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 .
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 1-3, 5-18 and 20-22 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.
The claims present one coverage in RE 50,029 and another in the present reissue application.
Pursuant to 37 CFR 1.177(b) all of the claims of the patent to be reissued must be presented in each reissue application in some form, i.e., as amended, as unamended or as canceled. Further, any added claims must be numbered beginning with the next highest number following the last patent claim. It is noted that the same claim of the patent cannot be presented for examination in more than one of the reissue applications, as a pending claim, in either its original or amended versions. If a patent claim is presented in more than one reissue application of a reissue application "family," as a pending claim, then that patent claim must be presented as a canceled claim in all the other reissue applications of that family. Once a claim in the patent has been reissued, it does not exist in the original patent; thus, it cannot be reissued from the original patent in another reissue application.
In this case, patent claims 1-3, 5-18 and 20-22 should be presented as canceled claims in the instant reissue application (i.e. claims 1-24; note that claims 4, 19, 23 and 24 are already cancelled). The amended subject matter recited in claims 1-3, 5-18 and 20-22 should be presented as new claims starting with claim number 25. It is noted that claims 1-24 in RE 50,029 remain in force.
35 U.S.C. §251
Claims 1-3, 5-18 and 20-22 are rejected under 35 U.S.C. 251.
The same claim of the patent cannot be presented for examination in more than one reissue application, as a pending claim, in either its original or amended versions. If a patent claim is presented in one reissue application of a reissue application "family," then that patent claim must be presented as a canceled claim in all the other reissue applications of that family. Moreover, once a claim in the patent has been reissued, it does not exist in the original patent; thus, it cannot be reissued from the original patent in another reissue application. Thus, the instant reissue application is not correcting an error in the original patent, because original claims 1-24 are superseded by the reissuance of claims 1-24 in RE50,029, which issued from 17/230,173. See MPEP 1451
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.
Claims 1-3, 5, 6, 13-15, 21, 22 and 25 -28 are rejected under 35 U.S.C. 103 as being unpatentable over Niemeyer et al. (US 2016/0102344) and further in view of Rothemund (US 2012/0251583), Surwade et al, "Molecular Lithography through DNA-Mediated Etching and Masking of SiO2," J. Am. Chem. Soc. 2011, 133, 11868-11871 (hereinafter "Surwade I"), and Surwade et al, "Nanoscale Growth and Patterning of Inorganic Oxides Using DNA Nanostructure Templates," J. Am. Chem. Soc., 2013, 135, 6778-6781 (hereinafter "Surwade II").
Regarding claim 1, Niemeyer teaches a method comprising the steps of:
forming a patterned semiconductive substrate comprising one or more regions, at least one of the one or more regions exhibiting chemical specificity or topological specificity to a specific nucleic acid structure;
contacting the patterned semiconductive substrate with nucleic acid structures comprising the specific nucleic acid structure; and
adsorbing the specific nucleic acid structure to the at least one of the one or more regions of the patterned semiconductive substrate to form a directed self-assembly of nucleic acid structures on the patterned semiconductive substrate.
Niemeyer teaches immobilization of DNA origami structures on solid substrates (see ¶ 0010 and claim 1). The solid substrate can be made of a semiconductor material, which is present in a short list of possible materials, including silicon (see ¶ 0019 and claim 8). In Niemeyer's immobilization process, the solid substrate is patterned with at least one type of structural feature capable of binding to a structural feature on the DNA origami structure (see ¶¶0007-0008). The binding can be selective adsorption, i.e., effected by base complementarity and respective Watson-Crick binding, sticky end ligation, stacking interactions, e.g. of geometrically complementary DNA origami structures, etc. (see ¶ 0010). Niemeyer specifically teaches self-assembly of the DNA origami on the substrate (see ¶¶ 0044, 0045, 0047, 0060 and 0071-0073). In a particular embodiment, the above structural feature of the DNA origami is geometrical, i.e., the DNA origami is geometrically complementary to the structural feature on the solid substrate (see ¶ 0011). In a preferred embodiment, the structural feature on the DNA origami is single- stranded nucleic acid (ssNA) strands, i.e., a specific nucleic acid functional group
Niemeyer does not teach the step of forming sublithographic features on the patterned semiconductor substrate using the directed self-assembly of nucleic acid structures.
