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 .
Claim Status and Action Summary
This action is in response to the papers filed on August 3, 2026.
Claims 1-10 and 12 are under examination. Claim 11 was canceled by applicant in the response dated August 3, 2026. No other claims are currently pending in the present application.
Any objections and rejections not reiterated below are hereby withdrawn.
The non-statutory double patenting rejection of record over co-pending application number 18/898,476 has been withdrawn in view of the approved Terminal Disclaimer dated August 3, 2026.
Priority/Effective Filing date
The present application was filed on December 29, 2023. No benefit or priority claims are currently present in the application.
Response to Amendment
Applicant is reminded that under 37 C.F.R. 111, “reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated.”
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 7, and 9-10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Rodriguez Manzano et al., WO 2023131803 A1 (published July 13, 2023; filed 13 January 2023) in view of Yan et al., CN112342318 (published February 9, 2021)
This is a new grounds of rejection necessitated by the amendments to the claims.
Regarding claim 1, Rodriguez Manzano et al. teach a colorimetric LAMP system comprising:
a) an all-in-one lyophilized colorimetric LAMP reaction mixture comprising: a primer set, glycerol-free Bst polymerase (i.e. a strand-displacing polymerase), deoxynucleotide triphosphates (Rodriguez Manzano et al., page 5, paragraph 2), a colorimetric amplification indicator that is a pH-indicator (Rodriguez Manzano et al., page 6, paragraph 3), and a cryoprotectant comprising trehalose, dextran, mannitol, sucrose, sorbitol, or a polymer of sucrose “Ficoll” (Rodriguez Manzano et al., page 5, paragraph 1 and page 7, paragraph 4). Rodriguez Manzano et al. further teach the concentration of the cryoprotectant is, for example, a trehalose concentration of about 1-10% (w/v) (Rodriguez Manzano et al., page 9, paragraph 1). Rodriguez Manzano et al. further teach the concentration of the colorimetric amplification indicator is, for example, phenol red at a concentration of about 50-100 µM (i.e. 0.050-0.100 mM) (Rodriguez Manzano et al., page 9, paragraph 4).
b) an extraction-free lysis buffer (i.e. a rehydrated reaction mixture) comprising: potassium chloride in a concentration ranged 40-60 mM, ammonium sulfate in a concentration ranged 5-15 mM, and one or more of Triton X-100 (i.e. 2-[4-(2,4,4-trimethylpentan-2-yl)phenoxy]ethanol) at a concentration less than about 5%, Tween 20 (i.e. {2-[3,4-bis(2-hydroxyethoxy)oxolan-2-yl]-2-(2-hydroxyethoxy}ethyl dodecanoate) at a concentration less than about 2%, Tergitol (i.e. secondary alcohol ethoxylate) at a concentration less than about 5% (Rodriguez Manzano et al., page 10, inset table).
Rodriguez-Manzano does not teach that the extraction-free lysis buffer is configured to rehydrate the lyophilized reaction mixture, wherein the buffer comprises the potassium chloride, ammonium sulfated, and detergent required for the LAMP reaction.
However, Rodriguez-Manzano does teach that the benefits of the provision of a lyophilized composition for colorimetric nucleic acid amplification include enabling stable transportation and storage at ambient temperatures (Rodriguez-Manzano et al., page 15, paragraph 4) and that the components of the lyophilization formula can be present in any combination (Rodriguez-Manzano et al., page 10, paragraph 1), and that a lyophilized composition can be provided with the exclusion of at least one nucleic acid amplification reagent for use as a control wherein no amplification occurs without said excluded reagent (Rodriguez-Manzano et al., page 2, paragraph 3).
Even more, Yan et al. teach compositions for field detection of nucleic acid analytes comprising freeze-dried reaction tubes comprising labile-reagents, and a separate reaction buffer with which the lyophilized reagents are rehydrated. Yan et al. teach the reaction buffer comprises 20 mM (NH4)2SO4 (i.e. ammonium sulfate), 50 mM KCl (i.e. potassium chloride), and 1% Tween-20 (i.e. {2-[3,4-bis(2-hydroxyethoxy)oxolan-2-yl]-2-(2-hydroxyethoxy}ethyl dodecanoate) (Yan et al., page 4, “Example 3”).
