PC-Bodipy-FL-510, dUTP-PC-R6G, dATP-PC-ROX, and dCTP-PC-Bodipy-650 (i.e. reading on protected nucleotides) were incorporated by performing four continuous DNA extension reactions sequentially using a primer (pg. 5927 col. 2 para. 2); wherein all nucleotides in the template immediately adjacent to the annealing site of the primer (pg. 5927 col. 2 para. 2) (i.e. reading on wherein a plurality of substrate polynucleotides are each annealed to a sequencing primer and bound with a polymerase, wherein the substrate polynucleotides are in a presence of a pool of protected nucleotides); wherein the 3'-OH of the photocleavable fluorescent nucleotides were modified with a small chemical group to allow reversible termination (pg. 5931 col. 2 para. 2) (i.e. reading on wherein each protected nucleotide comprises a detectable moiety and a photocleavable terminating moiety).
(ii) processing a fluorescence signal to identify protected nucleotides incorporated in the sequencing primers, the fluorescence signal corresponding to a first fluorescence light emitted as a result of incorporation of protected nucleotides in the sequencing primers
• Seo teaches that, first, a polymerase extension reaction using dUTP-PC-R6G along with the primer and the template was performed producing a single-base extension product (pg. 5927 col. 2 para. 2); wherein photocleavable fluorescent nucleotide analogues can be incorporated accurately into a growing DNA strand during a polymerase reaction in solution and on a chip (pg. 5926 col. 1 para. 1); wherein the extension of the primer by a single fluorescent nucleotide was confirmed by observing an orange signal (the emission signal from ROX) in a microarray scanner (pg. 5931 col. 1 para. 2) (i.e. reading on step (ii)).
(iii) controlling a second light source to emit a second light into the substrate to cleave the detectable moieties from the incorporated protected nucleotides
• Seo teaches that all fluorophores are detected and then efficiently cleaved using near-UV irradiation, thereby allowing continuous identification of the DNA template sequence (pg. 5926 col. 1 para. 1) (i.e. reading on step (iii)).
(iv) determining one of both of: a percentage of the sequencing primers that incorporated a protected nucleotide and a percentage of the detectable moieties cleaved from the incorporated protected nucleotides
• Seo teaches that the integrated fluorescence intensity on the spot, obtained from the scanner software, indicated that the incorporation efficiency was _90%, and _97% of the original fluorescence signal was removed by photocleavage (pg. 5931 col. 2 para. 1) (i.e. reading on determining a percentage of the detectable moieties cleaved from the incorporated protected nucleotides).
A device, comprising: at least one computer hardware processor; and at least one non-transitory computer-readable storage medium storing processor executable instructions that, when executed by the at least one computer hardware processor, cause the at least one computer hardware processor to perform a method for nucleic acid sequencing, wherein the method comprises …
(v) modifying, based on one or both of: the percentage of the sequencing primers that incorporated a protected nucleotide and the percentage of the detectable moieties cleaved from the incorporated protected nucleotides, one or more parameters of a sequencing primer extension or a protected nucleotide cleavage
• Seo does not teach the recitation above. However, Fuller teaches a review of DNA sequencing-by-synthesis systems (pg. 1017 col. 1 para. 7) where the instrumentation required includes electronics, optics, mechanical (static and dynamic design), packaging, embedded software and graphical user interface software (pg. 1020 col. 2 para. 3) (i.e. reading on at least one computer hardware processor); wherein DNA SBS uses cleavable dyes called fluorescent nucleotide reversible terminators (pg. 1021 col. 2 para. 3); wherein each fluorescent dye is detected at a different wavelength during the DNA identification (pg. 1017 col. 1 para. 6) and the efficiency of capturing photons of the excitation wavelength is expressed as the extinction coefficient or molar absorptivity, that can be varied with wavelength (pg. 1017 col. 2 para. 1) (i.e. reading on modifying, based on … a protected nucleotide and the percentage of the detectable moieties cleaved from the incorporated protected nucleotides, one or more parameters of a sequencing primer extension or a protected nucleotide cleavage)
Claims 2 and 6 recite:
wherein the modifying of one or more parameters of sequencing primer extension comprises modifying a time at which the processing is initiated
• Seo does not teach the recitation above. However, Fuller teaches a review of DNA sequencing-by-synthesis systems (pg. 1017 col. 1 para. 7); wherein synchronization step can be added to reduce the amount of un-extended priming strands after the extension with the fluorescent nucleotides. (i.e. modifying a time at which the processing is initiated) (pg. 1021 col. 2 para. 3).
Regarding claims 3 and 7, the prior art teaches step of "modifying of one or more parameters of protected nucleotide cleavage" of claim 1 as described, and therefore claims 3 and 7, which further limit step of "modifying of one or more parameters of sequencing primer extension" of claim 1, do not further narrow the embodiment of claim 1 to which the art has been applied.
Claims 4 and 8 recite:
wherein the modifying of one or more parameters of protected nucleotide cleavage comprises increasing or decreasing a power density, a wavelength, and/or a duration of a photocleavage light pulse of the second light used to cleave the detectable moieties from the incorporated protected nucleotides
• Seo does not teach the recitation above. However, Fuller teaches a review of DNA sequencing-by-synthesis systems (pg. 1017 col. 1 para. 7); wherein the synchronous-controlled approaches include pulsing the delivery of the nucleotide substrates (dNTPs) one at a time (i.e. modifying duration of a photocleavage light pulse of the second light used to cleave the detectable moieties from the incorporated protected nucleotides) (pg. 1014 col. 1 para. 2).
Rationale for combining (MPEP §2142-2143)
Regarding claims 1-8, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine, in the course of routine experimentation and with a reasonable expectation of success, the methods of Seo in view of Fuller because all references disclose methods for the investigation of continuous identification of the DNA template sequence. The motivation would have been to:
• provide a reliable first-tier diagnostic approach to extend mutation databases in patients with disorders (pg. 1 para. 1 Saeidian);
• improve the read-length and incorporation efficiency via a high-throughput DNA-analysis system for biological research and medical applications (pg. 5931 col. 2 para. 2 Seo) and
• enable rapid, cost-effective access to DNA sequence information for a myriad of research and personalized medical uses (pg. 1022 col. 1 para. 1 Fuller).
Therefore it would have been obvious to one of ordinary skill in the art to substitute the continuous identification of the DNA template sequence of Seo to the methods by Fuller because such a substitution is no more than the simple substitution of one known element for another. One of ordinary skill in the art would be able to motivated to combine the teachings in these references with a reasonable expectation of success since the described teachings pertain to methods for continuous identification of the DNA template sequence.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANCINI A FONSECA LOPEZ whose telephone number is (571)270-0899. The examiner can normally be reached Monday - Friday 8AM - 5PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Olivia Wise can be reached at (571) 272-2249. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/F.F.L./Examiner, Art Unit 1685
/JANNA NICOLE SCHULTZHAUS/Examiner, Art Unit 1685
Prosecution Insights