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 .
Claim Rejections - 35 USC § 112
Note that dependent claims will have the deficiencies of base and intervening claims.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 3 and 6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 3 and claim 6 each requires “. . . ., wherein a graphene nanoribbon comprises said plurality of graphene sensors.” There is no need to go through the Wands undue experimentation factors (MPEP 216401(a)) as this claim is not enabled on its face. It is impossible for a graphene nanoribbon to comprise a single graphene sensor, let alone a plurality of graphene sensors. Consider Xiong et al. WO 2009/035647 A1 (hereafter “Xiong”) Figure 1, which shows a graphene sensor that comprises a graphene ribbon (18).
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 1-6 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. Claim 1 and independent claim 4 each requires “. . . ., wherein said nanofluidic chip comprises a plurality of graphene sensors and a nanochannel extending across said plurality of graphene sensors, . . . . [italicizing by the Examiner]” Applicant’s graphene “sensor”, though, is simply a graphene nanoribbon. See Applicant’s Figures 1B, 2A, and 2C. and specification paragraph [0011], [0012], and [0026]. One of ordinary skill in the electrochemical sensor art would not consider a graphene nanoribbon by itself to be a sensor.1 See, for example, the title, paragraph [0015], and Figure 1 in Xiong. Applicant is requested to clarify the scope of the term “sensor”. If Applicant is being his own lexicographer, please heed MPEP 2173.05(a).
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.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Afzali-Ardakani et al. US 10267784 B2 (hereafter “Afzali-Ardakani”) in view of Golovchenko et al. US 20080171316 (hereafter “Golovchenko”), Heerema et al., “Graphene nanodevices for DNA sequencing,” NATURE NANOTECHNOLOGY | VOL 11 | FEBRUARY 2016 (hereafter “Heerema”), and Min et al., “Fast DNA sequencing with a graphene-based nanochannel device,” NATURE NANOTECHNOLOGY | VOL 6 | MARCH 2011 (hereafter “Min”).
Addressing claim 1, Afzali-Ardakani discloses a method of sequencing DNA (see the title and Figure 8), comprising the steps of:
providing single-stranded DNA (implied by step 815 in Figure 8, 310 on Figure 3, and by col.10:37-42);
moving said single-stranded DNA from an inlet end (302 in Figure 3) of a nanofluidic (300) to an outlet end (303) of said nanofluidic chip (Figure 3, col. 9:52 – col. 10:2, and col. 10:37-42) , wherein said nanofluidic chip comprises a plurality of sensors (305a together with 305b, 316, and 318 form one senor. 306a together with 306b, 317, and 319 form another senor. See col. 10:33-54. Note that many more sensors may be provided. See col. 10:6-10.) and a nanochannel (304) extending through said plurality of sensors (Figure 3 and col. 9:61 – col. 10:6);
measuring an electrical current through said plurality of sensors as said single-stranded DNA moves through said plurality of sensors (see the penultimate sentence of the Abstract, col. 1:63 – col. 2:1, and col. 2:39-45); and
determining a composition of said at least one base of said single-stranded DNA molecule based on the measured electrical current (see step 820 in Figure 8, col. 2:39-45; and col. 10:45-55).
Afzali-Ardakani, though, does not disclose “wrapping a single-stranded DNA molecule around a carbon nanotube to form a DNA/carbon nanotube hybrid structure, wherein said single-stranded DNA molecule comprises at least one base…”
Golovchenko discloses a method of sequencing single-stranded DNA that uses a nanopore device that measures electric current as the single-stranded DNA passes through the nanopore. See the Abstract and Figure 1A. In one embodiment a single-stranded DNA molecule is wrapped around a carbon nanotube to form a DNA/carbon nanotube hybrid structure, wherein said single-stranded DNA molecule comprises at least one base. See Figure 5A and paragraph [0080].
