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 of Group I in the reply filed on July 14, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Status of the Application
2. Claims 1-31 are considered for examination. Claims 32-39 are canceled by the amendment filed on July 14, 2026.
Priority
3. This application filed on March 21, 2024 is a 371 of PCT/US2022/045349 filed on September 30, 2022 which claims priority benefit of US 63/250,333 filed on September 03, 2021.
Informalities
4. The following informalities are noted.
(i) Claim 10 recites NaCl; Claim 19 recites UV-Vis. Expand the terms at least for the first time that they appear in the claims is suggested.
(ii) Claim 12 recites ‘5-nt to 20-nt sequence’. Amending claim 12 to recite 5 nucleotides to 20 20 nucleotide sequence. Appropriate correction is required.
Specification
5. The disclosure is objected to because of the following informalities:
The use of the term (CY3, see at least page 5, line 16, page 24, line 5 to 32, page 26, line 24-33), 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 fluorophore is not followed by generic name. Appropriate correction is required.
Nucleotide and/or Amino Acid Sequence Disclosures
6. This application contains disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.821.
(i) Nucleotide and/or amino acid sequences appearing in the specification (para 0146-table 1 on page 30-31) are not identified by sequence identifiers in accordance with 37 CFR 1.821(d).
(ii) Nucleotide and/or amino acid sequences appearing in the drawings (Fig. 16B, fig. 22A) are not identified by sequence identifiers in accordance with 37 CFR 1.821(d). Sequence identifiers for nucleotide and/or amino acid sequences must appear either in the drawings or in the Brief Description of the Drawings. Appropriate correction is required.
Claim Objections
7. The following Claims objected to because of the following informalities:
Claim 8 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 7. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
8. 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.
Claim 25 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 25 recites the limitation "the said structure" in line 1. There is insufficient antecedent basis for this limitation in the claim. The limitation is unclear and indefinite because it is not clear if the limitation is referring to a solid support substrate or a nanoparticle/ molecule.
Claim Rejections - 35 USC § 102
9. 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.
A. Claims 1-31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park et al. (US 2003/0207296).
Park et al. teach a method for sorting nanoparticles or molecules of claim 1, comprising: providing a plurality of nanoparticles or molecules, each nanoparticle or molecule comprising a keyword sequence, each keyword sequence appended onto a DNA sequence attached to the nanoparticle or molecule (para 0079, 0435-0439, 0340, 0344-0345, 0456, 0079); allowing the keyword sequences on each nanoparticle or molecule to bind to a capture sequence coupled to a solid support substrate, each capture sequence being a reverse complement of the keyword sequence (para 0079, 0435-0439, 0344-0345, 0456, 0079); and releasing the nanoparticle or molecule on the solid support substrate based on a mobile phase strength of a mobile phase passing over the solid support substrate (para 0079, 0435-0439, 0344-0345, 0456).
With reference to claim 2, at least one of the plurality of nanoparticles or molecules comprises a plurality of keyword sequences coupled to the nanoparticle or molecule (para 0010-0011, 0021).
With reference to claims 3-5, 29-31, Park et al. teach that the plurality of keyword sequences are the same or different keyword sequences, or at least one of the plurality of nanoparticles or molecules comprises a plurality of different molecules, each molecule coupled to a different keyword sequence, wherein each nanoparticle or molecule comprising a plurality of different keyword sequences coupled to the nanoparticle or molecule, wherein each different keyword sequence is coupled to one or more DNA sequences and each different keyword sequence is coupled to a plurality of DNA sequences (para 0223, 0543, 0488, 0026,0435-0439, 0340, 0344-0345, 0456, 0079).
With reference to claims 6-8, Park et al. teach that the method further comprising determining at least one valency of the plurality of nanoparticles or molecules based on a retention time (para 0488-0489).
With reference to claims 9-11, Park et al. teach that the mobile phase strength (flow rate) is modulated in a linear or non-linear manner, decreasing mobile phase concentration of NaCl in a linear gradient (para 0380, 0488-0489, 0103, 0567-0578, 0502. 0524-0526, 0541).
With reference to claim 12, Park et al. teach the keyword sequence is a 5-nt to 20-nt sequence (para 0456).
With reference to claims 13-15, Park et al. teach that the solid support substrate is an exclusion chromatography resin. wherein the capture sequence is grafted to the exclusion chromatography resin via carbonyldiimidazole coupling chemistry and wherein the solid support substrate is a monolithic support (para 0435, 0226, 0450, 0496).
