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 8, 9, 14, 15, 17, and 20 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 8, the claim recites "wherein said control unit preferably comprises at least two electrodes". The term "preferably" renders the claim indefinite because it is unclear whether the limitation that follows is required. See MPEP § 2173.05(d).
Regarding claims 9/8 and 17/8, the claims depend from claim 8 and are rejected for the same reason.
Regarding claim 14, the claim recites "The method according to claim 1". Claim 1 is directed to a nucleic acid nanomotor, not to a method. A method claim cannot depend from an apparatus claim, and the metes and bounds of claim 14 therefore cannot be determined. It appears from the claim as originally presented, which depended from claims 10 to 13, that dependency from claim 10 was intended. For purposes of examination, claim 14 is treated as depending from claim 10.
Regarding claim 20/14, the claim depends from claim 14 and is rejected for the same reason. See MPEP § 2173.05(g).
Regarding claim 15, the claim recites "A method of use of a nanomotor of claim 1, wherein said nanomotor is used as a turbine, propulsion, fluid mixer, energy storing device, machine applying mechanical force and/or in chemical synthesis". The claim recites no active, positive step. A claim reciting a use without setting forth any step involved in the process is indefinite. See MPEP § 2173.05(q); Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986).
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 6, 7, 14-16, and 20 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Kopperger (US 2020/0031663 A1).
Regarding claim 1, Kopperger teaches a nucleic acid nanomotor comprising a nucleic acid rotor and a nucleic acid stator(¶ [0046]; FIG. 1; platform 4 and positioning arm 5, both constructed by the DNA origami method);
wherein said stator comprises a first surface and a rotor docking site(¶ [0045]-[0046]; FIG. 1; top layer of two-layer platform 4, to which linking element 6 attaches);
wherein said rotor comprises a stator docking site configured to be connected to said rotor docking site of said stator(¶ [0030]; arm connected to the plate via two adjacent scaffold crossovers with 3 and 4 unpaired bases forming a flexible joint);
wherein said rotor has at least one longitudinal extension extending from said stator docking site along a longitudinal axis(¶ [0072]; FIG. 8A; pointer extensions of 411 nm and 308 nm, "the extensions point along the axis of the short arm");
wherein said longitudinal axis has a substantially parallel orientation to said first surface of said stator(¶ [0024], ¶ [0045]; rotation constrained to a plane parallel to platform 4);
wherein said rotor is rotatable around a rotation axis substantially perpendicular to said longitudinal axis(¶ [0045]; FIG. 1; in-plane rotation of arm 5 about the pivot at linking element 6);
and wherein said rotor is electrically charged(¶ [0048], ¶ [0055]; DNA origami structures are heavily charged biomolecules; "the electrically charged positioning arm 5").
Regarding claim 2/1, Kopperger teaches the nucleic acid nanomotor of claim 1.
Kopperger further teaches wherein said longitudinal extension of said rotor has a length of at least 1 nm(¶ [0072]; FIG. 8A; 25 nm arm and 411 nm and 308 nm pointer extensions).
Regarding claim 3/1, Kopperger teaches the nucleic acid nanomotor of claim 1.
Kopperger further teaches wherein a total length of said longitudinal extension of said rotor is in the range of from 20 nm to 1000 nm(¶ [0040]; FIG. 8A; total length from center of rotation to tip of 436 nm, and 332 nm for the shape-complementary variant).
Regarding claim 4/1, Kopperger teaches the nucleic acid nanomotor of claim 1.
Kopperger further teaches wherein said rotor has a rod-like shape and/or a T-like shape(¶ [0029], ¶ [0046]; FIG. 1; arm 5 formed as a DNA six-helix bundle; ¶ [0072]; rigid 6HB pointers with persistence length greater than 1 µm). The limitation is disjunctive; the rod-like prong is satisfied.
Regarding claim 6/1, Kopperger teaches the nucleic acid nanomotor of claim 1.