Nevertheless, Rothemund discloses a method of forming a nucleic acid nanostructure, e.g., DNA origami (see Figs. 1, 3 and 4; and ¶¶ 0005, 0012-0015). Rothemund teaches contacting a substrate with the nucleic acid structures (see ¶ 0055); adsorbing the nucleic acid structures to at least one region of the substrate to form a directed self-assembly of nucleic acid structures comprising sublithographic features on the substrate (see Figs. 3 and 4, ¶¶ 0015 and 0127-0128); and transferring the sublithographic features to the substrate to pattern electronic circuits (¶ 0099). Figs. 3 and 4 of Rothemund show sublithographic openings in the DNA origami.
Similarly, Surwade I teaches a process to pattern triangular positive-tone or negative-tone shapes into SiO₂ by HF vapor-etching (see entire document). Surwade I obtains etched trenches of 2-4 nm deep and about 20 nm wide (see p. 11870). After etching, the DNA is removed (see p. 11869).
Surwade II teaches that a major challenge in using a DNA nanostructure for nanoscale patterning involves transfer of its pattern to an inorganic substrate (e.g., a silicon wafer). Because of their limited chemical stability, DNA nanostructures are not compatible with harsh chemical reaction conditions that are typically used to etch and deposit inorganic materials, such as KOH etching and plasma-assisted chemical vapor deposition (CVD). Surwade II teaches a shape-conserving, room-temperature CVD process to convert a DNA nanostructure into an inorganic oxide nanostructure of the same shape (see p. 6778).
For example, in Surwade Il's Fig. 4, DNA triangles are deposited onto a silicon wafer and a negative tone SiO₂ pattern was then grow. The wafer was then exposed to a SF₆/O₂ plasma that selectively etches Si but not SiO₂. After the plasma etching, the CVD-grown SiO₂ mask was removed with hydrofluoric acid (HF) to expose the underlying silicon. AFM imaging of the wafer revealed triangular trenches on the surface, indicating successful pattern transfer to the silicon layer. As shown in Figure 4, the depth of the trenches was 25 ± 2 nm, while the width was 55 ± 3 nm. Almost all of the triangles showed the center void feature, although with a reduced vertical contrast (see also p. 6780).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have used DNA origami having sublithographic features for Niemeyer's DNA origami, and to have subsequently used the DNA origami as a mask for transferring the sublithographic features to Niemeyer's semiconductor substrate, as taught by Rothemund, Surwade I and Surwade II, so as to prepare, for example, patterned electronic circuits. Removal of the DNA origami as per instant claim would have been obvious once the sublithographic features have been transferred, as taught, for example, by Surwade I. Surwade Il's Fig. 4 also appears to show removal of the DNA origami at either the plasma etch of Si or at SiO₂ removal.
Regarding claims 2 and 3, Niemeyer teaches the step of forming a patterned semiconductive substrate having regions exhibiting chemical/topological specificity to the specific nucleic acid structure (see fig. 5; ¶0011).
Regarding claim 5, Niemeyer teaches the step of adsorbing the specific nucleic acid structure to the regions of the patterned semiconductive substrate comprises achieving a lowest energy configuration between adsorption of the specific nucleic acid structure to the regions of the patterned semiconductive substrate. In this case, a "lowest energy configuration" exists between adsorption of the ssNA strands of the DNA origami to the ssNA capture strands on the semiconductor substrate in view of the binding by Watson-Crick pairing (see ¶¶ 0017 and 0036).
Regarding claim 6, the combination teaches the step of forming the directed self-assembly comprising sublithographic openings in the nucleic acid structures. In Niemeyer's immobilization process, the solid substrate is patterned with at least one type of structural feature capable of binding to a structural feature on the DNA origami structure (see ¶¶ 0007-0008). The binding can be selective adsorption, i.e., effected by base complementarity and respective Watson-Crick binding, sticky end ligation, stacking interactions, e.g. of geometrically complementary DNA origami structures, etc. (see ¶ 0010). Niemeyer specifically teaches self-assembly of the DNA origami on the substrate (see ¶¶ 0044, 0045, 0047, 0060 and 0071-0073). Figs. 3 and 4 of Rothemund show sublithographic openings in the DNA origami.
Regarding claim 13, the combination teaches the step of using the directed self-assembly of nucleic acid structures as a mask. Rothemund teaches depositing the nanostructures on a substrate where they can be used as a template or mask for further processing of the substrate (see ¶ 0099).