With reference to claim 16, Park et al. teach that the nanoparticle or molecule is a gold nanoparticle, a silver nanoparticle, an iron oxide nanoparticle, a semiconducting nanocrystal, a gold nanorod, a small molecule, a ligand, a protein, or an antibody (para 0103, 0122, 0340, 0456).
With reference to claim 17, Park et al. teach that the method further comprising injecting (introducing) a first buffer into a column, then injecting a sample containing the plurality of nanoparticles into the column (para 0379-0380, 0283).
With reference to claim 18, Park et al. teach that the method further comprising collecting fractions, pooling the fractions, and concentrating the pooled fractions (para 0380-0385, 0185).
With reference to claims 19-21, Park et al. teach that the method further comprising determining a UV-Vis spectra of a sample containing a released bound nanoparticle, determining an optical density of a sample containing a released bound nanoparticle and determining a fluorescence of a sample containing a released bound nanoparticle (para 0148, 0159, 0104-0105).
With reference to claim 22, Park et al. teach that the method further comprising determining a refractive index of a sample containing a released bound nanoparticle (para 0104-0105).
With reference to claims 23-24, Park et al. teach that the nanoparticles are at least partially coated with a coating material wherein the coating material is a polyethylene glycol (PEG) (para 0466-0468).
With reference to claim 25, Park et al. teach that the method further comprising washing the solid structure with a solvent after releasing the bound nanoparticles (para 0453, 0498-0499, 0185, 0191).
With reference to claims 26-27, Park et al. teach that at least one additional material is bound to the nanoparticle, wherein the at least one additional material is an additional nanoparticle or a biomolecule (para 0233, 0246, 0259).
With reference to claim 28, Park et al. teach that the method further comprising: collecting the plurality of nanoparticles or molecules after release; and drying and/or purifying the collected plurality of nanoparticles or molecules, where each nanoparticle or molecule is a colored, magnetic, or photoluminescent nanoparticle, a small molecule, or a biomolecule, and each nanoparticle or molecule bears a single bio-active molecule or reactive group (para 0379, 0405). For all the above, the claims are anticipated.
B. Claims 1-5, 12, 16-17 and 29-31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al. (US 2019/0024148).
Li et al. teach a method for sorting nanoparticles or molecules of claim 1, comprising: providing a plurality of nanoparticles or molecules, each nanoparticle or molecule comprising a keyword sequence, each keyword sequence appended onto a DNA sequence attached to the nanoparticle or molecule (para 0110-0112, 0073, 0006-0016: indicating gold nanoparticle comprising oligonucleotide sequence complementary to capture oligonucleotide or capture sequence on sensor probe); allowing the keyword sequences on each nanoparticle or molecule to bind to a capture sequence coupled to a solid support substrate, each capture sequence being a reverse complement of the keyword sequence (para 0110-0112, 0058-0060); and releasing the nanoparticle or molecule on the solid support substrate based on a mobile phase strength of a mobile phase passing over the solid support substrate (para 0110-0112, 0122).
With reference to claim 2, Li et al. teach that at least one of the plurality of nanoparticles or molecules comprises a plurality of keyword sequences coupled to the nanoparticle or molecule (para 0110-0112).
With reference to claims 3-5, 29-31, Li et al. teach that the plurality of keyword sequences are the same or different keyword sequences, or at least one of the plurality of nanoparticles or molecules comprises a plurality of different molecules, each molecule coupled to a different keyword sequence, wherein each nanoparticle or molecule comprising a plurality of different keyword sequences coupled to the nanoparticle or molecule, wherein each different keyword sequence is coupled to one or more DNA sequences or each different keyword sequence is coupled to a plurality of DNA sequences (para 0110).
With reference to claim 12, Li et al. teach that the keyword sequence is a 5-nt to 20-nt sequence (para 0049).
With reference to claim 16, Li et al. teach that the nanoparticle or molecule is a gold nanoparticle, a silver nanoparticle, an iron oxide nanoparticle, a semiconducting nanocrystal, a gold nanorod, a small molecule, a ligand, a protein, or an antibody (para 0110-0112).
With reference to claim 17, Li et al. teach that the method further comprising injecting a first buffer into a column, then injecting a sample containing the plurality of nanoparticles into the column (para 0112). For all the above the claims are anticipated.
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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