PCT/US2019/012218 21.03.2019
`
`PATENT COOPERATION TREATY
`
`PCT
`
`INTERNATIONAL SEARCH REPORT
`
`(PCT Article 18 and Rules 43 and 44)
`
`Applicant’s or agent’s file reference
`44854-774601
`
`FOR FURTHER
`ACTION
`
`see Form PCT/ISA/220
`as well as, where applicable, item 5 below.
`
`International application No.
`PCT/US19/12218
`
`Internationalfiling date (day/month/year)
`03 January 2019 (03.01.2019)
`
`(Earliest) Priority Date (day/nonth/year)
`04 January 2018 (04.01.2018)
`
`Applicant
`TWIST BIOSCIENCE CORPORATION
`
`This international search report has been prepared by this International Searching Authority and is transmitted to the applicant
`according to Article 18. A copy is being transmitted to the International Bureau.
`This international search report consists ofa total of
`UG
`sheets.
`CL]
`It is also accompanied by a copy of each prior art documentcited in this report.
`
`1. Basis of the report
`a. With regard to the language,the international search wascarried out on the basisof:
`Xx]
`the international application in the language in whichit wasfiled.
`whichis the language of
`Cc)
`a translation of the international application into
`a translation furnished for the purposes of international search (Rules 12.3(a) and 23.1(b)).
`This international search report has been established taking into account the rectification of an obvious mistake
`authorized by or notified to this Authority under Rule 91 (Rule 43.6d/s(a)).
`
`With regard to any nucleotide and/or amino acid sequencedisclosed in the international application, see Box No. I.
`
`Certain claims were found unsearchable (see Box No. II).
`
`Unity of invention is lacking (see Box No.III).
`
`. With regard to thetitle,
`
`the text is approved as submitted by the applicant.
`C] the text has been established by this Authority to read as follows:
`
`b. [] none of the figures is to be published with the abstract.
`
`With regard to the abstract,
`
`the text is approved as submitted by the applicant.
`[] the text has beenestablished, according to Rule 38.2, by this Authority as it appears in Box No. [V. The applicant may,
`within one month from the date of mailing of this international search report, submit commentsto this Authority.
`
`With regard to the drawings,
`a.
`the figure of the drawings to be published with the abstract is Figure No.
`[Xx]
`as suggested by the applicant.
`[J as selected by this Authority, because the applicant failed to suggest a figure.
`C] as selected by this Authority, because this figure better characterizes the invention.
`
`13
`
`Form PCT/ISA/210 (first sheet) (January 2015)
`
`

`

`PCT/US2019/012218 21.03.2019
`
`INTERNATIONAL SEARCH REPORT
`
`International application No.
`PCT/US19/12218
`
`Box No. II
`
`Observations where certain claims were found unsearchable (Continuation of item 2 offirst sheet)
`
`Claims Nos.:
`because they relate to parts of the international application that do not comply with the prescribed requirements to such an
`extent that no meaningful international search can be carried out, specifically:
`
`Claims Nos.: 5-13, 19-35, 40-46, 51-57, 62-68
`because they are dependent claims andare not drafted in accordance with the second andthird sentences of Rule 6.4(a).
`
`Box No. HI
`
`Observations where unity of invention is lacking (Continuation of item 3 of first sheet)
`
`This International Searching Authority found multiple inventions in this international application, as follows:
`
`This international search report has not been established in respect of certain claims under Article 17(2)(a) for the following reasons:
`1. [J Claims Nos.:
`because they relate to subject matter not required to be searched by this Authority, namely:
`
`Noprotest accompanied the paymentof additional search fees.
`
`Asall required additional search fees were timely paid by the applicant, this international search report covers all searchable
`claims.
`
`Asall searchable claims could be searched withouteffort justifying additional fees, this Authority did not invite payment of
`additional fees.
`
`As only someof the required additional search fees were timely paid by the applicant, this international search report covers
`only those claims for which fees were paid, specifically claims Nos.:
`
`No required additional search fees were timely paid by the applicant. Consequently, this international search report is
`restricted to the invention first mentioned in the claims;
`it is covered by claims Nos.:
`
`Remarkon Protest
`
`The additional search fees were accompaniedbythe applicant’s protest and, where applicable, the
`paymentofa protestfee.
`The additional search fees were accompanied by the applicant’s protest but the applicable protest
`fee was not paid within the time limit specified in the invitation.
`
`Form PCT/ISA/210 (continuation of first sheet (2)) January 2015)
`
`