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the single-stranded DNA provided in the method of Afzali-Ardakani previously prepared by wrapping a single-stranded DNA molecule around a carbon nanotube to form a DNA/carbon nanotube hybrid structure, wherein said single-stranded DNA molecule comprises at least one base as taught by Golovchenko because Golovchenko discloses
PNG
media_image1.png
160
428
media_image1.png
Greyscale
See Golovchenko paragraph [0083].
Also,
PNG
media_image2.png
334
436
media_image2.png
Greyscale
See Golovchenko paragraph [0085].
Afzali-Ardakani as modified by Golovchenko does not disclose having the plurality of sensors be a plurality of graphene sensors2, “wherein said plurality of graphene sensors are positioned between opposing electrodes, wherein a power source applies a constant voltage to said plurality of graphene sensors between said opposing electrodes,; . . . .” nor “measuring an electrical current through said plurality of graphene sensors as said DNA/carbon nanotube hybrid structure moves across said plurality of graphene sensors; . . . . [italicizing by the Examiner]” In the method of Afzali-Ardakani as modified by Golovchenko the DNA/carbon nanotube hybrid structure move between opposing electrodes of the plurality of sensor. See Afzali-Ardakani Figure 3.
Heerema discloses graphene nanodevices for DNA sequencing. See the title. In particular, one type of graphene nanodevice Heerema discloses comprises a graphene sensor positioned between opposing electrodes, wherein a power source applies a constant voltage to said plurality of graphene sensors between said opposing electrodes, and an electrical current through the graphene sensor is measured as DNA moves across the graphene sensor. See Heerema Figure 1(d).
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to replace the plurality of sensors used in the method of Afzali-Ardakani as modified by Golovchenko with the graphene sensor of Heerema Figure 1(d) because
(1) although Afzali-Ardakani does not mention having the sensor comprise graphene, Afzali-Ardakani does clearly allow for different conductive materials to be used. See Afzali-Ardakani col. 5:35-42;
(2) one of the types of graphene sensors disclosed by Heerema is of the same type used in Afzali-Ardakani Figure 3, but with the electrodes made of graphene. See Heerema Figure1(b); and
(3) to adopt the sensor configuration of Heerema Figure 1(d) into the Afzali-Ardakani Figure 3 embodiment would not require a significant modification to the nanodevice, largely only providing a graphene nanoribbon “bridge” to each opposing pair of electrodes.
So, to replace the plurality of sensors used in the method of Afzali-Ardakani as modified by Golovchenko with the sensor of Heerema is prima facie obvious as simple substitution of one known element (nanochannel electrochemical sensor for DNA sequencing) for another to obtain predictable results. See MPEP 2143(I)(B). Moreover, Heerema discloses
PNG
media_image3.png
151
404
media_image3.png
Greyscale
See the left column on page 133.
Also, regarding the Heerema Figure 1(d) graphene sensor type,
PNG
media_image4.png
122
422
media_image4.png
Greyscale
See the right column on page 133.
Additionally, Min performed stimulation studies on a graphene sensor of the Heerema Figure 1(d) type. Min states, "We show that as a DNA strand passes through the nanochannel14, the distinct conductance characteristics of the nanoribbon15–17 (calculated using a method based on density functional theory coupled to non-equilibrium Green function theory18–20) allow the different nucleobases to be distinguished using a data-mining technique and a two-dimensional transient autocorrelation analysis. This fast and reliable DNA sequencing device should be experimentally feasible in the near future. [italicizing by the Examiner].” See the title, abstract, Figure 1, and the paragraph in the right column on page 164 just before the Methods heading (“In summary, . . . .”).
Last, the Examiner notes that although the plurality of sensors used in the method of Afzali-Ardakani have an organic coating on them (307a, 307b, 308a, and 308b in Figure 3 and col. 10:11-32), such coatings are not precluded from being used on the graphene sensors of Afzali-Ardakani as modified by Golovchenko and Heerema to enhance DNA sequencing.
