Status of the Claims
Claims 1-14, 16, and 18-22 are pending and examined herein.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Bian et al. and Salinas et al.
Claims 1-4, 6-9, 11-13, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bian et al. (Chem. Sci. (2014), 5: 2023; cited in IDS of 06/05/2024) in view of Salinas et al. (Macromolecules (2008), 41: 6019-6026).
Regarding claims 1-4 and 6, Bian discloses a method of forming a bioactive pattern on a substrate (p. 2026-7, Glycan arrays, 2nd ¶) comprising:
contacting a substrate that is coated with a prepolymer ink with a beam pen lithography array (p. 2026, Glycan arrays, 2nd ¶: “BPL tip arrays”);
irradiating the beam pen lithography array to transmit the radiation through the pens and out the exposed tip to controllably irradiate the prepolymer ink (Fig. 1a) to initiate selective photopolymerization of the prepolymer ink (p. 2025, 1st ¶) and form a pattern of thiol- functionalized cross-linked polymer printed indicia on the substrate (Fig. 1a); and
exposing the cross-linked polymer in a biomolecule containing solution under conditions sufficient to bind the biomolecule to the polymer (p. 2027, 1st ¶: “To assay binding against ConA, the substrates were immersed in a buffered solution of Cy3-labeled ConA”).
Bian also discloses that the BPL array comprises a plurality of pens extending from a common substrate, each pen having a base attached to the common substrate and an oppositely disposed tip (Fig. 1). Each pen is also coated with a blocking layer and has an aperture through which the tip is exposed (p. 2023, Introduction, 1st ¶: “By coating the tips with gold and etching nanoscopic apertures into the metal coatings…”).
Bian also discloses that the prepolymer ink contains a photoinitiator (DMPA) and an acrylate-modified functional binding molecule (glucose methylacrylate) (p. S10, Preparation of Carbohydrate arrays…), but does not disclose a separate acrylate. However, Bian teaches that the disclosed method is “compatible with a wide range of functional groups” (p. 2029, 1st ¶) and “promising for biochemical applications” (p. 2023, col. 2) and recognizes that similar methods have been developed to construct protein arrays (p. 2023, col. 2).
Salinas discloses a prepolymer solution comprising a photoinitiator (Irgacure 2959), poly(ethylene glycol) diacrylate (PEGDA), and a thiol-modified functional binding molecule (cysteine peptide) (p. 6025, Synthesis of Poly(ethylene glycol) and Peptide Motifs, 2nd ¶). These components comprise the same cross-linking groups as those of Bian, simply provided in a different format. Therefore, it would have been obvious to one of ordinary skill in the art by the effective filing date to substitute the prepolymer ink of Bian with the prepolymer solution of Salinas. Additionally, the results of this substitution would have been predictable, per the teachings of Bian.
Regarding claims 7-9, Bian further discloses that the radiation comprises UV light with a wavelength of 365 nm (p. S10, Preparation of carbohydrate arrays…).
Regarding claims 11 and 12, Bian further discloses that the substrate is washed with ethanol and water before immersing in the biomolecule solution (p. S10, Preparation of carbohydrate arrays…).
Regarding claim 13, Bian further discloses that the printing dwell time is 1s (p. S10, Preparation of carbohydrate arrays) or 3s (p. 2026, Glycan arrays, 2nd ¶).
Regarding claim 21, Bian further discloses that the substrate is glass (Scheme S3(a)).
Bian et al., Salinas et al., and Liu et al.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Bian et al. and Salinas et al. as applied to claims 1-4, 6-9, 11-13, and 21 above, and further in view of Liu et al. (Angew. Chem. Int. Ed. (2020), 59: 23748-23754).
Regarding claim 5, Bian and Salinas render the limitations of claim 1 obvious, as discussed previously. Additionally, Salinas discloses that the binding molecule is thiol-modified. However, neither disclose that the thiol-modified binding molecule is thiol-PEG with a functional handle (biotin, -OH, -COOH, -NH2, or azide) nor 6-mercaptohexanoic acid.
Liu discloses a prepolymer solution comprising thiol-PEG-biotin as a functional binding molecule (p. 23749, Selective Interfacial Accumulation, 1st ¶). Liu also teaches that biotin is a useful choice as a functional binding moiety because of the “strong biotin-streptavidin noncovalent interaction” (p. 23749, Selective Interfacial Accumulation, 1st ¶). Therefore, it would have been obvious to one of ordinary skill in the art by the effective filing date to substitute the thiol-modified binding molecule of Salinas with thiol-PEG-biotin, based on the motivation provided by Liu. Furthermore, there would have been a reasonable expectation of success as the method of Liu as the polymerization takes place via the same mechanism as that of Salinas.
Bian et al., Salinas et al., and Carbonell et al.
Claims 10 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bian et al. and Salinas et al. as applied to claims 1-4, 6-9, 11-13, and 21 above, and further in view of Carbonell et al. (Chem (2018) 4: 857-867).