`

`
`
`[_] See patent family annex.
`Further documentsarelisted in the continuation of Box C.
`Jater documentpublishedafter the internationalfiling date or priority
`Special categories of cited documents:
`date and not in conflict with the application but cited to understand
`documentdefining the generalstate of the art which is not considered
`the principle or theory underlying the invention
`to be of particular relevance
`documentofparticular relevance; the claimed invention cannot be
`earlier application or patentbut published onorafter the international
`considered novel or cannot be considered to involve an inventive
`filing date
`step when the documentis taken alone
`document which may throw doubts on priority claim(s) or which is
`Specialrasanas sweden" date of another citation or other “y" documentofparticular relevance;the claimed invention cannot be
`Ss
`SP
`.
`ae
`considered to involve an inventive step when the document
`is
`documentreferring to an oral disclosure, use, exhibition or other
`combined with one or more other such documents, such combination
`means
`being obvious to a person skilled in the art
`document publishedprior to the internationalfiling date but later than
`thepriority date claimed
`document memberof the same patent family
`Date of the actual completion of the international search
`Date of mailing of the international search report
`24 February 2019 (24.02.2049)
`2 ] MAR 2019
`
`US 8,500,979 B2 (ELIBOL,OHetal.) 6 August 2013; figure 1; column 3, lines 10-20; column 4,|2-3, 4/1-3, 14-16,
`lines 15-40; column6, lines 25-35, 45-60; column 9,lines 1-5
`17/14-16, 18/14-16,
`36-38, 39/36-38
`
`US 2005/0112679 A1 (MYERSON, J et al.) 26 May 2005: paragraphs [0027], [0077]. [0079],|36-38, 39/36-38,
`[0090], [0093); claims 1, 13
`50/47-49, 58-60,
`61/58-60
`
`US 2016/0289758 A1 (AKESON, etal.) 6 October 2016; abstract; paragraphs [0137], [0139],|58-60, 61/58-60
`[0147]
`
`US 2015/0293102 A1 (SHIM, J) 15 October 2015; paragraph [0035]
`
`48, 50/48
`
`“T"
`
`“Xx”
`
`Nameand mailing address of the ISA/
`Mail Stop PCT,Attn: ISA/US, Commissioner for Patents
`P.O. Box 1450, Alexandria, Virginia 22313-1450
`Facsimile No. 571-273-8300
`Form PCT/ISA/210 (second sheet) (January 2015)
`
`Authorized officer
`
`PCT Helpdesk: 571-272-4300
`PCT OSP: 571-272-7774
`
`Shane Thomas
`
`PCT/US2019/012218 21.03.2019
`
`INTERNATIONAL SEARCH REPORT
`
`Intemational application No.
`PCT/US19/12218
`
`CLASSIFICATION OF SUBJECT MATTER
`A.
`IPC - C12N 15/09; G11C 11/00, 11/56; GO1N 27/403 (2019.01)
`CPC -
`
`C12N 15/09, 15/1006; G11C 11/00, 11/56, 11/5664; GO1N 27/403, 27/404
`
`According to International Patent Classification (IPC) or to both national classification and IPC
`.
`FIELDS SEARCHED
`
`Minimum documentation searched (classification system followed by classification symbols)
`See Search History document
`
`Documentation searched other than minimum documentation to the extent that such documents are included in the fields searched
`See Search History document
`
`Electronic data base consulted during the international search (name of data base and, where practicable, search terms used)
`See Search History document
`C. DOCUMENTS CONSIDEREDTO BE RELEVANT
`
`Category*
`
`Citation of document, with indication, where appropriate, of the relevant passages
`
`Relevant to claim No.
`
`US 6,728,129 B2 (LINDSEY,JS etal.) 27 April 2004; abstract; figures 1-2, 4; column 10, lines
`65-67; column 11, lines 1-15; column 14, lines 10-15
`
`1
`--
`2-3, 4/1-3, 14-16,
`17/14-16, 18/14-16
`
`US 2004/0219663 A1 (PAGE, RDet al.) 4 November 2004; figure 1; paragraphs [0024], [0066],|47, 49,
`[0074}-[0075), [0080]-(0081}, (0099)
`
`-4
`
`8, 50/47-49
`
`