Regarding claim 14, the combination teaches the step of adsorbing specific deoxyribonucleic acid structure to the regions. In Niemeyer's immobilization process, the solid substrate is patterned with at least one type of structural feature capable of binding to a structural feature on the DNA origami structure (see ¶¶ 0007-0008). The binding can be selective adsorption, i.e., effected by base complementarity and respective Watson-Crick binding, sticky end ligation, stacking interactions, e.g. of geometrically complementary DNA origami structures, etc. (see ¶ 0010).
Regarding claim 15, the combination teaches the step of adsorbing specific ribonucleic acid structure to the regions. Rothemund teaches methods and compositions for generating nanoscale devices, systems, and enzyme factories based upon a nucleic acid nanostructure that can be designed to have a predetermined structure (see Abstract). Rothemund teaches that the nucleic acid nanostructure may comprise DNA:DNA duplexes, DNA:RNA duplexes, PNA:DNA duplexes, and/or RNA:RNA duplexes (see ¶¶ 0003 and 0096). Where the nanostructure comprises DNA:DNA duplexes, a B-form of DNA is generated having a twist of about 10.5 base pairs per turn, and where the nanostructure comprises RNA:DNA and/or RNA:RNA duplexes an A-form of a duplex is generated having a twist of about 11 base pairs per turn (see ¶ 0003). Rothemund teaches depositing the nanostructures on a substrate where they can be used as a template or mask for further processing of the substrate (see ¶ 0099).
Regarding claim 21, Niemeyer does not specifically teach that regions of the pre- patterned substrate are tailored to adsorb the same specific nucleic acid structure. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used only one type of DNA origami structure, and thus, have multiple DNA origami's of the same structure adsorbed at different locations on the substrate, because Niemeyer specifically teaches "at least one" origami structure, which encompasses the use of only one type of origami structure, and so as to prepare a device with multiple of the same DNA origami's on the substrate. Indeed, Niemeyer's Fig. 6 shows DNA origami structures that schematically are similar.
Regarding claim 22, Niemeyer teaches that different areas of the solid substrate can be functionalized with different types of structural features, e.g. ssNA capture strands having different base sequences, and the solid substrate is incubated with different types of DNA origami structures having different structural features, e.g. protruding ssNA strands having different base sequences. In this manner, the different types of DNA origami structures can be immobilized on different defined and selected sites, e.g. spots, on said solid substrate (see ¶¶ 0028, 0072 and claim 7).
Regarding claims 25 and 26, Niemeyer further teaches that origami constructs may contain structural features to enable their self-assembly into finite or infinite periodic lattice superstructures (see ¶ 0068). Also, Niemeyer teaches that different areas of the solid substrate can be functionalized with different types of structural features, e.g. ssNA capture strands having different base sequences, and the solid substrate is incubated with different types of DNA origami structures having different structural features, e.g. protruding ssNA strands having different base sequences. In this manner, the different types of DNA origami structures can be immobilized on different defined and selected sites, e.g. spots, on said solid substrate (see ¶¶ 0028, 0072 and claim 7). In Niemeyer's
immobilization process, the solid substrate is patterned with at least one type of structural feature capable of binding to a structural feature on the DNA origami structure (see ¶ 0007-0008).
Regarding claims 27 and 28, Surwade I teaches a process to pattern triangular positive-tone or negative-tone shapes into SiO₂ by HF vapor-etching (see entire document). Surwade I obtains etched trenches of 2-4 nm deep and about 20 nm wide (see p. 11870). After etching, the DNA is removed (see p. 11869). Also, Surwade II teaches in Figure 4, the depth of the trenches was 25 ± 2 nm, while the width was 55 ± 3 nm. Almost all of the triangles showed the center void feature, although with a reduced vertical contrast (see also p. 6780).
Claims 7, 10-12 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Niemeyer et al. ( US 2016/0102344) and further in view of Rothemund (US 2012/0251583), Surwade et al, "Molecular Lithography through DNA-Mediated Etching and Masking of SiO2," J. Am. Chem. Soc. 2011, 133, 11868-11871 (hereinafter "Surwade I"), and Surwade et al, "Nanoscale Growth and Patterning of Inorganic Oxides Using DNA Nanostructure Templates," J. Am. Chem. Soc., 2013, 135, 6778-6781 (hereinafter "Surwade II") and further in view of Luo et al. (US 2005/0130180) and Akishiba et al, "DNA origami assembly on patterned silicon by AFM based lithography," MEMS 2013, Taipei, Taiwan, January 20-24, 2013 (hereinafter "Akishiba").
