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
Applicant’s election without traverse of claim 6, directed to establishing genealogical relationships in the reply filed on 07/31/2026 is acknowledged.
Claims 7-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/31/2026.
Upon further search and reconsideration, the restriction requirement between claims 6 and 9 is withdrawn. As such, claim 9 had been rejoined to claim 6.
Status of Claims
Applicant’s amendment filed 07/31/2026 is acknowledged. Claims 7-10 have been withdrawn. Claims 1-10 are pending in the instant application, claim 9 has been rejoined with claims 1-6, and thus, claims 1-6 and 9 are the subject of this non-final office action.
Claim Objections
Claim 5-9 and 9 are objected to because of the following informalities:
In claims 5-6 and 9, at line 1 in each claim, the term “deriving” should be changed to “obtaining.”
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 5-6 and 9 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.
In analyzing the claims for compliance with the written description requirement of 35 U.S.C. 112 (a), the written description guidelines note that with regard to genus/species situations, a “[s]atisfactory disclosure of a ‘representative number' depends on whether one of skill in the art would recognize that the applicant was in possession of the necessary common attributes or features of the elements possessed by the members of the genus in view of the species disclosed.”
Regarding claims 5-6 and 9, claim 5 recites “analyzing the extracted DNA”. Claim 6 recites “establishing genealogical relationships by analyzing the extracted DNA”. Claim 9 recites “establishing custodianship or ownership of property by analyzing the extracted DNA”.
The specification recites that “Techniques for extracting and sequencing human DNA from old and ancient remains and artifacts are known in the art” (Background, para 1) but that “almost all currently known techniques for DNA sequencing of textile samples are destructive or ineffective when dealing with historical artifacts” (pg. 4, para 2). Pg. 4, para 2 further discusses the method of sampling from the thread ends.
Pg. 4, para 3 recites that the extracted DNA is analyzed and that such may be performed in order to established genealogical relationships and establish custodianship or ownership of property.
However, in contrast to the breadth of the claims regarding the means of analysis, no descriptive means as words, structures, figures, or diagrams; an actual reduction to practice; or other distinguishing identifying characteristics sufficient to show that the applicant was in possession of the claimed invention of the genus of all analysis techniques for extracted DNA were identified.
Therefore, as no representative species of analysis have been presented and the specification discourages from using previously known techniques, the skilled artisan would not have concluded that the applicant had possession of the claimed invention at the time of filing.
Thus, the claims fail to comply with the 112(a) written description requirement.
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.
Claim(s) 1-6 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bettinger (Bettinger B. Testing artifacts to obtain DNA evidence for genealogical research [Internet]. 2018 [cited 2026 Sept 14]. Available from: https://thegeneticgenealogist.com/2018/11/19/testing-artifacts-obtain-dna-evidence-genealogical-research/) in view of Fitz Gibbon (Fitz Gibbon K. A primer: NAGPRA, ARPA, and the Antiquities Act [Internet]. 2019 [cited 2026 Sept 15]. Available from: https://culturalpropertynews.org/a-primer-nagpra-arpa-and-the-antiquities-act/), Lyford ( Lyford CA. Sioux Beadwork. Lawrence, Kansas: Haskell Institute; 1933. Available from: https://www.google.com/books/edition/Sioux_Beadwork/3sqg5F2LpDcC), Nimerfro (Nimerfro S. Sioux Style Lazy Stitch Beadwork [Internet]. Matoska Trading Company; 2019 [cited 2026 Sept 15]. Available from: https://www.matoska.com/siouxlazystitch.htm), and McCloskey (McCloskey A. A look inside the textile conservation process [Internet]. Denver Art Museum; 2012 [cited 2026 Sept 15]. Available from: https://www.denverartmuseum.org/en/blog/look-inside-textile-conservation-process).
Regarding claim 1 and 3, Bettinger teaches a method for use with artifacts (entire document, e.g., Updates, Original Article, What Artifacts Might be Useful), comprising:
identifying an artifact with a licked seal and/or stamp that is likely to contain DNA (pg. 2, What Artifacts Might be Useful, para 1); and
extracting DNA from the from the artefact (pg. 3, totheletter DNA - An Artifact Testing Company).
