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
The claim set and Applicant’s remarks filed August 12, 2026, have been entered.
Claims 2-5 and 10-13 are canceled.
Claims 15-20 continue to be withdrawn from further consideration as being drawn to a nonelected invention.
Claims 21-28 are new
Thus, claims 1, 6-9, 14, and 21-28 as amended are examined on the merits herein.
Withdrawn Objections and Rejections
With respect to the objections and/or rejections mailed in the non-final office action on May 14, 2026:
(I) The objection to claim 12 is withdrawn in view of Applicant canceling said claim as discussed above.
(II) The rejection of claims 1-2 and 7 under 35 U.S.C. 102(a)(1) is withdrawn in view of Applicant’s amendment to claim 1.
(III) The rejections of claims 1-14 under 35 U.S.C. 103 are withdrawn in view of Applicant canceling claims 2-5 and 10-13; and in view of Applicant’s amendment to claims 1 and 9.
Response to Arguments
The Examiner has reviewed and considered Applicant’s arguments filed August 12, 2026, in view of the claim amendment to claims 1 and 9.
However, upon further consideration of the prior art, Applicant’s arguments are not found persuasive as the Examiner has written new 102 and 103 rejections in view of the Korolenya reference which teaches the newly added limitation of 1M - 5M LiCl and about 25% to about 75% isopropanol as recited in both claims 1 and 9 which is discussed in greater detail below.
New Claim Rejections
The following are new ground rejections necessitated by Applicant's amendment, filed on August 12, 2026, where the limitations in pending claims 1, 6-9 and 14 as amended now have been changed and claims 21-28 have been newly added.
35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Korolenya et al. (Published 19 July 2022, Bulletin of Experimental Biology and Medicine, Vol. 173, Issue 3, pp. 384-389, PTO-892).
Korolenya studied the possibility and advantage of using LiCl as a precipitating agent in the protocol for RNA precipitation (e.g. isolating nucleic acids, required in claim 1, line 1; and RNA, required claim 7) from frozen segments of large vessels (e.g. the sample, required claim 1, line 1) where combined use of LiCl with isopropanol as precipitating agents (e.g. the precipitation buffer, required in claim 1, line 2), exemplifying the optimal ratio 2.5 M and 40% respectively, (e.g. the LiCl molarity and % isopropanol, required in claim 1, line 3) significantly eliminates negative effect of using this salt (inhibition of reverse transcription and low RNA yield), see pg. 384, abstract.
Korolenya teaches 40% isopropanol and 2.5 M LiCl (group 7) was used to precipitate RNA, see pg. 385, left column, first full paragraph; and wherein Table 1, said group 7 (2.5 M LiCl and 40% isopropanol) provided a % yield of RNA of 86.76%, see pg. 386, Table 1.
With respect to the limitations “contacting the sample with a precipitation buffer” and “thereby isolating the nucleic acid”, as recited in claim 1; the Examiner reasonably interprets these limitations as physical limitations within the method of Korolenya above which already teaches RNA precipitation from frozen vessel samples when using both LiCI and isopropanol as precipitating agents which demonstrated an 86.76% RNA yield.
Accordingly, in view of the teachings of Korolenya, Korolenya anticipates claims 1 and 7.
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.
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.
Claims 1, 6-9, 14, and 21-28 are rejected under 35 U.S.C. 103 as being unpatentable over Trendel et al. (Published 10 January 2019, Cell, Vol. 176, Issue 1, p391-403.E19, IDS filed 06/25/2024 and S1 Methods, PTO-892) in view of Korolenya et al. (Published 19 July 2022, Bulletin of Experimental Biology and Medicine, Vol. 173, Issue 3, pp. 384-389, PTO-892).
Regarding claims 1, 6-9, 14, and 21-28, Trendel teaches an experimental scheme of XRNAX depicted in Figure 1(A), see pg. 392, Figure 1(A). Trendel teaches XRNAX is for protein-crosslinked RNA extraction (e.g. isolating nucleic acids, see claim 1, line 1 and claim 9, line 1; and the nucleic acid, required in claims 7 and 9), see pg. 391, right column, paragraph 2.
Trendel teaches all experiments were performed on MCF7 cells (e.g. the sample, required in claim 1, line 1 and claim 9, line 1), see pg. e3, Mammalian Cell Culture and Stable Cell Lines, paragraph 2.