Kopperger further teaches wherein the nanomotor is configured such that said rotor is rotatable within an energy landscape defined by a plot of a free energy over a rotor angle θ, wherein said rotor angle θ is a rotor angle of said longitudinal axis of said rotor with respect to an axis perpendicular to said rotation axis, wherein said energy landscape has at least one energy minimum(¶ [0076]; FIG. 9A-9B; temporary stalling of the pointer at the two angle positions corresponding to the two docking sites, the arm "snaps" into the binding positions during rotation; ¶ [0071]; dwell times in the bound states increase with docking duplex length). The preferred angular positions at which the rotor is trapped are minima in free energy as a function of rotor angle.
Regarding claim 7/1, Kopperger teaches the nucleic acid nanomotor of claim 1.
Kopperger further teaches wherein said rotor docking site and said stator docking site are directly connected, connected via a nucleic acid hinge, and/or connected via a nucleic acid torsional spring(¶ [0030]; FIG. 1; short single-stranded segments of 3 and 4 unpaired bases creating a flexible joint between plate and arm). The limitation is disjunctive; the hinge prong is satisfied.
Regarding claim 14/1, Kopperger teaches the nucleic acid nanomotor of claim.
Kopperger further teaches wherein said rotor and/or said stator comprise(s) nucleic acid(s), peptide(s), protein(s), and/or small molecule(s)(¶ [0023], ¶ [0046]-[0047]; first and second molecular elements made of DNA, DNA origami, RNA, and/or protein; platform 4 and arm 5 alternatively built from RNA, proteins, or artificial charged supramolecular structures). The limitation is disjunctive; the nucleic acid prong is satisfied.
Regarding claim 15/1, Kopperger teaches the nanomotor of claim 1.
Kopperger further teaches wherein said nanomotor is used as a turbine, propulsion, fluid mixer, energy storing device, machine applying mechanical force and/or in chemical synthesis(¶ [0064]; the movement part of platform 4 and positioning arm 5 makes it possible to apply forces to molecules in situ, the force applying lever itself being a molecular structure; ¶ [0065]-[0066]; DNA templated synthesis in which electrically driven moving mechanisms bring molecules into close proximity to induce their reaction). The limitation is disjunctive; the machine-applying-mechanical-force and chemical-synthesis prongs are each satisfied.
Regarding claim 16/1, Kopperger teaches the nucleic acid nanomotor of claim 1.
Kopperger further teaches wherein said rotor has at least two longitudinal extensions(¶ [0070]; 25 nm long arm (positioning arm 5) integrated with the plate; ¶ [0057], ¶ [0072]; FIG. 4, FIG. 8A; a separately folded lever/pointer structure 14 of 411 nm coupled to arm 5, the extensions pointing along the axis of the short arm). Under the interpretation set forth above, two extension members of unequal length joined end-to-end along a common longitudinal axis meet this limitation.
Regarding claim 20/14, Kopperger teaches the nucleic acid nanomotor of claim 14.
Kopperger further teaches wherein said rotor, and/or said stator, comprises DNA(¶ [0046]; FIG. 1; platform 4 of two layers of DNA double helices and arm 5 as a DNA six-helix bundle).
Claims 8, 10, 12, 13, and 17-19 are rejected under 35 U.S.C. § 103 as being unpatentable over Kopperger (US 2020/0031663 A1) in view of Zettl (US 2007/0114880 A1).
Regarding claim 8, Kopperger teaches A system comprising: a nanomotor comprising a rotor and a stator, wherein said stator comprises a first surface and a rotor docking site, wherein said rotor comprises a stator docking site configured to be connected to said rotor docking site of said stator(¶ [0045]-[0046], ¶ [0030]; FIG. 1; platform 4, arm 5, linking element 6);
wherein said rotor has a longitudinal extension extending from said stator docking site along a longitudinal axis, wherein said longitudinal axis has a substantially parallel orientation to said first surface of said stator(¶ [0024], ¶ [0072]; FIG. 8A);
wherein said rotor is rotatable around a rotation axis substantially perpendicular to said longitudinal axis(¶ [0045]; FIG. 1);
wherein said rotor is electrically charged(¶ [0048], ¶ [0055]); and wherein said stator of said nanomotor has a fixed orientation with respect to said control unit(¶ [0053]; platform 4 fixed to at least one of fluidic channels 9, 10 of control part 3 so that no movement of the platform is possible in response to the electrical field).