Bettinger suggests utilizing the method for alternative artifacts, including hat brims (pg. 10, “What artifacts do you have that might be suitable for testing?”; pg. 11, “I predict they will branch out into other areas”; pg. 2, What Artifacts Might be Useful?, para 1-3). Bettinger suggests there is an untapped market for artifact testing (pg. 2, ORIGINAL ARTICLE, para 2) and suggests artifact test for future DNA evidence and genealogy (pg. 2, ORIGINAL ARTICLE, para 1).
Bettinger teaches that every artifact is different and must be individually analyzed and processed by a lab tech (pg. 4, The Cost of totheletter DNA Extraction and Testing Services, para 4). Bettinger teaches that DNA was found in samples as old as 1930 as of 2018 (pg. 1, Updates).
Regarding claim 2, Bettinger teaches that the sample is returned (pg. 3, totheletter DNA - An Artifact Testing Company).
Bettinger teaches one embodiment in which the portion containing the saliva was removed from the remainder of the artifact (pg. 4-5, Sample #1- My Great-Grandmother's Envelope and another in which the entire artifact was submitted for analysis (pg. 5-6, Sample #2 - Letter in Possession).
Regarding claim 4, Bettinger teaches that at least a portion of the extracted DNA is human (pg. 4-5, Sample #1- My Great-Grandmother's Envelope).
Regarding claims 5 and 6, Bettinger teaches deriving information from the extracted DNA by analyzing the extracted DNA, including genotyping using a SNP chip (pg. 3, totheletter DNA - An Artifact Testing Company; pg. 4, The GSA (Global Screening Array) SNP Chip Used by totheletter DNA) and uploading the results of the genotyping to a subsequent genealogy database to establish genealogical relationships (pg. 7-8; What Next? What Can I Do With the Results?; pg. 9, But What if it Isn't Great-Grandmother?; pg. 2, ORIGINAL ARTICLE, para 1-4).
Bettinger fails to teach:
that the artifact is a textile containing hand-sewn stitching and that the portion likely to contain DNA via saliva is a tied-off thread end (claim 1);
that the extracting DNA from the tied off thread ends comprises maintaining structural integrity of the remainder of the textile (claim 2); and
that the artifact is an article of clothing (claim 3).
Fitz Gibbon teaches that archaeological materials that are taken from federal or Indian lands without a permit are unlawful and that ancient objects found on private lands may be subject to a civil claim of superior title by a tribe or subject to repatriation if later donated to a museum that receives federal funds (pg. 2, Legal trade in art and artifacts today, para 3; instant claim 9). Fitz Gibbon teaches that most art dealers acknowledge that certain items should never have left Native American tribal custody and have initiated a Voluntary Returns program, pg. 2, Legal trade in art and artifacts today, para 2).
Fitz Gibbon teaches the use of DNA analysis to establish the most closely related genealogical group of a skeleton for repatriation to contemporary Native Americans who had volunteered for DNA comparison (pg. 6, Notable NAGPRA claims: Kennewick Man and Tomanowos, para 1).
Fitz Gibbon teaches the return of items to tribes under NAGPRA (see pg. 4, Native American Graves Protection and Repatriation Act (NAGPRA)(xi) of 1990) comprises associated and unassociated funerary objects comprising beads, sacred objects, and objects of cultural patrimony (pg. 5-6, Possession of human remains by museums and the government is a lingering problem). Fitz Gibbon teaches that NAGPRA defines unassociated funerary objects as comprising those objects that, as a part of the death rite or ceremony of a culture, are reasonably believed to have been placed with individual human remains either at the time of death or later, where the remains are not in the possession or control of the Federal agency or museum and the objects can be identified by a preponderance of the evidence as related to specific individuals and (pg. 5, Overly elastic definitions of "sacred" and "patrimony" risk making NAGPRA repatriation-on-request).
