DETAILED ACTION
Notice of AIA Status
The present application, filed on 5/17/2023, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 113-132 are pending.
Claims 124-128 and 132 are rejected.
Claims 113-123 and 129-131 are objected to.
Claims 113-123 and 129-131 are indicated allowable.
Claim Objections
Claim 113-123 are objected to because of the following informalities: Claim 113 recites “a width length that is 6.8 nm to 500 nm, a pitch length that is about twice the width length, and a depth length that is about 60% to about 125% of the pitch length”. For the sake of clarity, consider rephrasing to a width between 6.8 and 500 nm, a pitch length between about 12 and 1000 nm, and a depth between about 7.2 and 1250 nm.
Claim 121 recites “the pitch length is 1 µm or less”. For the sake of clarity consider rephrasing to ‘the pitch length is between 12 and 1000 nm’.
Claim 122 recites “the depth length is 1 µm or less”. For the sake of clarity consider rephrasing to ‘the depth length is between 7.2 and 1000 nm’.
Claims dependent on an objected base claim are objected to because any claim in dependent form is construed to incorporate by reference all the limitations of the claim to which it refers.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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.
Claims 124, 125, 128 and 132 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McGall (US20010049108).
With respect to claim 124, McGall (US20010049108) teaches a device (solid support in [0041]) for polynucleotide synthesis, the device (solid support) comprising:
a structure (solid support in [0041]) having a surface (see [0043], which recites “the surface of the solid support”), wherein the structure (solid support) comprises silicon dioxide (see [0041], which recites “the support may be … silicon dioxide”);
a plurality of recesses or posts on the surface (see [0041], which recites “the solid support may contain raised or depressed regions on which synthesis takes place”);
a plurality of loci on the surface (see [0041], which recites “the solid support may contain raised or depressed regions on which synthesis takes place”), wherein each locus (raised or depressed region) comprises:
at least two of the plurality of recesses or posts see [0041], which recites “the solid support may contain raised or depressed regions on which synthesis takes place”); and
a molecule (derivatization reagent) that binds to the surface (see [0043], which recites “the surface of the solid support may be derivatized prior to the synthesis of the oligonucleotides thereon by the attachment of a linker monomer at each of the designated regions on the surface of the solid support”) and a nucleoside phosphoramidite (see [0066], which recites “the general light directed method for polymer synthesis on the solid support is currently one preferred method for synthesizing the oligonucleotides on the solid support. … for oligomer synthesis involves constructing a solid support having designated regions having attached thereto, … photolabile protecting groups can be removed in one designated area and a nucleotide monomer bearing a chemically-removable protecting group is attached using of phosphoramidite chemistry for monomer coupling”) (see also [0016], which recites “The terms “activated nucleoside” and “activated nucleotide” are used interchangeably herein in and refer to natural or unnatural nucleic acid monomers having a pendant activating group such as … phosphoramidite group on at least one of the oxygen atoms of the sugar moiety”) ; and
a plurality of clusters (designated regions in [0066])) on the surface (see [0066], which recites “designated regions on the surface of the solid support”) .
As to claim 125, McGall teaches the device of claim 124, wherein the molecule (derivatization reagent) that binds to the surface and the nucleoside phosphoramidite is a silane (see [0046], which recites “preferred derivatization reagents include aminoalkyltrialkoxysilanes, … triethoxysilane”).
With respect to claim 128, McGall (US20010049108) teaches the device of claim 125, wherein the silane is an aminosilane (see [0046], which recites “preferred derivatization reagents include aminoalkyltrialkoxysilanes”).
With respect to claim 132, McGall (US20010049108) teaches the device of claim 124, wherein the surface comprises a layer of silicon oxide (see [0049], which recites “silicon oxide surfaces”).
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.
Claim 126 is rejected under 35 U.S.C. 103 as being unpatentable over McGall (US20010049108) in view of McGall (US20070275411).
With respect to claim 126, McGall (US20010049108) teaches the device of claim 124.