Trendel teaches that the MCF7 cells were UV-crosslinked, see pg. e3, UV-Crosslinking of Cells, paragraph 1; and pg. 392, Figure 1(A).
Trendel teaches organic phase separation for the extraction of protein-crosslinked RNA, see pg. 391, Results, lines 1-2.
Trendel teaches after UV-crosslinking the MCF7 cells, conventional TRIZOL extraction of said MCF7 cells was preformed where the TRIZOL interphase was collected (e.g. isolating an interphase portion after each round of extraction, thereby obtaining a sample fraction enriched in RNA-protein complexes (RNPs), see claim 9, line 4 – claim 9, pg. 3, lines 1-2), see pg. 392, left column, paragraph 1.
Trendel defines TRIZOL as acid guanidinium thiocyanate-phenol-chloroform extraction (e.g. comprises acidic guanidium thiocyanate and phenol, required in claim 8; and performing at least one round of acidic guanidium thiocyanate-chloroform (AGPC) biphasic extraction on the sample, see claim 9, lines 3-4), see pg. 391, Results, lines 3-4 and Figure 1(A).
Trendel teaches after the TRIZOL interphase is collected, said interphase is washed to remove free protein and RNA, and DNase-digested to eliminate DNA, which results in yielding an extract containing highly concentrated RNA and protein, see pg. 392, left column, paragraph 1 and Figure 1(A).
Trendel teaches the indicated procedure consisting of UV-crosslinking followed by TRIZOL extraction and subsequent processing steps of the interphase lead to purified protein-crosslinked RNA; wherein Trendel refers to said procedure as protein-crosslinked RNA eXtraction, or XRNAX, see pg. 393, left column, paragraph 2.
Trendel teaches within protein-crosslinked RNA extraction (XRNAX) after the interphase was transferred into a 2 mL tube, disintegration of the interphase was performed to obtain 1 mL of interphase eluates, see pg. e3, Protein-Crosslinked RNA Extraction (XRNAX), paragraph 2.
Trendel teaches NaCl was added to a final concentration of 300 mM to each of the 4 interphase eluates, along with 1 µL glycoBlue and 1 mL isopropanol before mixing (e.g. contacting, required in claim 1, line 1 and claim 9, pg. 3, lines 3-4), see pg. e3, Protein-Crosslinked RNA Extraction (XRNAX), paragraph 3.
Trendel explicitly teaches in Methods S1 on pg. 3 after disintegrating the interphase and transferring the supernatant, the four fractions were isopropanol precipitated by adding 60 µL NaCl 5 M, 1 µL glycoblue and 1 mL isopropanol, see Methods S1, pg. 3, last paragraph of the page.
The Examiner reiterates that Trendel teaches 1 mL interphase elutes as discussed above, and a precipitation buffer comprising NaCl, glycoblue, and isopropanol having a total volume of 1.061 mL of precipitation buffer.
Accordingly, since Trendel teaches the ratio of interphase elutes was 1 mL and the precipitation buffer is 1.061 mL, the Examiner notes the ratio of interphase elutes to the precipitation buffer is encompassed within the ratio range of 1:1 to 1:2 of sample to precipitation buffer respectively recited in claims 22-24 and 26-28.
Although, Trendel does not teach (a) a precipitation buffer, required in claim 1, line 3; claim 6; claim 9, pg. 3, line 3; claim 14, claim 21, claims 24-25, and claim 28; and (b) contacting the sample with precipitation buffer, see claim 1, lines 1-2 and/or occurs after performing the AGPC fraction, claim 9, pg. 3, line 3.
However, in the same field of endeavor of RNA isolation, Korolenya studied the possibility and advantage of using LiCl as a precipitating agent in the protocol for RNA precipitation from exemplified frozen segments of large vessels; where combined use of LiCl with isopropanol as precipitating agents (optimal ratio 2.5 M and 40% respectively) significantly eliminates negative effect of using this salt (inhibition of reverse transcription and low RNA yield), see pg. 384, abstract.
Korolenya teaches 40% isopropanol and 2.5 M LiCl (group 7) was used to precipitate RNA, see pg. 385, left column, first full paragraph; and wherein Table 1, said group 7 (2.5 M LiCl and 40% isopropanol) provided a % yield of RNA of 86.76%, see pg. 386, Table 1.
