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 .
Continued Examination
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on September 26, 2025 has been entered.
Status of the Claims
Claims 1 and 47-48 have been amended; and claims 7 and 20-37 have been cancelled previously. Claims 1-6, 8-19 and 38-49 are currently pending and examined herein.
Status of the Rejection
Applicant’s amendments have overcome each claim objection of the previous office action mailed on 3/28/2025.
New grounds of claim objection for claims 1, 12 and 14 as outlined below.
New grounds of claim rejection for claims 2 and 45 under 35 USC § 112(b) as outlined below.
All 35 U.S.C. § 103 rejections from the previous office action are essentially maintained and modified in response to the amendment.
Claim Objection
Claims 1, 12 and 14 are objected to because of the following informalities:
Claim 1: please amend “selectively concentrate and focus in on” to -- selectively concentrate and focus
Claims 12 and 14: please amend “the electric field profile” to -- the --.
Appropriate correction is required.
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 2 and 45 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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.
Regarding claim 2, claim 2 recites “wherein the sample comprises the fluid medium”, thus the fluid medium is a component of the sample. While claim 1 recites “providing the sample and an agent that specifically binds the analyte, combined in a fluid medium in a separation channel”, wherein the sample and the fluid medium are two different components. It is unclear if the fluid medium is a component that is different from the sample or a component of the sample. Therefore, the scope of claim 2 is indefinite. Claim 45 is further rejected by virtue of its dependence upon and because it fails to cure the deficiencies of indefinite claim 2.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-6, 8-19, and 38-49 are rejected under 35 U.S.C. 103 as being unpatentable over Sideris (US 2008/0083621) and further in view of Wang et al. (US 5,567,282) and Hughes (US20120175255A1).
Regarding claim 1, Sideris teaches an electrophoresis method for detecting an analyte in a sample (an electrophoresis method for separating objects in a fluid contained in a separation channel [para.0014]; causing the objects to separate into bands [para. 0016]; step of detecting the bands [para. 0031]), the method comprising:
providing the sample, in a fluid medium in a separation channel (mixing the objects to be separated with the fluid and placing the mixture in the separation channel. Alternatively, the fluid could be placed in the separation channel and then the sample inserted, the sample comprising at least objects to be separated [para.0030]);
applying an electric field, across a pre-set mobility window that targets the analyte, along the separation channel, the electric field having a field profile, and thereby causing analyte to move relative to the fluid medium (applying an electric field along the separation channel, the electric field having a field profile, and thereby causing at least some of the objects to move relative to the fluid [para. 0015]; adjust the field profile relative to the separation channel, thereby causing the objects to separate into bands [para. 0016]; the particular shape of the applied electric field will be selected according to the desired output from the device [para. 0026]; the particular shape and characteristics of the electric field will be selected according to the type of objects 10 to be separated and the properties of the separation fluid 9 [para. 0078]; the shape of the electric field profile will be selected as appropriate for the particles 10 to be separated. Depending on this shape, the dynamic range (in terms of charge and friction coefficient) of the objects that separate with a given resolution in a given channel length can be specified [para. 0099]; by adjusting the time dependency and intensity of the field, as well as the shape of the field profile, the resolution and spacing of the bands may be adjusted as desired. The bands can also be repositioned, for example to allow a particular band of interest to be extracted at one of the exit ports [para. 0148]. The select of the shape of the electric field profile causing the objects to separate into bands and reposition a particular band of interest corresponds to the claimed pre-set mobility window that targets the analyte [objects to be separated/repositioned]); and
varying the applied electric field, within the pre-set mobility window so as to adjust the field profile relative to the separation channel (varying the applied electric field so as to adjust the field profile relative to the separation channel [para. 0016]), thereby causing at least parts of the analyte to concentrate at locations apart from one another in the fluid medium by reaching equilibrium under a combined influence of an electric force due to the electric field and a hydrodynamic force due to the fluid medium (causing the objects to separate into bands under the combined influences of an electric force due to the electric field and a hydrodynamic force due to the fluid [para. 0016];
since the objects are separated into bands, the electric force and the hydrodynamic force must be balanced. If the two opposite forces are not balanced, imbalance of the two forces broadens the bands which can overlap with one another. Thus, reaching equilibrium under a combined influence of an electric force due to the electric field and a hydrodynamic force due to the fluid motion is inherently present in the step of varying the applied electric field within the pre-set mobility window to separate objects into bands), and