Regarding claims 7 and 10-12 and 16, the combination does not teach the step of forming the directed self-assembly comprising isotropic nucleic acid structures and/or anisotropic nucleic acid structures. However, Luo relates to the design and use of nucleic acid molecules to create novel materials (see Abstract). Luo teaches that a key aim of biotechnology and nanotechnology is the construction of new biomaterials, including individual geometrical objects, nanomechanical devices, and extended constructions that permit the fabrication of intricate structures of materials to serve many practical purposes (see ¶ 0004). Molecules of biological systems, for example, nucleic acids, have the potential to serve as building blocks for these constructions due to their self- and programmable- assembly capabilities (see ¶ 0004). Luo teaches that linking together polynucleotide trimers to form a DNA assembly can be used to prepare isotropic or anisotropic assemblies, thereby providing the ability to link other chemical entities (see ¶¶ 0068-0069).
Akishiba teaches the assembly of DNA origami on a patterned silicon substrate (see pp. 307-308). The purpose of such assembly is for the preparation of nanometer scale functional structures (see p. 307). In particular, in Akishiba's Fig. 1, reproduced below, the DNA origami are oriented without error in a particular sequence on the substrate. Note that each of the DNA origami is anisotropic due to the attached AuNPs.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use isotropic and/or anisotropic DNA origami in Niemeyer's method because such are the known choices in the art for DNA assemblies, as shown by Luo and Akishiba; so as to be able to link other chemical entities, as taught by Luo; and so as to prepare nanometer scale functional structures, as taught by Akishiba.
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Gopinath et al, "Optimized Assembly and Covalent Coupling of Single-Molecule DNA Origami Nanoarrays" and further in view of Rothemund (US 2012/0251583), Surwade et al, "Molecular Lithography through DNA-Mediated Etching and Masking of SiO2," J. Am. Chem. Soc. 2011, 133, 11868-11871 (hereinafter "Surwade I"), and Surwade et al, "Nanoscale Growth and Patterning of Inorganic Oxides Using DNA Nanostructure Templates," J. Am. Chem. Soc., 2013, 135, 6778-6781 (hereinafter "Surwade II").
Regarding claims 17 and 18, Gopinath teaches a method for making a nanostructure comprising the steps of:
forming a patterned semiconductive substrate comprising at least one region including functional groups configured to chemically interact with a specific nucleic acid structure;
contacting the patterned semiconductive substrate with nucleic acid structures comprising the specific nucleic acid structure;
and adsorbing the specific nucleic acid structure to the at least one region of the patterned semiconductive substrate to form a directed self-assembly of nucleic acid structures comprising sublithographic features on the patterned semiconductive substrate;
Gopinath teaches DNA nanostructures for use as templates to fabricate nanodevices (see Abstract). DNA origami are bonded to silanol groups of a patterned semiconductive substrate to form a pattern of the DNA origami on the substrate (see p. 12031, FIG. 1b1 and accompanying description and p. 12039, Placement Protocol). Alternatively, the substrate surface is functionalized with amino-terminated silane groups and the DNA origami are bonded to these groups (see p. 12031, Fig. 1b2 and accompanying description). Gopinath teaches that the binding cites are of the same shape and size as (triangular) DNA origami (see p. 120311). See also Fig. 2a and b, reproduced below, which show placement of triangular DNA origami on triangular binding sites: Gopinath further teaches that "[t]he minimum free energy state for a single origami is assumed to be the correct orientation, which should maximize the number of silanol-Mg+²-origami bridges." (See p. 12033). With respect to claim 8 and as seen in Gopinath's Figs. 1 and 2, the triangular DNA origami have a hole in the center and thus, have a sublithographic feature. Also, as seen in Fig. 1, the triangles and thus, the holes, are at a sublithographic pitch on the substrate. Gopinath teaches that the DNA origami can be used as masks for nanolithography (see p. 12030, 1st col.) Gopinath does not teach the step of transferring the sublithographic features to the patterned semiconductive substrate.
