PCT/US2019IO1 221 8 21 .03.201 9
`
`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
`
`International filing date (day/momh/year)
`03 January 2019 (03.01.2019)
`
`(Earliest) Priority Date (day/month/year)
`04 January 2018 (04.01.2018)
`
`Applicant
`TWIST BIOSCIENCE CORPORATION
`
`This international search report has been prepared by this lntemational Searching Authority and is transmitted to the applicant
`according to Article 18. A copy is being transmitted to the International Bureau.
`
`sheets.
`H
`This international search report consists ofa total of
`E] It is also accompanied by a copy of each prior art document cited in this report.
`
`1. Basis of the report
`a. With regard to the language, the international search was carried out on the basis of:
`
`the international application in the language in which it was filed.
`IX]
`which is the language of
`D a translation ofthe international application into
`a translation fumished for the purposes ofintemational 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 9] (Rule 43.6bis(a)).
`
`With regard to any nucleotide and/or amino acid sequence disclosed in the international application, see Box No. l.
`
`b. '3 none ofthe figures is to be published with the abstract.
`
`Certain claims were found unscarchable (see Box No. II).
`
`Unity of invention is lacking (see Box No. Ill).
`
`4. With regard to the title,
`E the text is approved as submitted by the applicant.
`[3 the text has been established by this Authority to read as follows:
`
`5. With regard to the abstract,
`
`the text is approved as submitted by the applicant.
`
`:1 the text has been established, according to Rule 38.2, by this Authority as it appears in Box No. IV. The applicant may,
`within one month from the date of mailing ofthis international search report, submit comments to this Authority.
`
`6. With regard to the drawings,
`
`a.
`
`the figure ofthe drawings to be published with the abstract is Figure No.
`X] as suggested by the applicant.
`E] as selected by this Authority, because the applicant failed to suggest a figure.
`D as selected by this Authority, because this figure better characterizes the invention.
`
`13
`
`Form PCT/lSA/ZIO (first sheet) (January 2015)
`
`

`

`PCT/USZO19IO12218 21.03.2019
`
`INTERNATIONAL SEARCH REPORT
`
`International application No.
`PCT/US19I12218
`
`Box No. II
`
`Observations where certain claims were found unsearchable (Continuation ofitem 2 of first sheet)
`
`This international search report has not been established in respect of certain claims under Article l7(2)(a) for the following reasons:
`
`1. El ClaimsNos.:
`because they relate to subject matter not required to be searched by this Authority, namely:
`
`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 and are not drafted in accordance with the second and third sentences of Rule 6.4(a).
`
`Box No.1"
`
`Observations where unity ofinvention is lacking (Continuation of item 3 of first sheet)
`
`This lntemational Searching Authority found multiple inventions in this international application, as follows:
`
`
`
`As all required additional search fees were timely paid by the applicant, this international search report covers all searchable
`claims.
`
`As all searchable claims could be searched without effort justifying additional fees, this Authority did not invite payment of
`additional fees.
`
`As only some ofthe 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 lntemational search report is
`restricted to the invention first mentioned in the claims;
`it is covered by claims Nos.:
`
`Remark on Protest
`
`The additional search fees were accompanied by the applicant‘s protest and, where applicable, the
`payment ofa protest fee.
`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.
`No protest accompanied the payment of additional search fees.
`
`Form PCT/lSA/ZIO (continuation of first sheet (2)) (January 2015)
`
`