Korolenya also teaches combinations of LiCl and isopropanol tested where the LiCl was at concentrations 1.7 M, 2.5 M and 4.9 M and % isopropanol of 5%, 10%, 20%, 40% and 50% where in Table 1 the RNA yield was between 15.98 – 87.69%, see pg. 386, Table 1.
Accordingly, the Examiner notes Korolenya teaches a range of LiCl concentration between 1.7-4.9 M and isopropanol between 5-50% in combination for use in precipitating and isolating RNA as a results-effective variable as demonstrated in Table 1 of Korolenya as discussed above.
Consequently, it would have been prima facie obvious to one of ordinary skill in the art at the invention’s effective filing date to have (1) substituted the NaCl of Trendel for the LiCl of Korolenya; and (2) to have used the ranges of molarity of said LiCl and said % isopropanol as taught by Korolenya above as a starting point for isolating the RNAs of Trendel as within the scope of the artisan according to simple substitutions and additions of known elements in view of the teachings of Korolenya.
Therefore, one of ordinary skill in the art through routine experimentation and optimization as already demonstrated by the teachings of Korolenya above would have arrived at the claimed molarity of LiCl and % isopropanol as recited in the present claims in limitation (a); because Korolenya already teaches said combination of different molarities of LiCl and % isopropanol as a precipitation buffer is a results-effective variable for isolating and yielding RNA as demonstrated in Table 1 of Korolenya as discussed above.
One of ordinary skill in the art would have been motivated to make the substitutions and additions necessary to arrive at the claimed invention to precipitate the protein-crosslinked RNA of Trendel.
One of ordinary skill in the art would have had a reasonable expectation of success to have made said substitutions and additions as necessary as discussed above, because both Trendel and Korolenya are drawn to precipitating RNA from a sample with a precipitation buffer comprising a salt (either NaCl or LiCl) and isopropanol. See MPEP 2144.05, section II, A. “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”.
With respect to limitation (b), the sequence of purification steps within claim 9 wherein an AGPC biphasic extraction is performed which is followed by a precipitation step resulting in the isolation of the RNA-protein complexes (RNPs) as required within claim 9 is reasonably interpreted by the Examiner to be a physical limitation well within the scope of the artisan through routine experimentation and optimization in purifying the isolated protein-crosslinked RNAs via precipitation with the precipitation buffer as taught by the combination of Trendel and Korolenya above after said protein-crosslinked RNAs were extracted into the interphase via conventional TRIZOL extraction taught by Trendel above. See MPEP 2144.04, section IV, C. “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results”.
One of ordinary skill in the art would have had a reasonable expectation of success to have incorporated the purification sequence of claim 9 above into the method of Trendel as discussed above, as Trendel explicitly teaches the addition of the precipitation buffer is comprised within the protein-crosslinked RNA extraction (XRNAX) procedure above; and wherein Trendel explicitly teaches XRNAX is referred to as a procedure consisting of UV-crosslinking followed by TRIZOL extraction and subsequent processing steps of the interphase as discussed above.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the invention was filed to have incorporated limitations (a)-(b) into the method of Trendel as discussed above as within the scope of the artisan as combining prior art elements according to known methods to yield predictable results. One of ordinary skill in the art would have been motivated to purify the protein-crosslinked RNA from the MCF7 cells using the XRNAX procedure taught by Trendel above. One of ordinary skill in the art would have had a reasonable expectation of success to have incorporated limitations (a)-(b) into the method of Trendel above, because the Examiner noted as discussed above limitations (a)-(b) are limitations well within the scope of the artisan to either improve experimental efficiency of the method of Trendel with respect to limitation (a) as taught by Korolenya; or with respect to limitation (b) to have subsequently purified the protein-crosslinked RNA from the MCF7 crosslinked cells that were extracted via the TRIZOL procedure as taught by Trendel above.
Thus, the claimed invention would have been prima facie obvious over the teachings of the prior art.
Conclusion
No claims are allowed in this action.
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 JARET J CREWS whose telephone number is (571)270-0962. The examiner can normally be reached Monday-Friday: 9:00am-5:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached at (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JARET J CREWS/Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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