DETAILED ACTION
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 .
Status of the Claims
Claims 1-34 were originally filed April 11, 2024.
The preliminary amendment received April 11, 2024 canceled claims 3, 6, 13-15, 17, 18, 20, 21, 25, 28, 29, 31, and 34 and amended claims 4, 7, 8, 16, 19, 22, 26, 30, 32, and 33.
Claims 1, 2, 4, 5, 7-12, 16, 19, 22-24, 26, 27, 30, 32, and 33 are currently pending.
Claims 1, 2, 8-12, 26, 27, and 33 are currently under consideration.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1, 2, 8-12, 16, 26, 27, and 33) in the reply filed on September 25, 2026 is acknowledged.
Claims 4, 5, 7, 19, 22-24, 30, and 32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected products and methods, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on September 25, 2026.
Applicant’s election without traverse of Sepioteuthis lessoniana reflectin B1 (SEQ ID NO: 1) with a structural coloration activity, dibenzocyclooctyne (DBCO) conjugated to SEQ ID NO: 1 nanoparticles covalently immobilized on an azide-functionalized substrate in the reply filed on September 25, 2026 is acknowledged.
Please note: an azide functionalized substrate is not part of the present claims and, therefore, is not required for any rejection of record.
Claim 16 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on September 25, 2026.
Priority
The present application is a 371 (National Stage) of PCT/SG2022/050732 filed October 13, 2022 which claims foreign priority to Singapore 1020211370U filed October 13, 2021.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on September 26, 2024 and August 7, 2025 are being considered by the examiner.
Nucleotide and/or Amino Acid Sequence Disclosures
Summary of Requirements for Patent Applications Filed On Or After July 1, 2022, That Have Sequence Disclosures
37 CFR 1.831(a) requires that patent applications which contain disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.831(b) must contain a “Sequence Listing XML”, as a separate part of the disclosure, which presents the nucleotide and/or amino acid sequences and associated information using the symbols and format in accordance with the requirements of 37 CFR 1.831-1.835. This “Sequence Listing XML” part of the disclosure may be submitted:
1. In accordance with 37 CFR 1.831(a) using the symbols and format requirements of 37 CFR 1.832 through 1.834 via the USPTO patent electronic filing system (see Section I.1 of the Legal Framework for Patent Electronic System (https://www.uspto.gov/PatentLegalFramework), hereinafter “Legal Framework”) in XML format, together with an incorporation by reference statement of the material in the XML file in a separate paragraph of the specification (an incorporation by reference paragraph) as required by 37 CFR 1.835(a)(2) or 1.835(b)(2) identifying:
a. the name of the XML file
b. the date of creation; and
c. the size of the XML file in bytes; or
2. In accordance with 37 CFR 1.831(a) using the symbols and format requirements of 37 CFR 1.832 through 1.834 on read-only optical disc(s) as permitted by 37 CFR 1.52(e)(1)(ii), labeled according to 37 CFR 1.52(e)(5), with an incorporation by reference statement of the material in the XML format according to 37 CFR 1.52(e)(8) and 37 CFR 1.835(a)(2) or 1.835(b)(2) in a separate paragraph of the specification identifying:
a. the name of the XML file;
b. the date of creation; and
c. the size of the XML file in bytes.
SPECIFIC DEFICIENCIES AND THE REQUIRED RESPONSE TO THIS NOTICE ARE AS FOLLOWS:
Specific deficiency - Sequences appearing in the specification are not identified by sequence identifiers (i.e., “SEQ ID NO:X” or the like) in accordance with 37 CFR 1.831(c).
See paragraph 113.
Required response – Applicant must provide:
A substitute specification in compliance with 37 CFR 1.52, 1.121(b)(3), and 1.125 inserting the required sequence identifiers, consisting of:
• A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
• A copy of the amended specification without markings (clean version); and
• A statement that the substitute specification contains no new matter.
Specification
The disclosure is objected to because of the following informalities: PCT/SG2022/050732 filed October 13, 2022 should be added to the first line of the specification.
Appropriate correction is required.
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01. See paragraphs 154, 256, and 289.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 2 is objected to because of the following informalities: “%” should be added after each number. Appropriate correction is required.