`

`PCT/U82019/012218 21.03.2019
`
`INTERNATIONAL SEARCH REPORT
`
`International application No.
`PCT/US19I12218
`
`A.
`
`CLASSIFICATION OF SUBJECT MATTER
`
`IPC - C12N 15/09; G11C 11/00, 11/56; G01N 27/403 (2019.01)
`CPC —
`
`C12N 15/09, 15/1006; G11C 11/00, 11/56, 11/5664; G01N 27/403, 27/404
`
`According to International Patent Classification (lPC) or to both national classification and [PC
`B.
`FlELDS 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 CONSIDERED TO BE RELEVANT
`
`Citation of document, with indication, where appropriate, ofthe relevant passages
`
`Relevant to claim No.
`
` date and _not in conflict with the ap lication but citcd to un crstand
`
`US 6,728,129 BZ (LINDSEY, JS et al.) 27 April 2004; abstract; figures 1-2, 4; column 10, lines
`65-67; column 11. lines 1-15; column 14, lines 10—15
`
`US 2004/0219663 A1 (PAGE, RD et al.) 4 November 2004; figure 1; paragraphs [0024], [0066],
`[00741-[0075]. [00801-[0081]. [0099]
`
`1
`--
`2-3, 4/1-3. 14-16.
`17/14-16,18/14-16
`
`47. 49.
`--
`48. 50/47-49
`
`US 8,500,979 82 (ELIBOL, OH et al.) 6 August 2013; figure 1; column 3, lines 10—20; column 4, 23. 4/1-3. 14-16.
`lines 15-40; column 6. 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],
`[0090], [0093]; claims 1, 13
`
`US 2015/0293102 A1 (SHIM, J) 15 October 2015; paragraph [0035]
`
`US 2016/0289758 A1 (AKESON, et al.) 6 October 2016; abstract; paragraphs [0137], [0139].
`[0147]
`
`36-38. 39/36-38.
`50/47-49, 58—60.
`61/58-60
`
`48. 50/48
`
`58-60. 61/58-60
`
`Further documents are listed in the continuation of Box C.
`
`Special categories 0f cited documents:
`document defining the general state ofthe art which is not considered
`to be of particular relevance
`earlier application or patent but published on or after the international
`filing date
`document which may throw doubts on priority claim(s)_ or which is
`tilted to establish the publication date of another Citation or other
`specml reason (as specified)
`document referring to an oral disclosure, use, exhibition or other
`means
`
`document publishedprior to the international filing date but later than
`the priority date claimed
`Date of the actual completion of the international search
`
`24 February 2019 (24.02.2019)
`
`Name and mailing address ofthe lSA/
`Mail Stop PCT, Attn: ISA/US, Commissioner for Patents
`PO. Box 1450, Alexandria, Virginia 22313-1450
`Facsimile No. 571—273—8300
`
`Form PCT/lSA/210 (second sheet) (January 2015)
`
`I: See patent family annex.
`later document published afier the international filing date or
`the principle or theory underlyingt e invention
`document of particular relevance; the claimedinvention cannotbe
`conSIdered novel or cannot be conSIdered to involve an inventive
`step when the document is taken alone
`document of particular relevance; the claimed invention cannot be
`considered to involve an inventive step when the document
`is
`combined with one or more other such documents, such combination
`being obvious to a person skilled in the art
`document member ofthe same patent family
`
`riority
`
`Date ofmailing ofthe international search report
`
`2 1 MAR 2019
`Authorized officer
`
`Shane Thomas
`
`PCT Helpdesk: 571-272-4300
`PCT 05?: 571-272-7774
`
`

`

`PCT/US2019IO1 221 8 21 .03.201 9
`
`INTERNATIONAL SEARCH REPORT
`
`C (Continuation).
`
`DOCUMENTS CONSIDERED TO BE RELEVANT
`
`
`lntemational application No.
`PCT/US19I12218
`
`
`
`
`
`Relevant to claim No.
`
`
`
`
`
`
`
`Citation of document, with indication, where appropriate, of the relevant passages
`
`
`
`17/14- 16. 18/14— 16,
`
` 36-38. 39/36-38, 47-49.
`
`50/47-49, 58-60.
`
`61/58-60
`
`US 6,969,449 82 (MAHER, MP 91 all) 29 November 2005; entire document
`1-3, 4/1-3. 14-16,
`
`
`
`17/14-16,18l14-16,
`
`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, 411-3, 14-16,
`
`17/14-16.18/14-16.
`
`36-38, 39/36-38, 47-49.
`
`50/47-49. 58—60.
`
`61/58—60
`
`1-34/1-3.14-16,
`|US6017.434A(SIMPSON.JWetal.)25January2000;entiredocument
`
`
`Form PCT/lSA/ZIO (continuation ofsecond sheet) (January 20l5)
`
`