wherein the electric field is adjusted within the pre-set mobility window so as to selectively concentrate and focus in on a particular selected assembly, wherein the particular selected assembly is the analyte, and wherein the analyte is concentrated apart from other constituents in the sample (the particular shape of the applied electric field will be selected according to the desired output from the device [para. 0026]; the particular shape and characteristics of the electric field will be selected according to the type of objects 10 to be separated and the properties of the separation fluid 9 [para. 0078]; the shape of the electric field profile will be selected as appropriate for the particles 10 to be separated. Depending on this shape, the dynamic range [in terms of charge and friction coefficient] of the objects that separate with a given resolution in a given channel length can be specified [para. 0099]; varying the applied electric field so as to adjust the field profile relative to the separation channel, thereby causing the objects to separate into bands [para. 0016]; by adjusting the time dependency and intensity of the field, as well as the shape of the field profile, the resolution and spacing of the bands may be adjusted as desired. The bands can also be repositioned, for example to allow a particular band of interest to be extracted at one of the exit ports [para. 0148]. Thus, the electric field is adjusted within the pre-set mobility window so as to selectively concentrate and focus in on a particular selected assembly [objects 10 to be separated into bands; reposition a particular band of interest], wherein the particular selected assembly is the analyte [the objects 10 to be separated], and wherein the analyte is concentrated apart from other constituents in the sample [the objects are separated into bands; the bands can also be repositioned, for example to allow a particular band of interest to be extracted at one of the exit ports]).
Sideris further teaches wherein the typical objects to be separated include
macromolecules, biomolecules or polymers such as proteins, DNA molecules or biological cells [paras. 0039, 0140], and the possibility to run label free (unstained) samples is generally the more attractive option as it leaves the samples unmodified to a certain extent. Further the use of stains is undesirable since substances which attach to DNA or proteins will generally also adhere to a user [para. 0131]. But Sideris is silent to: (1) wherein the objects to be separated comprise unbound analyte, bound analyte (analyte binds to an agent), and an agent that binds to the analyte; and (2) wherein the analyte comprises an intact biological cell, or a biological molecule in its native form.
Thus, Sideris fails to teach an agent that specifically binds the analyte combined with the sample in the fluid medium, and therefore also fails to teach wherein the electric field thereby causing bound and unbound analyte and/or the agent to move relative to the fluid and thereby causing the bound analyte and the unbound analyte to concentrate at locations apart from one another in the fluid so as to selectively concentrate and focus in on the particular selected assembly wherein the particular selected assembly is the bound or unbound analyte and/or the agent and wherein the bound or unbound analyte and/or the agent are concentrated apart from other constituents in the sample; and wherein the analyte comprises an intact biological cell, or a biological molecule in its native form.
Wang teaches wherein using capillary electrophoresis for detection/typing M-proteins present in a sample of serum of an individual (col. 5, lns. 41-56) wherein a specific binding partner is an antibody, modified (especially by reaction with an anhydride) to have an electrophoretic mobility different from that of the analyte to which it binds or an analyte-binding fragment of an antibody such that it is possible to detect M-protein by electrophoresis with minimum of processing steps, easy to use, have high throughput (col. 6, lns. 33-38; col. 6, lns. 16-22). Wang further teaches conversion of electropherogram peaks into such bands are known (col. 9, lns. 48-53) and that after performing capillary electrophoresis, the peak is that of an immunoglobulin:anti-IgG antibody complex, indicating the formation of an immune complex. The shoulder of the complex peak in curve b indicates a small amount of uncomplexed IgG in the sample in which the succinylated anti-IgG:IgG complex was formed (col. 12, lns. 4-9).
Therefore it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to modify the method of Sideris to include an agent that specifically binds the analyte combined with the sample in the fluid medium such as particular M-protein, as taught by Wang, with a reasonable expectation of success of facilitating detection of a desired protein such as an M-protein since Sideris discloses generic protein analytes. Doing so, it would allow to detect M-protein by electrophoresis with minimum of processing steps, easy to use, have high throughput (col. 6, lns. 33-38; col. 6, lns. 16-22 in Wang). With the above modification, the modified objects to be separated comprise bound analyte, unbound analyte, and the agent.
