Response to Amendment
The amendment filed 16 June 2026 is acknowledged. The amendments largely specified the ladder components in claims 1 and 2. The current standing of the claims is as follows: claims 1-20 are pending and claims 3, 5, 11, 17, and 20 have been withdrawn as directed to non-elected species.
Regarding the Office Action mailed 23 March 2026, and in light of applicant’s amendments and arguments:
The objections to the specification and claims have been withdrawn.
The rejections of claims 12 and 15 under 35 U.S.C. § 112(b) and 112(d), respectively, have been withdrawn.
The rejections of claims 1, 2, 4, 6-10, 12-16, 18, and 19 under 35 USC 103 are withdrawn. However, new grounds of rejection are made in view of Matsumura and Lee, or alternatively in view of Matsumura and Lee in view of Matsunaga, Amin, and Hsiou, as detailed below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 2, 6-10, 12-16, and 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “about” in claim 1 is a relative term which renders the claims indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically, Applicant defines “about” as
“within an acceptable error range for the particular value as determined by one of ordinary skill in the art, which will depend in part on how the value is measured or determined, i.e., the limitations of the measurement system. For example, "about" can mean within 1 or more than 1 standard deviation, per the practice in the art. Alternatively, "about" can mean a range of up to 0-20%, 0 to 10%, 0 to 5%, or up to 1% of a given value. Alternatively, particularly with respect to biological systems or processes, the term can mean within an order of magnitude, preferably within 5-fold, and more preferably within 2-fold, of a value. Where particular values are described in the application and claims, unless otherwise stated the term "about" meaning within an acceptable error range for the particular value should be assumed. In the context of compositions containing amounts of concentrations of ingredients where the term "about" is used, these values include a variation (error range) of 0-10% around the value (X±10%).”
This definition is unsatisfactory as what is deemed “acceptable” may vary significantly between skilled artisans. One artisan may find X±10% to be acceptable while another may prefer X±5%. This is supported by the definition itself which states that “about” can mean within 1 or more than 1 standard deviation. As a result, the metes and bounds of these claims are unclear.
Additionally, claim 6 recites the limitation "…each of the two or more…" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1, 2, 4, 6-10, 12-16, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Matsumura [Matsumura S, Mori C. International Journal of Legal Medicine. 2022 Jan;136(1):1-2.] in view of Matsunaga [Matsunaga T, et al. Meat science. 1999 Feb 1;51(2):143-8; previously cited], Amin [Amin MA, et al. International Journal of Food Properties. 2016 Jul 2;19(7):1645-58; previously cited], Hsiou [Hsiou CL, et al. Animals. 2022 Sep 13;12(18):2404; previously cited], and Polansky [US 20040023207 A1].
Non-human biological samples are frequently encountered in routine forensic investigations (e.g., animal cruelty, animal attacks, murder cases, poaching, etc.). Often these samples are complex and contain DNA from multiple sources; for example, samples can originate from feces, mixed meat/meat products (in food authentication cases), and bite marks. Historically, species identification of these samples has been challenging as common workflows are based on sanger sequencing techniques using universal primers which result in mixed profiles that are difficult to interpret. While other sequencing methodologies have been developed which are capable of handling these complex samples, they are costly and time-consuming and thus impractical for implementation in small forensic laboratories in which capillary electrophoresis and real-time PCR are most commonly used for casework. Therefore, a need exists for a cost-effective assay capable of differentiating species with these already-implemented analytical techniques [Matsumura, p1-2].
In pursuit of this goal, Matsumura developed a highly sensitive and specific multiplex PCR and capillary electrophoresis assay to simultaneously identify 26 mammalian and poultry species including cat, cattle, dog, rabbit, goat, horse, human, pig, sheep, chicken, and turkey [Matsumura, abstract]. These species were specifically chosen as they represent species of domestic and wild animals which are commonly encountered in Japanese forensic laboratories. Two universal primer sets, one for mammals and one for poultry, were developed to target the D-loop of mitochondrial DNA. However, they found that some species were unable to be differentiated using these primer sets and developed an additional primer set targeting the cyt-b gene in 12 mammals (cattle, rabbit, human, sheep, pig, horse, goat, cat, camel, and deer), consisting of a universal forward primer and 10 species-specific reverse primers, to overcome these issues.
Regarding claims 8, 9, 10, and 16, while the cyt-b primers used by Matsumura are different than the primers used by the instant application, Matsumura explicitly teaches that their assay could be tailored for specific geographical regions by adding new primers, making it clear that this assay is adaptable to the specific needs of the skilled artisan looking to implement a similar species identification assay.
