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 .
DETAILED ACTION
1. Applicant’s election without traverse of Group I (claims 1-7) in the reply filed on July 02, 2026 is acknowledged.
Status of the Application
2. Claims 1-7 are considered for examination. Claims 8-15 are withdrawn from further consideration as being drawn to nonelected group.
Priority
3. This Application filed on February 21, 2024 claims foreign priority benefit of KR10-2023-0159846 filed on November 17, 2023.
Objection to the Specification
4. The use of the term (SYBR Green I, see at least page 4, line 23-25), which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore, the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM, or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks. The trade mark is not followed by generic name.
Claim Rejections - 35 USC § 112
5. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
A. Claims 1-7 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 1 contains the trademark/trade name (SYBR Green I). Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the product and, accordingly, the identification/description is indefinite.
B. Claim 5 is 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 5 recites the limitation "the gold particles" in line 2. There is insufficient antecedent basis for this limitation in the claim because the claim 4 upon which the claim 5 depends lack support for gold particles. The limitation is unclear and indefinite because it is not clear if the limitation is referring to the gold in claim 4 or plasmonic nanoparticles.
Claim Rejections - 35 USC § 103
6. 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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al. (Sensors and Actuators: B. Chemical, Vo. 337, No. 129762, p. 1-8, (2021) in view of Li et al. (WO 2021/092795).
Jiang et al. teach a plasmon-based polymerase chain reaction of clam 1, for detecting a target gene comprising: i) mixing a target gene, a primer set and plasmonic nanoparticles and the performing a reverse transcription polymerase chain reaction (page 4, paragraphs under section 2.6 of Experimental section); and
ii) mixing 3,3’,5,5’-tetramethylbenzidine with the product obtained in step i), wherein SYBR Green I is added in Step i) or ii) (page 4, paragraphs under section 2.6 of Experimental section).
With reference to claims 2-3, Jiang et al. teach that the method further comprises iii) irradiating a blue LED and the product in step iii) has a blue color that determined the presence of a target (page 3, paragraph 2 under Introduction, page 4, paragraphs under section 2.6 of Experimental section).
With reference to claims 4-5, Jiang et al. teach that the plasmonic nanoparticles have a core-shell structure consisting of a core comprising iron oxide and a shell comprising gold attached to a surface of the core, wherein polyethylene glycol is bound to the gold particles of the plasmonic nanoparticles (page 4, paragraphs under section 2.3 of Experimental section).
With reference to claims 6-7, Jiang et al. teach that the target gene is a viral gene and the viral gene is derived from a virus selected from Zika virus, coronavirus (page 7, paragraphs under section 4).
Although Jiang et al teach polymerase chain reaction as discussed above, however, Jiang et al. did not specifically teach reverse transcription.
Li et al. teach a nucleic acid detection method using a rapid light-activated substrate color development (FLASH) detection platform for on-site instant nucleic acid detection, wherein the method comprises nucleic acid detection of amplified product using intercalating dyes and chromogenic substrates, wherein the amplification comprises reverse transcription polymerase chain reaction (RT-PCR) and PCR (page 22-25, example 4-5).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the detection reagent as taught by Jiang et al. with reverse transcription PCR as taught by Li et al. to develop an improved method for detecting RNA molecules. The ordinary person skilled in the art would have motivated to combine the method as taught by Jiang et al. with RT-PCR of Li et al. and have a reasonable expectation of success that the combination would result in an improved detection of nucleic acid molecules because Li et al. explicitly taught nucleic acid detection by reverse transcription PCR and the method provides high-efficiency photosensitizer triggered color reaction and direct visual colorimetric detection of nucleic acids (page 4 paragraphs 1-3 under subheading ‘Summary’) and such a modification of the method is considered obvious over the cited art.
Conclusion
No claims are allowable.
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Suryaprabha Chunduru
Primary Examiner
Art Unit 1681
/SURYAPRABHA CHUNDURU/Primary Examiner, Art Unit 1681
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