Lyford teaches that bead work is a textile art (pg. 7, Bead Embroidery, para 1) and that heavily beaded articles were used only for ceremonial purposes (pg. 8, para 4). Lyford teaches that skins were used for “leggins”, moccasins, skirts, cloaks, and religious stoles (instant claim 3), wherein the articles were usually adorned especially if they were to be used for ceremonial [purpose] (pg. 10, Skins, para 4 spanning pg. 11)
Lyford teaches that the embroidery stiches commonly used in Plains Indian embroidery designs comprises the lazy stitch (pg. 8, STITCHES USED IN BEADWORK, para 1).
Lyford teaches moistening sinew fibers with saliva to give it the proper degree of elasticity from which a fiber may be drawn out for beadwork (pg. 13, Sinew, para 2, spanning pg. 14). Lyford teaches that, when used in sewing, sinew is moistened with saliva and twisted to a fine point, then dried, to produce a needle-like point that may be strung with beads and slipped through awl holes and soaked with water to restore flexibility (pg. 14, para 1). Lyford teaches that sinew was used for sewing seams in costumes and for working the embroidery designs with beads (pg. 14, para 2).
Lyford teaches that the rows of beads are sewed down only at the ends of each row (pg. 8, STITCHES USED IN BEADWORK, para 1, spanning. Pg. 9)
Lyford teaches that some of the leather is in as good condition as it was a hundred years ago (pg. 10, Skins, para 2).
Nimerfro teaches a Sioux style lazy stitch beadwork (Title) and teaches that in producing an “artifake” to use exactly the materials the Indian beadworkers used (pg. 2, 1. Thread).
Nimerfro teaches tying off at the end of a thread and sewing back under the lane (pg. 3, Beginning and Ending; Fig. 4). Nimerfro cites Quill and Beadwork of the Western Sioux by Carrie Lyford (1940).
McCloskey teaches performing an examination of a textile object, and with approval of the curator or owner of the object, sampling fibers that from a loose yarn or inconspicuous location to provide information for interpreting a work historically (pg. 3, para 1-2).
McCloskey teaches performing stabilization and repairs and choosing materials and techniques that are selected to be minimally interventive or to disrupt the original construction of the object as little as possible to avoid further damage, and to be visually compatible with the object (pg. 5, para 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the method of Bettinger of extracting DNA from an artefact by substituting a stamp/envelope for the saliva-moistened sinew of a beaded article of clothing, as an obvious species of the genus of artifacts with a large application of saliva (claim 1), as suggested by Bettinger, and/or under the motivation to return the artifact under NAGPRA or as part of a voluntary return to the closest genetic family member or tribe as the DNA record allows, as suggested by Fitz Gibbon, wherein such would establish custodianship and/or ownership under the relevant law(s) (claim 9). In doing so, it would have further been obvious to the POSITA before the EFD of the claimed invention to have identified hand-sewn sinew stitching and to have identified a tied off thread end from which to have performed the DNA extraction (claim 1) and further to have carefully planned interventions such that the structural integrity was maintained (claim 2), motivated by the desire to choose an inconspicuous location, where such tied off ends are taught to be inconspicuous by Nimerfro, that is known to have saliva applied, as taught by Lyford, so as to be minimally interventive and to disrupt the original construction as little as possible and to avoid further damage and/or to be visually compatible with the object, as suggested by McCloskey.
It further would have been obvious to the POSITA before the EFD of the claimed invention that such a textile may be an article of clothing (claim 3) as an obvious species of the genus of ceremonial beaded Sioux items, as taught by Lyford.
There would have been a strong expectation of success as Bettinger suggest use of the method on a wide variety of artifacts, wherein saliva-applied objects are taught to be the best, and Lyford and Nimerfro together teach that such artifacts are likely to have saliva on the sinew applied multiple times and in potentially greater degree than an envelope, including the thread ends, which are in an appropriate place for sampling following the standard textile conservation techniques of McCloskey. As such, the method represents the application of known techniques to a known sample to yield predictable results.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Emma R Hoppe whose telephone number is (703)756-5550. The examiner can normally be reached Mon - Fri 11:00 am - 7:00 pm.
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/EMMA R HOPPE/Examiner, Art Unit 1683
/NANCY J LEITH/Primary Examiner, Art Unit 1636
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