Examiner interprets the combined teachings of Sideris and Wang to meet the limitations: wherein the electric field thereby causing bound and unbound analyte and/or the agent to move relative to the fluid and thereby causing the bound analyte and the unbound analyte to concentrate at locations apart from one another in the fluid so as to selectively concentrate and focus in on the particular selected assembly wherein the particular selected assembly is the bound or unbound analyte and/or the agent and wherein the bound or unbound analyte and/or the agent are concentrated apart from other constituents in the sample, since Sideris teaches causing the objects to separate into bands by reaching equilibrium under the combined influences of an electric force due to the electric field and a hydrodynamic force due to the fluid [para. 0016] and the bands can also be repositioned, for example to allow a particular band of interest to be extracted at one of the exit ports [para. 0148], and Wang teaches that after performing capillary electrophoresis, the peak is that of an immunoglobulin:anti-IgG antibody complex, indicating the formation of an immune complex; and the shoulder of the complex peak in curve b indicates a small amount of uncomplexed IgG in the sample in which the succinylated anti-IgG:IgG complex was formed (col. 12, lns. 4-9).
Modified Sideris is still silent to wherein the analyte comprises an intact biological cell, or a biological molecule in its native form.
Hughes explicitly teaches capillary electrophoresis method for detecting an analyte (a biological target in Fig.1) in the presence of an agent (competing ligand in Fig.1) that specifically binds the analyte [paras. 0016-0029, 0036], wherein the analyte (the biological target) is defined as any biological molecule, molecular complex or other biological entity, pure or impure. Targets include but are not restricted to enzymes, receptors, reporters, G proteins, transporters, ion channels, functional proteins, regulatory proteins, nucleic acids, whole cells and membrane preparations [para. 0029]. Of particular interest are membrane-bound and membrane-associated proteins, including but not limited to G-protein coupled receptors (GPCRs). Such membrane-bound and membrane-associated proteins may be used in their native form [para. 0030]. Another advantage of the method of the invention is that no or minimal target modification is required, thereby allowing use of a target in its substantially native configuration with no or minimal modification or conjugation [para. 0032].
Motivated by the teachings of Sideris regarding the possibility to run label free (unstained) samples which is generally the more attractive option as it leaves the samples unmodified to a certain extent [para. 0131], and the explicit teachings of Hughes regarding electrophoresis method for detecting the biological target in the presence of the agent that specifically binds the target wherein the target is present in its native form with no modification [paras. 0029-0032], it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to further modify the electrophoresis method of modified Sideris for run analyte in its native form with no modification, as taught by Hughes and motivated by Sideris, since it would be generally the more attractive option as it would leave the samples unmodified to a certain extent [para. 0131 in Sideris], and does not require the modification of the target, which could be expensive, time consuming, reduce or alter the activity of proteins (the target) and could produce aberrant results [para. 0032 in Hughes]. Therefore, modified Sideris teaches wherein the analyte comprises a biological molecule in its native form.
Regarding claim 2, modified Sideris teaches the electrophoresis method according to claim 1, and Sideris further teaches wherein the sample comprises the fluid medium (the sample could further comprise fluid, which may or may not be the same as the fluid already contained in the separation channel [para. 0030]).
Regarding claim 3, modified Sideris teaches the electrophoresis method according to claim 1, and further teaches further including the step of detecting the analyte by its co-location of the analyte and the agent (A laser 30 shines UV wavelengths 30' on the microfluidic channel 34 and causes the macromolecules in the separating bands to fluoresce at a wavelength [para. 0134 in Sideris]; bands at the location of the M-protein [col. 9, lns. 45-53 in Wang]).
Regarding claim 4, modified Sideris teaches the electrophoresis method according to claim 1, wherein the sample and the agent are combined prior to contacting the fluid medium (the method further comprises the steps of mixing the objects to be separated with the fluid and placing the mixture in the separation channel. Alternatively, the fluid could be placed in the separation channel and then the sample inserted, the sample comprising at least objects to be separated [para. 0030 in Sideris]; the sample is incubated with the modified analyte-specific antibody, and then subjected to capillary electrophoresis [col. 8, lns. 1-6 in Wang]).
