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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 20, 2026 has been entered.
This is in response to the Amendment dated January 20, 2026. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Response to Arguments
Election/Restrictions
This application contains claims 10 and 22-23 (products) drawn to an invention nonelected with traverse in the reply filed on April 17, 2025.
Claim Rejections - 35 USC § 103
I. Claim(s) 43, 47-49, 51, 58, 60-63 and 66 have been rejected under 35 U.S.C. 103 as
being unpatentable over Randriamahazaka et al. (“Electrografting and Controlled Surface Functionalization of Carbon Based Surfaces for Electroanalysis,” Electroanalysis (2016 Jan), Vol. 28, No. 1, pp. 13-26) in view of Maurer et al. (US Patent Application Publication No. 2006/0102471 A1), Friis et al. (“Hydrophilic Polymer Brush Layers on Stainless Steel Using Multilayered ATRP Initiator Layer,” ACS Applied Materials & Interfaces (2016 Nov 9), Vol. 8, No. 44, pp. 30616-30627) and Nielsen et al. (Wohl‐Ziegler Bromination of Electrografted Films for Optimizing Atom Transfer Radical Polymerization,” Electroanalysis (2016 Nov), Vol. 28, No. 11, pp. 2849-2854).
The rejection of claims 43, 47-49, 51, 58, 60-63 and 66 under 35 U.S.C. 103 as
being unpatentable over Randriamahazaka et al. in view of Maurer et al., Friis et al. and Nielsen et al. has been withdrawn in view of Applicant’s amendment.
II. Claim(s) 45 and 46 have been rejected under 35 U.S.C. 103 as being unpatentable over
Randriamahazaka et al. (“Electrografting and Controlled Surface Functionalization of Carbon Based Surfaces for Electroanalysis,” Electroanalysis (2016 Jan), Vol. 28, No. 1, pp. 13-26) in view
of Maurer et al. (US Patent Application Publication No. 2006/0102471 A1), Friis et al. (“Hydrophilic Polymer Brush Layers on Stainless Steel Using Multilayered ATRP Initiator Layer,” ACS Applied Materials & Interfaces (2016 Nov 9), Vol. 8, No. 44, pp. 30616-30627) and Nielsen et al. (Wohl‐Ziegler Bromination of Electrografted Films for Optimizing Atom Transfer Radical Polymerization,” Electroanalysis (2016 Nov), Vol. 28, No. 11, pp. 2849-2854) as applied to claims 43, 47-49, 51, 58, 60-63 and 66 above, and further in view of Cagnin et al. (“Overview of
Electrochemical DNA Biosensors: New Approaches to Detect the Expression of Life,” Sensors (Basel) [2009], Vol. 9, No. 4, pp. 3122-3148).
The rejection of claims 45 and 46 under 35 U.S.C. 103 as being unpatentable over Randriamahazaka et al. in view of Maurer et al., Friis et al. and Nielsen et al. as applied to claims 43, 47-49, 51, 58, 60-63 and 66 above, and further in view of Cagnin et al. has been withdrawn in view of Applicant’s amendment.
III. Claim(s) 52 has been rejected under 35 U.S.C. 103 as being unpatentable over Randriamahazaka et al. (“Electrografting and Controlled Surface Functionalization of Carbon Based Surfaces for Electroanalysis,” Electroanalysis (2016 Jan), Vol. 28, No. 1, pp. 13-26) in view
of Maurer et al. (US Patent Application Publication No. 2006/0102471 A1), Friis et al. (“Hydrophilic Polymer Brush Layers on Stainless Steel Using Multilayered ATRP Initiator Layer,” ACS Applied Materials & Interfaces (2016 Nov 9), Vol. 8, No. 44, pp. 30616-30627) and Nielsen et al. (Wohl‐Ziegler Bromination of Electrografted Films for Optimizing Atom Transfer Radical Polymerization,” Electroanalysis (2016 Nov), Vol. 28, No. 11, pp. 2849-2854) as applied to claims 43, 47-49, 51, 58, 60-63 and 66 above, and further in view of CN 108774588 (‘588).
The rejection of claim 52 under 35 U.S.C. 103 as being unpatentable over Randriamahazaka et al. in view of Maurer et al., Friis et al. and Nielsen et al. as applied to claims 43, 47-49, 51, 58, 60-63 and 66 above, and further in view of CN 108774588 (‘588) has been withdrawn in view of Applicant’s amendment.
IV. Claim(s) 64 has been rejected under 35 U.S.C. 103 as being unpatentable over Randriamahazaka et al. (“Electrografting and Controlled Surface Functionalization of Carbon Based Surfaces for Electroanalysis,” Electroanalysis (2016 Jan), Vol. 28, No. 1, pp. 13-26) in view of Maurer et al. (US Patent Application Publication No. 2006/0102471 A1), Friis et al. (“Hydrophilic Polymer Brush Layers on Stainless Steel Using Multilayered ATRP Initiator Layer,” ACS Applied Materials & Interfaces (2016 Nov 9), Vol. 8, No. 44, pp. 30616-30627) and Nielsen et al. (Wohl‐Ziegler Bromination of Electrografted Films for Optimizing Atom Transfer Radical Polymerization,” Electroanalysis (2016 Nov), Vol. 28, No. 11, pp. 2849-2854) as applied to claims 43, 47-49, 51, 58, 60-63 and 66 above, and further in view of Chen et al. (“Controlling Oligonucleotide Surface Density in Light-Directed DNA Array Fabrication,” Langmuir (2009 Jun 2), Vol. 25, No. 11, pp. 6570-6575).
The rejection of claim 64 under 35 U.S.C. 103 as being unpatentable over Randriamahazaka et al. in view of Maurer et al., Friis et al. and Nielsen et al. as applied to claims 43, 47-49, 51, 58, 60-63 and 66 above, and further in view of Chen et al. has been withdrawn in view of Applicant’s amendment.