Therefore, it would have been prima facie obvious prior to the effective filing date of the claimed invention for one of ordinary skill in the art to have modified the all-in-one lyophilized colorimetric LAMP reaction mixture capable of being rehydrated in water, taught by Rodriguez-Manzano, which may explicitly be provided with the exclusion of at least one nucleic acid amplification reagent (e.g. cations necessary for polymerase activity), with the teachings of Yan et al. that lyophilized nucleic acid reagents comprising polymerase, dNTP, primers, and protective agents can be rehydrated with a separate reaction buffer comprising 20 mM (NH4)2SO4 (i.e. ammonium sulfate), 50 mM KCl (i.e. potassium chloride), and 1% Tween-20 (i.e. {2-[3,4-bis(2-hydroxyethoxy)oxolan-2-yl]-2-(2-hydroxyethoxy}ethyl dodecanoate) rather than with water alone.
The ordinary artisan would have been motivated to provide non-labile (i.e. stable) components such as metal cations and detergents in a separate rehydration composition with a reasonable expectation of success by the teachings of Rodriguez-Manzano that exclusion of at least one such reagent provides for a convenient negative control or by the teachings of Yan et al. that supplying a separate “reaction buffer” comprising these specific components for rehydrating lyophilized nucleic acid amplification reagents in a field detection kit allows for successful detection of target nucleic acids in the field.
Regarding claim 2, Rodriguez Manzano et al. teach the colorimetric LAMP reaction mixture further comprises a reverse transcriptase for converting target RNAs, for example, SARS-CoV-2 nucleic acids (i.e. a viral genomic RNA) to cDNA (Rodriguez Manzano et al., page 5, paragraphs 3-4).
Regarding claim 3, Rodriguez Manzano et al. teach the pH indicating dye is phenol red or neutral red (Rodriguez Manzano et al., page 6, paragraph 3).
Regarding claim 4, Rodriguez Manzano et al. teach dispensing 10 µL aliquots of pre-lyophilisation formulations into tube strips (i.e. a volume of the colorimetric LAMP reaction mixture is 10 µL). Under a claim interpretation of “a volume of colorimetric LAMP reaction mixture” requires a liquid volume (i.e. a pre-lyophilization formula or reconstituted reaction mixture), the claim differs from the prior art (which teaches a volume of reaction mixture is 10 µL) only in that “a volume” of the reaction mixture is less than 10 µL.
MPEP 2144.05 (II)(A) states: “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical… In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution)… and… In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").”
There is no evidence of record indicating that the volume of the colorimetric LAMP reaction mixture is critical to the claimed products.
Therefore, it would have been prima facie obvious prior to the effective filing date of the claimed invention for one of ordinary skill in the art to have obtained any volume of “colorimetric LAMP reaction mixture”, as defined by claim 1, particularly “a volume less than [the volume taught in the prior art]”. For instance, the ordinary artisan would have easily prepared a “2X”, “4X”, “5X”, etc. reaction mixture compared to the mixture proportions taught by Rodriguez Manzano et al. in order to process larger sample volumes, or as a means of preparing a concentrated “master mix” to be aliquoted into multiple samples or reaction vessels.
Regarding claim 7, Rodriguez Manzano et al. further teach the colorimetric LAMP reaction mixture comprises a magnesium salt in a concentration ranged from 4-10 mM (Rodriguez Manzano et al., page 8, paragraph 3).
Regarding claim 9, Rodriguez Manzano et al. further teach the extraction-free lysis buffer comprises a detergent that is Tergitol (i.e. secondary alcohol ethoxylate) at a concentration less than about 5% (Rodriguez Manzano et al., page 10, inset table).