Addressing claim 4, Afzali-Ardakani discloses a DNA sequencing system (see the title and Figure 3), comprising:
a single-stranded DNA molecule, wherein said single-stranded DNA molecule (310) comprises at least one base (311)(see Figure 3 and col. 10:16-23);
a nanofluidic chip (300) on which said DNA molecule is moveable from an inlet end (302 in Figure 3) to an outlet end (303) of said nanofluidic chip (Figure 3, col. 9:52 – col. 10:2, and col. 10:37-42), wherein said nanofluidic chip comprises a plurality of sensors and a nanochannel (304) extending between said plurality of sensors (305a together with 305b, 316, and 318 form one senor. 306a together with 306b, 317, and 319 form another senor. See col. 10:33-54. Note that many more sensors may be provided. See col. 10:6-10.);
a power source (316, 317) configured to apply a constant voltage to each pair of opposing electrodes (Figure 3 and col. 10:43-44); and
an ammeter (318, 319) configured to measure an electrical current through the opposing electrodes as said DNA moves between them (Figure 3 and col. 10:43-54) .
Afzali-Ardakani, though, does not disclose “a single-stranded DNA molecule wrapped around a carbon nanotube, thereby forming a DNA/carbon nanotube hybrid structure, wherein said single-stranded DNA molecule comprises at least one base; . . . .”
Golovchenko discloses a method of sequencing single-stranded DNA that uses a nanopore device that measures electric current as the single-stranded DNA passes through the nanopore. See the Abstract and Figure 1A. In one embodiment a single-stranded DNA molecule is wrapped around a carbon nanotube to form a DNA/carbon nanotube hybrid structure, wherein said single-stranded DNA molecule comprises at least one base. See Figure 5A and paragraph [0080].
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the single-stranded DNA provided in the method of Afzali-Ardakani previously prepared by wrapping a single-stranded DNA molecule around a carbon nanotube to form a DNA/carbon nanotube hybrid structure, wherein said single-stranded DNA molecule comprises at least one base as taught by Golovchenko because Golovchenko discloses
PNG
media_image1.png
160
428
media_image1.png
Greyscale
See Golovchenko paragraph [0083].
Also,
PNG
media_image2.png
334
436
media_image2.png
Greyscale
See Golovchenko paragraph [0085].
Afzali-Ardakani as modified by Golovchenko does not disclose having the plurality of sensors be a plurality of graphene sensors3, “wherein said plurality of graphene sensors are positioned between opposing electrodes, wherein a power source applies a constant voltage to said plurality of graphene sensors between said opposing electrodes,; . . . .” nor “. . . ., . . . .an ammeter configured to measure an electrical current through the graphene sensors between said opposing electrodes as said DNA/carbon nanotube hybrid structure moves across said plurality of graphene sensors; . . . . [italicizing by the Examiner]” In the method of Afzali-Ardakani as modified by Golovchenko the DNA/carbon nanotube hybrid structure move between opposing electrodes of the plurality of sensor. See Afzali-Ardakani Figure 3.
Heerema discloses graphene nanodevices for DNA sequencing. See the title. In particular, one type of graphene nanodevice Heerema discloses comprises a graphene sensor positioned between opposing electrodes, wherein a power source applies a constant voltage to said plurality of graphene sensors between said opposing electrodes, and an electrical current through the graphene sensor is measured as DNA moves across the graphene sensor. See Heerema Figure 1(d).
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to replace the plurality of sensors used in the method of Afzali-Ardakani as modified by Golovchenko with the graphene sensor of Heerema Figure 1(d) because
(1) although Afzali-Ardakani does not mention having the sensor comprise graphene, Afzali-Ardakani does clearly allow for different conductive materials to be used. See Afzali-Ardakani col. 5:35-42;
(2) one of the types of graphene sensors disclosed by Heerema is of the same type used in Afzali-Ardakani Figure 3, but with the electrodes made of graphene. See Heerema Figure1(b); and
(3) to adopt the sensor configuration of Heerema Figure 1(d) into the Afzali-Ardakani Figure 3 embodiment would not require a significant modification to the nanodevice, largely only providing a graphene nanoribbon “bridge” to each opposing pair of electrodes.
