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 .
Applicant’s election without traverse of Group II claims 10-16 in the reply filed on 26 January 2026 is acknowledged. The election/restriction requirement is deemed proper and is therefore made FINAL. An Action on the merits of claims 10-16 is contained herein below.
Group I Claims 1-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention, there being no allowable generic or linking claim.
Priority
This application claims foreign priority to REPUBLIC OF KOREA 10-2022-0106759 filed 08/25/2022, under 35 U.S.C. 119(a)-(d). The certified copy of the priority document has been filed in the instant application.
Claim Objections
Claim 15 is objected to because of the following informalities: Claim 15 recites the notation DMAEA. Even though the specification, at paragraph 0010, teaches the expansion for the notation it should be expanded in the claim to make it clear what is intended. Appropriate correction is required.
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.
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.
Claim(s) 10-16 are rejected under 35 U.S.C. 103 as being unpatentable over Gap et al (KR20200092691 A; Machine English Translation, pages 1-31; cited in IDS filed 08/21/2023) in view of Rolph et al (Polymer Chemistry, 2017, 8, 5060-5070; cited in IDS filed 04/29/2025) and further in view of Ros et al (ACS Omega, 2020, 5, 9114-9122; cited in IDS filed 04/29/2025) and Wahlund et al (Biotechnology and Bioengineering, 2004, 87(5), 675-684).
The invention of Gap et al deals with polymer thin film for capturing nucleic acids in polymers. A polymer obtained by reacting monomer containing vinyl group, an acryl group or a methacrylic group and an amine group having a positive charge is used for the nucleic acid capture (Abstract; paras 0011, 0014-0016, 0052; part of the limitations of claim 10 regarding cationic polymer for capture of nucleic acid by electrostatic attraction). Various monomers can be used. One of them is dimethylaminoethylmetharylate (DMAEMA; para 0031). This is structurally close to DMAEA as in claim 15. The use of a linear polymer comprising a repeating unit polymerized from DMAEA as in claim 15 is rendered obvious. From the teaching of Gap, it is seen that a polyplex can be formed between a cationic polymer having a side chain and a nucleic acid.
Gap does not teach dissolving the cationic polymer with nucleic acid, precipitating the polyplex formed and hydrolyzing the polymer to release the nucleic acid from the polyplex as in claim 1, and does not teach the limitations of claims 11-14 and 16.
Rolph et al teaches that hydrolysis of polymers having a dimethylaminoethyl chain was significantly faster at 50oC (page 5065, left col; Fig. 5). From this teaching of Rolph one of ordinary skill in the art would have a reasonable expectation of success in hydrolyzing the cationic polymer to release the nucleic acid when the hydrolysis of the polyplex is performed at 30-50oC as in claim 11. Rolph also teaches that hydrolysis is more than 30% at 50oC for an hour (page 5065, Fig. 5a; limitation of claim 14).
According to Wahlund et al precipitation based on the formation of insoluble polyelectrolyte complexes is a powerful technique for capturing nucleic acids (Abstract; step 2 in claim 10).
Ros et al teaches that polymers with DMAEA and having a positive charge form a complex with nucleic acid and also hydrolyze at pH 7, and an increase in temperature to 37oC will also increase the rate of hydrolysis (page 9116, right col. First sub-heading; page 9117, right col. last sub-heading through page 9118, left col.). This teaching in view of Rolph tells one of ordinary skill in the art that a cationic polymer having a hydrolysable side chain like DMAEA can be dissolved and complexed with nucleic acid, precipitated, and the side chain containing the nucleic acid can then be hydrolyzed to release the nucleic acid from the polyplex as in claim 10. From the teaching of Ros above it can be seen that since an increase in temperature to 37oC will also increase the rate of hydrolysis the cationic polymer should be combined with the nucleic acid at a temperature of 10oC or more and less than 30oC as in claim 12. Ros teaches a hydrolysable cationic ester as a side chain (page 9115, Scheme 1; as in claim 16). This ester chain after hydrolysis will produce the moiety Me2N+HCH2CH2O- which has a negative charge (page 9115 Scheme 1; as in claim 13). Even though Ros teaches polymers having a number average molecular weight in the range of 23,000 g/mol to 26,000 g/mol (page 9117, Table 1), the artisan would have a reasonable expectation that a cationic polymer having a number average molecular weight of 1000g/mol to 3000g/mol can be made and used in the claimed method as in claim 16.
MPEP 2141 states, "The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusatory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.'" KSR, 550 U.S. at, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) " Obvious to try " choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) 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; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention."
According to the rationale discussed in KSR above, the rationale in (G) above is seen to be applicable here since based on the prior art teachings, cationic polymers are known to form polyplexes with nucleic acids which can be precipitated. Hydrolysis of the side chain of the cationic polymer complex with nucleic acid is also known in the art.
Thus, the claimed invention as a whole would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention over the combined teachings of the prior art. One of ordinary skill in the art would be motivated to use the claimed method (also obvious over the combined teachings of the prior art) since Wahlund teaches there is demand for highly purified nucleic acids. Complex formation and efficient removal of contaminants results in high recovery of pure nuclei acids. The complex formation as taught by Gap and Wahlund with a cationic polymer having a hydrolysable side chain and the hydrolysis of such a side chain as taught by Rolph and Ros will give pure nucleic acids and the method also requires fewer steps compared to lysis and chromatography which require more steps and use of large volumes of solvents (Wahlund-Introduction).
Conclusion
1. Elected claims 10-16 (Group II) are rejected.
2. Group I Claims 1-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention, there being no allowable generic or linking claim.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GANAPATHY KRISHNAN whose telephone number is (571)272-0654. The examiner can normally be reached M-F 8.30am-5pm.
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/GANAPATHY KRISHNAN/Primary Examiner, Art Unit 1693