DETAILED ACTION
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
Claims 3, 5, 11, 17, and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the election requirement in the reply filed on 02/04/2026.
Applicant's election with traverse of Ladder 1 in the reply filed on 02/04/2026 is acknowledged. Applicant’s election of SEQ ID NO: 7 and 3 will be addressed in the following paragraph.
The traversal is on the ground(s) that “limiting the claims to a single primer pair would not accurately represent the invention as developed and would remove the core functionality that enables multi-species forensic identification”. This is not found persuasive because the Examiner did not intend to limit the Applicant to a single primer pair. Rather, an single multi-species reference ladder and all of the primers which would require its use was required to be elected. As applicant elected Ladder 1 (claim 4), the Examiner will interpret SEQ ID NOs: 2-9, 17, and 18 (and the relevant claims) to have been elected as they appear to be the relevant primers.
Applicant further traverses with the argument that examination of the entire application would not be a serious burden. This is not found persuasive because a search of the entire application would require searching of multiple reference ladders and additional primer sets, with each additional primer representing an increased burden.
The requirement is still deemed proper and is therefore made FINAL.
Specification
The use of the following terms, which are trade names or marks used in commerce, has been noted in this application:
Tamra, Texas Red, Alexa Fluor, Tye Dye, Atto Dye, BODIPY FL, and OliGreen (p18)
Various recitations of FAM, NED, HEX, GS-ROX500 (p29, 34, 35, 38)
Exosap (p30)
Qubit 2.0 Fluorometer (p32, 38)
Qiagen Multiplex PCR kit (p32)
These terms should be accompanied by the generic terminology; furthermore, these terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the terms.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The disclosure is objected to because of the following informalities:
“NC” should be “NCS” per Figure 4 [p7 L14 and p25 L16]
Appropriate correction is required.
Claim Objections
Claim 4 is objected to because of the following informalities: a semi-colon should be placed after “SEQ ID NO: 8”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b) and (d):
(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.
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second and fourth paragraph:
(Second) 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.
(Fourth) Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 is 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.
Claim 12 states “…the fluorescent universal forward primer and the two or more species-specific reverse primers being mixed at a ratio of from 1:0.4 to 1:4.” However, the claim does not clearly specify what the second value of the ratio refers to. It is unclear whether the second value corresponds to each species-specific primer individually or to the total amount of all species-specific primers combined. Additionally, the claim does not identify the type of ratio being measured (e.g. mass ratio, molar ratio, volume ratio). Without clarification of how the ratio is defined, the scope of the claims is ambiguous. As a result, one of ordinary skill in the art would not be able to determine the metes and bounds of the claim. For the purposes of prior art, the ratio will be interpreted as a molar ratio comparing the concentration of the universal primer to each individual species-specific reverse primer.
Claim 15 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 13 states “…preparing a DNA sample from the specimen, amplifying the DNA sample through multiplex PCR using the kit of claim 7…” wherein the kit of claim 7 contains a reference ladder and primers targeting the cyt-b gene in mtDNA.
Claim 15 states “…amplifying the DNA sample through multiplex PCR comprising mixing the primer mixture with the DNA sample; and subjecting said mixture of primer and DNA to multiplex PCR reactions to achieve Cyt-b gene amplicons.”
A skilled artisan would understand that in order to perform a multiplex PCR reaction, a DNA sample must be combined with target-specific primers, the mixture of which is subjected to thermocycling parameters. As the kit of claim 7 is designed to amplify the cyt-b gene (aka achieve Cyt-b amplicons), there is no tangible difference between claim 13 and claim 15. Therefore, claim 15 does not further limit the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 6-9, 12, 13, 15, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Matsunaga (Matsunaga T, et al. Meat science. 1999 Feb 1;51(2):143-8; IDS reference) in view of Abbasian (Abbasian M, et al. Adv Biomed Res. 2015 Jan 1; 4(1): 70).
Matsunaga teaches a method for performing multiplex PCR on DNA prepared from meat samples to identify six meats (cattle, pig, chicken, sheep, goat, and horse) through the amplification of the mitochondrial cytochrome b gene using a universal forward primer and a mixture of species-specific reverse primers. These primers were designed to produce a different length amplicon for each of the examined species (Matsunaga, abstract). Therefore, by determining the size of the amplicon, Matsunaga is able to determine the species of the examined meat.
Matsunaga does not teach the creation of a fluorescent multi-species reference ladder, a fluorescent forward primer, or a kit containing both the primers and the ladder.
However, Abbasian teaches a method for producing a DNA ladder in which separate PCR reactions are performed using primers which are designed to produce fragments of specific sizes. Once amplification is completed, the fragment concentrations are normalized and the products are mixed together to obtain one sample containing an equal concentration of all amplified fragments, aka a reference ladder (Abbasian, p3-4). Additionally, Abbasian teaches that the use of PCR to produce the reference ladder allows for attachment of labels to the amplified product through “any chemical modification method”, for example through the use of 5` or 3` modified oligonucleotides (Abbasian, p5). Therefore, by modifying the PCR products of Matsunaga to include a fluorescent molecule via a modified primer, followed by normalization and combination of the products as suggested by Abbasian, a skilled artisan would arrive at the claimed fluorescent reference ladder.
Abbasian further teaches that this ladder production method enables researchers to innovate rapid detection PCR kits and specifically states that the use of a fluorescent label on both the ladder fragments and the questioned amplified fragments would allow for the detection of a minimal amount of target in a sample (Abbasian, p5).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention, looking to create a rapid detection PCR kit based off the method of Matsunaga, to apply the ladder creation method of Abbasian, including the use of fluorescent primers, to allow for quick and accurate identification of a questioned sample in which the migration of the questioned amplicons is compared to the migration of the reference ladder.