Sequence Interpretation
The Office interprets claims comprising SEQ ID NOs: in the following manner: “comprising a sequence of SEQ ID NO: 1” requires only a 2mer of SEQ ID NO: 1, “comprising the sequence of SEQ ID NO: 1” requires the full-length sequence with 100% identity to SEQ ID NO: 1 with any N-/C-terminal additions or any 5’/3’ additions, “consisting of SEQ ID NO: 1” requires the full-length sequence with 100% identity to SEQ ID NO: 1 and the same length as SEQ ID NO: 1, and “selected from the group consisting of SEQ ID NOs: 1, 2, and 3” requires the full-length sequence with 100% identity to SEQ ID NOs: 1, 2, or 3 and the same length as SEQ ID NOs: 1, 2, or 3. Any claim requiring a specific percent identity, necessarily requires at least the recited percent identity.
Claim Rejections - 35 USC § 112
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.
Claims 1, 8-12, 26, 27, and 33 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. One of skill in the art would not be able the determine the scope of the present reflectin polypeptide. For example, it is unclear what the metes and bounds of “as set forth in” are particularly in relationship to the sequence identity and the sequence homology in the present claim.
Claims 1, 2, 8-12, 26, 27, and 33 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. One of skill in the art would not be able the determine the scope of the present reflectin polypeptide. For example, it is unclear which amino acid residues are required for the function of “substantially retains the activity of reflectin B1 (SEQ ID NO: 1)”. Furthermore, it is unclear what the metes and bounds of “substantially” are.
Claims 1, 8-12, 26, 27, and 33 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “at least 80% sequence homology”, and the claim also recites “at least 70% sequence identity” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 1 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 1 recites the limitation "said polypeptide" in line 3. There is insufficient antecedent basis for this limitation in the claim. The following is suggested “said reflectin polypeptide”.
Claim 2 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation “at least 75%...sequence identity”, and the claim also recites at least 80, at least 85, at least 90, etc. which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 2 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. One of skill in the art would not be able the determine the scope of the present reflectin polypeptide. For example, it is unclear what the metes and bounds of “as set forth in” are particularly in relationship to the sequence identity and the sequence homology in the present claim.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 2, 8-11, 26, and 33 are rejected under 35 U.S.C. 101 because the claimed invention is directed to naturally occurring Sepioteuthis lessoniana reflectin B1 (SEQ ID NO: 1) and other reflectins with at least 70% identity or at least 80% homology to SEQ ID NO: 1 without significantly more. The claims recite a reflectin polypeptide with at least 70% identity or at least 80% homology to SEQ ID NO: 1. This judicial exception is not integrated into a practical application because the present claims are drawn to a product. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims are unclear as to how the reflectin is associated with the nanoparticle and/or the substrate. In addition, it is well known in the prior art that reflectin can bind to reflectin (i.e. ligand) and form nanoparticles. See Kramer et al., 2007, The self-organizing properties of squid reflectin protein, Nature, 6: 533-538; Xu et al., 2021, Long-Range Proton Transport in Films from a Reflectin-Derived Polypeptide, ACS Appl Mater Interfaces, 13: 20938-20946; and Naughton et al., 2016, Self-Assembly of the Cephalopod Protein Reflectin, Adv Mater, 28: 8405-8412.
RESULT 1
D3UA45_DORPE
ID D3UA45_DORPE Unreviewed; 260 AA.
AC D3UA45;
DT 20-APR-2010, integrated into UniProtKB/TrEMBL.
DT 20-APR-2010, sequence version 1.
DT 05-FEB-2025, entry version 15.
DE SubName: Full=Reflectin-like protein B1 {ECO:0000313|EMBL:ACZ57766.1};
OS Doryteuthis pealeii (Longfin inshore squid) (Loligo pealeii).
OC Eukaryota; Metazoa; Spiralia; Lophotrochozoa; Mollusca; Cephalopoda;
OC Coleoidea; Decapodiformes; Myopsida; Loliginidae; Doryteuthis.
OX NCBI_TaxID=1051067 {ECO:0000313|EMBL:ACZ57766.1};
RN [1] {ECO:0000313|EMBL:ACZ57766.1}
RP NUCLEOTIDE SEQUENCE.
