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 with traverse of the invention of Group I (claims 1-1 drawn to connectors and conjugates) in the reply filed on 066/26/2026 is acknowledged. The traversal is on the ground(s) that there would not be a burden in searching and examining all of the claims directed to the methods and devices that are additional to the elected Group. This is not found persuasive because the Examiner maintains that burden in searching and examining the different inventions is set forth on page 4 of the Requirement of 04/29/2026.
The requirement is still deemed proper and is therefore made FINAL.
Claims 16-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06/26/2026.
Claim Rejections - 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.
Claim(s) 1, 5, 6, 7, 8, 9, 10, 13 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Choi et al (2018).
Relevant to the structural limitations of the connector of claim 1, Choi et al teaches (e.g.: Figure 1; p.5, Methods - DNA origami fabrication) a nucleic acid back bone that is DNA origami (claim 5), and comprises a plurality of staple DNA strands (claim 6) that include affinity interactors (i.e.: (AAT)7 motifs) and labels with second affinity interactors (i.e.: 5′-ATTO647N-(ATT)7) (claim 9).
Relevant to claims 7, 8 and 10, Choi et al teaches a 127nm origami structure with labels placed at 11nm gaps (e.g.: Figure 1), including a plurality of labels that are attached via a plurality of interactor motifs on the origami backbone.
Relevant to claims 13 and 15, Choi et al exemplifies a connector-label conjugate comprising probe strands, which are affinity reagents, that are staple stands modified to include a sequence that is complementary to a target nucleic acid sequence (e.g.: Figure 1).
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.
Claim(s) 1, 2, 4, 5, 6, 7, 8, 9, 10, 13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al (2018) in view of Hansen et al (2008).
Choi et al teaches the connectors, conjugates and markers of claims 1, 5, 6, 7, 8, 9, 10, 13 and 15, as detailed earlier in this Office Action.
Choi et al does not teach affinity interactors that are biotin and streptavidin, as set forth in instantly rejected claims 2 and 4.
However, the association between biotinylated nucleic acids and streptavidin conjugated dyes was known in the prior art and is taught by Hansen et al (e.g.: Scheme 1; Figure 1).
It would have been prima facie obvious to someone with ordinary skill in the relevant art before the effective filing date of the rejected claims to use biotinylated nucleic acids and streptavidin conjugated dyes, as taught by Hansen et al in the connector structure of Choi et al. Where Choi et al teaches the use of complementary nucleic acid binding to attach a dye to a staple strand, the substitution of the biotin-streptavidin interaction of Hansen for the complementary nucleic acid binding of Choi et al would have been the simple substitution of one known element for another with predictable results.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al (2018) in view of Hansen et al (2008), as applied to claims 1, 2, 4, 5, 6, 7, 8, 9, 10, 13 and 15 above, and further in view of Howarth et al (2006).
Choi et al in view of Howarth et al renders obvious the connector of claim 2 comprising affinity interactors that are biotin and streptavidin.
Choi et al in view of Howarth et al does not explicitly teach or suggest a streptavidin that is a tetramer with one active biotin binding site. However t such modified streptavidin, and its use in biomolecule labeling, was known in the prior art and is taught by Howarth et al (e.g.: Figure 1; Figure 4).
It would have been prima facie obvious to someone with ordinary skill in the relevant art before the effective filing date of the rejected claims to use the monovalent streptavidin of Howarth in the methods rendered obvious by Choi et al in view of Howarth et al. The skilled artisan would have been motivated to use monovalent streptavidin based on the expressed teachings of Howarth et al that the reagent is general applicable to biomolecule labeling and nanotechnology, and that it offers advantages over labeling by other means (e.g.: p.271).
Claim(s) 1, 5, 6, 7, 8, 9, 10-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al (2018) in view of Lin et al (2012).
Choi et al teaches the connectors, conjugates and markers of claims 1, 5, 6, 7, 8, 9, 10, 13 and 15, as detailed earlier in this Office Action.
Choi et al does not teach two different dyes that are fluorophores with different fluorescent properties (claim 11) or linkers that are hybridized to a unique complementary part of the nucleic acid backbone (claim 12), or specify an antibody as an affinity reagent on the backbone of the connector (claim 14). However, these elements included in DNA origami-based markers were known in the prior art and are taught by Lin et a (e.g.: Figure 1; Figure 2; Figure 4; Figure 6; Tables S1-S3).
It would have been prima facie obvious to someone with ordinary skill in the relevant art before the effective filing date of the rejected claims to use multiple different dyes, and an affinity reagent comprising an antibody, each as taught by Lin et al in the connector-label conjugate and marker structures of Choi et al. Where Choi et al teaches origami structures comprising a plurality of dye molecules, the skilled artisan would have been motivated to provide a plurality of different dyes at different distinguishable regions of the origami structure based on the expressed teachings of Lin et al that such structures allow for in situ imaging of diverse biomolecular and cellular entities in their native environments. Where Choi et al teaches origami structures comprising an affinity reagent to target the structures to a specific target, the skilled artisan would have been motivated to provide a structure with an antibody as an affinity reagent based on the expressed teachings of Lin et al that antibodies can be used to target proteins of interest for detection and analysis.
Conclusion
No claim is allowed.
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Stephen Kapushoc
Primary Examiner
Art Unit 1683
/STEPHEN T KAPUSHOC/Primary Examiner, Art Unit 1683
Prosecution Insights