`

`PCT/US2019/012218 21.03.2019
`
`INTERNATIONAL SEARCH REPORT
`
`International application No.
`PCT/US19/12218
`
`C (Continuation).
`
`DOCUMENTSCONSIDERED TO BE RELEVANT
`
`Category*
`
`Citation of document, with indication, where appropriate, of the relevant passages
`
`A
`
`A
`
`A
`
`1-3, 4/1-3, 14-16,
`17/14-16, 18/14-16,
`36-38, 39/36-38, 47-49,
`50/47-49, 58-60,
`61/58-60
`
` Relevant to claim No.
`
`US 6,017,434 A (SIMPSON, JW etal.) 25 January 2000; entire document
`
`US 6,969,449 B2 (MAHER, MP etal.) 29 November 2005; entire document
`
`1-3, 4/1-3, 14-16,
`17/14-16, 18/14-16,
`36-38, 39/36-38, 47-49,
`50/47-49, 58-60,
`61/58-60
`
`US 2016/0318016 A1 (ILLUMINA, INC.) 3 November 2016; entire document
`
`1-3, 4/1-3, 14-16,
`17/14-16, 18/14-16,
`36-38, 39/36-38, 47-49,
`50/47-49, 58-60,
`61/58-60
`
`Form PCT/ISA/210 (continuation of second sheet) (January 2015)
`
`

`

`PCT/US2019/012218 21.03.2019
`
`PATENT COOPERATION TREATY
`
`From the
`INTERNATIONAL SEARCHING AUTHORITY
`
`To: David Harburger
`
`Wilson Sonsini Goodrich & Rosati
`650 Page Mill Road
`Palo Alto, California 94304
`United States of America
`
`PC T
`
`WRITTEN OPINION OF THE
`INTERNATIONAL SEARCHING AUTHORITY
`
`(PCT Rule 435is.1) Date of mailing
`
`
`
`(day/month/year)
`
`2 1 M A R 201 9
`
`Applicant’s or agent’s file reference
`44854-774601
`
`FOR FURTHER ACTION
`See paragraph 2 below
`
`
`Internationalfilingdate(day/month/year)
`International applicationNo.
`
`PCT/US19/12218
`
`03 January 2019 (03.01.2019)
`
`International Patent Classification (IPC) or both national classification and IPC
`IPC)
`- C12N 15/09; G11C 11/00, 11/56; GO1N 27/403 (2019.01)
`CPC -
`
`Prioritydate(day/month/year)
`
`04 January 2018 (04.01.2018)
`
`!
`
`C12N 15/09, 15/1006; G11C 11/00, 11/56, 11/5664; GO1N 27/403, 27/404
`
`Applicant Twist BIOSCIENCE CORPORATION
`
`
`
`
`
`1. This opinion contains indications relating to the following items:
`x] Box No. |!
`Basis of the opinion
`[J Box No.II
`Priority
`Box No. III Non-establishment of opinion with regard to novelty, inventive step and industrial applicability
`
`Box No. IV
`
`Lack of unity of invention
`
`UUKOK Box No. VII Certain defects in the international application
`
`Box No. V__Reasoned statement under Rule 43 dis. 1(a)(i) with regard to novelty, inventive step and industrial applicability;
`citations and explanations supporting such statement
`Certain documents cited
`
`Box No. VI
`
`[J Box No. VIII Certain observations on the international application
`
`2. FURTHER ACTION
`
`lf a demand for international preliminary examination is made, this opinion will be considered to be a written opinion of the
`Intemational Preliminary Examining Authority (“PEA”) exceptthat this does not apply where the applicant chooses an Authority
`other than this one to be the IPEA and the chosen IPEAhas notified the International Bureau under Rule 66.1 4és(b) that written
`opinionsof this International Searching Authority will not be so considered.
`If this opinion is, as provided above, considered to be a written opinion of the |PEA,the applicantis invited to submit to the IPEA
`a written reply together, where appropriate, with amendments, before the expiration of 3 months from the date of mailing of Form
`PCT/ISA/220 or before the expiration of 22 months from the priority date, whichever expires later.
`For further options, see Form PCT/ISA/220.
`
`Nameand mailing address of the ISA/US|Date of completion ofthis opinion Authorized officer
`
`Mail StopPCT, Attn: ISA/US
`Sh
`Th
`momas
`ane
`Commissioner for Patents
`P.O. Box 1450, Alexandria, Virginia 22313-1450
`PCT Helpdesk: 571-272-4300
`Facsimile No. 571-273-8300
`PCT OSP: 571-272-7774
`
`24 February 2019 (24.02.2019)
`
`
`
`Form PCT/ISA/237 (cover sheet) (January 2015)
`
`