RX PubMed=19776150; DOI=10.1098/rsif.2009.0299;
RA Izumi M., Sweeney A.M., Demartini D., Weaver J.C., Powers M.L., Tao A.,
RA Silvas T.V., Kramer R.M., Crookes-Goodson W.J., Mathger L.M., Naik R.R.,
RA Hanlon R.T., Morse D.E.;
RT "Changes in reflectin protein phosphorylation are associated with dynamic
RT iridescence in squid.";
RL J. R. Soc. Interface 7:549-560(2010).
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DR EMBL; FJ824806; ACZ57766.1; -; mRNA.
DR AlphaFoldDB; D3UA45; -.
PE 2: Evidence at transcript level;
FT REGION 188..260
FT /note="Disordered"
FT /evidence="ECO:0000256|SAM:MobiDB-lite"
FT COMPBIAS 188..199
FT /note="Basic and acidic residues"
FT /evidence="ECO:0000256|SAM:MobiDB-lite"
FT COMPBIAS 209..219
FT /note="Basic and acidic residues"
FT /evidence="ECO:0000256|SAM:MobiDB-lite"
SQ SEQUENCE 260 AA; 30485 MW; B1A65CDEF14E0B56 CRC64;
Query Match 88.8%; Score 1318.5; Length 260;
Best Local Similarity 90.2%;
Matches 240; Conservative 11; Mismatches 8; Indels 7; Gaps 3;
Qy 1 MSSFMDPMHYDGMGMSHSKSGDFSHNCMRSFHKSQRDVMRRDIMGKSNKNRRFGNLMEPM 60
|||||||||||||||||||:|||||||||||||||||||||||||||:||||||||||||
Db 1 MSSFMDPMHYDGMGMSHSKTGDFSHNCMRSFHKSQRDVMRRDIMGKSSKNRRFGNLMEPM 60
Qy 61 SRMTMDFHGRLIDSQGRIVDPGHYFAMDDHYMENERFLYPHDMIRNRHGMYGFMQGDNVY 120
||||||||||||||||||||||||||||||||||:||||||||:||||||||||||| |
Db 61 SRMTMDFHGRLIDSQGRIVDPGHYFAMDDHYMENDRFLYPHDMLRNRHGMYGFMQGD--Y 118
Qy 121 GNNMHRGMFADGMYRDMHHSGMHPSGYMHGGSMQNRPMMYMQGRYPDDSYFMNYHPSMSD 180
||||||||||||||||||||||:|||||||||||||||||||||| ||||||||| |
Db 119 GNNMHRGMFADGMYRDMHHSGMNPSGYMHGGSMQNRPMMYMQGRYLDDSYFMNYH----D 174
Qy 181 PPVIMHSHYNDHEGR-HGMYGRPSESYGSHGRHGDAHSMPRRVSDTHSPQRRPSESHIIQ 239
||||:|||||| ||| |||| | |:||||| ||||:|||||| |::||||||||| ||||
Db 175 PPVIVHSHYNDQEGRHHGMYDRHSDSYGSHRRHGDSHSMPRRPSESHSPQRRPSEGHIIQ 234
Qy 240 VRPEGGSSRKTSRAKLFPDDKNTDSA 265
||||||||||||||:|||||| ||||
Db 235 VRPEGGSSRKTSRAQLFPDDKLTDSA 260
RESULT 2
A0A088MEC8_DOROP
ID A0A088MEC8_DOROP Unreviewed; 260 AA.
AC A0A088MEC8;
DT 26-NOV-2014, integrated into UniProtKB/TrEMBL.
DT 26-NOV-2014, sequence version 1.
DT 05-FEB-2025, entry version 10.
DE SubName: Full=Reflectin-like protein B1 {ECO:0000313|EMBL:AIN36556.1};
OS Doryteuthis opalescens (California market squid) (Loligo opalescens).
OC Eukaryota; Metazoa; Spiralia; Lophotrochozoa; Mollusca; Cephalopoda;
OC Coleoidea; Decapodiformes; Myopsida; Loliginidae; Doryteuthis.
OX NCBI_TaxID=1051066 {ECO:0000313|EMBL:AIN36556.1};
RN [1] {ECO:0000313|EMBL:AIN36556.1}
RP NUCLEOTIDE SEQUENCE.
RA DeMartini D.G., Morse D.E.;
RL Submitted (SEP-2013) to the EMBL/GenBank/DDBJ databases.