Regarding claim 5, modified Sideris teaches the electrophoresis method according to claim 1. Sideris further teaches the method further comprises the steps of mixing the objects to be separated with the fluid and placing the mixture in the separation channel. Alternatively, the fluid could be placed in the separation channel and then the sample inserted, the sample comprising at least objects to be separated [para. 0030]. Wang further teaches the sample is incubated with the modified analyte-specific antibody, and then subjected to capillary electrophoresis (col. 8, lns. 1-6).
Therefore, Modified Sideris fails to teach wherein the channel is pre-loaded with the agent.
However, generally selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. MPEP 2144.04 (IV)(A). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to preload the channel with the binding agent and then add the sample with a reasonable expectation of success of the sample incubating the with the agent within the channel.
Regarding claim 6, modified Sideris teaches the electrophoresis method according to claim 1, and Sideris further teaches wherein a change in concentration of the analyte at a location is monitored over time (useful conclusions may be derived from the “rising profiles' of the bands as a function of time [para. 0031]).
Regarding claim 8, modified Sideris teaches the electrophoresis method according to claim 1, wherein the agent comprises an antibody or antigen binding fragment thereof (antibody or an analyte-binding fragment of an antibody [col. 6, lns. 16-21 in Wang]).
Regarding claim 9, modified Sideris teaches the electrophoresis method according to claim 1, wherein the agent is labelled with a detectable moiety (fluorescence detection for stained samples can also be deployed for imaging [para. 0132 in Sideris]; specific binding partner (agent) [col. 6, lns. 16-19 in Wang]).
Regarding claim 10, modified Sideris teaches the electrophoresis method according to claim 9, wherein the detectable moiety is a fluorescent molecule, an enzyme, a radioactive label, a DNA probe, or an electrochemiluminescent tag (Sideris teaches wherein fluorescence detection for stained samples can also be deployed for imaging [para. 0132]; Wang teaches specific binding partner (agent) [col. 6, lns. 16-19]).
Regarding claim 11, modified Sideris teaches the electrophoresis method according to claim 1, wherein the sample is a sample of biological fluid (Sideris teaches wherein sample comprises at least objects to be separated [para. 0030], and the objects to be separated comprise biomolecules, proteins, polymers, DNA, RNA or biological cells [paras. 0039, 0142]; Hughes teaches wherein the target is any biological molecule, molecular complex or other biological entity, pure or impure [para. 0029]).
Regarding claim 12, modified Sideris teaches the electrophoresis method according to claim 1, and Sideris teaches wherein the electric field varies with respect to the separation channel along at least a portion of the field profile (the field profile the electric field is non-constant, with respect to the channel, along at least a portion of the field profile [para. 0022]), and/or wherein at least a portion of the field profile has a gradient which is non-zero [a non-zero time-varying electric field gradient is applied, para. 0022]).
Regarding claim 13, modified Sideris teaches the electrophoresis method according to claim 1, and Sideris teaches wherein the electric field is varied in such a way that the field profile moves relative to the separation channel (the electric field is varied in such a way that the field profile moves relative to the separation channel [para. 0023]).
Regarding claim 14, modified Sideris teaches the electrophoresis method according to claim 1, and Sideris teaches wherein the electric field is varied in such a way that the field profile translates along the separation channel (the electric field is varied in such a way that the field profile moves relative to the separation channel [para. 0023]).
Regarding claim 15, modified Sideris teaches the electrophoresis method according to claim 1, and Sideris teaches wherein the fluid medium and the separation channel are substantially stationary with respect to one another (the fluid, which can therefore be stationary itself [para. 0022]).
Regarding claim 16, modified Sideris teaches the electrophoresis method according to claim 1, and Sideris teaches wherein at least a portion of the electric field is monotonic with respect to distance along the separation channel (at least a portion of the field profile is monotonic [para. 0080]).
Regarding claim 17, modified Sideris teaches the electrophoresis method according to claim 1, further comprising the step of modifying the electric field to: (i) adjust spacing between the unbound and bound analyte; (ii) adjust a relative positioning of the unbound and bound analyte; (iii) adjust a resolution of signal of the unbound and bound analyte; (iv) adjust an intensity of signal from the unbound and bound analyte; and/or (v) adjust a concentration of the unbound and bound analyte at a particular location within the fluid medium (Sideris teaches wherein bands can also be repositioned, for example to allow a particular band of interest to be extracted at one of the exit ports [para. 0148]; Wang teaches specific binding partner (agent) [col. 6, lns. 16-19]).