`

`PCT/US2019/012218 21.03.2019
`
`WRITTEN OPINION OF THE
`INTERNATIONAL SEARCHING AUTHORITY
`
`International application No.
`PCT/US19/12218
`
`Box No. I
`
`Basis of this opinion
`
`whichis the languageof a translation
`
`1. With regard to the language, this opinion has been established on the basis of:
`[xX]
`the international application in the language in whichit was filed.
`a translation of the international application into
`furnished for the purposes of international search (Rules 12.3(a) and 23.1(b)).
`
`
`
`
`
`
`2. ["] This opinion has been established taking into accountthe rectification of an obvious mistake authorized by or notified to
`this Authority under Rule 91 (Rule 43 dis. 1(a)).
`
`
` 3. | With regard to any nucleotide and/or amino acid sequencedisclosed in the international application, this opinion has
`been established on the basis of a sequencelisting:
`
`
`a. C] forming part of the international application as filed:
`[] in the form of an Annex C/ST.25textfile.
`[] on paperor in the form ofan imagefile.
`b. LJ furnished together with the international application under PCT Rule 13¢er.1(a) for the purposes of international
`
`
`search only in the form of an Annex C/ST.25 textfile.
`
`
`c. LJ furnished subsequentto the internationalfiling date for the purposes of international search only:
`[__]
`in the form of an Annex C/ST.25 textfile (Rule 13ser.1(a)).
` 4. C] In addition, in the case that more than one version or copy of a sequencelisting has been filed or furnished, the required
`Cj on paperor in the form of an imagefile (Rule 13¢er.1(b) and Administrative Instructions, Section 713).
`
`
`statements that the information in the subsequentor additional copiesis identical to that forming part of the application as
`filed or does not go beyond the application as filed, as appropriate, were furnished.
`
`
`
`5. Additional comments:
`
`Form PCT/ISA/237 (Box No. 1) (January 2015)
`
`

`

`PCT/US2019/012218 21.03.2019
`
`WRITTEN OPINION OF THE
`INTERNATIONAL SEARCHING AUTHORITY
`
`International application No-:
`PCT/US19/12218
`
`Box No. III
`
`Non-establishment of opinion with regard to novelty, inventive step and industrial applicability
`
`[] the entire international application.
`SZ]_claims Nos. 5-13, 19-35, 40-46,51-57, 62-68
`because:
`
`the said international application, or the said claims Nos.
`subject matter which does not require an international search (specify):
`
`relate to the following
`
`~<|
`
`the description, claims or drawings (indicate particular elements below) or said claims Nos. 5-13,19-35,40-46,51-57,62-68
`are so unclear that no meaningful opinion could be formed (specify):
`
`because claims 5-13, 19-35, 40-46, 51-57, 62-68 are dependent claims and are not drafted in accordance with the second andthird
`sentences of Rule 6.4(a).
`
`[] the claims, or said claims Nos.
`by the description that no meaningful opinion could be formed (specify):
`
`are so inadequately supported
`
`The questions whetherthe claimed invention appearsto be novel, to involve an inventive step (to be non obvious), or to be industrially
`applicable have not been examinedin respectof:
`
`[] See Supplemental Box for further details.
`
`x]
`
`no international search report has been established for said claims Nos. 5-13, 19-35, 40-46, 51-57, 62-68
`
`[] ameaningful opinion could not be formed withoutthe sequencelisting; the applicantdid not, within the prescribed timelimit:
`furnish a sequence listing in the form of an Annex C/ST.25 text file, and such listing was not available to the
`International Searching Authority in the form and manner acceptable to it; or the sequencelisting fumished did not
`comply with the standard provided for in Annex C of the Administrative Instructions.
`furnish a sequencelisting on paperor in the form of an image file complying with the standard provided for in Annex
`C of the Administrative Instructions, and such listing was not available to the International Searching Authority in the
`form and manneracceptable to it, or the sequencelisting furnished did not comply with the standard provided for in
`Annex C of the Administrative Instructions.
`
`pay the required late furnishing fee for the furnishing of a sequence listing in response to an invitation under
`Rule 13¢er.1(a) or (b).
`
`Form PCT/ISA/237 (Box No.III) (January 2015)
`
`