So, to replace the plurality of sensors used in the method of Afzali-Ardakani as modified by Golovchenko with the sensor of Heerema is prima facie obvious as simple substitution of one known element (nanochannel electrochemical sensor for DNA sequencing) for another to obtain predictable results. See MPEP 2143(I)(B). Moreover, Heerema discloses
PNG
media_image3.png
151
404
media_image3.png
Greyscale
See the left column on page 133.
Also, regarding the Heerema Figure 1(d) graphene sensor type,
PNG
media_image4.png
122
422
media_image4.png
Greyscale
See the right column on page 133.
Additionally, Min performed stimulation studies on a graphene sensor of the Heerema Figure 1(d) type. Min states, "We show that as a DNA strand passes through the nanochannel14, the distinct conductance characteristics of the nanoribbon15–17 (calculated using a method based on density functional theory coupled to non-equilibrium Green function theory18–20) allow the different nucleobases to be distinguished using a data-mining technique and a two-dimensional transient autocorrelation analysis. This fast and reliable DNA sequencing device should be experimentally feasible in the near future. [italicizing by the Examiner].” See the title, abstract, Figure 1, and the paragraph in the right column on page 164 just before the Methods heading (“In summary, . . . .”).
Last, the Examiner notes that although the plurality of sensors used in the method of Afzali-Ardakani have an organic coating on them (307a, 307b, 308a, and 308b in Figure 3 and col. 10:11-32), such coatings are not precluded from being used on the graphene sensors of Afzali-Ardakani as modified by Golovchenko and Heerema to enhance DNA sequencing.
Claims 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Afzali-Ardakani in view of Golovchenko, Heerema, and Min as applied to claim 1 above, and further in view of Jagota et al. US 2005/0009039 A1 (hereafter “Jagata”).
Addressing claim 2, Afzali-Ardakani in view of Golovchenko, Heerema, and Min is silent as to whether the carbon nanotube is single-walled or multiwalled. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the carbon nanotube be single-walled because Jagota, which Golovchenko incorporates by reference for details on how to prepare a DNA/carbon nanotube hybrid structure as claimed (paragraph [0081]), states, “The carbon-based nanotubes of the invention can be either multi-walled nanotubes (MWNTs) or single-walled nanotubes (SWNTs). A MWNT, for example, includes several concentric nanotubes each having a different diameter. Thus, the smallest diameter tube is encapsulated by a larger diameter tube, which in turn, is encapsulated by another larger diameter nanotube. A SWNT, on the other hand, includes only one nanotube.[italicizing by the Examiner]” See Jagota paragraph [0062].
Addressing claim 5, Afzali-Ardakani in view of Golovchenko, Heerema, and Min is silent as to whether the carbon nanotube is single-walled or multiwalled. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the carbon nanotube be single-walled because Jagota, which Golovchenko incorporates by reference for details on how to prepare a DNA/carbon nanotube hybrid structure as claimed (paragraph [0081]), states, “The carbon-based nanotubes of the invention can be either multi-walled nanotubes (MWNTs) or single-walled nanotubes (SWNTs). A MWNT, for example, includes several concentric nanotubes each having a different diameter. Thus, the smallest diameter tube is encapsulated by a larger diameter tube, which in turn, is encapsulated by another larger diameter nanotube. A SWNT, on the other hand, includes only one nanotube.[italicizing by the Examiner]” See Jagota paragraph [0062].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER STEPHAN NOGUEROLA whose telephone number is (571)272-1343. The examiner can normally be reached on Monday - Friday 9:00AM-5:30 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached on 571 272-8521. 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://pair-direct.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). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALEXANDER S NOGUEROLA/ Primary Examiner, Art Unit 1795
1 Claim 1, it should be noted, implicitly excludes the opposing electrodes from the graphene sensors.
2 Note that Applicant’s graphene “sensor” may just be a graphene nanoribbon. See Applicant’s Figure 1B and specification paragraph [0030].
3 Note that Applicant’s graphene “sensor” may just be a graphene nanoribbon. See Applicant’s Figure 1B and specification paragraph [0030].
Prosecution Insights