Kopperger does not explicitly teach a control unit configured to generate an alternating current for rotating said nanomotor, wherein said control unit preferably comprises at least two electrodes.
However, in the analogous art of electrically driven nanoscale rotary actuators, Zettl teaches a control unit configured to generate an alternating current for rotating said nanomotor(¶ [0058]; out-of-phase common-frequency sinusoidal voltages S1 = V sin(ωt), S2 = V sin(ωt+240°), S3 = V sin(ωt+120°); ¶ [0033]; "appropriately phased a.c." voltage signals controlling position, speed and direction of rotation of rotor plate 10; ¶ [0059]; FIG. 4),
wherein said control unit preferably comprises at least two electrodes(¶ [0033]; FIG. 1; in-plane stators S1, S2 at 26, 28 horizontally opposed about the rotor plate, and gate stator S3 at 30). The electrode limitation is addressed in the alternative, the term "preferably" rendering it optional as set forth in the § 112(b) rejection above.
Kopperger and Zettl are both directed to nanoscale rotary actuators in which an electrically charged rotating member is driven about a pivot by fixed stator electrodes, and both address the same problem of achieving controlled, continuous rotation of a nanoscale rotor by electrical means. Zettl teaches its device as "designed like an electric motor which has a plurality of electrically chargeable components in fixed relation to a rotating member" (¶ [0031]). It would have been obvious to one of ordinary skill in the art before the effective filing date to generate the drive signal of Kopperger as the phased alternating current taught by Zettl, for the predictable benefit identified by Zettl at ¶ [0018], namely that alternating the voltage sources in opposite phases on the opposed stators and at doubled frequency on the offset stator causes the rotor to "move fully through 360 degrees of rotation." This benefit is directly responsive to the deficiency Kopperger identifies in its own field-steering scheme, in which the arm exhibits "skips" and "cannot follow the rotation of the electrical field" at higher frequencies (¶ [0076]). This is the application of a known technique to a known device ready for improvement to yield predictable results. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Regarding claim 10, Kopperger teaches A method of rotating a rotor of a nanomotor with respect to a stator of said nanomotor, comprising: i) providing a nanomotor comprising a rotor and a stator, wherein said stator comprises a first surface and a rotor docking site, wherein said rotor comprises a stator docking site configured to be connected to said rotor docking site of said stator(¶ [0045]-[0046], ¶ [0030]; FIG. 1; platform 4, arm 5, linking element 6);
wherein said rotor has a longitudinal extension extending from said stator docking site along a longitudinal axis, wherein said longitudinal axis has a substantially parallel orientation to said first surface of said stator(¶ [0024], ¶ [0072]; FIG. 8A);
wherein said rotor is rotatable around a rotation axis substantially perpendicular to said longitudinal axis(¶ [0045]; FIG. 1);
wherein said rotor is electrically charged(¶ [0048], ¶ [0055]).
Kopperger does not explicitly teach ii) applying an alternating current to said nanomotor.
However, Zettl teaches applying an alternating current to said nanomotor(¶ [0058]; sinusoidal voltages applied out of phase to stators S1, S2, S3 with a d.c. offset to rotor plate R; ¶ [0018]; voltage sources alternated in opposite phases to rotate the plate fully through 360 degrees). It would have been obvious to one of ordinary skill in the art before the effective filing date to drive the nanomotor of Kopperger by applying the alternating current of Zettl, for the reasons and with the predictable benefit set forth above with respect to claim 8. KSR, 550 U.S. at 416.