`

`PCT/US2019/012218 21.03.2019
`
`WRITTEN OPINION OF THE
`INTERNATIONAL SEARCHING AUTHORITY
`
`International application No.
`PCT/US19/12218
`
`Box No. V
`
`Reasonedstatement under Rule 43dis.1(a)(i) with regard to novelty, inventive step and industrial applicability;
`citations and explanations supporting such statement
`
`-***-Continued Within the Next Supplemental Box-***-
`
`As perclaim 1, Lindsey discloses a device for storing information (high density memory devices; abstract), comprising: a solid support,
`wherein the solid support comprisesa plurality of wells (storage medium is boundto substrate (solid support) comprising storage location
`elements 104; figure 2; column7, lines 45-50; column 114, lines 9-14), wherein each of the wells comprises an addressable locus (each
`storage cell (well) on a chip has storage location element 104 (addressable locus); figure 2; column 10, lines 65-67; column 11, lines
`1-15) comprising: a synthesis surface located in a bottom region of each of the wells (storage cell (well) has multiplicity of storage
`molecules 105 (synthesis surface), which can be synthesizedatdifferent oxidation stages, located at the bottom region; figure 1; column
`11, lines 1-15; column 14, lines 10-15); a bottom electrode in addressable communication with the synthesis surface (working electrode
`101 (bottom electrode) located at bottom of the cell (well); figures 1-2; column 10,lines 65-67; column 11, lines 1-15); and at least one
`sidewall electrode located on a sidewall of each of the wells (reference electrode 103 (sidewall electrode) located on sidewall of well:
`figures 1-2; column 10, lines 65-67; column 11, lines 1-15), wherein the at least one sidewall electrode is 50 nm to 200 nm from the
`bottom region (reference electrode 103 (sidewall electrode) are on the sidewalls of the wells, are located approx. 105 nm above working
`electrodes 101 which are disposed on the bottom of the wells, as observed from figure; figures 1-2; column 10, lines 65-67; column 11,
`lines 1-15).
`
`Statement
`
`Novelty (N)
`
`Inventive step (IS)
`
`Claims
`Claims
`
`Claims
`Claims
`
`1,47, 49
`
`**Please see below**
`
`NONE
`**Please see below**
`
`Industrial applicability (IA)
`
`Claims
`Claims
`
`“*Please see below**
`NONE
`
`
`
`Citations and explanations:
`2.
`-***-Continued from Box V.1: Statement-***-
`
`Novelty (N): NO 2-3, 4/1-3, 14-16, 17/14-16, 18/14-16, 36-38, 39/36-38, 48, 50/47-49, 58-60, 61/58-60
`Inventive Step (IS): NO 1-3, 4/1-3, 14-16, 17/14-16, 18/14-16, 36-38, 39/36-38, 47-49, 50/47-49, 58-60, 61/58-60
`Industrial Applicability (IA): YES 1-3, 4/1-3, 14-16, 17/14-16, 18/14-16, 36-38, 39/36-38, 47-49, 50/47-49, 58-60, 61/58-60
`
`-***-Continued from Box V.2: Citations and explanations-***-
`Claim 1 lacks novelty under PCT Article 33(2) as being anticipated by US 6,728,129 B2 to Lindsey, et al. (hereinafter ‘Lindsey’).
`
`Claims 47 and 49 lack novelty under PCT Article 33(2) as being anticipated by US 2004/0219663 A1 to Page,etal. (hereinafter ‘Page’).
`
`As perclaim 47, Page discloses a methodforstoring information (method of array substrate 10 barcode identifiers carrying information
`which can be stored on computer readable storage medium; paragraphs [0024], [0080]), comprising: a) providing a solid support
`comprising a surface (substrate 10; figure 1; paragraph [0075)); b) depositing at droplet comprising at least one nucleoside on the surface
`(probe precursor drops may be biomonomer such as a nucleoside; paragraphs [0066], [0074], [0081]), wherein the at least one
`nucleoside couples to a polynucleotide attached to the surface (one or more arrays 12 arranged on the substrate 10 contains multiple
`spots 16 of biopolymer/biomonomers, such that probe precursor drops with biomonomers such as nucleosides haslinking groups such
`that polynucleotides can be formed using sequential deposition of different probe precursors; paragraphs [0066], [0074}-[0075)); and c)
`repeating step b) to synthesize a plurality of polynucleotides on the surface (probe precursors, which are nucleosides or polynucleotides,
`are deposited as drops on the surface 11a of arrays 12 on substrate 10; paragraphs [0066], (0074]-[0075], (0081}), wherein the droplet
`has a volumeof less than about 100 femtoliters (droplet size is 0.1-1000 pL which is equal to 100-1,000,000 femtoliters; paragraph
`{0099}).
`
`As per claim 49, Page discloses the method of claim 47. Page further discloses wherein the droplet has a volumeof less than about 25
`femtoliters to 100 femtoliters (droplet size is 0.1-1000 pL which is equal to 100-1,000,000 femtoliters; paragraph [0099)]).
`
`Claims 2-3, 4/1-3, 14-16, 17/14-16 and 18/14-16 lack an inventive step under PCT Article 33(3) as being obvious overLindseyin view of
`US 8,500,979 B2 to Elibol, et al. (hereinafter ‘Elibol').
`
`Asperclaim 2, Lindsey discloses the device of claim 1. Lindsey does not disclose wherein the solid support comprises addressable loci
`at a density of at least 100 x10°6 addressable loci per cm2. Elibol discloses wherein the solid support comprises addressable loci at a
`density of at least 100 x10*6 addressable loci per cm2 (arrays of sensors (addressable loci) range from 1048 to 1000,000,000 for a 1 cm2
`wafer chip, which contain immobilized DNA (polynucleotide) molecules; column6,lines 25-35, 45-60). It would have been obviousto one
`of ordinary skill in the art at the time of the invention to modify the Lindsey invention to provide wherein the solid support comprises
`addressableloci at a density of at feast 100x106 addressableloci per cm2, as taught by Elibol, in order to provide minimizing fabrication
`steps to manufacture device and reduce stress induced buckling (Elibo!; column 4, lines 20-40).
`
`Form PCT/ISA/237 (Box No. V) (January 2015)
`
`