Regarding claim 10, Rodriguez Manzano et al. further teach the extraction-free lysis buffer comprises a detergent that is Triton X-100 (i.e. 2-[4-(2,4,4-trimethylpentan-2-yl)phenoxy]ethanol) at a concentration less than about 5%.
Regarding claim 12, Rodriguez Manzano et al. further teach the extraction-free lysis buffer comprises a detergent that is Tween 20 (i.e. {2-[3,4-bis(2-hydroxyethoxy)oxolan-2-yl]-2-(2-hydroxyethoxy}ethyl dodecanoate) at a concentration less than about 2%.
Response to arguments
The response reviews the teachings of Manzano et al. and Yan et al. individually that asserts “amended claim 1 is structurally and chemically distinct from Manzano, and is neither anticipated nor obvious from Manzano” and “amended claim 1 is structurally and chemically distinct from Manzano, and is neither anticipated nor obvious from Yan”.
The new grounds of rejection necessitated by the amendments to the claims over Rodriguez-Manzano et al. in view of Yan et al. address the new limitations of amended claim 1 now requiring “a first container accommodating a colorimetric LAMP reaction mixture, which is all-in-one lyophilized…” and “a second container accommodating an extraction-free lysis buffer…”.
In summary, Rodriguez-Manzano et al. teaches the all-in-one lyophilized colorimetric LAMP reaction mixture may exclude one or more reagents in order to provide for a control sample, and Yan et al. teach LAMP kits for field detection of nucleic acids comprising a lyophilized LAMP reaction in a first container and a reaction buffer in a second container with which the lyophilized LAMP reaction can be rehydrated, wherein the reaction buffer comprises stable detergents and cations missing from the lyophilized LAMP reaction (potassium chloride, ammonium sulfate, and Tween-20).
Arguments that Manzano or Yan teach away from the claimed invention because of particular embodiments that differ from the claimed invention are not persuasive. First, the assertion that Manzano teaches away from the two-container kit recited in amended claim 1 is not persuasive because Manzano teaches that the reagents can be combined in any combination and may exclude particular reagents to allow for control reactions. Similarly, the assertion that Yan teaches away from “all-in-one” lyophilization because Yan teaches variations of prior methods comprising separating the pH indicator dye from the rest of the lyophilized reagents in a paraffin layer is not persuasive at least because Yan does not teach that “all-in-one” lyophilization comprising the pH indicating dye would not function. Yan simply teaches preferred embodiments wherein the paraffin improves the stability of a pH indicator dye.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Rodriguez Manzano et al., WO 2023131803 A1 in view of Yan et al., as applied to claims 1-4, 7, and 9-10 and 12 above, and further in view of Johnson et al., WO 2015/195597 A1.
Regarding claims 5 and 6, Rodriguez Manzano et al. in view of Yan et al., do not teach that the colorimetric LAMP reaction mixture comprises 2 to 7.5% (w/v) of trehalose and 2 to 7.5 % (w/v) of raffinose (claim 5) or additionally 1 to 2.5% (w/v) of dextran and 1 to 5% (w/v) of mannitol (claim 6).
However, Johnson et al. teach compositions of stable lyophilized enzymes for nucleic acid amplification reactions, wherein a mixture of lyoprotectant sugars are added to the reaction mixture comprising an enzyme to be stabilized. Johnson et al. teach that combinations of trehalose, dextran, mannitol, and raffinose, wherein the lyophilized pellet comprises about 1 to about 10% of each sugar by volume (i.e. w/v) to a maximum total of less than 30% sugars by volume (Johnson et al., paragraph 0019). Additionally, Johnson et al. teach the reagents to be stabilized may comprise a polymerase, a reverse transcriptase, primers, and/or nucleotide triphosphates (Johnson et al., paragraph 0031), wherein the lyophilized pellet further comprises a label (i.e. a dye) (Johnson et al., paragraph 0018).