`

`PCT/US2019/012218 21.03.2019
`
`From the
`INTERNATIONAL SEARCHING AUTHORITY
`
`PATENT COOPERATION TREATY
`
`T0: 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 43bis. I ) Date ofmailing
`
`
`
`(day/monlh/year)
`
`2 .I M A R 2019
`
`Applicant’s or agent’s file reference
`44854-774601
`
`FOR FURTHER ACTION
`See paragraph 2 below
`
`
`International filing date (day/monrh/year)
`International application No.
`
`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 -
`
`Priority date (day/monIh/year)
`
`04 January 2018 (04.01.2018)
`
`l
`
`C12N15/09. 15/1006; G11C 11/00. 11/56. 11/5664; GO1N 27/403. 27/404
`
`AWN“ TWIST BIOSCIENCE CORPORATION
`
`
`
`I. This opinion contains indications relating to the following items:
`
`XI Box No. I
`
`Basis of the opinion
`
`Priority
`El Box No. II
`Box No. III Non-establishment of opinion with regard to novelty, inventive step and industrial applicability
`
`Box No. IV
`
`Lack of unity ofinvention
`
`CIDEEK Box No. VII Certain defects in the international application
`
`Box No. V
`
`Box No. VI
`
`Reasoned statement under Rule 43bis. 1(a)(i) with regard to novelty, inventive step and industrial applicability;
`citations and explanations supporting such statement
`Certain documents cited
`
`El Box No. VIII Certain observations on the international application
`
`2. FURTHER ACTION
`
`Ifa demand for international preliminary examination is made, this opinion will be considered to be a written opinion of the
`lntcmational Preliminary Examining Authority (“IPEA") except that this does not apply where the applicant chooses an Authority
`other than this one to be the IPEA and the chosen IPEA has notified the International Bureau under Rule 66.1bis(b) that written
`opinions ofthis International Searching Authority will not be so considered.
`lfthis opinion is, as provided above, considered to be a written opinion ofthe IPEA, the applicant is invited to submit to the IPEA
`a written reply together, where appropriate, with amendments, before the expiration of} months from the date ofmailing ofFomi
`PCT/ISA/ZZO or before the expiration of 22 months from the priority date, whichever expires later.
`For further options, see Form PCT/ISA/ZZO.
`
`
`
`Name and mailing address of the ISA/US Date ofcompletion ofthis opinion
`Mail Stop PCT. Attn: ISA/US
`°°mmissi°"e”°' PM“
`PO. Box 1450. Alexandria, Virginia 22313-1450
`Facsimile No. 571-273—8300
`
`24 February 2019 (24.02.2019)
`
`
`
`Authorized officer
`
`Shane "mas
`PCT Helmesk: 5714724300
`PCT osp: 571—272-7774
`
`Form PCT/lSA/237 (cover sheet) (January 20I 5)
`
`

`

`PCT/USZO19IO12218 21.03.2019
`
`WRITTEN OPINION OF THE
`lNTERNATIONAL SEARCHING AUTHORITY
`
`International application No.
`PCT/U319,12218
`
`Box No. 1
`
`Basis of this opinion
`
`
`
`
`
`
`1. With regard to the language, this opinion has been established on the basis of:
`
`
`
`
`
`the international application in the language in which it was filed.
`[XI
`[:1 a translation ofthe international application into
`fumished for the purposes ofintemational search (Rules l2.3(a) and 23.1(b)).
`
`which is the language ofa translation
`
`This opinion has been established taking into account the rectification of an obvious mistake authorized by or notified to
`
`
`this Authority under Rule 91 (Rule 43bis.l(a)).
`
` With regard to any nucleotide and/or amino acid sequence disclosed in the international application, this opinion has
`
`
`been established on the basis ofa sequence listing:
`
`a. E] forming part ofthe international application as filed:
`E] in the form of an Annex C/ST.25 text file.
`E] on paper or in the form of an image file.
`
`b. E] furnished together with the international application under PCT Rule lSter. 1(a) for the purposes of international
`search only in the form ofan Annex C/ST.25 text file.
`
`
`
`
`
`
`
`
`
`
`
`c. E] furnished subsequent to the international filing date for the purposes ofinternational search only:
`[:] in the form ofan Annex C/ST.25 text file (Rule 13m. 1(a)).
`[:1 on paper or in the form ofan image file (Rule l3rer.l(b) and Administrative Instructions, Section 713).
`
` 4, D ln addition, in the case that more than one version or copy ofa sequence listing has been filed or fumished, the required
`
`
`statements that the information in the subsequent or additional copies is identical to that forming part ofthe application as
`filed or does not go beyond the application as filed, as appropriate, were fumished.
`
`5. Additional comments:
`
`
`
`Form PCT/lSA/237 (Box No. 1) (January 2015)
`
`