`

`PCT/US2019/012218 21.03.2019
`
`WRITTEN OPINION OF THE
`INTERNATIONAL SEARCHING AUTHORITY
`
`International application No.
`PCT/US19/12218
`
`Supplemental Box
`
`
`
`
`In case the spacein any of the preceding boxesis notsufficient.
`Continuationof:
`
`
`-***-Continued from Box V: Citations and Explanations-***-
`Asperclaim 3, Lindsey discloses the device of claim 1. Lindsey does not disclose wherein the solid support comprises addressable loci
`
`
`at a density of 100 x 10*6 to 100 x 10*7 addressable loci per cm2. Elibol discloses wherein the density of addressable loci on the solid
`
`
`support is 100x 10*6 to 100 x 10*7 polynucleotides per cm2 (arrays of sensors (addressable loci) range from 108 to 1000,000,000 for a
`1 cm2 wafer chip, which contain immobilized DNA (polynucleotide) molecules; column6,lines 25-35, 45-60). It would have been obvious
`
`
`to one of ordinary skill in the art at the time of the invention to modify the Lindsey invention to provide wherein the density of addressable
`
`
`loci on the solid support is 100x 10*6 to 100 x 10*7 polynucleotides per cm2, as taught by Elibol, in order to provide minimizing
`fabrication steps to manufacture device and reduce stress induced buckling (Elibol; column 4, lines 20-40).
`
`
`
`
`As per claim 4/1, Lindsey discloses the device of claim 1. Lindsey does not disclose wherein the addressable locus comprises a
`diameter up to about 750 nm. Elibol discloses wherein the addressable locus comprises a diameter up to about 750 nm (arrays of
`
`
`
`sensors (addressable loci) has opening 35 of 5-15 nm;figure 1; column4, lines 15-25; column6,lines 25-35, 45-60). It would have been
`obvious to one of ordinary skill in the art at the time of the invention to modify the Lindsey invention to provide wherein the addressable
`locus comprises a diameter up to about 750 nm, as taughtby Elibol, in order to provide heads larger than the opening diameterin order
`
`to sealit (Elibol; column4, lines 15-25).
`
`
`As per claims 4/2-3, Lindsey and Etibol, in combination, disclose the device of any one of claims 2 to 3. Lindsey does not disclose
`wherein the addressable locus comprises a diameter up to about 750 nm.Elibo! discloses wherein the addressable locus comprises a
`
`
`diameter up to about 750 nm (arrays of sensors (addressable loci) has opening 35 of 5-15 nm; figure 1; column 4, lines 15-25; column 6,
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`lines 25-35, 45-60). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the Lindsey
`invention to provide wherein the addressable locus comprises a diameter up to about 750 nm, as taught by Elibol, in order to provide
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`headslarger than the opening diameterin orderto seal it (Elibol; column 4, lines 15-25).
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` As per claim 14, Lindsey discloses a device for storing information (high density memory devices; abstract), comprising: a solid support,
`wherein the solid support comprises a plurality of wells (storage medium is bound to substrate (solid support); figure 2; column7, lines
`45-50; column 11, lines 9-14), wherein each of the wells comprises an addressable locus (each storage cell (well) on a chip has storage
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`location element 104 (addressable locus); figure 2; column 10, lines 65-67; column 11, lines 1-15) comprising: a synthesis surface
`located in a bottom region of each of the wells (storage cell (well) has multiplicity of storage molecules 105 (synthesis surface), which
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`can be synthesized atdifferent oxidation stages, located at the bottom region; figure 1; column 11, lines 1-15; column 14,lines 10-15); a
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`bottem electrode in addressable communication with the synthesis surface (working electrode 101 (bottom electrode) located at bottom
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`of the cell (well); figures 1-2; column 10, lines 65-67; column 11, lines 1-15); at least one sidewall electrode located on a sidewall of each