Matsunaga [p145] and Amin [p1648] teach methods of species identification in food products, Hsiou [p5] teaches a method of species identification in bite mark injuries related to feline deaths, and all use primers which target the cyt-b gene. Similar to Mastumura, Matsunaga’s cyt-b primer set includes a single fluorescently labeled forward primer and multiple species-specific reverse primers for identifying goat, chicken, cattle, sheep, pig, and horse DNA. Amin discloses a species-specific reverse primer for cat DNA and Hsiou does the same for dog DNA. Together, Matsunaga, Amin, and Hsiou disclose all claimed primer sequences.
PNG
media_image1.png
408
734
media_image1.png
Greyscale
PNG
media_image2.png
107
731
media_image2.png
Greyscale
Therefore, a person of ordinary skill in the art looking to improve Masumura’s assay by developing a comprehensive assay of a single target in which one primer set was used to differentiate multiple species, would have been motivated to consider alternative and additional cyt-b primers able to discriminate among species. In doing this, they would have looked for, or developed, other primers which amplify this target and result in fragment sizes smaller than 500bp to enable successful analysis of degraded samples as taught by Matsumura [Matsumura, p9]. The skilled artisan would have further recognized that modifying Matsumura’s assay to use the primers taught by Matsunaga, Amin, and Hsiou would have resulted in a streamlined assay which could differentiate between commonly encountered with a reasonable expectation of success. A rationale to support a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 (2007) (see MPEP §§ 2143, A. and 2143.02).
Regarding claims 1, 2, 4, and 19, Matsumura constructed an allelic ladder to be used in this assay. Fragments of each target species were obtained via singleplex PCR amplification and were mixed together so that all detected peak heights were balanced. Therefore, it follows that the fragment sizes contained within this ladder are dependent on the primers used for amplification [Matsumura, p2, p4].
The skilled artisan who was modifying Matsumura’s assay to use the primers disclosed by Matsunaga, Amin, or Hsiou, as previously discussed, would have recognized the need to develop their own allelic ladder in which the fragments were generated by their chosen primers and could have done so by following the teachings of Matsumura. As the primers of Matsumura, Amin, and Hsiou are the same as the claimed primers, their use in ladder creation would have resulted in fragment sizes which are the same as the claimed fragment sizes.
Regarding claim 6, Matsumura designed their forward PCR primers to be labeled with either 6-FAM, VIC, or NED. As these primers were used in the singleplex reactions performed for ladder creation, the resulting PCR products would be similarly labeled [Matsumura, p2].
Regarding claim 7, neither Matsumura, Matsunaga, Amin, or Hsiou teach providing the allelic ladder of claim 1 or a mixture of primers in a kit. However, Polanksy teaches that the inclusion of individual components in a commercial kit impart well known advantages such as convenience and reproducibility due to manufacturing standardization, quality control, and validation procedures [Polanksy, 0919]. Therefore, one of ordinary skill in the art prior to the effective filling date of the claimed invention would have been motivated to include all of the reagents necessary to perform this assay in a kit, including a fluorescent universal forward primer, two or more species specific reverse primers and a premade allelic ladder, thereby achieving the well-known benefits described by Polansky and allowing for wider implementation of the assay.
Regarding claims 12 and 15, Matsumura used the following concentrations for the cyt-b primers: 0.80 for the universal forward primer and 0.15, 0.20, 0.10, 0.20, 0.15, 0.06, 0.08, 0.20, 0.10, and 1.6 for the species-specific reverse primers. This equates to a ratio of 1:3.55 [Matsumura, p4].
Regarding claims 13, 14, and 18, Matsumura evaluated their assay for use in forensic casework by testing 31 unknown samples collected from crime or accident scenes to determine if they were able to accurately identify the source of the DNA. They were successful for all samples [Matsumura, p5, p8].
Response to Arguments
Applicant’s arguments, see page 3-4, filed 16 June 2026, with respect to the rejection of claims 1, 2, 6-9, 12, 13, 15, and 18 under 35 U.S.C. § 103 have been fully considered and are persuasive.
Specifically, Applicant argues that Abbasian teaches molecular size markers or ladders which have bands separated by even intervals, as opposed to the claimed ladder in which band separation is determined by the difference in PCR product size resulting in uneven intervals. While Abbasian describes the general method of generating DNA ladders using PCR methods, they do not teach combining PCR fragments generated from of-interest samples in order to generate a ladder which could provide for immediate determination of identity based solely on product size. Therefore, the rejection has been withdrawn.
However, upon further consideration, a new ground(s) of rejection is made in view of Matsumura and Lee, or alternatively in view of Matsumura and Lee in view of Matsunaga, Amin, Hsiou, and Polansky, as detailed above. This new ground(s) of rejection has rendered the remainder of Applicant’s arguments moot.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kara N Kovach whose telephone number is (571)272-8134. The examiner can normally be reached Monday - Friday, 9am - 3pm.
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.
/K.N.K./Examiner, Art Unit 1681
/SAMUEL C WOOLWINE/Primary Examiner, Art Unit 1681
Prosecution Insights