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CC Distributed under the Creative Commons Attribution (CC BY 4.0) License
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DR EMBL; KF661515; AIN36556.1; -; mRNA.
DR AlphaFoldDB; A0A088MEC8; -.
PE 2: Evidence at transcript level;
FT REGION 188..260
FT /note="Disordered"
FT /evidence="ECO:0000256|SAM:MobiDB-lite"
FT COMPBIAS 188..199
FT /note="Basic and acidic residues"
FT /evidence="ECO:0000256|SAM:MobiDB-lite"
FT COMPBIAS 209..219
FT /note="Basic and acidic residues"
FT /evidence="ECO:0000256|SAM:MobiDB-lite"
SQ SEQUENCE 260 AA; 30450 MW; 1ACE7F2E536B207A CRC64;
Query Match 88.1%; Score 1308.5; Length 260;
Best Local Similarity 89.8%;
Matches 239; Conservative 10; Mismatches 10; Indels 7; Gaps 3;
Qy 1 MSSFMDPMHYDGMGMSHSKSGDFSHNCMRSFHKSQRDVMRRDIMGKSNKNRRFGNLMEPM 60
||||||||||||||||||||||||||||||||||||| |||||||||:||||||||||||
Db 1 MSSFMDPMHYDGMGMSHSKSGDFSHNCMRSFHKSQRDGMRRDIMGKSSKNRRFGNLMEPM 60
Qy 61 SRMTMDFHGRLIDSQGRIVDPGHYFAMDDHYMENERFLYPHDMIRNRHGMYGFMQGDNVY 120
||||||||||||||||||||||||||||||||||:||||||||:||||||||||||| |
Db 61 SRMTMDFHGRLIDSQGRIVDPGHYFAMDDHYMENDRFLYPHDMLRNRHGMYGFMQGD--Y 118
Qy 121 GNNMHRGMFADGMYRDMHHSGMHPSGYMHGGSMQNRPMMYMQGRYPDDSYFMNYHPSMSD 180
||||||||||||||||||||||:|| ||||||||||||||||||| ||||||||| |
Db 119 GNNMHRGMFADGMYRDMHHSGMNPSSYMHGGSMQNRPMMYMQGRYLDDSYFMNYH----D 174
Qy 181 PPVIMHSHYNDHEGRH-GMYGRPSESYGSHGRHGDAHSMPRRVSDTHSPQRRPSESHIIQ 239
||||:|||||| |||| ||| | |:||||| ||||:|||||| |::||||||||| ||||
Db 175 PPVIVHSHYNDQEGRHQGMYDRHSDSYGSHRRHGDSHSMPRRPSESHSPQRRPSEGHIIQ 234
Qy 240 VRPEGGSSRKTSRAKLFPDDKNTDSA 265
||||||||||||||:|||||| ||||
Db 235 VRPEGGSSRKTSRAQLFPDDKLTDSA 260
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.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Crookes et al., Reflectins: The Unusual Proteins of Squid Reflective Tissues, Science, 303(9): 235-238.
For present claims 1 and 2, Crookes et al. teach reflectins with homology and sequence identity to present SEQ ID NO: 1 (please refer to the entire reference particularly Figure 3).
In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel."
Therefore, the teachings of Crookes et al. anticipate the present claims.
Claims 1, 2, 8-11, 26, 27, and 33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xu et al., May 12, 2021, Long-Range Proton Transport in Films from a Reflectin-Derived Polypeptide, ACS Appl Mater Interfaces, 13: 20938-20946.
For present claims 1, 2, 8-11, 26, 27, and 33, Xu et al. teach reflectins and that reflectins spontaneously self-assemble into nanoparticles which can then be immobilized onto a substrate (please refer to the entire reference particularly the abstract; Introduction; Figures 1C, 1D, 2A, 6).
In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel."
Therefore, the teachings of Xu et al. anticipate the present claims.
Claims 1, 2, 8-11, 26, 27, and 33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Naughton et al., 2016, Self-Assembly of the Cephalopod Protein Reflectin, Adv Mater, 28: 8405-8412.
For present claims 1, 2, 8-11, 26, 27, and 33, Naughton et al. teach reflectins and that reflectins spontaneously self-assemble into nanoparticles which can then be immobilized onto a substrate and/or spontaneously assemble into a film (i.e. substrate) (please refer to the entire reference particularly pages 8405-8408; Figures 3 and 6).