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`of the wells (reference electrode 103 (sidewall electrode) located on sidewall of well; figures 1-2; column 10, lines 65-67; column 11,
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`lines 1-15). Lindsey does not disclose wherein the synthesis surface at each addressable locus comprisesat least one polynucleotide
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`extending from the synthesis surface, and wherein the polynucleotides comprising different sequences on the solid support are present
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`at a density of at least 100 x 10*6 polynucleotides per cm2. Elibo! discloses wherein the synthesis surface at each addressable locus
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`comprisesat least one polynucleotide extending from the synthesis surface (arrays of sensors (addressable loci) contain immobilized
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`DNA(polynucleotide) molecules within the sensor surface (synthesis surface) onto which other nucleotides attach; column6, lines
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`25-35, 45-60), and wherein the polynucleotides comprising different sequences onthe solid support are presentat a density ofat least
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`100 x 10°6 polynucleotides per cm2 (arrays of sensors (addressable loci) range from 10*8 to 1000,000,000 for a 1 cm2 wafer chip,
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`which contain immobilized DNA (polynucleotide) molecules; column 6, lines 25-35, 45-60). It would have been obvious to oneof ordinary
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`skill in the art at the time of the invention to modify the Lindsey invention to provide wherein the synthesis surface at each addressable
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`locus comprises at least one polynucleotide extending from the synthesis surface, and wherein the polynucleotides comprising different
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`sequenceson the solid support are present at a density of at least 100 x 106 polynucleotides per cm2, as taught by Elibol, in order to
`provide minimizing fabrication steps to manufacture device and reduce stress induced buckling (Elibol; column 4, lines 20-40).
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`As per claim 15, Lindsey and Elibol, in combination, disclose the device of claim 14. Lindsey does not disclose wherein the solid support
`comprises polynucleotides of different sequencesat a density of at least 100 x 10*7 polynucleotides per cm2. Elibol discloses wherein
`the density of addressable loci on the solid support is 100x 106 to 100 x 10°7 polynucleotides per cm2 (arrays of sensors (addressable
`loci) range from 10*8 to 1000,000,000 for a 1 cm2 wafer chip, which contain immobitized DNA (polynucleotide) molecules; column 6,
`lines 25-35, 45-60). It would have been obviousto oneof ordinary skill in the art at the time of the invention to modify the Lindsey
`invention to provide wherein the density of addressable loci on the solid support is 100x 10°6 to 100 x 1047 polynucleotides per cm2, as
`taught by Elibol, in order to provide minimizing fabrication steps to manufacture device and reduce stress induced buckling (Elibol;
`column 4, lines 20-40).
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`As per claim 16, Lindsey and Elibol, in combination, disclose the device of claim 14, wherein the solid support comprises addressable
`loci at a density of 100 x 10*6 to 100 x 10%7 polynucleotides per cm2. Elibol discloses wherein the density of addressable loci on the
`solid support is 100x 10%6 to 100 x 10*7 polynucleotides per cm2 (arrays of sensors (addressable loci) range from 10*8 to 1000,000,000
`for a 1 cm2 wafer chip, which contain immobilized DNA(polynucleotide) molecules; column6, lines 25-35, 45-60). It would have been
`obvious to one ofordinary skill in the art at the time of the invention to modify the Lindsey invention to provide wherein the density of
`addressable loci on the solid support is 100x 10°6 to 100 x 10°7 polynucleotides per cm2, as taught by Elibol, in order to provide