McGall (US20010049108) doesn’t teach that the molecule that binds to the surface and the nucleoside phosphoramidite is N-(3-triethoxysilylpropyl)-4-hydroxybutyramide (HAPS), 11-acetoxyundecyltriethoxysilane, n-decyltriethoxysilane, (3- aminopropyl)trimethoxysilane, (3-aminopropyl) triethoxysilane, 3- glycidoxypropyltrimethoxysilane, 3-iodo-propyltrimethoxysilane, or octylchlorosilane.
In the analogous art of providing devices for polymer synthesis, McGall (US20070275411) teaches N-(3-triethoxysilylpropyl)-4-hydroxybutyramide (see [0005-0006], which recites “silanation composition has at least one silanation reagent which includes a functional group capable of supporting polymer synthesis is selected from the group consisting of: … N-(3-(triethoxysilyl)propyl)-4-hydroxybutyramide”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device disclosed by McGall (US20010049108) by incorporating N-(3-triethoxysilylpropyl)-4-hydroxybutyramide as disclosed by McGall (US20070275411) such that that the molecule that binds to the surface and the nucleoside phosphoramidite is N-(3-triethoxysilylpropyl)-4-hydroxybutyramide with a reasonable expectation of success for the benefit of effectively supporting polymer synthesis with a suitable linker, see [0005-0006] of MGall (US20070275411).
Claim 127 is rejected under 35 U.S.C. 103 as being unpatentable over McGall (US20010049108) in view of McGall (US20110143966).
With respect to claim 127, McGall (US20010049108) teaches the device of claim 125.
McGall (US20010049108) doesn’t teach that the silane is 3- glycidoxypropyltrimethoxysilane.
In the analogous art of providing devices for polymer synthesis, MGall (US20110143966) teaches 3- glycidoxypropyltrimethoxysilane (see [0004], which recites “3-Glycidoxypropyltrimethoxysilane has been used to treat a glass support to provide a linker for the synthesis of oligonucleotides”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device disclosed by McGall (US20010049108) by incorporating 3- glycidoxypropyltrimethoxysilane as disclosed by McGall (US20110143966) such that the silane is 3- glycidoxypropyltrimethoxysilane with a reasonable expectation of success for the benefit of effectively providing a linker for the synthesis of oligonucleotides, see [0004] of McGall (US20110143966).
Allowable Subject Matter
Claims 113-123 and 129-131 are indicated allowable.
The following is a statement of reasons for the indication of allowable subject matter: McGall (US20010049108) teaches a device (solid support in [0041]) for polynucleotide synthesis (see [0001], which recites “supports which find application in solid phase synthesis of oligonucleotide arrays”), the device (solid support) comprising:
a structure (solid support in [0041]) having a surface (see [0043], which recites “the surface of the solid support”), wherein the structure (solid support) comprises silicon dioxide (see [0041], which recites “the support may be … silicon dioxide”);
a plurality of recesses or posts on the surface (see [0041], which recites “the solid support may contain raised or depressed regions on which synthesis takes place”).
McGall (US20010049108) doesn’t teach that each recess or post comprises:
a width length that is 6.8 nm to 500 nm,
a pitch length that is about twice the width length, and
a depth length that is about 60% to about 125% of the pitch length; and
a plurality of loci on the surface, wherein each locus has a diameter of 0.5 to 100 µm, wherein each locus comprises at least two of the plurality of recesses or posts; and
a plurality of clusters on the surface, wherein each cluster comprises 50 to 500 loci and has a cross-section of 0.5 to 2 mm, as required by claim 1.
Claim 129-131 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As to claim 129, McGall teaches the device of claim 124.
McGall doesn’t teach that a region surrounding the plurality of loci comprises a molecule that binds to the surface and lacks a nucleoside phosphoramidite.
Conclusion
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/JONATHAN BORTOLI/Examiner, Art Unit 1797
/JENNIFER WECKER/Primary Examiner, Art Unit 1797