`

`PCT/USZO19IO12218 21.03.2019
`
`WRITTEN OPINION OF THE
`
`International application No.-
`
`INTERNATIONAL SEARCHING AUTHORITY
`
`PCT/US19/12218
`
`Box No. [I]
`
`Non-establishment ofopinion with regard to novelty, inventive step and industrial applicability
`
`The questions whether the claimed invention appears to be novel, to involve an inventive step (to be non obvious), or to be industrially
`applicable have not been examined in respect of:
`
`E]
`
`the entire international application.
`
`fi
`
`claims NOS. 5-13,19-35.40—46,51-57,62-68
`
`because:
`
`
`
`the said intemational application, or the said claims Nos.
`subject matter which does not require an international search (specgjz):
`
`relate to the following
`
`[:1 See Supplemental Box for fimher details.
`
`the description, claims or drawings (indicate particular elements below) or said claims Nos. 5-13-19-35.40-46.51-57.52-68
`are so unclear that no meaningful opinion could be formed (specifi):
`
`because claims 5-13. 19-35, 40-46. 51-57, 62-68 are dependent claims and are not drafted in accordance with the second and third
`sentences of Rule 6.4(a).
`
`El
`
`the claims, or said claims Nos.
`by the description that no meaningful opinion could be formed (specffil):
`
`are so inadequately supported
`
`g no intemational search report has been established for said claims Nos. 5-13. 19‘35- 40—46: 51-57. 62'“
`
`[:1 a meaningful opinion could not be formed without the sequence listing; the applicant did not, within the prescribed time limit:
`furnish a sequence listing in the form of an Annex C/ST.25 text file, and such listing was not available to the
`lntemational Searching Authority in the form and manner acceptable to it; or the sequence listing furnished did not
`comply with the standard provided for in Annex C of the Administrative Instructions.
`firmish a sequence listing on paper or in the form ofan image file complying with the standard provided for in Annex
`C ofthe Administrative instructions, and such listing was not available to the lntemational Searching Authority in the
`form and manner acceptable to it; or the sequence listing furnished did not comply with the standard provided for in
`Annex C of the Administrative Instructions.
`
`pay the required late fumishing fee for the furnishing of a sequence listing in response to an invitation under
`Rule 13ter. 1(a) or (b).
`
`Form PCT/lSA/237 (Box No. 111) (January 2015)
`
`

`

`PCT/U82019I012218 21.03.2019
`
`WRITTEN OPINION OF THE
`INTERNATIONAL SEARCHING AUTHORITY
`
`International application No.
`PCT/US19/12218
`
`Box No. V
`
`Reasoned statement under Rule 43bis.l(a)(i) with regard to novelty, inventive step and industrial applicability;
`citations and explanations supporting such statement
`
`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. 50147-49, 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, 58-50. 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 82 to Lindsey. et al. (hereinafter ‘Lindsey‘).
`
`As per claim 1, 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) comprising storage location
`elements 104; figure 2; column 7, 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 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 synthesized at different oxidation stages, located at the bottom region; figure 1; column
`11, lines 1-15; column 14, lines 1045); 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).
`
`Claims 47 and 49 lack novelty under PCT Article 33(2) as being anticipated by US 2004/0219663 A1 to Page, et al. (hereinafter 'Paga').
`
`As per claim 47, Page discloses a method for storing 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 has linking 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], [00741-[0075], [0081]), wherein the droplet
`has a volume of 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 volume of 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 over Lindsey in view of
`US 8,500,979 82 to Elibol, et al. (hereinafter ‘Elibol').
`
`As per claim 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 10‘s to 1000,000,000 for a 1 cm2
`wafer chip, which contain immobilized DNA (polynucleotide) molecules; column 6, 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 solid support comprises
`addressable loci at a density of at least 100x10"6 addressable loci 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).
`
`—""-Continued Within the Next Supplemental Box-"'-
`
`Form PCT/ISA/237 (Box No. V) (January 20l5)
`
`