In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel."
Therefore, the teachings of Naughton et al. anticipate the present claims.
Claims 1, 2, 8-11, 26, 27, and 33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gorodetsky et al. WO 2021/242422 effective filing date of April 10, 2020.
For present claims 1, 2, 8-11, 26, 27, and 33, Gorodetsky et al. teach reflectin including reflectin B1, nanoparticles, and substrates (please refer to the entire specification particularly the abstract; paragraphs 3, 7-14, 20-22, 24, 25, 27, 30, 33, 36, 37, 40, 41, 44, 45, 92, 93, 95-99, 101-103, 105-107, 110, 111, 113, 114, 121, 122, 124, 126, 127, 129-149, 152). Gorodetsky et al. also teach SEQ ID NO: 7 which has 88.8% identity with present SEQ ID NO: 1.
In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel."
Therefore, the teachings of Gorodetsky et al. anticipate the present claims.
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.
Claims 1, 2, 8-12, 26, 27, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Crookes et al., Reflectins: The Unusual Proteins of Squid Reflective Tissues, Science, 303(9): 235-238; Xu et al., May 12, 2021, Long-Range Proton Transport in Films from a Reflectin-Derived Polypeptide, ACS Appl Mater Interfaces, 13: 20938-20946; and Diwu et al. U.S. Patent Application Publication 2020/0263084 published August 20, 2020.
For present claims 1, 2, 8-12, 26, 27, and 33, Crookes et al. teach reflectins with homology and sequence identity to present SEQ ID NO: 1 (please refer to the entire reference particularly Figure 3).
In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel."
For present claims 1, 2, 8-12, 26, 27, and 33, Xu et al. teach reflectins and that reflectins spontaneously self-assemble into nanoparticles which can then be immobilized onto a substrate (please refer to the entire reference particularly the abstract; Introduction; Figures 1C, 1D, 2A, 6).
For present claims 1, 2, 8-12, 26, 27, and 33, Diwu et al. teach BS-FG conjugates wherein BD is a peptide or protein and FG is DBCO which can be immobilized onto microparticles and surfaces (please refer to the entire specification particularly paragraphs 21, 54, 57, 73-75, 80-82, 87, 88, 93, 94, 99, 100, 105, 106, 111-114, 126, 139, 156).
All the claimed elements were known in the prior art (reflectin nanoparticles, reflectin nanoparticles on a substrate, DBCO conjugated to polypeptides) and one skilled in the art could have combined the elements as claimed by known methods with no change in the respective functions (DBCO utilized as a linker) and the combination would have yielded predictable results (formation of reflectin nanoparticles with DBCO; addition of reflectin-DBCO nanoparticles onto a substrate) to one of ordinary skill in the art at the time of the invention. The claims would have been obvious because the substitution of one known element (reflectin nanoparticles on a substrate) for another (reflecitn-DBCO nanoparticles on a substrate) would have yielded predictable results (DBCO utilized as a linker) to one of ordinary skill in the art at the time of the invention. The claims would have been obvious because a particular known technique (utilizing DBCO as a linker for polypeptides) was recognized as part of the ordinary capabilities of one skilled in the art. The claims would have been obvious because a person of ordinary skill has good reason to pursue the known options within their technical grasp. If this leads to the anticipated success, it is likely the product no of innovation but of ordinary skill and common sense. See KSR International Co v. Teleflex Inc., 82 USPQ2d 1385 (U.S. 2007).
Claims 1, 2, 8-12, 26, 27, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al., May 12, 2021, Long-Range Proton Transport in Films from a Reflectin-Derived Polypeptide, ACS Appl Mater Interfaces, 13: 20938-20946 and Diwu et al. U.S. Patent Application Publication 2020/0263084 published August 20, 2020.
For present claims 1, 2, 8-12, 26, 27, and 33, Xu et al. teach reflectins and that reflectins spontaneously self-assemble into nanoparticles which can then be immobilized onto a substrate (please refer to the entire reference particularly the abstract; Introduction; Figures 1C, 1D, 2A, 6).
In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel."
For present claims 1, 2, 8-12, 26, 27, and 33, Diwu et al. teach BS-FG conjugates wherein BD is a peptide or protein and FG is DBCO which can be immobilized onto microparticles and surfaces (please refer to the entire specification particularly paragraphs 21, 54, 57, 73-75, 80-82, 87, 88, 93, 94, 99, 100, 105, 106, 111-114, 126, 139, 156).