Regarding claims 8 and 9 (both in part), Matsunaga teaches the use of a set of reverse primers, each specific for a different species, and a common forward primer, all of which are identical to the instant primers (see comparison chart below). While the common forward primer of Matsunaga is not modified to include a fluorophore, the teachings of Abbasian (as previously discussed) would encourage a skilled artisan to include one.
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Regarding claim 12, Matsunaga mixed the primers in a ratio of 1:0.2:3:0.6:3:0.6:2 (Universal Forward : Goat : Chicken : Cattle : Sheep : Pig : Horse). While most of these ratios are within the claimed range of the instant, one does fall outside the proposed minimum allowable. However, primer ratio is clearly a result effective parameter that a person having ordinary skill in the art would routinely optimize. It would have been customary for an artisan of ordinary skill to determine the optimal amount of each ingredient, i.e., each primer, needed to achieve the desired results. “Claimed ratios were obvious as being reached by routine procedures and producing predictable results.” see MPEP 2144.05.II.A.
Claims 4, 10, 14, 16, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Matsunaga and Abbasian as applied to claims 1, 2, 6-9, 12, 13, 15, and 18 above, and further in view of Amin (Amin MA, et al. International Journal of Food Properties. 2016 Jul 2;19(7):1645-58), Hsiou (Hsiou CL, et al. Animals. 2022 Sep 13;12(18):2404), and Tobe (Tobe SS, et al. Electrophoresis. 2008 Jan;29(2):340-7; IDS reference).
Matsunaga teaches a method for the identification of six meat species through PCR analysis using a universal forward primer and species-specific reverse primers. The PCR reaction results in amplicons which are 157, 227, 274, 331, 398 and 439 bp from the goat, chicken, cattle, sheep, pig and horse meats, respectively. By both using a fluorescent primer and mixing these PCR products together, as suggested by Abbasian, the resultant mixture would be a fluorescent multi-species reference ladder comprised of DNA fragments which are about the same size as those claimed in the instant application for the indicated species.
Neither Matsunaga nor Abbasian teach the inclusion of DNA fragments from a cat or a dog, nor the use of primers specific for those animals (SEQ ID NOs: 2 and 3, respectively).
However, Amin teaches SEQ ID NO: 2 for use as a reverse primer in a method to detect feline meat in food products (Amin, abstract, p4) and Hsiou teaches SEQ ID NO: 3 for use as a reverse primer in a method to detect dog DNA in bite mark injuries during the investigation of feline deaths (Hsiou, abstract, p5).
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Furthermore, Tobe teaches a multiplex PCR assay for the identification of 18 different mammal species, in which multiple fluorescently-tagged universal primers and multiple species-specific reverse primers are used to amplify the mitochondrial cytochrome b gene (Tobe, abstract, Table 2). Tobe developed this multiplex assay to aid in the analysis of forensic evidence for which DNA of non-human origin may be present (Tobe, p1). In the pursuit of this goal, the species included in Tobe’s multiplex assay were chosen for their common association with forensic investigations. These species include those described by the instant application (cat, cow, dog, goat, horse, pig, and sheep) (Tobe, abstract).
The teaching of Tobe represent a clear motivation to develop a multiplex assay capable of evaluating forensic samples for the presence of DNA of animals with close human associations. Therefore, a skilled artisan, prior to the effective filing date of the claimed invention, looking to adapt the method of Matsunaga for forensic purposes would be interested in expanding the capabilities of the assay to include analysis of cat and dog DNA, common household pets, and thus incorporate the primers of Amin and Hsiou.
Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, F.).
Assuming the use of the reverse primers of Amin and Hsiou with the universal primer of the instant application, the skilled artisan would predict that a 365bp DNA fragment would be obtained from the cat genome, and a 146bp DNA fragment would be obtained from the dog genome (see predicted fragments below). Therefore, inclusion of these DNA fragment in the multi-species reference ladder developed by following the teachings of Matsunaga and Abbasian would result in a fluorescent multi-species reference ladder comprised of DNA fragments which are about the same size as those claimed in the instant application, for each of the claimed species.
Cat Fragment:
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Dog Fragment:
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Regarding claim 19, while none of the aforementioned art teaches DNA fragments of these exact sizes, determination of fragment sizes to be used within a ladder could be considered a result effective parameter that a person having ordinary skill in the art would routinely optimize. One of ordinary skill in the art prior to the effective filling date of the claimed invention would recognize that DNA ladders can be generated by a variety of different means, such as ligation of concatemers, restriction digestion of vectors/plasmids, or through PCR methods, as described by Abbasian (Abbasian, p2). As such, depending on the method used, the fragment sizes may be slightly different. What is important, particularly in the context of the instant application, is that the fragment sizes used are able to accurately decode the identity of unknown amplicons. Therefore, despite the fragments of the prior art and the claimed ladder not being identical, a skilled artisan would be able to recognize their interchangeability.
The Supreme Court decided that a claim can be proved obvious merely by showing that the combination of known elements was obvious to try. In this regard, the Supreme Court explained that, “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has a good reason to pursue the known options within his or her technical grasp.” An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of the case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Therefore, choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, E.).
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.
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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.
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/K.N.K./ Examiner, Art Unit 1681
/GARY BENZION/ Supervisory Patent Examiner, Art Unit 1681