`

`PCTIUSZO19IO12218 21.03.2019
`
`\VRITTEN OPINION OF THE
`INTERNATIONAL SEARCHING AUTHORITY
`
`lntemational application No.
`PCT/UStQ/1221 8
`
`
`
`
`Supplemental Box
`
`In case the space in any of the preceding boxes is not sufficient.
`Continuation of:
`
`
`-"”-Continued from Box V: Citations and Explanations-"'-
`
`As per claim 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"? 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; column 6, 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; column 4, lines 15-25; column 6. 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 heads larger than the opening diameter in order
`to seal it (Elibol; column 4, lines 15-25).
`
`
`As per claims 4/2—3, Lindsey and Elibol, 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. 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; column 4, lines 15—25; column 6.
`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
`
`heads larger than the opening diameter in order to seal it (Elibol; column 4, lines 15—25).
` 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; column 7, lines
`45-50; column 11. lines 9-14). wherein each of the wells comprises an addressable locus (each storage cell (wall) 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 synthesized at different 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); 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). Lindsey does not disclose wherein the synthesis surface at each addressable locus comprises at least one polynucleotide
`
`
`extending from the synthesis surface, and wherein the polynucleotides comprising different sequences on the solid support are present
`
`
`at a density of at least 100 x 10"6 polynucleotides per cm2. Elibol discloses wherein the synthesis surface at each addressable locus
`
`
`comprises at least one polynucleotide extending from the synthesis surface (arrays of sensors (addressable loci) contain immobilized
`
`
`DNA (polynucleotide) molecules within the sensor surface (synthesis surface) onto which other nucleotides attach; column 6, lines
`
`
`25-35, 45-60), and wherein the polynucleotides comprising different sequences on the solid support are present at a density of at least
`
`
`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,
`
`
`which contain immobilized DNA (polynucleotide) molecules; column 6, 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 synthesis surface at each addressable
`
`
`locus comprises at least one polynucleotide extending from the synthesis surface, and wherein the polynucleotides comprising different
`
`
`sequences on the solid support are present at a density of at least 100 x 10"6 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 15, Lindsey and Elibol, in combination, disclose the device of claim 14‘ Lindsey does not disclose wherein the solid support
`
`
`comprises polynucleotides of different sequences at 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 10‘6 to 100 x 10"? polynucleotides per cm2 (arrays of sensors (addressable
`
`
`loci) range from 10‘s to 1000,000.000 for a 1 cm2 wafer chip, which contain immobilized DNA (polynucleotide) molecules; column 6,
`
`
`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 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‘s to 100 x 10‘7 polynucleotides per cm2 (arrays of sensors (addressable loci) range from 10‘s to 1000.000.000
`
`
`for a 1 cm2 wafer chip, which contain immobilized DNA (polynucleotide) molecules; column 6. 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‘s 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 claims 17/14-16, 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 up to about 1000 nm (each storage cell (well) on a chip has depth of approx. 500 nm as
`
`
`observed from figure 1; figures 1—2, 4; column 10, lines 65-67; column 11, lines 1-15).
`
`
`-“‘-Continued Within the Next Supplemental Box-“‘-
`
`Form PCT/lSA/237 (Supplemental Box) (January 2015)
`
`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 storage cell (well) on a chip has depth of approx. 500 nm as
`observed from figure 1; figures 2, 4; column 10, lines 65-67; column 11, lines 1-15).
`
`

`

`-“"-Continued from Previous Supplemental Box-"'-
`Claims 36-38 and 39/36-38 lack an inventive step under PCT Article 33(3) as being obvious over US 8,500,979 82 to Elibol, et al.
`
`
`(hereinafter 'Elibol') in view of US 2005/0112679 A1 to Myerson, et al. (hereinafter 'Myerson').
`
` As per claim 36, Elibol discloses a method for storing information (electronic sensor for data collection and output; abstract: column 3.
`lines 10-20), comprising: a) providing a solid support comprising a surface (electronic sensor 10 housed on substrate 15; figure 1;
`column 3, lines 10—15); to synthesize a plurality of polynucleotides on the surface (arrays of sensors have DNA molecules
`
`(polynucleotides) immobilized on the surfaces; column 6, lines 20-35; column 9, lines 1-5), wherein polynucleotides on the surface are
`present at a density of at least 100 x10"6 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; column 6, lines 25-35, 45-60). Elibol
`does not disclose b) depositing at least one nucleoside on the surface, wherein the at least one nucleoside couples to a polynucleotide
`attached to 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 deposited till 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 one of ordinary skill in the art at the time of the invention to modify the Elibol invention to provide b) depositing at least one
`nucleoside on the surface, wherein the at least on