All the claimed elements were known in the prior art (reflectin nanoparticles, reflectin nanoparticles on a substrate, DBCO conjugated to polypeptides) and one skilled in the art could have combined the elements as claimed by known methods with no change in the respective functions (DBCO utilized as a linker) and the combination would have yielded predictable results (formation of reflectin nanoparticles with DBCO; addition of reflectin-DBCO nanoparticles onto a substrate) to one of ordinary skill in the art at the time of the invention. The claims would have been obvious because the substitution of one known element (reflectin nanoparticles on a substrate) for another (reflecitn-DBCO nanoparticles on a substrate) would have yielded predictable results (DBCO utilized as a linker) to one of ordinary skill in the art at the time of the invention. The claims would have been obvious because a particular known technique (utilizing DBCO as a linker for polypeptides) was recognized as part of the ordinary capabilities of one skilled in the art. The claims would have been obvious because a person of ordinary skill has good reason to pursue the known options within their technical grasp. If this leads to the anticipated success, it is likely the product no of innovation but of ordinary skill and common sense. See KSR International Co v. Teleflex Inc., 82 USPQ2d 1385 (U.S. 2007).
Claims 1, 2, 8-12, 26, 27, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Gorodetsky et al. WO 2021/242422 effective filing date of April 10, 2020 and Diwu et al. U.S. Patent Application Publication 2020/0263084 published August 20, 2020.
For present claims 1, 2, 8-12, 26, 27, and 33, Gorodetsky et al. teach reflectin including reflectin B1, nanoparticles, and substrates (please refer to the entire specification particularly the abstract; paragraphs 3, 7-14, 20-22, 24, 25, 27, 30, 33, 36, 37, 40, 41, 44, 45, 92, 93, 95-99, 101-103, 105-107, 110, 111, 113, 114, 121, 122, 124, 126, 127, 129-149, 152). Gorodetsky et al. also teach SEQ ID NO: 7 which has 88.8% identity with present SEQ ID NO: 1.
In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel."
For present claims 1, 2, 8-12, 26, 27, and 33, Diwu et al. teach BS-FG conjugates wherein BD is a peptide or protein and FG is DBCO which can be immobilized onto microparticles and surfaces (please refer to the entire specification particularly paragraphs 21, 54, 57, 73-75, 80-82, 87, 88, 93, 94, 99, 100, 105, 106, 111-114, 126, 139, 156).
All the claimed elements were known in the prior art (reflectin nanoparticles, reflectin nanoparticles on a substrate, DBCO conjugated to polypeptides) and one skilled in the art could have combined the elements as claimed by known methods with no change in the respective functions (DBCO utilized as a linker) and the combination would have yielded predictable results (formation of reflectin nanoparticles with DBCO; addition of reflectin-DBCO nanoparticles onto a substrate) to one of ordinary skill in the art at the time of the invention. The claims would have been obvious because the substitution of one known element (reflectin nanoparticles on a substrate) for another (reflecitn-DBCO nanoparticles on a substrate) would have yielded predictable results (DBCO utilized as a linker) to one of ordinary skill in the art at the time of the invention. The claims would have been obvious because a particular known technique (utilizing DBCO as a linker for polypeptides) was recognized as part of the ordinary capabilities of one skilled in the art. The claims would have been obvious because a person of ordinary skill has good reason to pursue the known options within their technical grasp. If this leads to the anticipated success, it is likely the product no of innovation but of ordinary skill and common sense. See KSR International Co v. Teleflex Inc., 82 USPQ2d 1385 (U.S. 2007).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wolde-Michael et al., 2021, Design and fabrication of recombinant reflectin-based multilayer reflectors: bio-design engineering and photoisomerism induced wavelength modulation, Scientific Reports, 11: 14580 (11 pages).
Florinas et al., 2016, A Nanoparticle Platform To Evaluate Bioconjugation and Receptor-Mediated Cell Uptake Using Cross-Linked Polyion Complex micelles Bearing Antibody Fragments, Biomacromolecules, 17: 1818-1833.
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/AMBER D STEELE/Primary Examiner, Art Unit 1658
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