Regarding claim 10, Bian and Salinas render obvious the limitations of claim 1 as discussed previously. However, neither disclose that the radiation is emitted from a digital micromirror device.
Carbonell discloses a method of beam pen lithography where the radiation is emitted from a digital micromirror device (p. 857, Introduction). Additionally, Carbonell teaches that integration of the DMD allows each tip to independently emit radiation, allowing for more complex patterns to be created (p. 85, Introduction; p. 865, 1st ¶). Therefore, it would have been obvious to one of ordinary skill in the art by the effective filing date to incorporate the DMD of Carbonell to the method of Bian and Salinas, based on the motivation to increase the complexity of the patterns attainable by the method. There would have been a reasonable expectation of success in doing so as the radiation of Carbonell is also carried out using beam pen lithography.
Regarding claims 19-20, Carbonell further discloses a method (Figure 1 description) of “multiplexed lithography” that comprises repeatedly contacting the substrate with the pen array and irradiating the pen array (p. 864, 1st ¶) in order to create multiple patterns comprising different prepolymer inks (Figure 5). Carbonell also teaches that creating multiplexed patterns is “critical for many applications, particularly in ‘omics’ research where they are used… to study biological recognition in parallel and under identical experimental conditions” (p. 858, 1st ¶). Therefore, it would have been obvious to one of ordinary skill in the art to adapt the multiplexed lithography method of Carbonell to the method of forming a bioactive pattern of Bian and Salinas, based on the motivation to create multiplexed patterns provided by Carbonell. Furthermore, there would have been a reasonable expectation of success in this combination as Carbonell similarly uses thio-ene photochemistry to immobilize the ink, as well as beam pen lithography for radiation as discussed above.
Bian et al., Salinas et al., and Mirkin et al.
Claims 14 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Bian et al. and Salinas et al. as applied to claims 1-4, 6-9, 11-13, and 21 above, and further in view of Mirkin et al. (PG Pub No: US 2011/305996) as evidenced by Liao et al. (Small (2010), 6(10): 1082-1086). Bian and Salinas render obvious the limitations of claim 1 as discussed previously. However, Bian does not disclose a specific printing force and does not disclose that the average effective diameter of the printed indicia is less than 300 nm.
Mirkin teaches that the printing force is a variable that can be modulated in order to achieve specific feature sizes (p. 7, ¶[0073], including: “any combination of contacting time and contacting force/pressure can provide a means for the formation of a feature size from about 30 nm to about 1 mm or greater”). Mirkin also discloses a range of z-piezo extension of 5-25 μm (p. 7, ¶[0073]), which would correspond to printing forces within the claimed range, as evidenced by Liao (Table 1). Therefore, tuning the printing force and effective diameter of the printed indicia to the ranges recited in the instant claims would constitute routine optimization and are therefore obvious over Mirkin. One of ordinary skill would also have a reasonable expectation of success in achieving the ranges of the instant claims as they overlap with the ranges disclosed by Mirkin as evidenced by Liao.
Bian et al., Salinas et al., and Xue et al.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Bian et al. in view of Salinas et al. as applied to claims 1-4, 6-9, 11-13, and 21 above, and further in view of Xue et al. (Nat. Comm. (2014), 5: 4348). Bian and Salinas render obvious claim 1 as discussed previously. However, neither disclose that the substrate is coated with gold prior to coating with the prepolymer ink.
Xue discloses that gold surfaces are regularly used in the patterning of thiol-containing solutions (p. 2, 1st ¶). Xue further teaches that this is due to the strong gold-sulfur interaction (p. 2, 1st ¶). As gold surfaces find wide use in the art and the prepolymer ink of Bian and Salinas utilizes thiol chemistry, it would have been obvious to one of ordinary skill in the art to coat the substrate with gold prior to coating with the prepolymer ink. As this is a widely used method, there would also be a reasonable expectation of success in doing so.
Bian et al. and Debroy et al.
Claims 1 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Bian et al. in view of Debroy et al. (Colloids and Surfaces B: Biointerfaces (2019), 180: 371-375). Bian discloses the previously discussed limitations of claim 1 and the relevant teachings, but does not disclose a prepolymer ink comprising both an acrylate and an acrylate-modified functional binding molecule.
Debroy discloses a prepolymer solution comprising an acrylate (PEGDA), an acrylate-modified functional binding molecule (Acryl-PEG-Biotin), and a photoinitiator (LAP) (p. 372, Hydrogel forming solution preparation, 1st ¶). These components comprise the same cross-linking groups as those of Bian, simply provided in a different format. Therefore, it would have been obvious to one of ordinary skill in the art by the effective filing date to substitute the prepolymer ink of Bian with the prepolymer solution of Debroy. Additionally, the results of this substitution would have been predictable, per the teachings of Bian.
Conclusion
No claims are allowed.
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/ALEXANDRA OLSON/Examiner, Art Unit 1684
/JEREMY C FLINDERS/Primary Examiner, Art Unit 1684
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