Regarding claim 18, modified Sideris teaches the electrophoresis method according to claim 17, and Sideris further teaches wherein the electric field is modified by changes to time-dependence and/or intensity of the electric field (adjusting the time dependency and intensity of the field of the electric field [para. 0148]).
Regarding claim 19, modified Sideris teaches the electrophoresis method according to claim 1, further comprising the step of extracting a sample of interest from the separation channel after the analyte and the agent have located (Sideris teaches wherein bands can also be repositioned, for example to allow a particular band of interest to be extracted at one of the exit ports [para. 0148]; Wang teaches specific binding partner (agent) [col. 6, lns. 16-19]).
Regarding claim 38, Modified Sideris teaches the electrophoresis method of claim 1 as rejected supra.
Sideris teaches detecting proteins, observing characteristics thereof and quantitation of the bands [paras. 0111, 0155] but fails to teach a diagnostic test.
Wang teaches wherein using capillary electrophoresis for detection/typing M-proteins present in a sample of serum of an individual (col. 5, lns. 41-56) and that the production of such M-proteins can reflect the presence of serious disease (diagnostic test) such as the production of IgM M-proteins is associated with rheumatoid arthritis, certain immunodeficiency diseases, infective diseases, and B cell lymphoproliferative disorders, such as multiple myeloma, Waldenström's macroglobuline mia and lymphoma (col. 2, lns. 3-7).
Therefore it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to modify the electrophoresis method of Modified Sideris to be a diagnostic test as taught by Wang because such an application was known as being facilitated by electrophoretic methods of proteins.
Regarding claim 39, modified Sideris teaches the electrophoresis method according to claim 6, and Sideris further teaches wherein the change in concentration of the analyte at the location is monitored continuously or at defined time intervals (useful conclusions may be derived from the “rising profiles' of the bands as a function of time [para. 0031]; plotting signal strength versus time for a given band a more reliable measurement of the true size of the signal could be obtained [para. 0155]).
Regarding claim 40, modified Sideris teaches the electrophoresis method according to claim 1, wherein the biological molecule is a protein, a nucleic acid or other biological polymer (proteins [para.0039] in Sideris; M-proteins [col. 5, lns. 41-56 in Wang]; enzymes, G proteins, functional proteins, regulatory proteins, or nucleic acids [para. 0029] in Hughes).
Regarding claim 41, modified Sideris teaches the electrophoresis method according to claim 1, and Sideris teaches wherein the analyte is detected in the fluid medium (the objects 10 to be separated are suspended within the fluid 9 in the separation channel 2. The device 1 may further be provided with a detector 6 [para. 0074]).
Regarding claim 42, modified Sideris teaches the electrophoresis method according to claim 1, and Sideris teaches wherein the analyte is simultaneously separated and detected in the fluid medium (force the objects 10 in the separation channel 2 to start moving and converge into bands moving along the separation channel 2. The moving bands can be imaged, or otherwise detected, by a detector 6 which communicates with another control module 4b [para. 0077]).
Regarding claim 43, modified Sideris teaches the electrophoresis method according to claim 1, wherein the sample is added directly to the separation channel, without any sample processing (Sideris teaches a drop 43 of sample can be introduced randomly anywhere along the separation channel [para.0124]. As outlined in the rejection of claim 1 above, modified Sideris teaches wherein the analyte comprises a biological molecule in its native form without any sample processing [Another advantage of the method is that no or minimal target modification is required, thereby allowing use of a target in its substantially native configuration with no or minimal modification, para. 0032 in Hughes]).
Regarding claim 44, modified Sideris teaches the electrophoresis method of claim 13, and Sideris teaches wherein the field profile remains otherwise unchanged as the field profile moves relative to the separation channel (Figs. 2a-2c showing field profile unchanged as it moves in x direction).
Regarding claim 45, modified Sideris teaches the electrophoresis method of claim 2, wherein the sample is as found in nature (complex samples [para. 0156 in Sideris]; membrane-bound and membrane-associated proteins may be used in their native form [para. 0030 in Hughes]; a target in its substantially native configuration [para. 0032 in Hughes]).
Regarding claim 46, modified Sideris teaches the electrophoresis method of claim 40, wherein the biological molecules is a nucleic acid (the objects to be separated comprise DNA and RNA [para. 0039 in Sideris]; targets include nucleic acids [para. 0029 in Hughes]) and the agent is a nucleic acid (Hughes teaches the agent is a nucleic acid [Competing ligands may be any suitable molecule such as nucleic acid, para. 0036]).