Regarding claim 12/10, Kopperger in view of Zettl teaches the method of claim 10.
Zettl further teaches wherein said alternating current has a frequency from 0.1 to 1000 Hz(¶ [0058]; observed rotor plate oscillations "of typically several hertz," with ω stated as one-half of the frequency of rotation). Kopperger likewise operates its rotor at 1, 2, 4, 8, and 25 Hz (¶ [0040]; FIG. 8F-8H). One would be motivated to operate within this range because Kopperger teaches that the rotor follows the applied signal faithfully at the lower frequencies of the range and exhibits skipped turns above them (¶ [0076]).
Regarding claim 13/10, Kopperger in view of Zettl teaches the method of claim 10.
Kopperger further teaches wherein said alternating current has a voltage from 1 V to 200 V(¶ [0051]; electrical device 7 applies voltages of up to 200 V; ¶ [0041]; rotation at 110 V). Zettl likewise applies voltages up to 50 V (¶ [0050]).
Regarding claim 17/8, Kopperger in view of Zettl teaches the system of claim 8.
Kopperger further teaches wherein said nanomotor is a nanomotor according to claim 1(¶ [0046]; FIG. 1; nucleic acid platform 4 and nucleic acid arm 5, mapped element by element with respect to claim 1 above).
Regarding claim 18/10, Kopperger in view of Zettl teaches the method of claim 10.
Kopperger further teaches wherein said nanomotor is a nanomotor according to claim 1(¶ [0046]; FIG. 1; nucleic acid platform 4 and nucleic acid arm 5, mapped element by element with respect to claim 1 above).
Regarding claim 19/10, Kopperger in view of Zettl teaches the method of claim 10.
Kopperger further teaches comprising directionally rotating said rotor of said nanomotor(¶ [0040]; FIG. 8F; one clockwise turn of 1 Hz rotation, and multiple turns of clockwise rotation followed by multiple counter-clockwise turns; ¶ [0033]; control of the direction of rotation). Zettl further teaches rotation fully through 360 degrees in a controlled direction (¶ [0018], ¶ [0033]).
Allowable Subject Matter
Claims 5, 9, and 11 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.
With respect to claim 9, the rejection under 35 U.S.C. § 112(b) set forth above would also need to be overcome.
The following is an examiner’s statement of reasons for the indication of allowable subject matter. Each of claims 5, 9, and 11 requires that "said stator comprises at least one protrusion extending towards said rotor such that said rotor interacts with said protrusion at least once when rotating by 360° with respect to said rotation axis." Kopperger discloses docking sites formed by extending two staple strands on opposite sides of the plate with a short docking sequence complementary to an extended staple on the arm (¶ [0071]), with which the arm transiently hybridizes during rotation (¶ [0076]). Kopperger does not disclose any structure projecting from the stator toward the rotor; its docking sites are sequence extensions that engage the rotor by base pairing rather than by spatial interference, and Kopperger nowhere describes them as extending toward the rotor. Zettl positions its stator electrodes laterally of and beneath the rotor plate, expressly "slightly below the plane of the nanotube/rotor/anchors" (¶ [0058]; ¶ [0033]), and therefore teaches away from a stator structure lying in the rotor’s path. Neither reference, alone or in combination, teaches or suggests a protrusion of the stator extending toward the rotor and interacting with the rotor at least once per revolution.
Conclusion
The prior art made of record and not relied upon is considered pertinent to the applicant’s disclosure.
Rothemund (US 2007/0117109 A1) teaches methods of folding a scaffold strand with staple strands to form nucleic acid nanostructures of predetermined shape.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMED QURESHI whose telephone number is (571)-272-8310. The examiner can normally be reached on 8:30 AM - 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tulsidas Patel can be reached on 571-272-2098. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pairdirect. uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/MOHAMMED AHMED QURESHI/Examiner, Art Unit 2834
Prosecution Insights