`minimizing fabrication steps to manufacture device and reduce stress induced buckling (Elibol; column 4,lines 20-40).
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`Asper claims 17/14-16, Lindsey and Elibol, in combination, disclose the device of any one of claims 14 to 16. Lindseyfurther discloses
`wherein each of the wells comprises a depth up to about 1000 nm (eachstorage cell (well) on a chip has depth of approx. 500 nm as
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`observed from figure 1; figures 1-2, 4; column 10, lines 65-67; column 11, tines 1-15).
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`As per claims 18/14-16, Lindsey and Elibol, in combination, disclose the device of any one of claims 14 to 16. Lindsey further discloses
`wherein each of the wells comprises a depth of 100 nm to 1000 nm (each storagecell (well) on a chip has depth of approx. 500 nm as
`observedfrom figure 1; figures 2, 4; column 10, lines 65-67; column 11, lines 1-15).
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`-***-Continued Within the Next Supplemental Box-***-
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`Form PCT/ISA/237 (Supplemental Box) (January 2015)
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`PCT/US2019/012218 21.03.2019
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`INTERNATIONAL SEARCHING AUTHORITY
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`International application No.
`PCT/US19/12218
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`Supplemental Box
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`In case the space in any of the preceding boxesis not sufficient.
`Continuation of:
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` WRITTENOPINION OF THE
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`-***_Continued from Previous Supplemental Box-***-
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`Claims 36-38 and 39/36-38 lack an inventive step under PCT Article 33(3) as being obvious over US 8,500,979 B2to Elibol, et al.
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`(hereinafter ‘Elibol’) in view of US 2005/0112679 At to Myerson, etal. (hereinafter ‘Myerson’).
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` As per claim 36, Elibol discloses a methodfor storing information (electronic sensor for data collection and output; abstract: column3,
`lines 10-20), comprising: a) providing a solid support comprising a surface (electronic sensor 10 housed on substrate 15;figure 1;
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`column3, lines 10-15}; to synthesize a plurality of polynucleotides on the surface (arrays of sensors have DNA molecules
`(polynucleotides) immobilized on the surfaces; column6, lines 20-35; column 9, lines 1-5), wherein polynucleotides on the surface are
`presentat a density of at least 100 x10*6 polynucleotides per cm2 (arrays of sensors (addressable loci) range from 108 to
`1000,000,000 for a 1 cm2 wafer chip, which contain immobilized DNA (polynucleotide) molecules; column6, lines 25-35, 45-60). Elibol
`doesnotdisclose b) depositing at least one nucleoside on the surface, wherein the at least one nucleoside couples to a polynucleotide
`attachedto the surface; and c) repeating step b) to synthesize a plurality of polynucleotides on the surface, wherein polynucleotides
`having different sequences on the surface. Myerson discloses b) depositing at least one nucleoside on the surface (nucleosides
`deposited on substrate surface; paragraph [0077]), wherein the at least one nucleoside couples to a polynucleotide attached to the
`surface (nucleosides deposited until polynucleotides are formed by coupling reaction to the polynucleotide chains; paragraph [0077));
`and c) repeating step b) to synthesize a plurality of polynucleotides on the surface (nucleosides depositedtill polynucleotides are formed
`by coupling reaction to the polynucleotide chains; paragraph [0077]), wherein polynucleotides having different sequences on the surface
`(polynucleotide array formed on the support surface have different sequences; paragraphs [0077], [0079], [0090]). It would have been
`obvious to oneofordinary skill in the art at