Regarding claim 47, modified Sideris teaches the electrophoresis method according to claim 1, and as outlined in the rejection of claim 1 above, modified Sideris teaches wherein the analyte comprises the biological molecule in its native form.
Sideris is silent to wherein the analyte comprises the intact biological cell and is not denatured.
As outlined in the rejection of claim 1 above, Hughes explicitly teaches capillary electrophoresis method for detecting an analyte (a biological target in Fig.1) in the presence of an agent (competing ligand in Fig.1) that specifically binds the analyte [paras. 0016-0029, 0036], wherein the analyte (the biological target) is defined as any biological molecule, molecular complex or other biological entity, pure or impure. Targets include but are not restricted to enzymes, receptors, reporters, G proteins, transporters, ion channels, functional proteins, regulatory proteins, nucleic acids, whole cells and membrane preparations [para. 0029]. Hughes further teaches another advantage of the method of the invention is that no or minimal target modification is required, thereby allowing use of a target in its substantially native configuration with no or minimal modification or conjugation [para. 0032]. Thus, Hughes also teaches wherein the analyte comprises an intact biological cell and is not denatured (a target of whole cell in its substantially native configuration with no modification).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to modify the electrophoresis method of modified Sideris for run analyte comprising an intact biological cell in its native configuration with no modification, as taught by Hughes, since Hughes teaches the use of a target (analyte) including whole cells or any biological molecule in its substantially native configuration with no modification [para. 0030, 0032].
Regarding claim 48, modified Sideris teaches the electrophoresis method according to claim 1, and as outlined in the rejection of claim 1 above, modified Sideris teaches wherein the analyte comprises the biological molecule in its native form.
Sideris is silent to wherein the analyte comprises the intact biological cell and is not processed.
As outlined in the rejection of claim 1 above, Hughes explicitly teaches capillary electrophoresis method for detecting an analyte (a biological target in Fig.1) in the presence of an agent (competing ligand in Fig.1) that specifically binds the analyte [paras. 0016-0029, 0036], wherein the analyte (the biological target) is defined as any biological molecule, molecular complex or other biological entity, pure or impure. Targets include but are not restricted to enzymes, receptors, reporters, G proteins, transporters, ion channels, functional proteins, regulatory proteins, nucleic acids, whole cells and membrane preparations [para. 0029]. Hughes further teaches another advantage of the method of the invention is that no or minimal target modification is required, thereby allowing use of a target in its substantially native configuration with no or minimal modification or conjugation [para. 0032]. Thus, Hughes also teaches wherein the analyte comprises an intact biological cell and is not processed (a target of whole cell in its substantially native configuration with no modification).
It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to modify the electrophoresis method of modified Sideris for run analyte comprising an intact biological cell in its native configuration with no modification, as taught by Hughes, since Hughes teaches the use of a target (analyte) including whole cells or any biological molecule in its substantially native configuration with no modification [para. 0030, 0032].
Regarding claim 49, modified Sideris teaches the electrophoresis method according to claim 11, wherein the sample of biological fluid is combined with the fluid medium in the separation channel (mixing the objects to be separated with the fluid and placing the mixture in the separation channel [para.0030 in Sideris]).
Sideris is silent to wherein the sample of biological fluid is combined with additional fluid medium in the separation channel.
Hughes further teaches wherein the sample of biological fluid (a biological target of interest in Fig.1) is combined with the fluid medium (electrophoresis buffer in Fig.1) in the separation channel, and the sample of biological fluid is combined with additional fluid medium (injection buffer in Fig.1) in the separation channel [para. 0016]. The optimal capillary electrophoresis conditions are determined (e.g., electrophoresis and injection buffer compositions and pH, temperature, voltage, injection time, competing ligand concentration, UV/LIF detection, coated vs. uncoated capillary, etc.) to give a detectable competing ligand peak [para. 0045].
It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to modify the electrophoresis method of modified Sideris to combine the sample of biological fluid with additional fluid medium (injection buffer comprising the agent [competing ligand]) in the separation channel, as taught by Hughes, since it would allow to optimize the electrophoresis condition by adjusting the injection buffer compositions and pH to give a detectable agent [competing ligand] peak [para. 0045 in Hughes]. Furthermore, the claimed limitations of additional fluid medium are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results [MPEP 2143 (I)(A)].