Therefore, it would have been prima facie obvious prior to the effective filing date of the claimed invention for one of ordinary skill in the art to have modified the colorimetric LAMP reaction mixtures taught by Rodriguez Manzano et al. in view of Yan et al. comprising a cryoprotectant comprising trehalose, dextran, mannitol, sucrose, sorbitol, or a polymer of sucrose “Ficoll” (Rodriguez Manzano et al., page 5, paragraph 1 and page 7, paragraph 4), wherein the concentration of the cryoprotectant is, for example, a trehalose concentration of about 1-10% (w/v) (Rodriguez Manzano et al., page 9, paragraph 1) by combining multiple known cryoprotectant sugars (i.e. trehalose, raffinose, dextran, and mannitol) at constituent concentrations of between 1 and 10% for each of the cryoprotectant sugars as taught by Johnson et al. because of the teaching of Johnson et al. that inclusion of one or more of these sugars improve the stability of biomolecules and prolong shelf life (Johnson et al., paragraph 0053).
MPEP 2144.05 (II)(A) states: “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical… In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution)… and… In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").”
There is no evidence of record indicating that the particular claimed ranges of each of the lyoprotectant sugars trehalose, raffinose, dextran, and mannitol are critical to the stability of the recited colorimetric LAMP reaction mixture.
Therefore, it would have been prima facie obvious prior to the effective filing date of the claimed invention for one of ordinary skill in the art to have obtained workable combinations of the lyoprotectant sugars taught by Rodriguez Manzano et al. and Johnson et al., such as the claimed 2 to 7.5% (w/v) of trehalose and 2 to 7.5 % (w/v) of raffinose (claim 5) or additionally 1 to 2.5% (w/v) of dextran and 1 to 5% (w/v) of mannitol (claim 6), by routine optimization from the suggested proportions 1 to 10% of each sugar suggested by Johnson et al.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Rodriguez Manzano et al., WO 2023131803 A1 in view of Yan et al., as applied to claims 1-4, 7, and 9-10 and 12 above, and further in view of Singer et al., WO 2022/974988 A1 (published April 14, 2022) and Fisher et al., WO 2015/073633 A1.
Regarding claim 1, Rodriguez Manzano et al. in view of Yan et al. teach a colorimetric LAMP system comprising:
a) an all-in-one lyophilized colorimetric LAMP reaction mixture comprising: a primer set, glycerol-free Bst polymerase (i.e. a strand-displacing polymerase), deoxynucleotide triphosphates (Rodriguez Manzano et al., page 5, paragraph 2), a colorimetric amplification indicator that is a pH-indicator (Rodriguez Manzano et al., page 6, paragraph 3), and a cryoprotectant comprising trehalose, dextran, mannitol, sucrose, sorbitol, or a polymer of sucrose “Ficoll” (Rodriguez Manzano et al., page 5, paragraph 1 and page 7, paragraph 4). Rodriguez Manzano et al. in view of Yan et al. further teach the concentration of the cryoprotectant is, for example, a trehalose concentration of about 1-10% (w/v) (Rodriguez Manzano et al., page 9, paragraph 1). Rodriguez Manzano et al. in view of Yan et al.et al. further teach the concentration of the colorimetric amplification indicator is, for example, phenol red at a concentration of about 50-100 µM (i.e. 0.050-0.100 mM) (Rodriguez Manzano et al., page 9, paragraph 4).
b) an extraction-free lysis buffer (i.e. a rehydrated reaction mixture) comprising: potassium chloride in a concentration ranged 40-60 mM, ammonium sulfate in a concentration ranged 5-15 mM, and one or more of Triton X-100 (i.e. 2-[4-(2,4,4-trimethylpentan-2-yl)phenoxy]ethanol) at a concentration less than about 5%, Tween 20 (i.e. {2-[3,4-bis(2-hydroxyethoxy)oxolan-2-yl]-2-(2-hydroxyethoxy}ethyl dodecanoate) at a concentration less than about 2%, Tergitol (i.e. secondary alcohol ethoxylate) at a concentration less than about 5% (Rodriguez Manzano et al., page 10, inset table).