Rothemund discloses a method of forming a nucleic acid nanostructure, e.g., DNA origami (see Figs. 1, 3 and 4; and ¶¶ 0005, 0012-0015). Rothemund teaches contacting a substrate with the nucleic acid structures (see ¶ 0055); adsorbing the nucleic acid structures to at least one region of the substrate to form a directed self-assembly of nucleic acid structures comprising sublithographic features on the substrate (see Figs. 3 and 4, ¶¶ 0015 and 0127-0128); and transferring the sublithographic features to the substrate to pattern electronic circuits (1 0099). Figs. 3 and 4 of Rothemund show sublithographic openings in the DNA origami.
Similarly, Surwade I teaches a process to pattern triangular positive-tone or negative-tone shapes into SiO₂ by HF vapor-etching (see entire document). Surwade I obtains etched trenches of 2-4 nm deep and about 20 nm wide (see p. 11870). After etching, the DNA is removed (see p. 11869).
Surwade II teaches that a major challenge in using a DNA nanostructure for nanoscale patterning involves transfer of its pattern to an inorganic substrate (e.g., a silicon wafer). Because of their limited chemical stability, DNA nanostructures are not compatible with harsh chemical reaction conditions that are typically used to etch and deposit inorganic materials, such as KOH etching and plasma-assisted chemical vapor deposition (CVD). Surwade II teaches a shape-conserving, room-temperature CVD process to convert a DNA nanostructure into an inorganic oxide nanostructure of the same shape (see p. 6778).
For example, in Surwade Il's Fig. 4, DNA triangles are deposited onto a silicon wafer and a negative tone SiO₂ pattern was then grow. The wafer was then exposed to a SF₆/O₂ plasma that selectively etches Si but not SiO₂. After the plasma etching, the CVD-grown SiO₂ mask was removed with hydrofluoric acid (HF) to expose the underlying silicon. AFM imaging of the wafer revealed triangular trenches on the surface, indicating successful pattern transfer to the silicon layer. As shown in Figure 4, the depth of the trenches was 25 ± 2 nm, while the width was 55 ± 3 nm. Almost all of the triangles showed the center void feature, although with a reduced vertical contrast (see also p. 6780).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used DNA origami having sublithographic features for Gopinath's DNA origami, and to have subsequently used the DNA origami as a mask for transferring the sublithographic features to Gopinath's semiconductor substrate, as taught by Rothemund, Surwade I and Surwade II, so as to prepare, for example, patterned electronic circuits. Removal of the DNA origami as per instant claim would have been obvious once the sublithographic features have been transferred, as taught, for example, by Surwade I. Surwade Il's Fig. 4 also appears to show removal of the DNA origami at either the plasma etch of Si or at SiO₂ removal.
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.
Claim 20 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Akishiba et al, "DNA origami assembly on patterned silicon by AFM based lithography," MEMS 2013, Taipei, Taiwan, January 20-24, 2013 (hereinafter "Akishiba").
Regarding claim 20, Akishiba (e.g. fig. 1) teaches a nanostructure comprising a directed self-assembly of nucleic acid structures on a patterned semiconductive substrate. The patterned semiconductive substrate comprises a specific nucleic acid structure and regions including functional groups configured to chemically interact with the specific nucleic acid structure. Akishiba teaches the assembly of DNA origami on a patterned silicon substrate (see pp. 307-308). The purpose of such assembly is for the preparation of nanometer scale functional structures (see p. 307). In Akishiba's Fig. 1, reproduced below, anisotropic DNA origami are oriented without error in a particular sequence on the substrate. Each of the DNA origami is anisotropic due to the attached AuNPs.
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Selective adsorption of the DNA origami on the silicon substrate occurs because the DNA origami and the silicon substrate have ssDNA for binding each other, and thus lowest energy configuration is achieved when bound, as per claim 5. (see pp. 307-309).
Allowable Subject Matter
Claims 8 and 9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and overcome the rejection under 251 and 112b.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Rothemund (US 7842793) teaches embodiment related to the instant invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEONARDO ANDUJAR whose telephone number is (571)272-1912. The examiner can normally be reached Monday to Thursday 10 AM to 8 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia L Engle can be reached at (571)272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Leonardo Andujar/
Primary Examiner
Art Unit 3991 CRU
Conferees:
/LEE E SANDERSON/Reexamination Specialist, Art Unit 3991
/Patricia L Engle/SPRS, Art Unit 3991
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