Response to Arguments
Applicant's arguments, see Remarks Pgs. 7-12, filed 9/26/2025, with respect to the 35 U.S.C. § 103 rejections have been fully considered, but are not persuasive.
Applicant’s Argument #1:
Applicant argues at pages 8-11 that claim 1 has been amended to specify that reaching equilibrium in the fluid medium is the means by which the bound analyte and the unbound analyte are concentrated at locations apart from one another. None of the prior art, alone or in combination, suggest the integration of applying an electric field across a pre-set mobility window which is tuned to focus and detect analyte binding events in a single-step electrophoretic method. A person of ordinary skill in the art had no reason to combine Sideris with Wang et al. or Hughes because Wang et al. and Hughes teach the very capillary electrophoresis methods Sideris seeks to improve upon. The Office Action has not advanced any reason why a person of ordinary skill in the art would look to references, like Wang et al. and Hughes, that teach methods and apparatuses in which a constant flow of separation fluid, e.g., electro-osmotic flow is present (a feature that Sideris is teaching to eliminate). Even if a skilled artisan combined the cited references, they would not have had a reasonable expectation of achieving the claimed invention. Additionally, one skilled in the art would not have been motivated to combine Sideris with Hughes because the method provided in Hughes is also markedly different from that of Sideris. Care must be taken to avoid hindsight reconstruction by using the claims and teachings of an application as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claimed invention.
Examiner’s Response #1:
Applicant’s arguments have been fully considered, but are not persuasive. Firstly, Sideris teaches varying the applied electric field to separate objects into bands. Since the objects are separated into bands, the electric force and the hydrodynamic force must be balanced. If the two opposite forces are not balanced, imbalance of the two forces broadens the bands which can overlap with one another. Thus, reaching equilibrium under a combined influence of an electric force due to the electric field and a hydrodynamic force due to the fluid motion is inherently present in the step of varying the applied electric field within the pre-set mobility window to separate objects into bands.
Secondly, since Sideris, Wang and Hughes are considered analogous art to the claimed invention because they are in the same field of capillary electrophoresis, a person of ordinary skill in the art would combine Sideris with Wang et al. and/or Hughes because Wang et al. teaches including an agent that specifically binds the analyte combined with the sample in the fluid medium such as M-protein, to detect M-protein by electrophoresis with minimum of processing steps, easy to use, have high throughput (col. 6, lns. 33-38; col. 6, lns. 16-22 in Wang) and Hughes teaches capillary electrophoresis method for detecting the biological target in the presence of the agent that specifically binds the target wherein the target is present in its native form with no modification. The rejection does provide rationales for the modifications in view of Wang and Hughes. For example, doing so, it would allow to detect M-protein by electrophoresis with minimum of processing steps, easy to use, have high throughput (col. 6, lns. 33-38; col. 6, lns. 16-22 in Wang). It would be generally the more attractive option as it would leave the samples unmodified to a certain extent [para. 0131 in Sideris], and does not require the modification of the target, which could be expensive, time consuming, reduce or alter the activity of proteins (the target) and could produce aberrant results [para. 0032 in Hughes]. Note that Sideris only seeks to improve some aspects of the methods of Wang and/or Hughes. Therefore, one skilled in the art would have been motivated to combine Sideris with Wang and/or Hughes.
Thirdly, one skilled in the art would have been motivated to combine Sideris with Hughes because Sideris teaches the possibility to run label free (unstained) samples which is generally the more attractive option as it leaves the samples unmodified to a certain extent [para. 0131], and Hughes explicitly teaches electrophoresis method for detecting the biological target in the presence of the agent that specifically binds the target wherein the target is present in its native form with no modification [paras. 0029-0032].
Fourthly, in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the instant case, as outlined in the rejection of claim 1 above, Sideris as modified by Wang and Hughes teaches the claimed limitations, and the rejection does not include knowledge gleaned only from the applicant's disclosure. Therefore, the rejection is proper.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHIZHI QIAN whose telephone number is (571)272-3487. The examiner can normally be reached Monday-Thursday 8:00 am-5:00 pm.
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 V. 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 published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHIZHI QIAN/Examiner, Art Unit 1795