Regarding claim 8, Rodriguez Manzano et al. in view of Yan et al. do not teach the detergent in the composition of claim 1 is 0.5 to 6% (w/v) of 2-ethylhaxan-1-ol;2-methyloxirane;oxirane.
However, Singer et al. teach lysis buffers for virus inactivation and direct detection of nucleic acids released therefrom (Singer et al., page 2, lines 34-41 and page 4, lines 26-35).
Singer et al. teach “Ecosurf EH-9 (CAS: 64366-70-7)” (i.e. 2-ethylhaxan-1-ol;2-methyloxirane;oxirane) (Singer et al., page 20, lines 18-20) is a suitable detergent for inactivation of virus particles comprising release of nucleic acids from virus particles, does not inhibit RT-PCR, and is “suitable to be used in the preparation of a virus-inactivating biological sample that can be directly used in an amplification reaction, including a reverse transcription amplification, without prior purification of the comprised nucleic acids” (Singer et al., page 91, line 15- page 92 line 12), furthermore Ecosurf EH-9 concentrations up to 16% in RT-PCR reactions did not inhibit amplification (Singer et al., page 100, lines 5-40).
Similarly, Fisher et al. teach protocols for virus inactivation (i.e. lysis) often rely on Triton X-100 (i.e. 2-[4-(2,4,4-trimethylpentan-2-yl)phenoxy]ethanol) , however Triton X-100 degrades into octylphenol, an ecotoxin with demonstrated estrogenic effects with tight discharge limits between 0.01 and 0.1 parts per billion that requires the use of complex and costly means to remove octylphenol from biotechnological wastestreams (Fisher et al., paragraphs 0003-0004). Fisher et al. teach “eco-friendly detergents” for viral inactivation (i.e. release of nucleic acids) (Fisher et al., Abstract) including “Ecosurf EH-9 (CAS: 64366-70-7)” (i.e. 2-ethylhaxan-1-ol;2-methyloxirane;oxirane) as alternatives to ecotoxic Triton X-100 in virus inactivation (i.e. lysis) buffer compositions that provide effective inactivation of enveloped virus particles that is comparable to Triton X-100 (Fisher et al., paragraphs 0233-0234).
Therefore, it would have been prima facie obvious prior to the effective filing date of the claimed invention for one of ordinary skill in the art to have substituted the “eco-friendly” detergent “Ecosurf EH-9 (CAS: 64366-70-7)” (i.e. 2-ethylhaxan-1-ol;2-methyloxirane;oxirane) into the extraction-free lysis buffer taught by Rodriguez Manzano et al. in view of Yan et al. in place of Triton X-100 because of the known ecotoxic properties of Triton X-100 described by Fisher et al. and the equivalent performance of “Ecosurf EH-9” for virus inactivation and lack of inhibition of RT-PCR amplification of released viral nucleic acids at relevant concentrations of Ecosurf EH-9 described by Singer et al.
The ordinary artisan would have been motivated to substitute Ecosurf EH-9 for Triton X-100 in similar, or the same concentration in the extraction-free lysis buffer taught by Rodriguez Manzano et al. in view of Yan et al. by the teachings of Fisher et al. and Singer et al. that Ecosurf EH-9 inactivates (i.e. lyses) virus particles equivalently to Triton X-100, that Ecosurf EH-9 does not inhibit the activity of reverse transcriptase or DNA-dependent DNA polymerase at concentrations less than 16% (w/v). Furthermore, the ordinary artisan would have been motivated to replace Triton X-100 with Ecosurf EH-9 because of the known ecotoxic properties of Triton X-100 and increased costs associated with compliance with regulatory requirements for disposal of Triton X-100.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY MARK TURPIN whose telephone number is (703)756-5917. The examiner can normally be reached Monday-Friday 8:00 am - 5:00 pm.
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, Winston Shen can be reached at 5712723157. 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.
/Z.M.T./Examiner, Art Unit 1682
/WU CHENG W SHEN/Supervisory Patent Examiner, Art Unit 1682