V. Claim(s) 65 has been rejected under 35 U.S.C. 103 as being unpatentable over Randriamahazaka et al. (“Electrografting and Controlled Surface Functionalization of Carbon Based Surfaces for Electroanalysis,” Electroanalysis (2016 Jan), Vol. 28, No. 1, pp. 13-26) in view of Maurer et al. (US Patent Application Publication No. 2006/0102471 A1), Friis et al.
(“Hydrophilic Polymer Brush Layers on Stainless Steel Using Multilayered ATRP Initiator Layer,”
ACS Applied Materials & Interfaces (2016 Nov 9), Vol. 8, No. 44, pp. 30616-30627) and Nielsen et al. (Wohl‐Ziegler Bromination of Electrografted Films for Optimizing Atom Transfer Radical Polymerization,” Electroanalysis (2016 Nov), Vol. 28, No. 11, pp. 2849-2854) as applied to claims 43, 47-49, 51, 58, 60-63 and 66 above, and further in view of Dijon et al. (US Patent Application Publication No. 2013/0068625 A1).
The rejection of claim 65 under 35 U.S.C. 103 as being unpatentable over Randriamahazaka et al. in view of Maurer et al., Friis et al. and Nielsen et al. as applied to claims 43, 47-49, 51, 58, 60-63 and 66 above, and further in view of Dijon et al. has been withdrawn in view of Applicant’s amendment.
VI. Claim(s) 67 has been rejected under 35 U.S.C. 103 as being unpatentable over Randriamahazaka et al. (“Electrografting and Controlled Surface Functionalization of Carbon Based Surfaces for Electroanalysis,” Electroanalysis (2016 Jan), Vol. 28, No. 1, pp. 13-26) in view of Maurer et al. (US Patent Application Publication No. 2006/0102471 A1), Friis et al. (“Hydrophilic Polymer Brush Layers on Stainless Steel Using Multilayered ATRP Initiator Layer,” ACS Applied Materials & Interfaces (2016 Nov 9), Vol. 8, No. 44, pp. 30616-30627) and Nielsen et al. (Wohl‐Ziegler Bromination of Electrografted Films for Optimizing Atom Transfer Radical Polymerization,” Electroanalysis (2016 Nov), Vol. 28, No. 11, pp. 2849-2854) as applied to
claims 43, 47-49, 51, 58, 60-63 and 66 above, and further in view of WO 2022/204102 (‘102).
The rejection of claim 67 under 35 U.S.C. 103 as being unpatentable over Randriamahazaka et al. in view of Maurer et al., Friis et al. and Nielsen et al. as applied to
claims 43, 47-49, 51, 58, 60-63 and 66 above, and further in view of WO 2022/204102 (‘102) has been withdrawn in view of Applicant’s amendment.
Response to Amendment
Election/Restrictions
Claims 43, 46, 48-49, 58, 60-67 are allowable. The restriction requirement between inventions and species, as set forth in the Office action mailed on January 17, 2025, has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of January 17, 2025 is partially withdrawn. Claims 44 and 50, directed to the electrode surface species and the cleaning species, respectively, are no longer withdrawn from consideration because the claim(s) requires all the limitations of an allowable claim. However, claims 10 and 22-23, directed to solid support systems remain withdrawn from consideration because the patentability of a product does not depend on its method of production. See MPEP § 2113.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no
longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Rejections - 35 USC § 112
Claims 44 and 50 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 44
lines 1-2, recite “wherein the electrode surface comprises platinum, titanium, or a combination thereof”.
Claim 43, line 4, recite “wherein the electrode surface comprises a surface of a semiconductor chip”.
It is unclear from the claim language what the relationship is between the surface of a semiconductor chip and the platinum, titanium, or a combination thereof.
Claim 50
line 1, is dependent upon cancelled claim 47.
line 1, “the compound” lacks antecedent basis.
Antecedent basis must be laid for each recited element in a claim, typically, by
introducing each element with the indefinite article (“a” or “an”). See Slimfold Mfg. Co. v. Kincaid Properties, Inc., 626 F. Supp 493, 495 (N.D. Ga. 1985), aff'd, 810 F.2d 1113 (Fed. Cir. 1987) (citing P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d. Ed. 1984)). Subsequent mention of an element is to be modified by the definite article “the”, “said” or “the said,” thereby making the latter mention(s) of the element unequivocally referable to its earlier recitation.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Claims 43-44, 46, 48-50, 58 and 60-67 define over the prior art of record because the prior art does not contain any language that teaches or suggests a method of preparing an electrode surface for oligonucleotide synthesis, comprising the steps of: (a) cleaning, (a-1) electrochemically cleaning, (b) introducing, (c) electrografting, (d) stripping and (e) performing as presently claimed, esp., wherein the electrode surface comprises a surface of a semiconductor chip, wherein the cleaning in (a) is performed by using a plasma, (a-1) electrochemically cleaning the plasma-cleaned electrode surface prior to step (b), and wherein the electrochemically cleaning is performed in the presence of p-toluenesulfonic acid. Therefore, a person skilled in the art would not have been motivated to adopt the above conditions, and a prima facie case of obviousness cannot be established.
Maurer et al. and CN 108774588 do not teach (a-1) electrochemically cleaning the plasma-cleaned electrode surface prior to step (b), wherein the electrochemically cleaning is
performed in the presence of p-toluenesulfonic acid.
Claims 44 and 50 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to EDNA WONG whose telephone number is (571) 272-1349. The
examiner can normally be reached Monday-Friday, 7:00 AM- 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDNA WONG/Primary Examiner, Art Unit 1795
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